Stephen B. Maebius

Stephen B. Maebius

Stephen B. Maebius is an Intellectual Property law partner with Foley & Lardner LLP. He is a member of the firm's Management Committee, chair of the Intellectual Property Department, and co-chair of the Life Sciences Industry Team. He is also a member of the Nanotechnology Industry Team. Prior to becoming a lawyer, he was a patent examiner in the U.S. Patent & Trademark Office in the Biotechnology Group. He now handles many types of IP work for his clients, including IP diligence reviews, opinions, international portfolio management, licensing, litigation, reexaminations, patent term extensions and interferences.

Stephen B. Maebius is an Intellectual Property law partner with Foley & Lardner LLP. He is a member of the firm's Management Committee, chair of the Intellectual Property Department, and co-chair of the Life Sciences Industry Team. He is also a member of the Nanotechnology Industry Team. Prior to becoming a lawyer, he was a patent examiner in the U.S. Patent & Trademark Office in the Biotechnology Group. He now handles many types of IP work for his clients, including IP diligence reviews, opinions, international portfolio management, licensing, litigation, reexaminations, patent term extensions and interferences.

In the area of nanotechnology, Mr. Maebius helped start the NanoBusiness Alliance and the Nanotechnology Law & Business journal. He continues to serve on the advisory board of the NanoBusiness Alliance, and he is an editor-in-chief of the Nanotechnology Law & Business journal.

Mr. Maebius has also been selected by his peers for inclusion in The Best Lawyers in America® in the area of Biotechnology law (2007-2010), as well as Intellectual Property (2009-2010). In 2006, he was runner-up in the Washington Business Journal's Top Washington Lawyers for Intellectual Property.

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 (remand still pending)

· 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 upholding 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