1. Home
  2. |Professionals
  3. |Rashad L. Morgan

Rashad L. Morgan

Partner | He/Him/His
Partner | He/Him/His
cm1vcmdhbkBjcm93ZWxsLmNvbQ==
VCardLinkedIn
VCardLinkedIn

Areas of Focus

Overview

Clients seeking to secure intellectual property protection to advance their business goals turn to Rashad L. Morgan. Rashad has significant experience in advising clients on patent portfolio development and management, product clearance, and due diligence, and he is a skilled advocate in the technology areas of pharmaceuticals, biotechnology, chemistry, and cardiovascular and interventional medical devices, among others.

Rashad’s clients include emerging and middle-market companies as well as large corporations. Across all his engagements, Rashad appreciates the opportunity to protect his clients’ interests, which begins with a detailed understanding of their businesses and innovations.

In his patent prosecution practice—where he is particularly experienced prosecuting patents in the areas of chemistry, biotechnology, biopharmaceuticals, medical devices, and the mechanical arts—Rashad often assists clients in securing patent protection in foreign jurisdictions in addition to the United States. He provides clients with full-service counsel on legal strategies for entire patent families, and he regularly prepares freedom-to-operate and infringement/validity studies as well as represents clients in USPTO proceedings in which the validity of patents is at stake. He also has been involved in litigation (including cases initiated under the Hatch-Waxman Act) covering pharmaceuticals, medical devices, consumer products, and other technologies.

Rashad is active in leadership within the firm and the legal profession. He is a member of the North Carolina Bar Association Board of Governors and the North Carolina Bar Foundation Board of Directors and serves on the executive committee of both entities. He is also a member of the ABA House of Delegates.

Rashad is committed to creating a more diverse and inclusive legal practice. He is a member of Crowell & Moringʼs Racial Equity Task Force. He is active with the North Carolina Bar Association’s Minorities in the Profession Committee, where he previously served as co-chair. Additionally, Rashad was actively involved with Legal LINK, an ABA- award-winning program designed to increase interest in legal careers among high school students of populations that are underrepresented in the legal profession.

Rashad previously served as a shareholder and co-chair of Diversity and Inclusion at Brinks Gilson & Lione.

Career & Education

|

    • The Procter and Gamble Company
      Process Engineering Intern, Summers 1999–2002
    • The Procter and Gamble Company
      Process Engineering Intern, Summers 1999–2002

    • Florida A&M University, B.S., magna cum laude, chemical engineering, 2003
    • University of Cincinnati College of Law, J.D., cum laude, 2006
    • Florida A&M University, B.S., magna cum laude, chemical engineering, 2003
    • University of Cincinnati College of Law, J.D., cum laude, 2006

    • Illinois
    • North Carolina
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Northern District of Illinois
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. District Court for the Middle District of North Carolina
    • Illinois
    • North Carolina
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Northern District of Illinois
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. District Court for the Middle District of North Carolina

  • Professional Activities and Memberships

    • North Carolina Bar Association
      Board of Governors, Executive Committee, 2020–present
      Minorities in the Bar Committee, Co-Chair 2017–2019
      Legal LINK, Chair, Young Lawyers Division, 2016–2018
      Young Lawyers Division Fellow, 2018–present
    • North Carolina Bar Foundation
      Board of Directors, Executive Committee, 2020–present
    • American Bar Foundation
      Fellow, 2016–present
    • American Bar Association
      House of Delegates, 2020–present
      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
    • Publications Editor, University of Cincinnati Law Review, University of Cincinnati College of Law
    • Vice President, Black Law Students Association, University of Cincinnati College of Law

    Professional Activities and Memberships

    • North Carolina Bar Association
      Board of Governors, Executive Committee, 2020–present
      Minorities in the Bar Committee, Co-Chair 2017–2019
      Legal LINK, Chair, Young Lawyers Division, 2016–2018
      Young Lawyers Division Fellow, 2018–present
    • North Carolina Bar Foundation
      Board of Directors, Executive Committee, 2020–present
    • American Bar Foundation
      Fellow, 2016–present
    • American Bar Association
      House of Delegates, 2020–present
      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
    • Publications Editor, University of Cincinnati Law Review, University of Cincinnati College of Law
    • Vice President, Black Law Students Association, University of Cincinnati College of Law

Rashad's Insights

Client Alert | 5 min read | 08.13.24

The Federal Circuit Defines the “Public Disclosure” Exception to Prior Art Under 35 U.S.C. § 102(b)(2)

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk....

View All Insights

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. Case resolved by a confidential settlement agreement.

Rashad's recent experience:

  • Counseling clients on the identification of their intellectual property rights and protection of their technology, assessing patentability, infringement, and other intellectual property options.
  • Developing and managing clients on domestic and international patent portfolios 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.
  • Advising clients on intellectual property due diligence issues for transactional matters.
  • Providing clearance analysis and freedom to operate analysis and preparing written opinions.
  • Coordinating with foreign counsel on the successful prosecution of patents in Europe, Japan, Australia, and other foreign jurisdictions.
  • Counseling clients on the identification of their intellectual property rights and protection of their technology, assessing patentability, infringement, and other intellectual property options.

Rashad's Insights

Client Alert | 5 min read | 08.13.24

The Federal Circuit Defines the “Public Disclosure” Exception to Prior Art Under 35 U.S.C. § 102(b)(2)

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk....

View All Insights

Recognition

  • National Black Lawyers: Top 100, 2015 – 2016
  • University of Cincinnati College of Law: Dean's List, 5 of 6 semesters
  • University of Cincinnati College of Law: Wood Scholarship Recipient
  • Tau Beta Pi, Engineering Honor Society
  • Golden Key International Honour Society
  • Florida A&M University: Distinguished Scholarship Award Recipient

Rashad's Insights

Client Alert | 5 min read | 08.13.24

The Federal Circuit Defines the “Public Disclosure” Exception to Prior Art Under 35 U.S.C. § 102(b)(2)

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk....

View All Insights

Insights

Client Alert | 5 min read | 08.13.24

The Federal Circuit Defines the “Public Disclosure” Exception to Prior Art Under 35 U.S.C. § 102(b)(2)

Client Alert | 9 min read | 06.12.23

The U.S. Senate Hearing on Artificial Intelligence and Intellectual Property

Speaking Engagement | 04.20.23

"§101 in the Balance: Comparing Current Requirements with Proposed Reforms for Patent Subject Matter Eligibility," American Conference Institute, New York, NY.

Client Alert | 3 min read | 04.04.23

USPTO Introduces New Initiative to Expedite Patent Applications of First-Time Filers
|

View All Insights

Practices

Industries

Rashad's Insights

Client Alert | 5 min read | 08.13.24

The Federal Circuit Defines the “Public Disclosure” Exception to Prior Art Under 35 U.S.C. § 102(b)(2)

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk....

View All Insights