Joseph A. Mahoney, Pharm.D.

Combining more than thirty years of patent law experience with formal scientific training in pharmacy, Joe Mahoney brings unique perspective and knowledge to his practice, which focuses on complex patent matters.

He has acted as lead counsel in more than 30 patent and Hatch-Waxman cases before the U.S. Federal District Courts and the Patent Trial and Appeal Board (PTAB). Joe also regularly advises clients on Orange Book listings, the interface of patents with FDA approval, and the importance of coordinating patent and regulatory strategies.

Joe represents clients across a variety of industries including biotechnology, chemicals, medical devices, and pharmaceuticals, providing counsel on patent portfolio development and managing future litigation strategies to obtain patents that withstand the rigors of litigation challenges. He is also a skilled transactions counselor, helping clients navigate due diligence assessments for acquisitions and licenses involving complex IP portfolios and pending litigation.

Practice Areas

Representative Matters

Representative Matters

• 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. This 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.). Successfully represented Galderma in patent litigation involving dermal filler compositions and methods resulting in a ruling of infringement and damages.*
• DSM IP Assets & DSM Bio-Based Products v. Lallemand Specialties, 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 transactions 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 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®.* 
• Pro bono representations of individuals seeking asylum before the U.S. Immigration Court and participant in the Pro Se Settlement Assistance Program of the U.S. District Court for the Western District of North Carolina.*

*matter handled prior to joining Honigman LLP

Prior Experience

• Mayer Brown, Partner
• Dentons, Partner
• Stinson Mag & Fizzell, Associate
• Watson, Ess, Marshall & Engas, Associate

Education

Admissions

Court Admissions

Professional & Community Involvement

• American Intellectual Property Law Association (AIPLA), Member
• Carolina Patent, Trademark, Copyright Law Association, Member
• Kara Farnandez Stoll American Inn of Court, Member
• NC Bar Association, Intellectual Property law section, Member

Press Releases