Photograph of Rashad L. Morgan

Education

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

Admissions

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

Professional Experience

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

Rashad L. Morgan

Partner
Chicago
rmorgan@crowell.com
Phone: +1 919.998.5708
455 N. Cityfront Plaza Drive
Suite 3600
Chicago, IL 60611

Rashad Morgan maintains a broad-based practice focusing on securing intellectual property protection to advance clients' business goals and includes opinion work, due diligence review, and patent litigation, with a particular focus on patent prosecution both in the United States and abroad. Rashad provides clients with full-service counsel on legal strategies for entire patent families, and 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 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, biopharmaceuticals, medical devices, 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 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; he serves on the Executive Committee for both entities. Rashad is committed to creating a more diverse and inclusive legal practice. He has previously served as a shareholder and co-chair of Diversity & Inclusion at Brinks Gilson & Lione. He is also active with the North Carolina Bar Association’s Minorities in the Profession Committee, where he previously served as co-chair. Rashad was also actively involved with Legal LINK, an ABA-award winning 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.

Prior to joining Crowell & Moring, Rashad was shareholder at Brinks Gilson & Lione, where he was a co-chair of its Diversity and Inclusion Committee, a member of its Hiring Committee, and co-chair of the Chemical, Energy, and Agriculture Industry Group.

Representative Matters

  • 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.


Recognition

  • National Black Lawyers Top 100, 2015–2016
  • Dean's List, 5 of 6 semesters, University of Cincinnati College of Law
  • Wood Scholarship Recipient, 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
    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

Admissions

Admitted to practice: Illinois; North Carolina; U.S. Patent and Trademark Office (USPTO); U.S. District Court,Northern District of Illinois; U.S. District Court, Middle District of North Carolina; U.S. Court of Appeals, Federal Circuit



Representative Engagements

  • 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.


Publications

  • The Federal Circuit Limits the Use of the Patent Exhaustion Defense to "Authorized Acquirers" (March 13, 2015). Author: Rashad L. Morgan


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