Joshua R. Rich

Partner and General Counsel
P: 312.913.2133
F: 312.913.0002

Joshua R. Rich is an intellectual property trial lawyer and a partner with McDonnell Boehnen Hulbert & Berghoff LLP. He serves as MBHB’s General Counsel and Chair of MBHB's Trade Secrets Practice Group.

In over 20 years of trying intellectual property cases and counseling clients, Mr. Rich has built broad experience in dealing with complex and difficult issues. He has successfully litigated in Federal and state trial and appellate courts throughout the United States, in cases involving patent, trade secret, trademark, copyright, and other commercial issues. He has also represented clients before the United States Patent and Trademark Office in inter partes review, reexamination, and interference proceedings, as well as in arbitrations around the world. But his experience is not limited to adversarial proceedings; Mr. Rich has worked closely with clients to avoid litigation when appropriate.

While Mr. Rich has represented clients primarily in the pharmaceutical, biotechnology, and medical device fields, his experience has also included such other 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 institution of inter partes review petitions, leading to favorable settlements
  • 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


Illinois Super Lawyers, Intellectual Property Litigation

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


Spring 2018 (snippets)
Two cases this year have demonstrated that, although trade secret protections have become better aligned with protecting high tech trade secrets, there is still a long way to go: Waymo v. Uber,  and People v. Aleynikov. Together, the two cases make it clear that many employers and employees have yet to figure out how to incorporate the norms and protections of trade secret laws into their employment practices and conduct.
Summer 2017 (snippets)
On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation – celebrated its first birthday. From the first year of enforcement, it appears that the DTSA got the balance right with some provisions, may need to be tweaked with others, and has yet to render clear results in some.
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
Summer 2016 (snippets)
The near-simultaneous codification of trade secret-related standards on both sides of the Atlantic reflects the increased importance of trade secrets in global economies. A driving force behind the reform in both the US and the EU was a desire to harmonize laws protecting trade secrets.
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.
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