Partner

Joseph A. Mahoney

Intellectual Property, Life Sciences, Chemicals, Litigation & Dispute Resolution

Overview

Clients turn to Joe Mahoney for complex patent matters regarding pharmaceuticals, biotechnology, chemicals, and medical devices. Joe represents clients, both at trial and appeal, where he has been lead counsel in more than 30 patent and Hatch-Waxman cases before US federal district courts and the Patent Trial and Appeal Board (PTAB). He has successfully argued a number of appeals at the PTAB and US Court of Appeals for the Federal Circuit, most recently on behalf of client Galderma S.A. in Medytox, Inc. v. Galderma S.A., 71 F.4th 990 (Fed. Cir. 2023) (precedential).

Experience

  • DSM IP Assets, B.V. et al v. Honeywell International, Inc. (D.Del. 2023). Representing DSM in patent litigation involving medical sutures.
  • Medytox, Inc. v. Galderma S.A., 71 4th 990 (Fed. Cir. 2023) (precedential). Successfully challenged on behalf of Galderma a patent covering an animal-protein-free botulinum toxin composition. (PGR2019-00062). Based on the strength of the evidence presented in the petition, the patent owner conceded invalidity upon institution, requested cancellation of the granted claims, and focused its efforts on a motion to amend. During the proceeding, we convinced the PTAB to reverse course on its initial construction of a key claim term, which ultimately led to denial of the patent owner’s motion to amend based on written description and enablement problems. Medytox appealed and the Federal Circuit affirmed the PTAB’s Final Written Decision.
  • Galderma Labs v. Medinter US LLC et al. (D.Del.). Representing Galderma in patent litigation involving dermal filler compositions and methods.

Education

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

Admissions

  • North Carolina
  • Illinois
  • Missouri

Courts

  • US District Court for the Western District of North Carolina
  • US District Court for the Eastern District of North Carolina
  • US District Court for the Middle District of North Carolina
  • Trial Bar of the US District Court for the Northern District of Illinois
  • US District Court for the Eastern District of Missouri
  • US Court of Appeals for the Federal Circuit
  • US Patent and Trademark Office

Professional & Community Involvement

  • North Carolina Pro Bono Honor Society 2019-2022
  • NC Bar Association, Intellectual Property law section
  • Carolina Patent, Trademark, Copyright Law Association
  • American Intellectual Property Law Association (AIPLA)
  • Pro bono representations of individuals seeking asylum before the US Immigration Court and participant in the Pro Se Settlement Assistance Program of the US District Court for the Western District of North Carolina
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