Thomas L. Warden - Conley Rose

Thomas L. Warden

Principal Attorney

twarden@conleyrose.com

Phone: 713.237.8331

Fax: 713.238.8008

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Conley Rose, P.C. - Houston

777 North Eldridge Parkway, Suite 600
Houston, TX 77079
713.238.8000

Tom Warden assists clients in procuring and protecting a broad range of intellectual property assets, including patents, trademarks, trade secrets, and copyrights. Tom’s practice focuses on working closely with clients to understand their business objectives and to develop effective strategies in all forms of transactional and litigation matters, from asset identification to prosecution of applications, and through trial and appeal. Tom also assists clients in developing successful, forward-looking intellectual property business and employment practices, and building valuable technology licensing relationships.

In litigation, Tom has proudly served as trial counsel for intellectual property cases involving patent infringement, trade secrets, trademark infringement and unfair competition, copyright infringement, domain names disputes, DMCA / take-down issues, and related business torts. Tom has represented both plaintiffs and defendants, large and small, in cases throughout Texas (including many cases in the Eastern District), in many other states, and at the U.S. International Trade Commission. In litigation, Tom strives to focus on the “winning” issues and to develop early and effective litigation strategies.

In transactional matters, Tom has extensive experience helping clients identify, protect, and defend their valuable intellectual property assets in a wide variety of technology fields. Tom’s experience includes preparing, prosecuting, and managing patent and trademark applications; representation of clients before the US Patent Trial and Appeal Board (PTAB); providing intellectual property legal opinions; and developing valuable technology licensing relationships.

Mr. Warden is a native of Minnesota and graduated from the University of Minnesota in 1988 with a Bachelor of Science in Aerospace Engineering and Mechanics. He received his Juris Doctor from South Texas College of Law in 1997. Prior to entering law school, Mr. Warden served as a Captain in the United States Marine Corps, where he served three combat and humanitarian aid deployments during Operations Desert Shield and Desert Storm.

Practice Areas & Services

Unfair Competition and Trade Secrets
IP Counseling, Opinions & Diligence
Intellectual Property Agreements and Licensing
Intellectual Property Litigation and Disputes
Patent Post-Grant Proceedings and Inter Partes Review
Trademark Cancellations and Oppositions
Domain Disputes and UDRP Proceedings

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Technical Degrees

B.S. Aerospace Engineering and Mechanics

Education

J.D., 1997
South Texas College of Law
South Texas Law Review
Phi Alpha Delta Law Fraternity
B.S., Aerospace Engineering and Mechanics, 1988
University of Minnesota

Memberships

State Bar of Texas, 1997
- Intellectual Property Section
- Antitrust and Business Litigation Section
Registered to practice before the U.S. Patent and Trademark Office, Registration No. 47,165
Admitted to practice before:
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Fifth Circuit
- U.S. District Courts for the Northern, Southern, and Eastern Districts of Texas
- U.S. District Court for the Eastern District of Wisconsin
Federal Circuit Bar Association
American Intellectual Property Law Association (AIPLA)
Houston Intellectual Property Law Association

Representative Cases

PlasmaCAM, Inc. v. CNC Electronics, LLC, 24 F. 4th 1378, 1380. Fed. Cir. 2022. Obtained reversal of district court in favor of our client in patent infringement case involving plasma cutting controller technology.
Luckenbach Texas, Inc. v. Stewart Skloss et al., No. 1:21-cv-00871. W.D. Tex. 2022. Obtained ruling denying preliminary injunction in favor of our client in trademark infringement case involving craft whiskey.
ASHH Inc. v. Various Defendants, Nos. 3:21-cv-02779, 02820, 02831, 02832, 02833, 02835, 02836, N. D. Tex. 2022. Obtained judgment in favor of our client in several cases involving trademark counterfeiting of consumer products in vaping industry.
GustoMSC Resources B.V., Adrian Richie, FA2107001954382, ADR Forum 2021. Represented Dutch marine construction company in protecting its domain name in UDRP proceeding against email impersonator.
Local Yocal LLC v. Mastronardi Produce Ltd., No. 92078023, TTAB 2021. Represented trademark applicant in successfully cancelling registered mark in field of produce groceries.
Shipping and Transit, LLC v. Adorpix LLC et al. (C.D. Cal.; S.D.N.Y.). Represented defendant Adorpix LLC in a patent case involving shipment tracking software against notorious patent troll; obtained early venue transfer and dismissal in client’s favor.
Townsquare Commerce, LLC v. Groupon, Inc. (N.D. Tex.). Represented plaintiff Townsquare Commerce (seizethedeal.com) in a trademark case against Groupon.
Jeremy Argue v. Triton Digitial, Inc. et al. (W.D. Pa.). Represented defendant Triton Digital in patent and tort case brought by former employee involving software for managing audio for publishers and advertisers; obtained complete summary judgment against the plaintiff.
Glascoe v. Lewis et al. (N.D. Tex.). Represented plaintiff Dr. Frances Page Glascoe in a copyright infringement action involving pediatric development assessment tools.
One Shot Shooting Products, LLC v. Hunter’s Specialties, Inc. et al (E.D. Tex.). Represented defendants Hunter’s Specialties and Peak Rock Capital, LLC in patent infringement case involving bipod rifle support; early prior art search found “dead-on” prior art causing plaintiff to voluntarily dismiss the case with prejudice.
Ideal Image Development Corp. v. ISMILE Practice Management of America, LLC (S.D. Tex.). Represented plaintiff Ideal Image in a trademark infringement and unfair competition action involving cosmetic laser treatments / clinics.
Wireless Remote System LLC v. Pixavi AS (E.D. Tex.). Represented Norwegian defendant Pixavi in a patent infringement case involving wireless videoconferencing for expert systems.
UltimatePointer, LLC v. Nintendo Co. Ltd, et. al. (E.D. Tex.; W.D. Wash.; Fed. Cir.). Represented plaintiff patent owner UltimatePointer in district court proceedings and on appeal in a patent infringement case involving a systems and methods for controlling a cursor on a screen image.
Baker Hughes Inc. v. Daniel S. Homa, et al. (S.D. Tex.). Represented defendants in TRO and preliminary injunction proceedings for a trade secrets and breach of contract action involving fiber optic cable manufacturing technology; injunction successfully narrowed to permit client’s continued operations.
Edison Global Circuits, LLC v. Ingenium Techs. Corp. (S. D. Tex.). Represented plaintiff Eidson Global in the trial of breach of contract action involving a circuit breaker designs; obtained jury finding of breach of contract.
In-N-Out Burgers v. Pappas Restaurants, Inc. (S.D. Tex.). Represented plaintiff In-N-Out Burgers in a trademark action involving fast food signage.
In re Certain LED Photographic Lighting Devices and Components Thereof (USITC). Represented respondents Flolight, LLC, Prompter People, Inc., Advanced Business Computer Services, LLC d/b/a Cool Lights USA, and IKAN Corporation in ITC action involving LED lighting equipment.
Ganas, LLC v. E*Trade Securities, LLC (E.D. Tex.). Represented defendant E*Trade in patent infringement case involving network systems to provide communications across a firewall.
Arlington Indus., Inc. v. Electronic Custom Distribs., Inc. (M.D. Pa.). Represented defendant patent owner Electronic Custom Distributors in a declaratory judgment patent infringement case involving electronic face plates for A/V cables; secured dismissal in client’s favor for no personal jurisdiction.
Special Happy, Ltd. v. Lincoln Imports Ltd., Inc. (C.D. Cal.). Represented plaintiff patent owner Lincoln Imports in patent infringement case involving artificial Christmas tree stands; secured terminating sanctions in client’s favor on the eve of trial.
National Oilwell Varco, L.P. v. Clyde H. Bohnsack (S.D. Tex.; 5th Cir.). Represented plaintiff Varco at trial and on appeal in trade secret declaratory judgment action involving drilling fluid handling equipment.
Cummins-Allison Corp. v. SBM Co., Ltd. (E.D. Tex.; E.D. Wis.). Represented defendants SBM and Armo-Asian Trade in the trial of patent infringement case and inter partes reexamination regarding currency denomination and counterfeit detection technology; successfully invalidated two patents at trial.
Emtel, Inc. v. LipidLabs, Inc. et al. (S.D. Tex.). Represented defendants Specialists on Call, Inc., Tele-Med Dox, LLC, and Doctors Telehealth Network, Inc. in patent infringement case involving telemedicine methods; secured early summary judgment of no infringement in clients’ favor.
Bright Solutions, Inc. v. Ritchie Engineering Co. (E.D. Tex.). Represented defendant Ritchie Engineering in a patent infringement case involving fluorescent LEDs and dyes.
Duhn Oil Tool, Inc. v. Cameron Int’l Corp. (E.D. Cal.; Fed. Cir.). Represented defendant Cameron in a trial and on appeal of patent infringement case involving wellhead equipment used for fracing gas wells; district court and jury invalidated all asserted patent claims as anticipated and/or obvious.
Autobytel Inc. et al. v Dealix Corp. (E.D. Tex.). Represented defendant Dealix with co-counsel from Susman Godfrey in patent infringement case involving internet car sales.
JJK Industries LP v. Kplus Inc, et al. (S.D. Tex.). Represented plaintiff JJK in a patent infringement case involving body jewelry; court declared patent interference and resolved in favor of plaintiff.
Kothmann Enterprises, Inc. v. Trinity Indus., Inc. (S.D. Tex.). Represented plaintiff patent-owner Kothmann Enterprises with co-counsel from Susman Godfrey in patent infringement case involving guardrail end terminals.
Cudd Pressure Control, Inc. v. Westbury Service Co. (S.D. Tex.). Represented declaratory judgment plaintiff Cudd Pressure Control in patent case involving coiled tubing injectors; secured favorable Markman ruling and summary judgments finding patent claims invalid and unenforceable due to inequitable conduct.