Stephen B. Maebius is an Intellectual Property law partner with Foley & Lardner LLP. He is a member of the firm's Management Committee and former chair of the Intellectual Property Department. Prior to becoming a lawyer, he was a patent examiner in the Biotechnology Group of the U.S. Patent & Trademark Office. He has led teams within Foley handling a variety of different kinds of IP work, including IP diligence reviews, opinions, international portfolio management, licensing, litigation and parallel reexaminations, patent term extensions and interferences. Two IP transactions in which he has participated were awarded "Deal of Distinction" status by the Licensing Executives Society.
He has been active as both a teacher and author in the intellectual property field. He has been a visiting associate professor of intellectual property law at Tokyo University's Research Center for Advanced Science and Technology, as well as a faculty adjunct professor at George Washington University Law School, where he taught comparative and international patent law. In addition, he testified on reexamination practice at the 2002 FTC/DOJ hearings on the "Implications of Competition and Patent Law and Policy."
In the area of nanotechnology, he helped start the NanoBusiness Alliance and the Nanotechnology Law & Business journal. He continues to serve as an associate editor of the Nanotechnology Law & Business journal.
In 2012, Mr. Maebius was ranked in Chambers Global Intellectual Property - Regional Experts (Spotlight Table) and in Chambers USA for patent prosecution in the District of Columbia. In 2013, he was ranked again in Chambers Global in Intellectual Property - Foreign Experts (Spotlight Table) and in Intellectual Property - Experts Based Abroad (Spotlight Table) for Japan. In 2010 - 2012, the Legal 500 recognized him for patent licensing and patent prosecution. Mr. Maebius has also been selected by his peers for inclusion in The Best Lawyers in America® in the areas of biotechnology law, patent litigation, and patent law (2007-2013), as well as intellectual property (2009-2011). He was recognized for post-grant procedures among IAM Patent 1000 - The World's Leading Patent Practitioners 2012. In 2006, he was runner-up in the Washington Business Journal's Top Washington Lawyers for Intellectual Property, and has been Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system.
Mr. Maebius graduated from Cornell University (B.S. biology, 1989) and the George Washington University Law School (J.D., 1994). He is admitted to practice in the District of Columbia, the state of Virginia, before the Court of Appeals for the Federal Circuit, the U.S. Supreme Court and before the U.S. Patent and Trademark Office.
He also serves as a board member of the CARES Foundation.
Representative Matters:
· Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) - precedential 2-1 decision remanding a double patenting rejection arising from patent reexamination (all claims confirmed to be patentable upon remand to the Patent Office)
· Goldenberg & Immunomedics v. Cytogen & C.R. Bard (Fed. Cir. 2004) - obtained reversal of summary judgment in client's favor in precedential 2-1 decision
· Reexamination of 2 patents in parallel litigation covering pharmaceutical with $1.5B in sales per year - obtained decision confirming patentability of all claims in under a year
· Licensing of biotechnology drug with up-front payment of $100M - represented acquiring company in IP diligence and drafting transaction agreements
Publications:
· "Top Ten Mistakes Made In Inter Partes Reexamination," BNA Patent, Trademark & Copyright Journal, 77 PTCJ 428, 2009 (co-author)
· "Patenting Risk Evaluation & Mitigation Strategies for Pharmaceuticals: A New Life Cycle Management Target for Patents?" Pharmaceutical Law & Industry, 7(1): 1-3, 2009 (co-author)
· "The Surprising Efficacy of Inter Partes Reexamination," Patent Strategy & Management, 2008 (co-author)
· "Bayer Highlights Debate on Research Method Use (Patent Won't Cover Fruit of Offshore Research Not Made with the Method)," National Law Journal, 2001 (co-author)
· "Extending Process Claims From Intermediate to Final Product: Avoiding the Trap of Eli Lilly v. American Cyanamid," Journal of the Patent & Trademark Office Society, 1998
· "Novel DNA Sequences and the Utility Requirement: The Human Genome Initiative," Journal of the Patent & Trademark Office Society, 1992