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Mayer Brown

71 SOUTH WACKER DRIVE, CHICAGO, IL 60606, USA
Tel:
Work +1 312 782 0600
Fax:
Fax +1 312 701 7711
Email:
Web:
www.mayerbrown.com

Joseph Mahoney

Tel:
Work +1 312 701 8979
Email:
Mayer Brown

Work Department

Litigation and Dispute Resolution

Position

Joe Mahoney concentrates on patent matters relating to pharmaceuticals, biotechnology, chemicals and medical devices. His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience. His patent litigation and counseling practice includes representing clients in Hatch-Waxman Act and other patent litigation; post-grant proceedings at the Patent Trial and Appeal Board (PTAB); biosimilars; rendering opinions relating to the infringement, validity, and enforceability of patents; and negotiating and drafting patent licenses, co-marketing and joint venture agreements for a variety of products. He also has substantial experience in trademark, trade dress and trade secret litigation and counseling. Joe has been recognized by Chambers USA (2008-11) and Legal 500 (2008-11) as "first-rate all the way," and a "good strategist," who "clients approve [for] his 'creative approach and sound reasoning.'" He has been recognized in IAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators 2010 as one who "combines deep technical knowledge with patent litigation skills." He also is listed in IAM Patent 1000 (2013), IAM Patent (2012), IAM Patent Litigation 250 (2011) and Best Lawyers’ 2012 Annual Guide to IP Law. In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex patent portfolios and pending litigation, including inventor and witness interviews; assesses title, encumbrances, extensions of FDA and patent exclusivities throughout the product lifecycle based on improvements, new formulations, new strengths or indications, improved pharmacokinetic profiles, dosage form dissolution profiles, or new salt, enantiomeric, or polymorphic forms; prepares timelines and scenario planning to align the business, clinical/regulatory, and patent objectives and likely outcomes; and provides strategic advice regarding Orange Book listings, patent term extensions, post-grant reviews, reissues, reexaminations, interferences, and oppositions. Joe has argued before the Patent Trial and Appeal Board, and has conducted portfolio management and patent prosecution relating to a variety of pharmaceutical, medical device, chemical, and biotechnological inventions, including blood cell isolation, labeling and imaging, food enzymes, gastrointestinal drugs, DNA and peptide sequences, antibodies, chemotherapeutic agents, cancer diagnostics, nanoparticles, antimicrobials, vaccines, opioid analgesics, hormone therapy, antiemetics, antihypertensives, antidepressants, drug delivery systems (e.g., topical gels, transdermal patches, controlled and delayed-release oral dosage forms, inhalers, intranasal administration), immunoassays, needleless injectors, stents, and grafts (drug-coated and uncoated).

Education

Saint Louis University School of Law, JD, cum laude 1993 Editor-in-Chief, Saint Louis University Law Journal University of Nebraska Medical Center 1988 Doctor of Pharmacy (Pharm D)


United States: Intellectual property

Patent litigation: full coverage

Within: Patent litigation: full coverage

Mayer Brown focuses on the technology and life sciences sectors, flanked by expertise in the telecoms and consumer goods industries. Alan Grimaldi in Washington DC, New York’s Lisa Ferri and Gabriela Kennedy in Hong Kong direct the practice. In Washington DC, appellate expert Andrew Pincus led the successful representation of Impression Products in a much-publicised Supreme Court case regarding the patent owner’s right to post-sale product control. The team also acted as co-lead for plaintiffs Gilead Sciences and Emory University in Hatch-Waxman litigation against Mylan, involving patents on blockbuster HIV drug Truvada. Additionally, the group assisted LG Electronics with an international arbitration against Nokia regarding FRAND rates for patents on cellular standards. Other clients include Endo Pharmaceuticals, Google and Marvell Semiconductor. Joseph Mahoney in Chicago, John Mancini, Jamie Beaber and Colleen Tracy James in New York as well as Stephen Baskin in the Washington DC office, are the key contacts.

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