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Donald L. Rhoads

Partner

Phone: 212.715.9207 Fax: 212.715.8000 New York

Mr. Rhoads’ practice focuses on the litigation of intellectual property matters at the trial and appellate court levels and the strategic development and management of patent, trademark, trade secret and copyright portfolios.

Mr. Rhoads’ litigation experience includes obtaining favorable resolutions in several pharmaceutical cases involving accused 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.

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.

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

Throughout his career, including most recently, Mr. Rhoads has counseled in 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 played a significant role in achieving successful results for clients.

Mr. Rhoads has been involved in several major patent interference proceedings and has developed strategies that relate to using patent prosecution, interferences, litigation and licensing to maximize the value of intellectual property. This has included obtaining 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.

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J.D., University of Michigan Law School, 1989
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Ph.D. Candidate, University of California, San Francisco, 1987
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B.S., Dickinson College, 1982
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New York, 1990
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U.S. Patent & Trademark Office, 1990
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U.S. District Court, Southern District of New York
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U.S. District Court, Eastern District of New York
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U.S. Court of Appeals, Federal Circuit
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U.S. Supreme Court, 1991
    -American Bar Association, Litigation Division
    -American Bar Association, Intellectual Property Division
    -American Intellectual Property Law Association
    -New York Intellectual Property Law Association
    -New Jersey Intellectual Property Law Association
    -Connecticut Intellectual Property Law Association