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

"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

"Effect of HSR 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 Peer Review Rated, Martindale-Hubbell

Education

Clerkships

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

Professional Memberships

Association of the Bar of the City of New York
Committee on Patents
       Past Chair

American Bar Association
American Intellectual Property Law Association
International Trade Commission Trial Lawyers Association
American Society for Microbiology