Rashad L. Morgan
Practice Summary

Mr. Morgan's practice focuses on all areas of intellectual property law including patent prosecution both in the U.S. and abroad, patent litigation and opinion work.

Mr. Morgan has experience preparing and prosecuting patent applications in the chemical and mechanical arts. His practice also encompasses client counseling, including the preparation of right-to-use/clearance, invalidity and patentability opinions.

Mr. Morgan is experienced in all stages of litigation, including evaluating infringement and invalidity positions, handling discovery, preparing for summary judgment and drafting pre-trial and trial motions. He has been involved in litigations covering a wide range of technology including pharmaceuticals (initiated under the Hatch Waxman Act), medical devices and various consumer products.

Honors/Distinctions
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  • Publications Editor, University of Cincinnati Law Review, University of Cincinnati College of Law
  • Dean's List, 5 of 6 semesters, University of Cincinnati College of Law
  • Wood Scholarship Recipient, University of Cincinnati College of Law
  • Vice President, Black Law Students Association, University of Cincinnati College of Law
  • Tau Beta Pi, Engineering Honor Society
  • Golden Key International Honour Society
  • Distinguished Scholarship Award Recipient, Florida A&M University
Representative Matters
  • Kannar v. Alticor Inc., et al. 09-CV-2500 (C.D. Cal., filed December 2008). Representing defendants in a patent infringement suit.
  • Abbott Labs. v. Sandoz Inc., 07-1400 (Fed. Cir. May 18, 2009) (en banc). Successfully represented Sandoz Inc. in an appeal before the U.S. Court of Appeals for the Federal Circuit dealing with claim construction and the proper interpretation of product-by-process claims. In a landmark decision, the Federal Circuit affirmed the district court's claim construction, and the en banc Court resolved the long-standing conflict on the interpretation of product-by-process claims between its prior decisions in Atlantic Thermoplastics and Scripps Clinic. Following Supreme Court precedent, the Court upheld the rule in Atlantic Thermoplastics that product-by-process claims are limited by their process steps.
  • Abbott Labs. v. Sandoz Inc., 486 F. Supp. 2d 767 (N.D. Ill. 2007). Successfully defended Sandoz Inc. against request for temporary restraining order and preliminary injunction by Abbott and Astellas before Judge Wayne R. Andersen over patents relating to a polymorph of crystalline cefdinir, an antibiotic also sold as Omnicef®.
  • Anchor Sports I, Inc. v. Schutt Sports, Inc. (E.D. Tex. 2007). This case, and a companion ITC action, involved a patent related to molded plastic parts. Case settled after Markman positions were exchanged.
  • One World Technologies, Ltd. v. Rexon Industrial Corp., Ltd., et al., No. 04 C 4337 (N.D. Ill., Nov. 2006). Subject: Infringement of our clients' patents relating to a miter saw having a laser arbor and to a portable power tool support assembly. Resolution: Case resolved by a confidential settlement agreement.
Publications
Presentations
  • "CAFC and Supreme Court Watch: Three Cases that May Have Radical Impact on Pharmaceutical Patent Life Cycle Strategies," ACI's 12th Annual Maximizing Pharmaceutical Patent Life Cycles, New York City, October 4, 2011
Memberships & Affiliations
  • American Bar Association
  • National Bar Association
  • Chicago Bar Association
  • Chicago Committee on Minorities in Large Law Firms, Associate Board
Legal Experience
  • Brinks Hofer Gilson & Lione, Research Triangle Park, N.C. and Chicago, Ill.
    Associate, September 2006-present
    Recruiting Committee, 2007-present
    Associates Committee Representative, 2007-2009
    Summer Associate, 2005
  • Dinsmore & Shohl, LLP, Cincinnati, Ohio
    Summer Associate, Summers 2004-2005
  • Frost Brown Todd, LLC, Cincinnati, Ohio
    Summer Associate, Summer 2004
  • The Procter and Gamble Company, Cincinnati, Ohio
    Legal Assistant, Summer 2003
Non-Legal Experience
  • The Procter and Gamble Company, Cincinnati, Ohio
    Process Engineering Intern, Summers 1999-2002