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Experience:
Joe Mahoney concentrates on intellectual property law. He has served as lead counsel and co-counsel in patent, trademark, trade dress, and trade secret litigation. His training in pharmacy (Doctor of Pharmacy) gives him a unique understanding of scientific and technical issues, bolstering his extensive legal experience. Legal 500 has recommended him for Patent Litigation - Life Sciences/Chemical. His experience includes representing innovator drug companies in Hatch-Waxman Act patent litigation; 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.
In addition, Joe leads IP due diligence assessments relating to acquisitions and mergers involving complex patent portfolios and pending litigation, including extensive document reviews and inventor and witness interviews; assesses extensions of FDA and patent exclusivities throughout the entire product lifecycle based on 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, reissues, reexaminations, interferences, and oppositions.
Joe has also conducted portfolio management and patent prosecution relating to a variety of pharmaceutical, chemical, and biotechnological inventions, including food enzymes, gastrointestinal drugs, DNA and peptide sequences, antibodies, chemotherapeutic agents, cancer diagnostics, antimicrobials, vaccines, analgesics, hormone therapy, antiemetics, antihypertensives, antidepressants, drug delivery systems (e.g., transdermal patches, controlled and delayed-release oral dosage forms, inhalers, intranasal administration), immunoassays, needleless injectors, stents, and grafts (drug-coated and uncoated).
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.
Notable Engagements:
Represents IV House, Inc., in pending medical device patent litigation (IV House, Inc. v. Shesol, US District Court - St. Louis, MO, and Shesol v. IV House, Inc., US District Court - Colorado).
Represents Solvay Pharmaceuticals, Inc., in pending pharmaceutical patent litigation involving the Hatch-Waxman Act (Solvay Pharmaceuticals, Inc., et al. v. Cobalt Pharmaceuticals, Inc., US District Court - Atlanta).
Represented Namco Cybertainment, Inc., in game patent litigation; obtained a favorable confidential settlement (Nickels and Dimes, Inc. v. Namco Cybertainment, Inc., US District Court - Chicago).
Represented BriteSmile, Inc., in tooth whitening patent litigation; after a successful Markman hearing decision, Discus paid BriteSmile $35 million to settle the litigation and buy the patents (BriteSmile, Inc. v. Discus Dental, Inc., US District Court - San Francisco).
Represented Unimed Pharmaceuticals, Inc. and Besins Iscovesco in pharmaceutical patent litigation involving the Hatch-Waxman Act; obtained a favorable confidential settlement (Unimed Pharmaceuticals, Inc. and Besins Iscovesco v. Watson Pharmaceuticals, Inc. and Paddock Laboratories Inc.).
Represented Olson Intl. in mechanical patent litigation; obtained a favorable confidential settlement (Pylon Tool Corp v. Olson Intl. Ltd., US District Court - Chicago).
Represented Unimed Pharmaceuticals, Inc. in pharmaceutical counterfeiting and trademark infringement litigation; obtained a favorable settlement (Unimed Pharmaceuticals, Inc. v. Modern Therapy LLC - US District Court - Miami).
Represented Knoll Pharmaceuticals in pharmaceutical patent litigation involving the Hatch-Waxman Act; obtained a favorable federal circuit court ruling and settlement (Knoll Pharmaceuticals v. Teva Pharmaceuticals, US District Court - Chicago).
Represented the Washington Legal Foundation as amicus curiae supporting Pfizer's position in its successful appeal to the Federal Circuit in a Hatch-Waxman action involving Pfizer's Norvasc�) (Pfizer v. Dr. Reddy's Laboratories).
Represented Mega Mfg. Inc., in mechanical patent and trade dress litigation; obtained a favorable confidential settlement (Mega Mfg. Inc. v. Haco-Atlantic, Inc., US District Court - Chicago).
Represented Haban Mfg. in trade dress litigation; obtained a summary judgment of non-infringement (Swisher Mower v. Haban Mfg., US District Court - Kansas City, Mo.).
Education:
Saint Louis University School of Law, JD, cum laude, 1993; Editor-in-Chief, Saint Louis University Law Journal, University of Nebraska Medical Center, Doctor of Pharmacy (Pharm D), 1988. |
