Overview

Joe Mahoney is co-chair of the Life Sciences industry group. He concentrates his practice on IP litigation with an emphasis on 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.

In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex IP 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 Federal Circuit, and before the Patent Trial and Appeal Board in numerous inter partes reviews and ex parte proceedings. He has also conducted portfolio management and patent prosecution, reissues and reexaminations relating to a variety of pharmaceutical, medical device, chemical, and biotechnological inventions.

He joined Mayer Brown in 2001 after eight years with other law firms and three years as a pharmacist at Saint Louis University Medical Center.

Spoken Languages

  • English

Experience

  • DSM IP Assets & DSM Bio-Based Products v. Lallemand Specialities, Inc. & Mascoma LLC (W.D. Wis.). Represented DSM in patent litigation involving genetically engineered yeast for biofuel.  Seven day jury trial resulting in verdict of $14.5 million for DSM. Post-trial motions pending.
  • 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 involving nine patents relating to coatings for optical fibers.
  • Egalet Ltd. v. Apotex, Corp. (D. NJ). Represented Egalet in this Hatch-Waxman patent litigation relating to intranasal ketorolac.
  • Galderma SA v. Allergan, Inc. Represented Galderma in an inter partes review of an Allergan patent relating to botulinum toxin.
  • Corning Incorporated v. DSM IP Assets B.V. Represented DSM involving a total of 225 patent claims in 8 patents across 10 inter partes reviews at the PTAB. More than 70% of the claims were upheld.
  • 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.). Represented the University in this Hatch-Waxman patent infringement action leading to a $100 million settlement payment by Par to plaintiffs.
  • 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 a number of Hatch-Waxman patent litigations, transactions and patent portfolio management relating to AndroGel®, TriCor® and Aceon®.

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

  • Missouri
  • Illinois
  • Not admitted in North Carolina. Practicing under the supervision of firm principals.

Court

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

Memberships

  • American Intellectual Property Law Association (AIPLA)
  • The Richard Linn American Inn of Court
  • PTAB Bar Association
  • Licensing Executives Society
  • NC Bar Association, Intellectual Property law section