Rashad L. Morgan
Shareholder
Overview

“I genuinely care about the interests of my clients.  When I am drafting a patent application, I treat it the way I would if my own intellectual property were at stake.”

Rashad Morgan maintains a broad-based intellectual property practice that includes opinion work, due diligence review, and patent litigation, with a particular focus on patent prosecution both in the United States and abroad. For clients in the pharmaceutical, medical device, biotech, chemical, and other industries, he provides full-service counsel on legal strategies for entire patent families. He regularly prepares freedom-to-operate studies and infringement/validity studies, as well as representing clients in USPTO proceedings in which the validity of patents is at stake.

Rashad’s clients include emerging and middle market companies as well as large corporations. Across all of his engagements, Rashad appreciates the opportunity to protect his clients' interests, which begins with a detailed understanding of their business and innovations. In his patent prosecution practice—where he is particularly experienced prosecuting patents in the areas of chemistry, biotechnology, and the mechanical arts—he often assists clients in securing patent protection in foreign jurisdictions in addition to the United States. He also has been involved in litigations (including cases initiated under the Hatch Waxman Act), covering pharmaceuticals, medical devices, consumer products, and other technologies.

Rashad is Co-Chair of the Diversity and Inclusion Committee and he is Co-Chair of the Chemical, Energy, and Agriculture Industry Group of Brinks Gilson & Lione. Rashad also sits on the Hiring Committee of Brinks Gilson & Lione. He thinks forward about diversity and inclusion issues, making a difference by taking on leadership roles within the firm and the profession, including the North Carolina Bar Association, where he is active on the Minorities in the Profession Committee, where he served as Co-Chair, and Legal LINK, a program designed to increase interest in legal careers among high-school members of populations underrepresented in the legal profession. Rashad previously served as Vice Chair of the Science and Technology Committee of the ABA Young Lawyers’ Division.

Education
  • J.D., cum laude,
    University of Cincinnati College of Law, 2006
  • B.S., Chemical Engineering, magna cum laude,
    Florida A&M University, 2003
Bar Admissions
  • Illinois
  • North Carolina
  • U.S. Court of Appeals, Fed. Cir.
  • U.S. Dist. Court, N.D. Illinois
  • U.S. Patent & Trademark Office
Technical Background
  • Biopharma
Experience | Overview
  • Developed and managed domestic and international patent portfolios for clients including drafting, filing, and prosecuting applications, attending to amendments, examiner interviews, continuation practice, restriction and election requirements, reexamination, appeals and correction of patents in technology areas including chemistry and medical devices.
  • Drafted multiple invalidity opinions and freedom-to-operate opinions for clients in the medical device, biotech, chemical, and other industries.
  • Coordinated with foreign counsel on the successful prosecution of patents in Europe, Japan, Australia, and other foreign jurisdictions.
  • Counseled clients on the identification of their intellectual property rights and protection of their technology, assessing patentability, infringement, and other intellectual property options.
  • Advised and counseled clients on intellectual property due diligence issues for transactional matters.
Experience | Legal

Brinks Gilson & Lione, Research Triangle Park, N.C. and Chicago, Ill.
Shareholder, January 2016-present
Associate, September 2006-2015
Co-Chair, Chemical, Energy, and Agriculture Industry Group, 2016-present
Diversity Committee, 2011-present
Co-Chair, 2018-present
Hiring Committee, 2010-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

Experience | Non-Legal
The Procter and Gamble Company, Cincinnati, Ohio
Process Engineering Intern, Summers 1999-2002
Presentations
  • Presenter, “The Importance of the ‘I’ in D&I Initiatives.” North Carolina Bar Association Annual Meeting 2019
  • Panelist, “Finding Your Path: Career for Lawyers.” Minority Pre-Law Conference, North Carolina Bar Association 2019.
  • Presenter, “Implications of the USPTO's Guidance Changes on Patent Subject Matter Eligibility.” Brinks 2019 IP Developments Webinar.
  • Facilitator, Adelante! Moving Forward Program, North Carolina Bar Association 2019
  • Facilitator, “Diversity & Inclusion Symposium”, North Carolina Bar Association 2018
  • Presenter, “Intellectual Property in the Age of the Technology Boom.” North Carolina Central University School of Law Intellectual Property Symposium 2018
  • Moderator, “Diversity in the Courts, Agencies, Corporations and Law Firms.” Federal Circuit Bar Association and Center for Innovation Policy at Duke Law 2018
  • Presenter, Adelante! Moving Forward Program, North Carolina Bar Association 2018
  • Presenter, Brinks Webinar, "The Realm of Chemicals: Nanotechnology and Key Cases for 2017," February 1, 2017
  • Panelist, “Professionalism: From Law School to Law Practice Adelante! Moving Forward: Surviving and Thriving Student Skills Building Event, North Carolina Bar Association 2017
  • Presenter, Brinks Webinar, "Patent Prosecution Strategies in the WAke of USPTO's Myriad-Mayo Guidance" June 25, 2014
  • Presenter, "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
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.
Press Releases & Events
February 27, 2019

On February 27, at 12:00pm CT, join attorneys from Brinks Gilson & Lione as they discuss the upcoming issues...

September 27, 2017

Continuing its commitment to encouraging diversity, inclusion and promotion of women and attorneys of color to leadership and governance positions, intellectual property law firm Brinks Gilson & Lione is participating in Diversity Lab's Mansfield Rule pilot program...

July 12, 2017

RESEARCH TRIANGLE PARK, N.C.— Rashad L. Morgan, a shareholder at intellectual property law firm Brinks Gilson & Lione, was recently appointed to serve as co-chair of the Minorities in the Profession (MIP) Committee of the North Carolina Bar Association (NCBA)...

February 01, 2017

Brinks attorneys Rashad Morgan, Aisha Hasan and Mark Jenkins will provide an insightful discussion on topics which will ...

January 31, 2017

RESEARCH TRIANGLE PARK, N.C.—Brinks Gilson & Lione attorneys Rashad L. Morgan, Aisha R. Hasan, and Mark David ...

November 07, 2016

RESEARCH TRIANGLE PARK—Rashad L. Morgan, a shareholder at intellectual property law firm Brinks Gilson & Lione...

January 19, 2016

DURHAM, N.C.—Brinks Gilson & Lione, one of the nation’s largest intellectual property law ...

January 11, 2016

CHICAGO—Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has elected eight attorneys ...

February 12, 2015
RESEARCH TRIANGLE PARK, N.C.—Rashad L. Morgan, an attorney at intellectual property law firm Brinks Gilson & Lione, was recently invited to join The National Black Lawyers–Top 100, a professional honorary organization composed of the top ...
Honors
  • National Black Lawyers Top 100, 2015, 2016
  • 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
Affiliations
  • North Carolina Bar Association
    Minorities in the Bar Committee, Co-Chair 2017-2019
    Legal LINK, Chair, Young Lawyers Division, 2016 –2017; 2017 –2018
    Young Lawyers Division Fellow, 2018-present
  • American Bar Foundation
    Fellow, 2016-present
  • American Bar Association
    Vice Chair, Science and Technology Committee, Young Lawyers Division, 2015 –2016
  • National Bar Association
  • Chicago Committee on Minorities in Large Law Firms
    Associate Board, 2010-2011
  • Licensing Executives Society
  • American Chemical Society
  • American Institute of Chemical Engineers