Being part of a strong IP team within a firm that also offers a full array of legal services allows me to work with talented colleagues who have a variety of other legal specialties to ensure that clients’ intellectual property rights and business objectives are pursued in a comprehensive and coordinated manner.
Kelly Mullally is an experienced intellectual property lawyer and general appellate litigator focused on providing strategic advice to achieve her clients’ goals. In her intellectual property work, Ms. Mullally counsels clients regarding all aspects of intellectual property procurement and enforcement. She has extensive experience analyzing and resolving complex patent, trademark, and trade secret issues. Her patent and trade secret litigation and prelitigation counseling has involved a broad range of technologies and industries such as chemical compositions, cosmetics, food-service products, mechanical devices, medical devices, nonwovens, oil and gas, packaging and manufacturing, paper products, pharmaceuticals, and polymer films. Ms. Mullally has represented clients in all stages of litigation, with experience from bench and jury patent trials in the U.S. District Courts, to U.S. Circuit Court appeals, through the U.S. Supreme Court certiorari petition stage. In addition to her litigation work, Ms. Mullally has provided client counseling and prepared opinions in the patent and trademark areas. She is registered to practice before the U.S. Patent and Trademark Office (USPTO) and represents clients in trademark prosecution and inter partes trademark and patent proceedings before the USPTO.
A significant portion of Ms. Mullally’s practice also involves general commercial appellate litigation. She has substantial experience in all phases of the federal appeals process, representing clients and working with trial counsel in cases dealing with such varied legal topics as administrative law, labor and employment law, tort law, and complex procedural issues. Skilled at readily applying her expertise in new contexts, Ms. Mullally enjoys resolving difficult legal questions in a wide range of subject matters.
Before joining Taylor English, Ms. Mullally was a law professor for 10 years. During that time, she deepened her expertise by teaching, writing, and speaking throughout the country on topics including patent licensing, international intellectual property, patent litigation, patent law and innovation, claim construction and Markman hearings, trademark law, copyright law, the Federal Circuit, Supreme Court decisions in IP cases, and the America Invents Act. Before entering academia, Ms. Mullally practiced law at the firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
Ms. Mullally attended the University of Georgia School of Law, where she graduated first in her class and served on the Georgia Law Review. After graduating from law school, she served as a law clerk for Judge J.L. Edmondson on the U.S. Court of Appeals for the Eleventh Circuit and then for Judge William C. Bryson on the U.S. Court of Appeals for the Federal Circuit. Ms. Mullally received her BS in Chemistry, with highest honors, from the Georgia Institute of Technology, where she conducted research in polymer chemistry and industrial chemicals, and also worked in industry researching protein adhesion on nonwoven (polymeric) fabrics.
Atlanta Intellectual Property Inn of Court, Founding Member, Master, Past Pupilage Group Chair
Federal Bar Association
Youth Soccer Coach, 2009-present
Arbor Montessori School, Parent Involvement Committee, 2011-2015; Diversity Committee, 2010-2012
Served as appellate counsel for organoclay manufacturer in obtaining reversal of an $82 million judgment against client and successfully opposing adverse party’s subsequent petition for writ of certiorari to the United States Supreme Court. Case involved issues of anticipation, incorporation by reference, obviousness, and unenforceability. Southern Clay Prods., Inc. v. United Catalysts, Inc.
Represented pharmaceutical manufacturer in fast-track trial and subsequent appeal involving seven patents covering a product with annual sales of $1.4 billion. Case involved complex issues of double patenting, restriction requirements during prosecution, anticipation, and inherency. Geneva Pharm., Inc. et al. v. GlaxoSmithKline.
Represented patentee in Federal Circuit appeal involving issues of claim construction, infringement under the doctrine of equivalents, prosecution history estoppel, and sufficiency of evidence. Pactiv Corp. v. S.C Johnson & Son, Inc.
Represented defendant accused of patent infringement in jury trial involving issues of obviousness, inequitable conduct, and admissibility of expert testimony. Favorably settled case following jury trial. Baker Hughes, Inc. v. Davis-Lynch, Inc.
Represented patentee in oil and gas industry in Federal Circuit appeal involving issues of infringement, prosecution history disclaimers, claim construction, and means-plus-function limitations, as well as preemption of state law claims. Frank’s Casing Crew & Rental Tools, Inc. v. Weatherford Int’l Inc.
Obtained rulings from the USPTO’s Patent Trial and Appeal Board finding all challenged claims invalid in reexamination proceedings involving patents of a client’s competitor in the field of mechanical pipe couplings. Rulings resulted in a favorable settlement for the client.
American Process, Inc. et al. v. GranBio Investimentos S.A. et al.
Brought suit on behalf of clients that develop and license technologies for creating second-generation biofuels, such as cellulosic ethanol, against related Brazilian companies for, e.g., trade secret misappropriation under the federal Defend Trade Secrets Act and breach of an engineering services agreement with our clients. American Process, Inc. et al. v. GranBio Investimentos S.A. et al. (N.D. Ga.)
ModTruss, Inc. v. BattleFrog, LLC
Taylor English handled the successful defense of a motion for a temporary restraining order and preliminary injunction brought against our client, BattleFrog, LLC, a company that organizes and stages obstacle-course races that are televised on ESPN. The stakes in this case were very high, as plaintiff Modtruss, Inc., sought to prevent the airing of a recent BattleFrog race on ESPN and to enjoin our client from putting on additional races based on claims of alleged ...
- October 22, 2015
- "Movies: A Global Passion," American Intellectual Property Law Association, World Intellectual Property DayApril 2014
- "IP Cases in the 2012-13 Term," Georgia State Bar Association U.S. Supreme Court UpdateOctober 2013
- "The Institutions of Patent Law," Southeastern Association of Law Schools Annual ConferenceAugust 2013
- "IP Law Reform – Same as Before, or a More Fundamental Transformation?" Southeastern Association of Law Schools Annual ConferenceAugust 2013
- "Changing Approaches to Teaching to Enhance Feedback and Assessment," Southeastern Association of Law Schools Annual ConferenceAugust 2012
- "Blocking Copyrights Revisited: A Solution to the Dilemma of Derivative Works," Works in Progress Intellectual Property Colloquium, University of HoustonFebruary 2012
- "Game-Changers at the Supreme Court: Recent and Upcoming Cases in IP," Atlanta Bar Association Intellectual Property Section LuncheonFebruary 2011
- "Legal (Un)certainty, Legal Process, and Patent Law," Symposium on "The Federal Circuit as an Institution," Loyola Los Angeles Law SchoolOctober 2009
- "Legal (Un)certainty in Patent Law," Southeastern Association of Law Schools New Scholars ProgramAugust 2008
- Symposium on "The New Private Ordering of Intellectual Property: The Emergence of Contracts as the Drivers of Intellectual Property Rights," University of Maryland School of LawApril 2008
- "Hot Topics in Patent Law," American Bar Association's 23rd Annual Intellectual Property Law Conference, ABA Section of Intellectual Property LawApril 2008
- Conference Fellows' Roundtable, Symposium on "Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk," The University of Georgia School of Law, Terry College of Business Department of Economics, and The University of Georgia Research FoundationMarch 2008
- "Unauthorized Use of Trademarks by Internet Search Engines and Websites," Maryland State Bar Association Section on Intellectual Property, Inaugural Meeting, Introductory SpeakerMarch 2007
- "Patent Hermeneutics: Form and Substance in Claim Construction," Junior Faculty Development Workshop, University of MarylandNovember 2006
- "Courts as Machines? Legal Certainty in Patent Law," Works in Progress Intellectual Property Colloquium, University of PittsburghOctober 2006
- "Patent Hermeneutics: The Role of Dictionaries in Claim Construction," The Catholic University of America, Columbus School of LawDecember 2004
- "Patent Hermeneutics: The Role of Dictionaries in Claim Construction," Saint Louis University School of LawNovember 2004
- "Patent Hermeneutics: The Role of Dictionaries in Claim Construction," Louisiana State University Law CenterNovember 2004
- "Patent Hermeneutics: The Role of Dictionaries in Claim Construction," University of Kentucky College of LawNovember 2004
- "Patent Hermeneutics: The Role of Dictionaries in Claim Construction," Samford University Cumberland School of LawOctober 2004
- August 8, 2017
- "When a Patent 'Laches' on to Doctrine: Should There be a Patent-Specific Approach to the Defense of Laches?" ABA PreviewOctober 21, 2016
- "Intellectual Property in the 2014 Term: The Continued Abatement of Intellectual Property Law Exceptionalism," Georgia State Bar Association U.S. Supreme Court Update CLE Materials2016
- "Your Friendly Neighborhood Patent License: Should Royalty Payments Based on Postexpiration Use Be Per Se Unenforceable?" Preview of United States Supreme Court Cases, 42, (2015): 2382015
- "Post-MedImmune Burden of Proof in Declaratory Judgment Actions," Preview of United States Supreme Court Cases, 41, (2013): 782013
- "Blocking Copyrights Revisited," Columbia Journal of Law & the Arts, 37, (2013): 572013
- "Legal (Un)certainty, Legal Process, and Patent Law," Loyola of Los Angeles Law Review, 43, (2010): 11092010
- With Gregory Castanias and Franklin E. Gibbs. "The New Private Ordering of Intellectual Property: The Emergence of Contracts as the Drivers of Intellectual Property Rights: MedImmune v. Genentec," Journal of Business & Technology Law, 4, (2009): 592009
- "Patent Hermeneutics: Form and Substance in Claim Construction," Florida Law Review, 59, (2007): 3332007
- "Exxon Chemical Patents, Inc. v. Lubrizol Corp.: The Federal Circuit Sets Unreasonable Standards for Chemical Composition Inventions," Georgia Law Review, 31, (1997): 12231997
- May 29, 2015
- Intellectual Property
- Litigation and Dispute Resolution
- Restaurant, Food and Beverage, and Licensing
- Higher Education
University of Georgia School of Law, JD, summa cum laude, First Honor Graduate, 1998
- Order of the Coif, Georgia Law Review, Intellectual Property and Entertainment Law Association
- Isaac Meinhard Award (Highest Academic Average Throughout Law School), Chaffin Award for Excellence in Fiduciary Law, Law School Association scholarship recipient, Georgia Bar Association Real Property Award, Outstanding Student Award, First-Year Moot Court Competition Best Brief Finalist
Georgia Institute of Technology, BS, Chemistry, highest honors, 1995
- Faculty Honors, Dean’s List, National Collegiate Natural Sciences Award
College of William and Mary, Russian Studies, 1991-1992
- Ford/Pélé Academic-Athletic Scholarship, Amateur Athletic Union National Scholarship
- NCAA Division I Women's Soccer
U.S. Court of Appeals for the 11th Circuit, Hon. J.L. Edmondson
U.S. Court of Appeals for the Federal Circuit, Hon. William C. Bryson
U.S. Patent and Trademark Office
Courts & Adjudicative Bodies
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the 11th Circuit
U.S. District Court for the Northern District of Georgia