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"Joe is an interference expert and veteran trial lawyer."

- IAM Patent 1000

Joseph A. Hynds Member

"Joe is an interference expert and veteran trial lawyer."

- IAM Patent 1000

Overview

Joseph A. Hynds has been practicing across the full spectrum of intellectual property law at Rothwell Figg for over 25 years with a focus on patent infringement litigation. Mr. Hynds has particular expertise in Hatch-Waxman litigation and related issues, having litigated more than 50 Hatch-Waxman cases and in many, serving as lead trial counsel. He also has participated in numerous appeals to the U.S. Court of Appeals for the Federal Circuit. Mr. Hynds handles cases covering a broad range of pharmaceutical, medical device, biotechnology, telecommunications, chemical, e-commerce, and electrical technologies, among others.

Mr. Hynds has been lead counsel in numerous Inter Partes Review (IPR) and Covered Business Method (CBM) Proceedings before the Patent Trial and Appeal Board (PTAB), and he has significant experience in patent interference matters before the U.S. Patent and Trademark Office (USPTO) and in the federal courts. A former Patent Examiner with the U.S. Patent and Trademark Office, Mr. Hynds has notable skill in the preparation and prosecution of patent applications in a wide variety of technical areas.

Mr. Hynds has wide-ranging knowledge of all aspects of patent litigation in U.S. district courts and before the U.S. International Trade Commission (ITC). He has substantial experience in preparing patent infringement and validity opinions; handling transactional matters involving intellectual property rights; and counseling clients on patent strategies, due diligence, and portfolio development, valuation, and acquisition. Additionally, he counsels a variety of domestic and international clients on U.S. intellectual property law, providing them with infringement, validity, and enforceability opinions, and advising on licensing matters.

Mr. Hynds was an Adjunct Professor of Law at the George Washington University Law School, where he taught a course on "Practical Legal Writing."

Mr. Hynds is recognized by Intellectual Asset Management’s (IAM) Patent 1000 – The World’s Leading Patent Professionals (2013-2017) in the DC Metro Area and Nationally, and he was selected to the Washington, DC Super Lawyer list in the field of Intellectual Property Litigation (2012-2017). Additionally, he has repeatedly been included in The Best Lawyers in America® guide (2013-2018) in the fields of Litigation – Intellectual Property, Litigation – Patent, Patent Law, Trademark Law and Copyright Law.

He received his B.A. in Physics from Wabash College in 1986, and earned his J.D., with honors, from George Washington University in 1991. Mr. Hynds was admitted to the Bar of the Commonwealth of Virginia in 1991 and to the District of Columbia Bar in 1993.  He is registered to practice before the U.S. Patent and Trademark Office.  He is a member of the American Bar Association Patent Trademark & Copyright Law Section, and served as Chairman, Interference Subcommittee.  He is also a member of the American Intellectual Property Law Association (AIPLA).

Experience

Federal District Court

Unverferth Mfg. Co., Inc. v. J&M Mfg. Co, Inc., Civil Action No. 14-03062 (N.D. Iowa)

Bayer Healthcare Pharma v. Sandoz, Inc., Civil Action No. 08-1207 (D. Nev.)

Bayer Schering Pharma AG v. Sandoz Inc., Civil Action No. 08-3710 (S.D.N.Y.)

Unverferth Mfg. Co., Inc. v. Par-Kan Co., Civil Action No. 13-97 (N. D. Ill.)

Sunovion Pharms. Inc. v. Watson Pharms Inc., Civil Action No. 12-993 (D. Del.)

Chicago Board Options Exchange, Inc. v. International Securities Exchange, LLC, Civil Action No. 12-00931 (S.D. N.Y.)

Pfizer Inc. v. Teva Pharmaceuticals USA, 12-1576 (D. Del.)

J&M Mfg. Co. Inc. v. Unverferth Mfg. Co. Inc., Civil Action No. 12-00931 (S.D. Ohio)

Cirrex Systems LLC v. Infraredx, Inc., Civil Action No. 10-11530 (D. Mass.)

Cirrex Systems LLC v. Infraredx, Inc., Civil Action No. 10-03952 (S.D. N.Y.)

Pfizer Inc. v. Cobalt Laboratories Inc., Civil Action No. 09-00315 (D. Del.)

KSI Inc. v. Unverferth Mfg. Co., Inc., Civil Action No. 07-50075 (N.D. Ill.)

Investment Technologies Group, Inc. v. Liquidnet Holdings, Inc., Civil Action No. 07-510 (S.D. N.Y.)

Illinois Tool Works v. Frito Lay, Civil Action No. 06-54 (D. Del.)

Sepracor v. Breath, Civil Action No. 06-10043 (D. Mass.)

Paratek Microwave, Inc. v. Agile Materials and Techs., Inc. Civil Action No. 05-4121 (C.D. Cal.)

AIDS Healthcare Foundation v. GlaxoSmithKline, PLC, Civil Action No. 03-2792 (C.D. Cal)

Mylan Laboratories, Inc. v. Tommy G. Thompson, Civil Action No. 04-1049 (D. D.C.)

Guardian Industries Corp. Inc. v. AFG Industries, Inc., Civil Action No. 03-73722 (E.D. Mich.)

Alza Corp. v. Mylan Laboratories, Inc., Civil Action No. 02-20 (D. Vt.)

Bristol-Meyer Squibb v. Mylan Pharm., Inc., Teva Pharm. USA, Inc., Barr Labs. et al., Civil Action No. 01-CV-0414 (S.D. N.Y.)

Ion Beam Applications v. The Titan Corporation, Civil Action No. 00-1994 (S.D. Cal.)

Schering Corp. v. Mylan Pharmaceuticals, Inc., Civil Action No. 00-1657 (D. N.J)

Mylan Pharmaceuticals Inc. v. Donna Shalala, Civil Action No. 99-02995 (D. D.C.)

Bayer and Pfizer v. Mylan Pharmaceuticals, Inc., Civil Action No. 97-1309 (W.D. Pa.)

Key Pharmaceuticals (Schering) v. Mylan Pharmaceuticals, Inc., Civil Action No. 97-14 (W.D. Pa.)

Schering and Roussel UCLAF v. Zeneca, Civil Action No. 95-566 (D. Del.)

SmithKline Beecham v. Mylan Pharmaceuticals, Inc., Civil Action No. 94-2874 (E.D. Pa.)

Burroughs Wellcome v. SmithKline Beecham, Civil Action No. 94-118 (E.D. N.C.)

Nova Biomedical Corp. v. Mallinckrodt Sensor Systems, Inc., Civil Action No. 94-12288 (D. Mass.)

Burroughs Wellcome v. Barr Labs and Novopharm, Ltd., Civil Action No. 91-41 (E.D. N.C.)

Proceedings Before the U.S. Patent Trial and Appeal Board

Unverferth v. J&M IPR  - Unverferth Manufacturing Co., Inc. v. J&M Manufacturing Co., Inc., IPR2014-00758 (PTAB)

US Endodontics, LLC v. Gold Standard Instruments, LLC, IPR2015-00632 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00097 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00098 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, IPR2014-00099 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, CBM2013-00049 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, CBM2013-00050 (PTAB)

International Securities Exchange, LLC v. Chicago Board Options Exchange, Incorporated, CBM2013-00051 (PTAB)

Field v. Hyatt, Interference No. 105,951 (PTAB)

Schwartz v. Sawney, Interference No.105,317

Jurgovan v. Ramsey, Interference No. 105,173

Barker v. Elson, Interference No. 103,146

Wallace v. Landegren, Interference Nos. 103,419, 103,420 and 103,421

Anderson v. Selden v. Morgan, Interference No. 103,708

Kaufman v. Levinson, Interference No. 103,086

Court of Appeals for the Federal Circuit

Bayer Healthcare Pharmaceuticals inc. v. Watson Pharmaceuticals Inc. et al., Civil Action No. 01472 (D. Nev.)

Pfizer Inc. v. Teva Pharmaceuticals USA, Civil Action No. 0307 (D. Del.)

Bayer Healthcare Pharma v. Sandoz, Inc., Civil Action No. 01472 (D. Nev.)

International Trade Commission

In The Matter of Certain Plastic Containers, Investigation No. 337- TA-514

In The Matter of Certain Diltiazem Hydrochloride and Diltiazem Preparations, Investigation No. 337-TA-349

Arbitration Proceedings Before the American Arbitration Association

Kaigai Pharmaceuticals v. Bertek

 

 

Publications & Presentations

American Conference Institute's (ACI's) Paragraph IV Disputes Conference, "Use of IPR and Other PTO Proceedings in a Paragraph IV Challenge: Strategies for Brand Names and Generics in Navigating PTO Proceedings in ANDA Litigation" panel participant - New York, NY - April 28-29, 2014

Exploring Uses of IPR for Second, Third and Other Subsequent ANDA Filers - April 28, 2014 (presenter)

IWPCPS®-15 International Workshop on Physical Characterization of Pharmaceutical Solids - Philadelphia, PA - June 24-27, 2013 (presenter)

ACI Paragraph IV on Trial Conference - Mock Trial Participant, Newark Branded Pharmaceuticals v. Flatiron Generic Pharmaceutical - New York, NY - November 12-13, 2009 

"The Impact of the Recent U.S. Supreme Court Decisions and Proposed New U.S. Patent and Trademark Office Rules and Patent Reform Legislation on Patent Acquisition, Exploitation, Enf" - 2008 Technical Conference Proceedings, Large Area Coating (October 15, 2008) - Authors: M.M. Zoltick, Rothwell, Figg, Ernst & Manbeck, P.C., Washington DC, US; J.A. Hynds, Rothwell, Figg, Ernst & Manbeck, P.C., Washington DC, US; D.V. Scaltrito, Rothwell, Figg, Ernst & Manbeck, P.C., Washington DC, US

Society of Vacuum Coaters Technical Conference Proceedings - 2008 (presenter)

Adjunct Professor of Law, the George Washington University Law School - taught "Practical Legal Writing" (2010-2014)

Professional Affiliations, Honors & Recognition

Member of the American Bar Association (Patent Trademark & Copyright Law Section), Past Chairman, Interference Subcommittee

Member of the American Intellectual Property Law Association

IAM Patent 1000 (2013-2017 - DC Metro Area and National)

Super Lawyers (Intellectual Property Litigation - 2012-2017)

Best Lawyers in America® (2013-2018; Litigation – Intellectual Property, Litigation – Patent, Patent Law, Trademark Law, and Copyright Law)

LMG Life Sciences Life Science Star - Intellectual Property (2016)

Listed in ALM's 2010 Best Lawyers Annual Guide to Patent Law