Donald L. Rhoads

Mr. Rhoads’ practice focuses on the litigation of commercial and intellectual property matters, transactions involving intellectual property, and the strategic development and management of patent, trademark, trade secret and copyright portfolios.

Mr. Rhoads’ litigation experience includes obtaining favorable resolutions in a wide variety of commercial litigations, including those involving contracts and intellectual property. Many of these actions are pharmaceutical cases involving accused patent infringers (e.g., Purdue v. Endo, Bracco v. Amersham and Bracco v. Zambon) and patentees, as well as in litigations against the Food and Drug Administration and the United States Patent and Trademark Office. Mr. Rhoads has been involved in dozens of Hatch-Waxman Act based disputes, representing ANDA filers as well as patent holders.

Mr. Rhoads also has been involved in the successful litigation of several patent cases concerning mechanical electronic devices (e.g., GTE v. Nokia) and medical devices.

His practice also involves false advertising cases between pharmaceutical companies, including as lead trial counsel in a 39 day trial between Bracco and Amersham (now GE), which resulted in significant monetary and injunctive relief for his client.

Throughout his career, including most recently, Mr. Rhoads has litigated arbitrations under the rules of international arbitration institutions, including the International Chamber of Commerce (ICC), and the American Arbitration Association (AAA). This has included contract as well as patent and other intellectual property related disputes where Mr. Rhoads’ investigative and trial advocacy skills can be applied.

Mr. Rhoads has been involved in several major patent interference and IPR proceedings and has attempted to develop strategies that relate to using patent prosecution, interferences, post-grant proceedings, litigation and licensing to maximize the value of intellectual property. This has included attempting to obtain worldwide patent and trademark protection for numerous clients in all fields of technology.

Mr. Rhoads has developed strategies for several corporations to enter into markets for the first time, providing counseling for the corporations on infringement, validity and enforceability matters and seeking and negotiating intellectual property licenses to gain freedom of operation. This also has involved the negotiation and formation of mergers, acquisitions and joint ventures as well as the licensing of technology.

Mr. Rhoads has authored several articles relating to intellectual property, including articles on patent reform, biotechnology and patent law, the process patent amendment act, interference proceedings, patent procurement and enforcement in China, and intellectual property licensing.

Representative Litigations

• Schering v. Bracco (various) — Representing pharmaceutical company in patent disputes.
• Purdue v. Endo (S.D.N.Y. and CAFC) — Represented pharmaceutical company against charges of infringement.
• Bracco v. General Electric (D.N.J.) — Represented pharmaceutical company in matter relating to medical imaging.
• Savient v. Barr Labs, Sandoz (D.N.J. and CAFC) — Represented patentee in case that reached favorable settlement.
• GTEWireless v. Nokia (E.D. Va., D.Ore.) — Successfully represented defendant in cell phone related patent litigation that reached favorable settlement after claim construction determination.
• St. Clair v. Canon (D.Del.) — Represented defendant in digital camera-related case that reached favorable settlement.
• Dozens of Hatch-Waxman disputes representing either patentee or generic.

Education

• J.D., Law, University of Michigan, 1989
• PHD Condidate, ABD, Molecular Pharmacology, University of California, 1987
• Bachelor of Science, Biology, Dickinson College, 1982