Biography

Thomas P. Riley prepares and prosecutes patents for clients within the mechanical engineering and electrical and software engineering industries, and counsels organizations to help realize the return on IP investments, from the initial business concept to ongoing, productive patent portfolio strategies. Through enforcement and licensing, Mr. Riley also helps his clients protect their IP assets. In addition, he prosecutes trademark applications and takes appropriate action against trademark infringers to protect the client’s brands.

REPRESENTATIVE EXPERIENCE

  • Prepared, prosecuted, and coordinated international prosecution of a large patent portfolio for a Fortune 500 medical products company, obtaining strategic international patent coverage for a family of leading edge surgical navigation products.
  • Conducted due diligence analysis of claim coverage, validity, and enforceability in preparation for purchase of multi-patent portfolio for a Fortune 500 medical products company, enabling the client to make informed strategic negotiation and purchasing decisions.
  • Successfully led litigation to enforce registered U.S. trademark of international specialty transport company, resulting in favorable award for client and cessation of infringing use.

Mr. Riley also has experience in:

  • Industrial process valves
  • Industrial process control systems
  • Optics, including thin film lenses and large format movie cameras
  • Liquid crystal displays
  • Digital printing systems
  • Internet-based software systems
  • Distilling systems and petrochemical processing systems
  • Industrial mixing equipment
  • Commercial food preparation equipment
  • Automotive child safety restraint systems
  • Steel and concrete industrial processing lines
  • Extrusion equipment
  • Food storage devices
  • Air fragrancing devices
  • Vacuum pump technology
  • Water filtration systems
  • Medical diagnostics and imaging
  • Surgical planning systems
  • Surgical navigation systems
  • Orthopedic surgical methods
  • Orthopedic implants
  • Orthopedic surgical tools
  • Vascular pumps
  • Dental surgical instruments
  • Pharmaceutical logistics and processing systems and software
  • Surgical tool storage and sterilization
  • Surgery drapes
  • Prosthetic devices

BACKGROUND AND CREDENTIALS

Mr. Riley has an international practice focused on the preparation and prosecution of patent and trademark applications and counseling regarding patent and trademark clearance, enforcement, and due diligence. Encompassing a wide range of technology and brand asset planning, development, protection and enforcement, his extensive experience in coordinating large worldwide patent portfolios positions him as a leader to his clients and his peers at the Firm.

Mr. Riley has served as an adjunct professor at Valparaiso University School of Law and DePaul University College of Law where he taught courses in patent prosecution procedure and patent drafting. Earning a J.D., cum laude from Valparaiso University School of Law, he served as a law review editor and note writer for the Valparaiso University Law Review and as a judicial extern to the Honorable J. Tunheim in the U.S. District Court for the District of Minnesota. He completed a B.S. in Civil Engineering and a B.S. in Land Surveying Engineering, both from Purdue University.

Before entering law school, Mr. Riley worked as a structural and construction engineer with Chicago Bridge & Iron in Plainfield, IL and as a marine field surveyor with John E. Chance & Associates located in Houston, TX.

Education

  • Valparaiso University, J.D., cum laude
  • Purdue University, B.S., Civil Engineering
  • Purdue University, B.S., Land Surveying Engineering

Admissions

  • Illinois
  • Indiana
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of Illinois
  • U.S. District Court, Northern District of Indiana
  • U.S. Court of Appeals, Federal Circuit

PUBLICATIONS AND PRESENTATIONS

  • "U.S. Patent Prosecution, The Duty of Disclosure, and Inequitable Conduct: A Primer for non-US Attorneys in view of Therasense v. Becton, Dickinson." Presentation to the Bavarian section of the Deutsche Vereinigung für Gewerblichen Rechtsschutz und Urheberrecht at the Deutsche Patent- und Markenamt, Munich, Germany, February 8, 2011.
  • "Long Awaited Bilski Decision Rejects Claims as Being For an Unpatentable Abstract Idea, Rejects New Broad Categorical Rules as to What Is or Is Not Patentable Subject Matter Under 35 U.S.C. § 101," June 2010.
  • "Prosecution History Estoppel: The Choice Between Public Interests and Inventor’s Property Rights," 36 Val. U.L. Rev. 239 (2001).

COMMUNITY AND PROFESSIONAL INVOLVEMENT

  • Chicago Bar Association (CBA)
  • Intellectual Property Law Association of Chicago (IPLAC)
  • International Trademark Association (INTA)
  • Chicago Engineers Foundation, Board of Directors
  • German American Chamber of Commerce
  • Union League Civic & Arts Foundation, Board of Directors