Overview

Stephen (Steve) B. Maebius is a partner and intellectual property lawyer with Foley & Lardner LLP. He has led teams within Foley handling a variety of different kinds of IP work, including IP due diligence reviews, infringement and validity opinions, international portfolio management, licensing, litigation with parallel inter partes reviews, reexaminations and interferences, and pharmaceutical patent term extensions. Two IP transactions in which Mr. Maebius has participated were awarded "Deal of Distinction" status by the Licensing Executives Society. He is a former 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.

Representative Matters

  • Lead counsel in successful defense of 6 Inter Partes Reviews filed by generic petitioners against a family of Orange Book-listed pharmaceutical patents covering a $1B controlled release product with parallel Hatch-Waxman litigation (IPR2013-00368, IPR2013-00371, and IPR2013-00372 - instituted but all claims found patentable in final written decision; IPR2015-01777, IPR2015-01778, and IPR2015-01782 - not instituted)
  • Prosecuted product-by-process patent listed in Orange Book that was upheld as valid and infringed in United Therapeutics v. Sandoz, 2014 U.S. Dist. LEXIS 121573 (D.N.J. Aug. 29, 2014)
  • Co-counsel for successful petitioner in Inter Partes Review filed against patent asserted in litigation against LED client (IPR2012-00005; decision affirmed on appeal)
  • Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) – co-counsel in 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) – co-counsel on appeal in reversal of summary judgment in client's favor in precedential 2-1 decision on doctrine of equivalents issue
  • Reexamination of 2 patents in parallel litigation covering pharmaceutical product 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

Thought Leadership

Mr. Maebius is the principal author of the book “Due Diligence for Intellectual Property: Valuing Assets in a Transaction,” published by Law Journal Press. He has been active as both a teacher and author in the intellectual property field, including serving as a visiting associate professor of intellectual property law at Tokyo University's Research Center for Advanced Science and Technology and serving as a faculty adjunct professor at George Washington University Law School, where he taught comparative and international patent law. In addition, he 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.

In the area of nanotechnology, Mr. Maebius helped start the NanoBusiness Commercialization Association and the Nanotechnology Law & Business journal and he continues to serve as an associate editor of the Nanotechnology Law & Business journal.

Recognition

  • IAM Patent 1000 – The World’s Leading Patent Practitioners, recognized for post-grant patent procedures (2012-2013) and prosecution and transactions (2014-2016)
  • Chambers Global Intellectual Property – USA and Japan (2012 - 2015)
  • Chambers USA for the District of Columbia in intellectual property and patent prosecution (2012 - 2014) 
  • Washington, D.C. Super Lawyers® for intellectual property (2014 - 2017)
  • The Legal 500 for patent licensing and patent prosecution (2010 - 2013), for patent licensing and transactional (2014 and 2015), for intellectual property – patent prosecution – utility and design patents (2015 and 2016), and for healthcare – life sciences (2015 and 2016)
  • The Best Lawyers in America© in the areas of biotechnology law, patent litigation, and patent law (since 2007) and intellectual property (since 2009)
  • Washingtonian’s Best Lawyers in Washington for Intellectual Property (2013 - 2014)
  • Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system
  • Managing Intellectual Property - IP Star (2015)

Education

Mr. Maebius graduated from Cornell University (B.S. biology, 1989) and the George Washington University Law School (J.D., 1994).

Admissions

Mr. Maebius 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.

Publications

Representative Matters

Showing of
As a biotechnology manufacturer pursuing advanced approaches to treating life-threatening diseases, our client understands that large-scale innovation requires not only inspiration but often a good deal of IP due diligence. Foley represents a next-generation biotech manufacturer that has developed and produced treatments for hypertension, cardiovascular disease, forms of cancer, and infectious diseases. With the ultimate goal of conquering these illnesses and possibly even producing engineered human organs for transplants, this company first tapped Foley’s intellectual property team to investigate and license the necessary technologies. With broader capabilities than typical IP law firms, Foley handled other services as well, including assisting our client with its international expansion. Based on lower costs and government investment in a life sciences/regenerative medicine infrastructure, our client determined that a presence in China would be beneficial to its business strategy. Attorneys from Foley’s China Practice were brought in to help guide our client through the development of a new business entity and a medical university partnership in China.Together, Foley’s IP and China teams, both well qualified and equipped, handled a second strategy in this company’s work, focused on organ repair and replacement. Our client pursued a novel approach of creating a new and potentially unlimited supply of transplantable organs using cells engineered in a lab. With a combination of healthy, transplantable tissue and medication that until now have only been able to prolong life in patients with a fatal condition, our client is prepared to offer patients a real chance at long-term survival.Many companies would be concerned that pursuing this type of technology in the early stages may be too risky. However, with Foley’s support in IP due diligence, licensing, and agreement drafting, in addition to our help paving the way for the company’s work in China, our client is able to proactively pursue innovation and other advanced manufacturing in next-generation technologies. Our assistance in illuminating the IP and business risks and helping the client devise strategies to mitigate those risks has made it possible for the company to pursue its bold vision and proceed with further research and development in this promising area. At a Glance: Next-Generation Manufacturing Business Issues: • Customer-Focused Innovation• Global Engagement• Next-Generation Technologies
Defended Supernus as the owner of three pharmaceutical patents in three different inter partes reviews filed by a generic company, where there is a parallel Hatch-Waxman patent litigation involving the same patents. The product covered by the three patents generated more than $1 billion in revenue. On December 9, 2014, the PTAB issued a final decision regarding the inter partes review in favor of the patent owner, Supernus. This was the first ANDA case to reach a final decision at the PTAB.
Acted as petitioner’s counsel in an inter partes review filed after Nichia was sued for patent infringement in district court. The inter partes review was instituted by the Patent Trial & Appeal Board (PTAB). On February 11, 2014 the PTAB issued its final written decision holding all challenged claims unpatentable.