Kevin E. Noonan, Ph.D.

Partner
P: 312.913.2145
F: 312.913.0002

Kevin E. Noonan is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Biotechnology & Pharmaceuticals Practice Group. An experienced biotechnology patent lawyer, Dr. Noonan brings more than 20 years of extensive work as a molecular biologist studying high-technology problems in serving the unique needs of his clients. His practice involves all aspects of patent prosecution, interferences, and litigation. He represents pharmaceutical companies both large and small on a myriad of issues, as well as several universities in both patenting and licensing to outside investors. He has also filed amicus briefs in landmark patent and other cases to district courts, the Federal Circuit and the U.S. Supreme Court involving patenting issues relevant to biotechnology.

Dr. Noonan is a frequent speaker, commentator and author on a variety of intellectual property law topics. He is a founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law. In 2010, he was interviewed for a segment that aired on the television program "60 Minutes" that addressed the issue of gene patenting.

Published Articles

Founding author of the Patent Docs weblog, a site focusing on biotechnology and pharmaceutical patent law.

“What’s in a Name: The FDA Tries to Decide Regarding Biosimilars,” Pharmaceutical Compliance Monitor, December 23, 2015

Contributing author, Regenerative Medicine Ethics: Governing Research and Knowledge Practices (Hogan, L., ed), Springer Press 2014

Contributing author, Claim Construction and the Federal Circuit, (The Intellectual Property Law Association of Chicago Litigation Committee, Manzo, E., ed.), West Publishing Co., 2007-201[4]6

Contributing author, Gene Patents and Personalized Cancer Care: Impact of the Myriad Case on Clinical Oncology, Journal of Clinical Oncology, July 20, 2013, Vol. 31 No. 21: 2743-2748

"The latest on the gene patenting case Association for Molecular Pathology v. Myriad Genetics," Westlaw Journal Intellectual Property, October 31, 2012, Vol. 19, Issue 14

Contributing author, Annual Review of Intellectual Property Law Developments 2010, (ABA Section on Intellectual Property Law, Thomas, L., ed), American Bar Association Press, (multiple years)

"An antidote to the politics of the human gene patenting debate,” SCOTUS blog, February 6, 2013

"The Supreme Court's Prometheus Decision and Its Meaning for Diagnostic Method Claims," Biotechnology Law Report, June 2012, Vol. 31, No. 3: 267-270

"Federal Trade Commission Rejected in 'Reverse Payment' Suit," CPI Antitrust Chronicle, June 2012 (2)

“FDA Issues Draft Guidelines for ‘Follow-on’ Biologic Drug Approval Pathway,” Pharmaceutical Compliance Monitor, April 9, 2012

"Supreme Court Sets Limits on the Bayh-Dole Act in Stanford v. Roche", BNA Life Science Law and Industry Report, July 1, 2011, p.1-3

"Little Light Shed on Method Claims Patent-Eligibility in Assoc. Medical Pathol. v. U.S. PTO", BNA Life Science Law and Industry Report, in press

"Round One Goes to the ACLU: Association of Molecular Pathologists v. Myriad Genetics", BNA Life Science Law and Industry Report, May 2010

"Biotechnology Patenting: What You Need to Know", BioLogical Quarterly, Winter/Spring 2010.

"Worldwatch Intellectual Property: Gene Patenting", Financier Worldwide, October 2009.

"Worldwide Pharmaceutical Drug Pricing and Patent Rights: A Recipe for Disaster?", Financier Worldwide, September 2009.

Kevin E. Noonan, Michael S. Greenfield, and Donald L. Zuhn, "Paradise Lost: The Uncertain Future of Research Tool Patents", Intellectual Property & Technology Law Journal, March 2003

Memberships

DePaul University College of Law
  • Adjunct Professor, Biotechnology Patent Law

The John Marshall Law School
  • Adjunct Professor

IIT Chicago-Kent College of Law
  • Adjunct Professor 
     

Distinctions

Best Lawyers in America (2007-2017 editions)

Best Lawyers in America 2017 and 2013 Chicago "Lawyer of the Year" in "Biotechnology Law"

IAM Patent 1000 (2013-2016 editions)

LMG Life Sciences 2012

Publications

February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
Fall 2016 (snippets)
The Trans-Pacific Partnership was the latest in a series of multination international agreements aimed at reducing trade barriers and promoting global free trade. However, the subject matter scope of this agreement and the secrecy with which it was negotiated have engendered deep suspicions from a variety of groups regarding whether its goal is truly free trade or whether there are more nefarious motivations behind it. And with the election of Donald Trump, these efforts have apparently amounted to nothing.
June 20, 2016 (snippets Alert)
MBHB snippets Alert - June 20, 2016

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act (“AIA”), the Supreme Court ruled that the Patent and Trademark Office’s positions on two of the law’s provisions regarding inter partes review (“IPR”) were correct. First, the Court held unanimously that the PTO properly applied the “broadest reasonable interpretation” standard for claim construction for IPRs. Second, six members of the Court also agreed that the statute mandated that the decision to institute an IPR was not subject to judicial review.
June 14, 2016 (snippets Alert)
MBHB snippets Alert - June 14, 2016

On June 13, 2016, the Supreme Court ruled unanimously, in an opinion by Chief Justice Roberts, that an award of enhanced damages pursuant to 35 U.S.C. § 284 should be within the sound discretion of a district court, albeit wherein this discretion is limited to “egregious cases of misconduct beyond typical infringement.” The decision in the combined Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc. cases reverses the Federal Circuit test established in In re Seagate Tech., LLC, which had required a patentee to satisfy a two-part test (having subjective and objective components) to establish willful infringement.
Summer 2015 (snippets)
The Supreme Court Brulotte v. Thys Co. decision stands for the rule that a patentee cannot receive royalties for activities falling within the scope of the patent claims once the patent has expired. Roundly criticized on economics grounds since it was handed down, the Supreme Court refused to walk back the Brulotte rule in a case decided at the end of the past term, Kimble v. Marvel Entertainment, LLC.
August 14, 2015 (snippets Alert)
MBHB snippets Alert - August 14, 2015

The Federal Circuit issued a unanimous en banc decision yesterday regarding when joint tortfeasors may be held liable for literal infringement in Akamai Technologies Inc. v. Limelight Networks, Inc. In its opinion, the court held that method claims can be literally infringed when individual steps of a claimed method are performed by more than one actor under certain circumstances.
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