Joshua R. Rich

P: 312.913.2133
F: 312.913.0002

Joshua R. Rich is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. In almost 20 years of litigating intellectual property cases and counseling clients, Mr. Rich has built up broad experience in dealing with complex and difficult issues.  He has successfully litigated cases in Federal and state courts throughout the United States, at both the trial and appellate levels. He has also represented clients before the United States Patent and Trademark Office and in arbitrations involving patent, trademark, trade secret, copyright, and other commercial issues. In addition, Mr. Rich has worked closely with clients to avoid litigation in appropriate circumstances.

While Mr. Rich has represented clients primarily in the pharmaceutical, biotechnology, and medical device fields, his experience has also included such diverse technologies as telecommunications, computer code, and graphical user interfaces. He is accomplished in all facets of trial and appellate litigation, ranging from pretrial seizures and preliminary injunction proceedings to bench and jury trials, appeals, and certiorari petitions.  He works closely with clients to find the best solutions to intellectual property disputes.

Representative Experience

Mr. Rich’s representative experience includes:

  • Obtaining summary judgment of patent noninfringement and invalidity for a major medical device manufacturer
  • Coordinating an international arbitration for a major pharmaceutical company in a patent license dispute, leading to a multimillion dollar award for the client
  • Obtaining summary judgment of patent infringement for a major pharmaceutical company, leading to a favorable settlement
  • Obtaining a preliminary injunction in a patent infringement case for a major animal diagnostic device manufacturer, leading to withdrawal of a competing product from the market
  • Securing denial of a motion for preliminary injunction for a major pharmaceutical company in a drug patent infringement case based on a finding of “little or no likelihood of success on the merits” due to invalidity, leading to a settlement in which the plaintiff paid Mr. Rich’s client
  • Representing several major pharmaceutical companies in ANDA litigation through trial, leading to favorable settlements
  • Defending several major diagnostics companies in patent infringement litigation, leading to favorable settlements with immediate access to the market
  • Prevailing in interference proceedings for a plastics company, securing critical patent rights for its products
  • Prevailing in motions relating to attorney-client privilege for a plastics company, establishing important legal principles and leading to favorable settlements in patent infringement litigation
  • Authoring amicus curiae briefs in landmark patent, trademark, copyright, and other cases in U.S. Courts of Appeals and the U.S. Supreme Court


Law Clerk for the Honorable David A. Baker, U.S. Magistrate Judge in the U.S. District Court for the Middle District of Florida


May 11, 2016
MBHB snippets Alert - May 11, 2016

This afternoon, President Obama signed the Defend Trade Secrets Act of 2016 (“DTSA”) into law, creating a new Federal cause of action for misappropriation of trade secrets. The new law is the most significant expansion of Federal intellectual property law in a generation, and brings with it significant benefits – but also new responsibilities – for intellectual property owners and employers. And in this era of narrowed subject matter eligibility for patenting, the DTSA may provide enough of an incentive for intellectual property owners to keep more information as trade secrets.
Winter 2016 (snippets)
The Defend Trade Secrets Act of 2015, a bill to establish a federal cause of action for trade secret misappropriation, has continued its progress through Congress with a favorable hearing before the Senate Judiciary Committee on December 2, 2015, that led to unanimous committee approval of an amended version on January 28, 2016. Despite the legislative logjam created by the impending election, and the failure to pass a similar bill during the last term of Congress, there is a significant probability that the bill will pass into law.
Summer 2015 (snippets)
In 2009, Sergey Aleynikov was a computer programmer employed by Goldman Sachs to write high-frequency trading code. He accepted an offer to join a new Chicago-based company, Teza Technologies. Before he left Goldman Sachs, however, he sent portions of Goldman’s high frequency trading code to a German server for his own future use. After Goldman found out, it went to the FBI; Aleynikov was then arrested on a flight home from a visit to Chicago. With that arrest began a circuitous journey through the U.S. legal system, governed by two different sovereigns and under two different legal regimes – neither one of which was ultimately found to cover his actions.
January 20, 2015 (snippets Alert)

MBHB snippets Alert - January 20, 2015

In a 7-2 decision authored by Justice Breyer, the U.S. Supreme Court today held that an “appellate court must apply a ‘clear error,’ not de novo, standard of review” to the evidentiary underpinnings of a district court’s claim construction determination. Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., No. 13-854, slip op. at 1-2 (U.S. Jan. 20, 2015). But what are those evidentiary underpinnings?

Fall 2014 (snippets)
Unlike patents and copyrights, trade secrets have historically been protected primarily under state law rather than federal law. That long history may soon change, as bills to create a federal cause of action for trade secret misappropriation are advancing through both houses of the U.S. Congress. These bills would allow trade secret owners to bring a federal civil action for trade secret misappropriation as long as the trade secret “is related to a product or service used in, or intended for use in, interstate or foreign commerce.” And, for the first time ever, the pending bills have the bipartisan support necessary for passage.
Spring 2013 (snippets)
Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this year with the release of the “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” At the same time, however, news reports have suggested that the Chinese government has facilitated – and even been responsible for – the misappropriation of U.S. trade secrets. As a result, the Obama Administration has ramped up efforts to protect trade secrets against Chinese misappropriation.
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