Kevin P. Shortsle concentrates his litigation practice on difficult pharmaceutical, chemical, and medical device technologies, with additional focus on broader intellectual property litigation, patent prosecution, and counseling. Kevin helps clients navigate all aspects of patent litigation, from pre-filing investigations through trial and appeal.
Additionally, Kevin counsels clients and prepares opinions concerning patentability of inventions, validity of patents, and freedom-to-operate of pharmaceutical, chemical, surgical device, medical device, and food and beverage products and technologies. He also conducts due diligence assessments to support mergers and acquisitions and prepares licensing agreements for life sciences clients.
Kevin is also well-versed in patent prosecution, having grown and managed several clients’ worldwide patent portfolios in a variety of subjects, including medical devices, diagnostic instrumentation, and food and beverage technologies.
His recent representations have involved treatments for (1) heartburn, Pepcid Complete®; (2) benign prostatic hyperplasia Rapaflo® (silodosin); (3) depression, Pristiq® (desvenlafaxine); (4) acne, Differin® (adapalene); actinic keratosis, Solaraze® (diclofenac); and knee, hip, and spine surgical devices and techniques.
Before joining Morgan Lewis, Kevin was a partner in the intellectual property practice of another global law firm. Prior to and during law school, Kevin worked for Abbott Laboratories, where he advised patent counsel, scientists, and engineers on patent strategy and protection of new products and technologies, supported litigation involving diagnostic instrumentation and stent technology, and supported due diligence for licensing and acquisition projects. Prior to Abbott, Kevin reviewed, granted, or denied patent applications in the fields of chemical and materials engineering as a patent examiner for the US Patent and Trademark Office.
Persuaded Massachusetts federal judge to overturn $10.2 million jury verdict in post-trial briefing for Perrigo
Won attorney fees for Solenis by persuading Illinois federal judge that plaintiff was “negligent” in bringing suit without standing and in a related proceeding, won institution of inter partes review on all petitioned obviousness grounds
Achieved a victory in the US Court of Appeals for the Federal Circuit for Tolmar, Inc., that held five formulation patents invalid as obvious, which cleared the path for generic product entry
Achieved a favorable settlement for Biomet, Inc., in a 15-patent declaratory judgment action brought in the US District Court for the Northern District of Indiana against Bonutti Skeletal Innovations
Achieved favorable settlements for Tolmar, Inc. and Sandoz, Inc., in Hatch-Waxman litigation allowing entry of generic products into the market
Chicago-Kent College of Law, 2008, J.D.
University of Michigan, 2000, B.S., Chemical Engineering
US District Court for the Northern District of Illinois
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
Awards and Affiliations
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Recommended, Intellectual property: Patents: licensing, The Legal 500 US (2019)
Recommended, Intellectual property: Patents: litigation (full coverage), The Legal 500 US (2019)
Recommended, Intellectual property: Patents: prosecution (including re-examination and post-grant proceedings), The Legal 500 US (2019)
Member, American Chemical Society
Member, American Intellectual Property Law Association