CONTACT INFORMATION

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PRACTICE AREAS

INDUSTRIES

BAR ADMISSIONS

  • New York
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Columbia
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Northern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Western District of New York
  • U.S. Court of Federal Claims
  • U.S. Patent and Trademark Office

Kelly L. Morron

Counsel

Kelly L. Morron focuses her practice in pharmaceutical and biotechnology patent and trademark litigation.

In addition, she has served as principal attorney and co-author of several amicus curiae briefs on behalf of the Association of the Bar of the City of New York.

Experience

Her illustrative patent cases include:

  • 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
  • Eli Lilly v. Genentech, Inc. (rhGH, rinsulin)
  • Weldotron v. Hobart (commercial wrapping equipment)
  • TA Instruments, Inc. v. Perkin-Elmer Corp. (differential scanning calorimetry)
  • Franklin v. Middleby Marshall (commercial ovens)
  • R.R. Donnelley v. Nynex (color reproduction processes)

Her illustrative trademark and trade dress cases include:

  • Ivoclar v. Americus Laboratories
  • Indigo N.V. v. Dane Bros. and E-Prints, Inc.
  • Essie Cosmetics Ltd. v. Forsythe Cosmetics Group v. Arrowpak, Inc. and Glass Tech, 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 HSR 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

"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

Martindale-Hubbell — A/V Rated

Education

George Washington University Law School(J.D., with honors, 1984)
University of Illinois Medical Center(M.S., Microbiology, 1979)
Johns Hopkins University(B.A., Biology, 1976)

Clerkships

Judicial law clerk and technical adviser — Honorable Jack R. Miller U.S. Court of Appeals, Federal Circuit (1984-1986)
 

Professional Memberships

New York City Bar Association
Committee on Patents
       Past Chair
American Bar Association
American Intellectual Property Law Association
International Trade Commission
Trial Lawyers Association
American Society for Microbiology