Conley Rose Elects Two New Principals


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…

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Conley Rose Welcomes New Shareholder – Ryan Jenlink


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,…

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Texas IP Boutique Elects Three New Shareholders


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…

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Venue Provision in Patent License May Preclude Inter Partes Review


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…

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Federal Circuit Upholds TTAB Ruling on Specimens of Use


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…

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Conley Rose ranked in 2018 “Best Law Firms” by U.S. News Best Lawyers


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…

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Supreme Court Condemns “Confidential” Sales Under 35 U.S.C. § 102(a)


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…

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TTAB Must Consider All Digits of Confusion


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).

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The Federal Circuit warns against amending priority claims.


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.

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Kevin Daffer Rejoins Intellectual Property Law Boutique Conley Rose


Press Release – Conley Rose PC

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Federal Circuit Again Narrows Patent Venue


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…

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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…

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Federal Circuit Finds Prosecution Disclaimer, No Help for Patent Owner


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,…

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Conley Rose Promotes Darlene Ghavimi to Principal


Houston – January 2018 – Intellectual property law firm Conley Rose, PC is pleased to announce the promotion of Darlene F. Ghavimi to the position of Principal for 2018.  Ms. Ghavimi primarily represents clients in contentious and complex patent and trademark litigation.  She also has extensive experience in patent and trademark preparation and prosecution, infringement…

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Federal Preemption Bars State Law Unfair Competition Claim Premised on Violation of BPCIA


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…

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Burden of Crafting Proper Hypothetical Claim Rests Solely with Patentee


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…

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CAFC Reverses PTAB, Reducing Burden for Corroborating Evidence for Conception and Reduction to Practice


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…

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CAFC Reverses PTAB and Cautions the PTO on Use of Inherency and Reasonable Expectation of Success


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…

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Potential Benefit of Means-Plus-Function Limitations


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…

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More Clarity on AIA On-Sale Bar


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…

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PTAB Confirms Assignor Estoppel Not a Defense in IPR Proceedings


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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