Joseph A. Mahoney

He leverages his scientific training in pharmacy (Pharm.D.) and more than 25 years of patent law experience to develop and execute winning strategies in high-stakes patent litigation, particularly for our patent-owner clients. Given the technical sophistication of these disputes, Joe appreciates cases are frequently won and lost based on the expert testimony developed in the case.

Joe’s counseling practice includes proactive, creative approaches to patent portfolio development and management where future litigation strategies are top of mind to obtain patents that withstand the rigors of litigation challenges. He regularly advises clients on Orange Book listings, the interface of patents with FDA approval, and the importance of coordinating the patent and regulatory strategies. Joe has been extensively involved in the litigation, strategy and prosecution of numerous commercial products, such as Sculptra®, varenicline, Opvee®, Dyneema®, botulinum toxins, genetically modified yeast, Vasostrict®, Opana® ER, Zegerid®, Ofirmev®, MetroGel®, AndroGel®, TriCor®, and Aceon®.

For transactions, clients rely on Joe to lead IP due diligence assessments relating to acquisitions and licenses involving complex IP portfolios and pending litigation. He has significant experience providing opinions on issues of patent infringement and validity and has testified in district court and in depositions relating to this work.

Clients served by Joe include Galderma, Endo Pharmaceuticals, DSM Firmenich, Indivior, and Nestlé.

• DSM IP Assets & DSM Bio-Based Products v. Lallemand Specialities, Inc. & Mascoma LLC (W.D. Wis.).  Won a $14.5 million patent verdict on behalf of a DSM Bio-Based Products & Services in a seven-day jury trial involving genetically engineered yeast used for industrial-scale production of ethanol from corn stock.
• Corning Incorporated v. DSM IP Assets B.V.  Won a majority of IPRs on behalf of patent owner DSM involving patents covering glass optical fiber coatings, with more than 70% of the 225 challenged claims across 10 IPRs were upheld as valid.  (See, e.g., IPR2013-00043, -00044, -00045, -00047, -00048, -00049, -00052, -00053).  At the final oral hearing, the Board was expanded to five judges instead of the customary three for a full day of oral argument on the 10 IPRs.
• Corning Incorporated v. DSM Desotech, Inc. (D. Del.) and DSM Desotech, Inc. v. Corning Incorporated (ND. IL). Represented DSM in this patent and breach of contract litigation related to the above IPRs involving nine patents relating to coatings for optical fibers.  Confidential settlement prior to trial. 
  
• Amneal Pharmaceuticals v. Endo Pharmaceuticals. Represented Endo in two inter partes reviews at the PTAB, decisions affirmed by the Federal Circuit in favor of Endo.
• Led patent due diligence on behalf of Nestlé Health Science in a large licensing and collaboration transaction with Seres Therapeutics.
• Santarus Inc. and the University of Missouri v. Par Pharmaceuticals (D. Del.; Fed. Cir.).  Designed and prosecuted the global patent strategy for the University to protect its inventions relating to Zegerid®, and led the legal team responsible for licensing such rights to Santarus, Inc., which resulted in substantial royalties flowing to the University.  The patents were unsuccessfully challenged by Par Pharmaceutical in Hatch-Waxman patent infringement action leading to a $100 million settlement payment by Par to the University and Santarus.  Joe represented the University throughout the 12+years at the USPTO and as co-counsel with Santarus’ lawyers in the district court litigations. 
• Egalet Ltd. v. Apotex, Corp. (D. NJ).  Successfully represented Egalet in this Hatch-Waxman patent litigation relating to intranasal ketorolac.
• Galderma SA v. Allergan, Inc. Successfully represented Galderma in an inter partes review of an Allergan patent relating to botulinum toxin.
• Led patent due diligence on behalf of Nestlé Health Science in a large licensing and collaboration transaction with Seres Therapeutics.
  
   
• Led patent due diligence on behalf of Mallinckrodt Pharmaceuticals in its acquisition of Cadence Pharmaceuticals and the product OFIRMEV®.
• Galderma Labs and Dow Pharmaceutical Sciences v. Tolmar, Inc. (N.D. TX). Represented Galderma in a Hatch-Waxman patent case relating to MetroGel®. 
•  Represented Solvay Pharmaceuticals in several Hatch-Waxman patent litigations, transactions and patent portfolio management relating to AndroGel®, TriCor® and Aceon®.