Drawing upon over 30 years of experience, Stephen (Steve) Maebius helps clients protect their innovation and transact business involving intellectual property assets.

Steve is a partner with Foley & Lardner LLP who leads teams handling a variety of IP work, including IP due diligence reviews, opinions, patent portfolio creation and management, licensing, inter partes proceedings involving patents and litigation, and pharmaceutical patent term extensions. He is a former member of the firm’s Management Committee and past chair of the IP Practice. Prior to becoming a lawyer, he was a patent examiner in the Biotechnology Group of the U.S. Patent and Trademark Office, gaining experience examining small molecule drugs as well as biologics.

Representative Matters                       

• Assisted biotech client with building patent portfolio and presenting IP strategy to VC investors during fundraising, followed by successful IPO.
• Co-counsel in the successful defense of a Post-Grant Review filed against a CRISPR Cpf1 patent (PGR2018-00072).
• Lead counsel in the successful defense of six inter partes reviews filed by generic petitioners against a family of Orange Book-listed pharmaceutical patents covering a US$1bn controlled release product with parallel Hatch-Waxman litigation (IPR2013-00368, IPR2013-00371, and IPR2013-00372 – all claims found patentable in final written decision; IPR2015-01777, IPR2015-01778, and IPR2015-01782 – not instituted).
• Prosecuted a portfolio of product-by-process patents listed in the Orange Book and upheld as valid in subsequent litigation.
• Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) – co-counsel in a precedential 2-1 decision remanding a double patenting rejection arising from patent reexamination (all claims confirmed to be patentable upon remand).
• Licensing of a biotechnology drug with an up-front payment of US$100m – represented the acquiring company in IP diligence and drafting transaction agreements.

Thought Leadership

• Principal author, Due Diligence for Intellectual Property: Valuing Assets in a Transaction, published by Law Journal Press
• Visiting associate professor of intellectual property law, Tokyo University’s Research Center for Advanced Science and Technology
• Faculty adjunct professor of comparative and international patent law, George Washington University Law School Testified about post-grant patent proceedings during the FTC/DOJ hearings on the “Implications of Competition and Patent Law and Policy,” which preceded the landmark patent legislation known as the America Invents Act
• Co-founder, NanoBusiness Commercialization Association
• Co-founder and associate editor, Nanotechnology Law & Business journal

Recognition

• IAM Patent 1000 – The World’s Leading Patent Practitioners
  •  Post-Grant Patent Procedures (2012-2013, 2020)
  • Prosecution and Transactions (2014-2016, 2020-2021)
• Chambers Global Intellectual Property – USA and Japan (2012-2015)
• Chambers USA for the District of Columbia – Intellectual Property and Patent Prosecution (2012-2014)
• Washington, D.C. Super Lawyers® – Intellectual Property (2014-2020, 2022-2023)
• The Legal 500 
  • Patent Licensing and Patent Prosecution (2010-2013)
  • Patent Licensing and Transactional (2014 and 2015)
  • Intellectual Property – Patent Prosecution – Utility and Design Patents (2015 and 2016)
  • Healthcare – Life Sciences (2015 and 2016)
• The Best Lawyers in America®
  • Biotechnology and Life Sciences (2007-2024)
  • Litigation – Patent (2012-2024)
  • Patent Law (2012-2024)
  • Intellectual Property (2007-2010)
• Washingtonian’s Best Lawyers in Washington for Intellectual Property (2013-2014)
• Peer review rated as AV Preeminent®, the highest performance rating in the Martindale-Hubbell® Peer Review Ratings™ system
• Managing Intellectual Property – IP Star (2015)
• Two IP transactions in which Steve participated received Licensing Executives Society’s “Deal of Distinction”

Education

• The George Washington University Law School (J.D., 1994)
• Cornell University (B.S., Biology, 1989)

Admissions

• District of Columbia
• Virginia
• U.S. Court of Appeals for the Federal Circuit
• U.S. Supreme Court
• U.S. Patent and Trademark Office

Selected Publications

• Co-author, “Next-Generation Bioprinted Products: Products of Nature or Patentable Innovation?” IEEE Pulse (March 28, 2023)
• Co-author, “PTAB’s Motion to Amend Pilot Program: Review of Initial Results,” PTAB Trial Insights Blog (Aug. 19, 2020)
• Co-author, “PTAB - 2019 Year in Review,” PTAB Trial Insights Blog (Jan. 23, 2020)
• Author, “District Court Sheds Light on Scope of IPR Estoppel,” PTAB Trial Insights Blog (Sept. 12, 2019)
• Author, “Revamped PTAB Trial Practice Guide Holds Surprises,” PTAB Trial Insights Blog (Aug. 13, 2018)