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Stephen B. Maebius

Partner

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Stephen B. Maebius

Partner

[email protected]

Washington, D.C. 202.672.5569

Sectors

Practice Areas

Education

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

Admissions

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

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

Steve is a partner with Foley & Lardner LLP and 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 Experience

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.

Awards and Recognition

IAM Patent 1000 – The World’s Leading Patent Practitioners
- Post-Grant Patent Procedures (2012-2013, 2020)
- Prosecution and Transactions (2014-2016, 2020-2021, 2024)
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 (2007-2026)
- Litigation – Patent (2012-2026)
- 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”

Presentations and 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)

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