03.22.2024
Conley Rose is proud to announce the opening of its new office in Alexandria, Virginia and the election of Alan Thiemann as a Principal of the firm as a part of that office. We are excited at the unique opportunity to have added a highly experienced group of attorneys and staff who bring experience and…
Read More03.22.2024
Conley Rose P.C. is pleased to announce that it has elected three new principals to the firm: Alan Thiemann, Nicholas Beaulieu, and Eric Kent. Michael W. Piper, President of Conley Rose says, “Alan, Nicholas, and Eric routinely demonstrate outstanding dedication to our firm and clients. Their sound legal and business judgment are a great contribution…
Read More02.15.2022
Conley Rose P.C. is pleased to announce that it has elected two new Principals to the firm: Brandt Howell and James Hooper. Michael W. Piper, President of Conley Rose says, “Brandt and James consistently demonstrate tremendous dedication to our firm and clients, as well as the highest degree of integrity. Their sound legal and business…
Read More09.13.2021
Conley Rose, P.C., an intellectual property-only law firm is pleased to announce Ryan Jenlink has rejoined the firm as Shareholder and Chair of the firm’s Life Sciences Practice Group. Ryan has over a decade of experience protecting and maximizing the value of inventions, patents, and other intellectual property (IP) assets for inventors, scientists, biologists, companies,…
Read More02.05.2021
Texas-based IP law firm Conley Rose announced today it has elected three new shareholders to the firm: Elexis Jones, Gayatry Nair and Brooks W. Taylor. “We are very excited about this group of new shareholders,” said Michael W. Piper, firm President. “They each have a have strong work ethic and have demonstrated tremendous dedication to…
Read More06.14.2019
InDodocase VR v. MerchantSource dba Sharper Image (CAFC 04-18-2019), the Federal Circuit confirmed that Inter Partes Review (IPR) is precluded by a typical exclusive venue provision in a patent license agreement. As is typical, the license in this case specified that “any dispute arising out of or under this Agreement . . . shall be…
Read More04.26.2019
Part of the trademark registration process is submitting a specimen of the mark as used in commerce (“specimen of use”). Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld the decision of a split Trademark Trial and Appeal Board (TTAB) panel that refused to register the trademark “CASALANA” for “knit pile fabric…
Read More03.15.2019
U.S. News & World Report and Best Lawyers recently announced the “Best Law Firms” rankings for the eighth consecutive year. Conley Rose was regionally ranked in the 2018 U.S. News – Best Lawyers “Best Law Firms” in two (2) practice areas: Litigation – Patent and Litigation – Intellectual Property. The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous…
Read More01.23.2019
The sale of a patented invention before the patent application filing date will preclude a patent under 35 U.S.C. § 102(a), subject to a limited one-year grace period under § 102(b). In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., U.S., No. 17-1229 (Jan. 22, 2019), the Supreme Court held that this prohibition against pre-filing…
Read More01.21.2019
CAFC reminds the TTAB that all factors relating to likelihood of confusion between two marks must be considered when they are of record in In Re: Guild Mortgage Co., Case No. 2017-2620 (Fed. Cir. January 14, 2019).
Read More10.08.2018
In Natural Alternatives v. Iancu (Fed. Cir. 2018), the court held that an after-filing cancellation of priority claims in a parent application interrupted the previously claimed full chain of priority in the child application, thereby rendering that child application invalid based on the issued patents from the now-canceled portion of the priority chain.
Read More05.18.2018
The Federal Circuit recently narrowed the permissible venue choices for patent litigation. In re BigCommerce, No. 2018-120 (May 15, 2018), holds that a corporate defendant “resides” for the purpose of patent venue under 28 U.S.C. § 1400(b) in only one district within its state of incorporation (for states with multiple districts). That single district is…
Read More04.19.2018
In Droplets, Inc. v. E-Trade Bank, the patent applicant filed a continuation application that claimed priority to a pending parent application and an expired provisional application. However, the priority claim did not include an intermediate continuation application filed between the parent application and the provisional application. The Federal Circuit held that the patent-in-suit was only…
Read More02.27.2018
In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld a PTAB finding that Arendi’s claims at issue in an IPR were obvious, despite a narrow construction resulting from prosecution disclaimer. Prosecution disclaimer traditionally arises when a patent applicant “clearly and unambiguously” surrenders claim scope during prosecution, usually by arguments and related claims amendments. During prosecution,…
Read More12.15.2017
In Amgen v. Sandoz, No. 2015-1499 (Dec. 14, 2017), the Federal Circuit held that 42 U.S.C. § 262 (the “BPCIA”) preempts state law claims for unfair competition. The BPCIA provides for streamlined FDA approval of drugs that are “biosimilar” to previously approved drugs. Similar to the Hatch-Waxman Act, a biosimilar application under the BPCIA also gives…
Read More11.03.2017
In Jang v. Boston Scientific (Sept. 29, 2017), the Federal Circuit rejected Dr. Jang’s attempt to prove infringement under the doctrine of equivalents. Here, “ensnarement” limits the doctrine of equivalents whenever a hypothetical patent claim that literally covers the accused product would also ensnare the prior art. When ensnarement is invoked to avoid infringement, the…
Read More09.26.2017
In NFC Technology v. Matal (September 2017), a panel of the Federal Circuit reversed the PTAB’s finding of obviousness based on the patent owner’s failure to antedate a prior art reference. The PTAB held that a third party’s fabrication of a prototype did not inure to the benefit of the inventor for purposes of reduction to…
Read More08.11.2017
In Honeywell v. Mexichem (August 2017), a panel of the Federal Circuit reversed the PTAB’s findings of obviousness from an inter partes reexamination. Honeywell’s patent covered a refrigeration composition for air conditioning systems, including an unsaturated hydrofluorocarbon (HFC) refrigerant plus a polyalkylene glycol (PAG) lubricant. The primary reference teaches the specific composition of HFC claimed…
Read More08.11.2017
Many US practitioners intentionally use means-plus-function limitations sparingly and in very limited situations. The recent Federal Circuit case IPCom v. HPC (July 2017) highlights one potential benefit of means-plus-function limitations. Specifically, the PTAB (via inter partes reexamination) treated the limitation “an arrangement for reactivating the link with the first base station if the handover is…
Read More08.11.2017
In a panel decision the US Court of Appeals for the Federal Circuit (CAFC) had its first opportunity to interpret the “or otherwise available to the public” clause included in 35 U.S.C. § 102 as revised under the AIA. Particularly, in this case, although the patentee entered into a publicly disclosed purchase agreement that covered the…
Read More08.11.2017
Traditionally, the doctrine of assignor estoppel prevented a seller of a patent from challenging the validity of that patent. One situation where I have seen this arise is when an inventor assigns his/her rights in a patent to his/her employer in exchange for consideration, and subsequently, the inventor leaves that employer to start a competing business…
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