Kelly L. Morron focuses her practice in pharmaceutical, biotechnology, and biochemical products and devices, which has also included immunodiagnostics tools and methods, DNA sequencing instruments, differential scanning calorimetry methods and instruments, and medical devices.

Her patent litigation is in federal courts and the International Trade Commission, as well as in the U.S. Patent and Trademark Office with inter partes patent reexaminations. She has served as principal attorney and co-author of several amicus curiae briefs at the Federal Circuit.

Experience

Her illustrative patent cases include:

• Alcon Pharmaceuticals Ltd. v. Lupin Ltd. (moxifloxacin)
• Sciele Pharma Inc. v. Lupin Ltd. (metformin)
• Teva Women's Health, Inc. v. Lupin Ltd. (Seasonique)
• AstraZeneca AB v. Lupin Ltd. (esomeprazole)
• AstraZeneca AB et al. v. Lek Pharmaceuticals D.D. et al. (omeprazole)
• SmithKline Beecham Corp. v. Synthon Pharmaceuticals Ltd. (paroxetine mesylate)
• Cultor Corp. v. A.E. Staley Corp. (polydextrose)
• Saxholm AS v. Dynal, Inc. (immunomagnetic therapeutic and diagnostic tools
• Novo Nordisk N.A. v. Genentech, Inc. (rhGH)
• In re Certain Recombinantly Produced Human Growth Hormones (rhGH)
• Eli Lilly v. Genentech, Inc. (rhGH, rinsulin)
• Weldotron v. Hobart (commercial wrapping equipment)
• TA Instruments, Inc. v. Perkin-Elmer Corp. (differential scanning calorimetry)
• R.R. Donnelley v. Nynex (color reproduction processes)

Her illustrative trademark and trade dress cases include:

• Indigo N.V. v. Dane Bros. and E-Prints, Inc.
• Media Group, Inc. v. OnTel Products Corp

Publications

"Patent Damages Post Festo," (co-author) Law360 (September 29, 2010)

"It Is Not So Obvious: The Impact of KSR on Patent Prosecution, Licensing and Litigation," (co-author) American Intellectual Property Law Association Quarterly Journal (Summer 2008)

"Proposed Legislation for Patent Office Opposition," Schiff Hardin Intellectual Property Update (Fall 2005)

"Minimizing Costs Resulting from the Festo Decision, Part 1 — The Liability Phase," The Intellectual Property Strategist (August 2002)

"Supreme Court's Ruling Will Likely Increase Costs of Patent Litigation," Metropolitan Corporate Counsel (August 2002)

"Strategic Considerations in Using Patents in Technology Transfers," The Licensing Journal (May 2000)

"Time for the Federal Circuit to Take a Judicious Approach to Judicial Estoppel," American Intellectual Property Law Association Quarterly Journal (Spring 2000)

Speeches and Presentations

"Patent Law for Non-Patent Lawyers," City Bar Center for CLE, New York City Bar, New York, N.Y. (March 19, 2013)

"Freedom to Operate in Cell Line Development," Biopharmaceutical Development & Production: Methods & Molecules, IBC Life Sciences, Huntington Beach, Calif. (Feb. 28, 2013)

"U.S. Pharmaceutical Patent Infringement Litigation — Legal Aspects For Investors," London and New York (September 2009)

"Introduction to Patent Infringement Litigation," (Presenter) Annual CLE Course at Certain Federal District Courts

"Effect of KSR and MedImmune on the Value of Present and Future Pharmaceutical Patent  Portfolios," ThinkEquity Partners LLP (January 2007)

"Pharmaceutical Patents, Pioneer vs. General Patents," (co-chair and speaker) Association of the Bar of the City of New York (ABCNY) City Bar Center, CLE Center (February 2003)

"Understanding Patent Issues in Corporate Transactions," (co-chair) Association of the Bar of the City of New York (ABCNY) City Bar Center, CLE Center (April 2002)

"Strategic Considerations in Using Patent Licenses in Technology Transfers," American Conference Institute's 2nd Annual Institute on Technology Transfer, Volume 1, Part 2 (November 1999)

Awards and Honors

AV Rated — Martindale-Hubbell