Search for: News Conley Rose Welcomes New Shareholder – Ryan Jenlink 09.13.2021 Conley Rose, P.C., a leading 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,… READ MORE TEXAS IP BOUTIQUE CONLEY ROSE ELECTS FOUR NEW SHAREHOLDERS 02.05.2021 Texas-based IP law firm Conley Rose announced today it has elected four new shareholders to the firm: Elexis Jones, Kristian R. Sullivan, 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… READ MORE Venue Provision in Patent License May Preclude Inter Partes Review 06.14.2019 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 MORE Federal Circuit Upholds TTAB Ruling on Specimens of Use 04.26.2019 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 MORE Conley Rose ranked in 2018 “Best Law Firms” by U.S. News Best Lawyers 03.15.2019 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 MORE Supreme Court Condemns “Confidential” Sales Under 35 U.S.C. § 102(a) 01.23.2019 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 MORE TTAB Must Consider All Digits of Confusion 01.21.2019 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 MORE The Federal Circuit warns against amending priority claims. 10.08.2018 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 MORE Kevin Daffer Rejoins Intellectual Property Law Boutique Conley Rose 09.27.2018 Press Release – Conley Rose PC READ MORE Federal Circuit Again Narrows Patent Venue 05.18.2018 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 MORE BE CAREFUL TO INCLUDE ALL INTERVENING APPLICATIONS IN PRIORITY CLAIMS 04.19.2018 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 MORE Federal Circuit Finds Prosecution Disclaimer, No Help for Patent Owner 02.27.2018 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 MORE Conley Rose Promotes Darlene Ghavimi to Principal 01.19.2018 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… READ MORE Federal Preemption Bars State Law Unfair Competition Claim Premised on Violation of BPCIA 12.15.2017 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 MORE Burden of Crafting Proper Hypothetical Claim Rests Solely with Patentee 11.03.2017 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 MORE CAFC Reverses PTAB, Reducing Burden for Corroborating Evidence for Conception and Reduction to Practice 09.26.2017 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 MORE CAFC Reverses PTAB and Cautions the PTO on Use of Inherency and Reasonable Expectation of Success 08.11.2017 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 MORE Potential Benefit of Means-Plus-Function Limitations 08.11.2017 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 MORE More Clarity on AIA On-Sale Bar 08.11.2017 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 MORE PTAB Confirms Assignor Estoppel Not a Defense in IPR Proceedings 08.11.2017 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… READ MORE 09.13.2021 CONLEY ROSE WELCOMES NEW SHAREHOLDER – RYAN JENLINK Conley Rose, P.C., a leading 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,… MORE NEWS + Conley Rose, P.C. - Houston 777 North Eldridge Parkway, Suite 600 Houston, TX 77079 713.238.8000 Conley Rose, P.C. - Dallas 4965 Preston Park Blvd., Suite 195 Plano, TX 75093 972.731.2288 © 2021 Conley Rose, P.C. - Intellectual Property Law EMPLOYEE EXTRANET