Richard D. Kelly
Senior Partner
Tel (703) 412-6241

Richard D. Kelly

Senior Partner

Richard (Dick) D. Kelly is Chair of the Pharmaceutical/Medical Devices practice group and a member of the Litigation and ITC Litigation practice groups. He represents both domestic and foreign companies in a full range of complex patent and trade secret disputes before the federal district courts, in § 337 proceedings before the International Trade Commission (ITC), and in appeals to the U.S. Court of Appeals for the Federal Circuit. Mr. Kelly has particular expertise in the impact of U.S. Food and Drug Administration (FDA) regulations on intellectual property rights.

With a long track record of successfully litigating a range of high-profile cases, Mr. Kelly is highly regarded for his vast courtroom experience. He litigates matters involving such diverse products as pharmaceutical drugs, software, semiconductor processing devices, and plastics. In addition, he offers opinions on validity, enforceability, licensing, inventorship, and right-to-use matters. Mr. Kelly advises clients on the relationship between FDA exclusivity for new drugs and patent exclusivities, all aspects of pharmaceutical lifecycle management, and litigation regarding abbreviated new drug applications (ANDA).

Clients hire Mr. Kelly not only for his litigation expertise, but also for his in-depth understanding of the patent prosecution process, including interferences. Mr. Kelly began his career more than three decades ago as a Patent Examiner at the United States Patent and Trademark Office (USPTO) and practiced in Oblon, Spivak’s Electrical and Mechanical Patent Prosecution groups prior to transitioning to litigation. His experience at the USPTO exposed him first-hand to the Examiners’ process when reviewing applications and deciding interference motions.

Mr. Kelly regularly visits his clients – many of whom he has worked with steadily since the 1980s – providing them with updates on the law as well as business trends and developments impacting their industries. In addition, he actively contributes to the firm’s legal blog devoted exclusively to Section 337 investigations before the ITC. The ITC 337 Law Blog is the leading blog of its kind and provides insights about the ITC’s daily activities and significant decisions.

Representative Matters

Successfully represented Asahi Glass Company, Ltd., a Japanese glass manufacturer, and its subsidiary AFG Industries, Inc., a U.S. glass manufacturer, claiming patent infringement by Cardinal IG Co. of Asahi and AFG’s jointly owned patent relating to thin film, low-emissivity coatings typically used in double-pane windows. After a four-day trial, the Federal District Court Judge granted judgment to Asahi and AFG on the issue of infringement. Thereafter, the jury returned a verdict of more than $25.1 million, to which the court awarded prejudgment interest of more than $18.5 million, for a total of more than $43.7 million in damages.  AFG and Asahi Glass v. Cardinal IG,  (E.D. Tenn. 2005).

Obtained a $90,000 patent infringement damages award for client Dystar, a German dyestuff and chemical manufacturer, after a six-day trial in a suit involving a Dystar patent connected with its innovative Indigo Vat Solution, which has become the industry benchmark and process of choice for most international denim producers. The use of this process provides dye houses with economic and ecological advantages, increasing the producer's profits and minimizing environmental pollution.  DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., (S.D.S.C. Sept. 7, 2005).

Represented plaintiff Ricoh in patent infringement action involving toner containers for photocopiers, fax machines, and printers. Won summary judgment of patent infringement and validity as reported at 380 F. Supp. 2d 418 (D.N.J. 2005). Subsequently won summary judgment of enforceability, and the case settled on favorable terms just prior to a jury trial.  Ricoh v. Katun Corp.

Represented Sumika in a case claiming patent infringement involving Paroxetine hydrochloride (PAXIL®) and asserting antitrust violations. Certain claims, counterclaims and defenses were partially dismissed voluntarily, and a favorable settlement was obtained for Sumika. Settled on favorable terms.  Smithkline Beecham v. Sumika Fine Chemicals, Co., Ltd., et al.

Representative litigations in which Mr. Kelly has been lead counsel include:

  • AFG Industries, Inc. and Asahi Glass Co. v. Cardinal IG Co., Inc.
  • Ajinomoto Co. v. ChemGenes
  • DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co. and Bann Quimica, Ltd
  • George E. Fulhorst, d/b/a SAF-T-NET, USA v. Mitsubishi Motors Corp., et al.
  • Multi-Tech Systems Inc. v. Net2phone, Inc.
  • Ricoh Corp. v. Katun Corp.
  • Smithkline Beecham v. Sumika Fine Chemicals Co., Ltd., et al.
  • Kyorin v. Teva
  • Kyorin, Senju, and Allergan v. Apotex
  • Marion Merrill Dow v. Interchem, Rhone Poulenc Rorer, Inc. and Orion Corporation Fermion
  • Zambon Group S.p.A. v. Pfizer, Inc., Warner-Lambert, L.L.C., and Goedecke Aktiengesellschaft
  • Zambon Group S.p.A. v. Teva
  • Teva v. Moehs

Mr. Kelly also has extensive experience as lead counsel in § 337 actions at the International Trade Commission including:

  • In re Certain Polyetheresteramides
  • Certain Diltiazem Hydrochloride and Diltiazem Preparations
  • Certain Semiconductor Memory Devices and Products Containing Same
  • Certain Salinomycin Biomass and Preparations Containing Same
  • Certain Organic Photoconductor Drums and Products Containing Same

Publications

Sunday, January 2, 2011
Sunday, October 1, 2000

Events

Monday, September 3, 2012 - Tuesday, September 4, 2012
Sunday, April 1, 2012 - Wednesday, April 4, 2012
Monday, February 9, 2009