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Education
Awards & Honors
Dr. Reisman has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Named as one of The World's Leading Patent Professionals in Intellectual Asset Management (IAM) magazine's "IAM Patent 1000" (2015).
- Named to Legal Media Group's (LMG)"Guide to the World's Leading Patent Law Experts" (2015).
- Selected as a "Star" in LMG's "Life Sciences Survey". He was recognized in all areas of the survey which include patent prosecution, patent advisory, strategy and management, general patent litigation/protection, and Hatch-Waxman litigation specifically for biosimilars (2012 - 2015).
- Selected to the San Diego Super Lawyers list in the field of intellectual property law (2009-2013).
- Selected to the 2010 - 2016 editions of The Best Lawyers in America® for his work in Intellectual Property Litigation.
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Office Location(s)
Professional Profile
Joseph M. Reisman is a partner in our San Diego office.
Dr. Reisman's practice involves patent prosecution and strategic counseling, chiefly for clients in the pharmaceutical industry, as well as patent litigation and appellate work involving various technologies. His practice allows him to utilize the technical training he received while earning a Ph.D. in Chemistry, as it focuses on the Pharmaceutical, Chemical and Biotechnology industries. His litigation experience is varied, and includes numerous large-scale patent infringement actions brought under the Hatch-Waxman Act, in which he has many years of trial experience. He has also served as a trial attorney, and has authored numerous appeal briefs, and conducted oral argument on appeal at the Court of Appeals for the Federal Circuit. Dr. Reisman often represents manufacturers of generic and follow-on products, and has been a team leader in successfully earning early market entry of generic equivalents of many well-known products, including Lipitor (atorvastatin) and Valcyte (valganciclovir). Dr. Reisman regularly counsels his clients as they prepare their Abbreviated New Drug Applications (ANDAs) and provides strategic advice with an eye toward successful patent litigation strategies, including settlement, always keyed to successful business outcomes.
Dr. Reisman also has extensive experience obtaining and enforcing complex patent portfolios, trade secret rights and other forms of intellectual property for his clients. He has extensive experience developing patent portfolios relating to pharmaceutical, biotechnology, specialty chemical, and water treatment technologies.
During the course of his graduate studies in biochemistry, Dr. Reisman was awarded "La Bourse Chateaubriand" by the French Ministry of Foreign Affairs and the French Embassy to the United States. Under that six-month grant, he continued his doctoral research (at the University of California, San Diego) on the structure and function of certain DNA-binding proteins, while working at the Université de Montpellier in Montpellier, France. After graduating from law school at the University of California, Berkeley, Boalt Hall, Dr. Reisman served for two years as a Law Clerk to the Honorable Alan D. Lourie, Circuit Judge, at the United States Court of Appeals for the Federal Circuit.
In every year since 2012, Dr. Reisman has been named a "San Diego Super Lawyer", has been included on the list of The Best Lawyers in America, and has been selected as a “Life Science Star” by LMG Life Sciences. These recognitions range in fields, including Patent Prosecution, Patent Advisory, Strategy, and Management, Patent Litigation and, more specifically, Hatch-Waxman Litigation. Since 2000, he has regularly served as an Adjunct Professor of Patent Law at the University of San Diego, School of Law. He is also an active member of the Federal Circuit Bar Association. He is currently a member of the Association’s Board of Directors, and he has recently served as a Chair of the Association’s Amicus Committee and its Scholarships Committee.
Dr. Reisman joined the firm in 1998, and became a partner in 2002.
Clerk Experience
Law Clerk to the Honorable Alan D. Lourie, Circuit Judge
United States Court of Appeals for the Federal Circuit, 1996-1998
Additional Information
Teaching/Adjunct Professor
Adjunct Professor, University of San Diego School of Law, 2000 - present
"Patent and Trade Secret Law" and “Patent Law”
Specializing In
Cases, Articles, Speeches & Seminars
Representative Matters
Roche Palo Alto LLC v. Ranbaxy Pharmaceuticals, Inc. (D. N.J./Fed. Cir. 2005-2010). Pharmaceuticals. Representing defendant in patent litigation regarding Valcyte-brand anti-viral medication, and obtained ruling of non-infringement. Obtained favorable settlement while appeal was pending.
The Rockefeller University v. Ligand Pharmaceuticals, Inc. (S.D. N.Y. 2008-2009). Biological Assay Technology Related to Drug Development. Representing defendant in a technology license dispute relating to GlaxoSmithKline's Promacta-brand product. Obtained a favorable settlement and dismissal of lawsuit prior to expert discovery.
Pfizer Inc. v. Ranbaxy Pharmaceuticals, Inc. (D. Del./Fed. Cir. 2002 - 2007). Pharmaceuticals. Representing defendant on appeal regarding Lipitor-brand anti-cholesterol medication; obtained ruling of invalidity against one of the two asserted patents; later obtained settlement while asserted patents were before Patent Office in reexamination and re-issue proceedings.
Aventis Inc. v. Ranbaxy Pharmaceuticals, Inc. (D. N.J./Fed. Cir. 2002-2006). Pharmaceuticals. Representing defendant in coordinated Hatch-Waxman patent litigation regarding Allegra-brand antihistimine defeated motion for preliminary injunction, and successfully sustained decision on appeal.
Petrochem Marketing, Inc. et al. v. Advantage Systems, Inc. (S.D. Cal./Fed. Cir. 1999-2002). Asphalt Emulsions. Represented plaintiff in patent litigation, including appellate practice and obtained preliminary injunction; defeated motion to void injunction and motion for summary judgment of invalidity, sustained denial of motion to void injunction on appeal at the Court of Appeals for the Federal Circuit, and obtained favorable settlement for patentee.
Articles
Southern District Rolls Out New Patent Local Rules, Association of Business Trial Lawyers - San Diego (ABTL) Report, Fall 2006 (with Fred Berretta)
Generic Biotech Products: Provisions in Patent and Drug Development Law, BioProcess International, October 2003 (with Arman H. Nadershahi)
Recent Developments in Intellectual Property Law, San Diego Business Journal, June 2000 (with Drew S. Hamilton)
Physicians and Surgeons as Inventors: Reconciling Medical Process Patents and Medical Ethics, Berkeley Technology Law Journal 10:355 (1995)
Speeches & Seminars
PatCon 4: The Annual Patent Conference, San Diego, California, April 2014
Invalidity and Non-infringement Post-Microsoft v. i4i: Reaffirming of the ANDA Applicant's Pre-Litigation Obligations and Assertions, Sixth Annual Paragraph IV Disputes Conference, New York, New York, April 2012
Practitioners' Perspective on the Future of Patent Law, The University of San Diego School of Law's Second Annual Patent Law Conference, San Diego, California, January 2012
Best Practices in Amicus Briefing (Moderator), The Federal Circuit Bar Association, Thirteenth Annual Bench & Bar Conference, Key Biscayne, Florida, June 2011
Pharmaceutical Patent Protection in the United States, China Pharmaceuticals News' Patent Law Conference, WuXi, China, May 2010
Anti-Trust and Competition Law Issues Related to Generic Pharmaceutical Market Entry, The Eighth Generics, SuperGenerics & Patent Strategies Conference, London, England, May 2005.
Markman Hearings – Timing is Everything; When Are They Best Conducted, The Federal Circuit Bar Association's Fourth Bench & Bar Conference, San Diego, California, June 2002.
From the Benchtop to the Bar, to the Bench: Protection and Defense of Chemical and Pharmaceutical Inventions, American Chemical Society, San Diego Section, San Diego, California, November 2002.
Professional Memberships
American Intellectual Property Law Association
Federal Circuit Bar Association - Co-Chair of Amicus Committee (2009-2010)
American Bar Association
American Chemical Society – Division of Chemistry and the Law