Overview
Joseph M. Reisman is a partner in our San Diego office.
Dr. Reisman’s practice involves patent prosecution and strategic counseling, and legal opinion work, chiefly for clients in the pharmaceutical, chemical, medical device, and biotechnology industries; this practice allows him to utilize the technical training he received while earning a Ph.D. in Chemistry. He also has broad litigation and appellate experience. His litigation experience is varied and includes numerous complex patent infringement actions brought under the Hatch-Waxman Act, in which he has represented both defendants and plaintiffs. He has also represented major pharmaceutical companies in complex contractual disputes in, for example, private arbitration and litigation in the Delaware Court of Chancery. He has authored numerous appeal briefs and conducted oral argument on appeal at the Court of Appeals for the Federal Circuit. Dr. Reisman often represents manufacturers of generic and follow-on products and has been a team leader in successfully earning early market entry of generic equivalents of many well-known products, including Lipitor (atorvastatin) and Valcyte (valganciclovir). Dr. Reisman regularly counsels his clients and provides strategic advice with an eye toward successful patent litigation strategies, including settlement, always keyed to successful business outcomes.
Dr. Reisman also has extensive experience obtaining, enforcing, and conducting due diligence reviews of complex patent portfolios, trade secret rights, and other forms of intellectual property. He has extensive experience developing and evaluating patent portfolios relating to pharmaceutical, biotechnology, health monitoring, specialty chemical, and water treatment technologies. In the context of client counseling, Dr. Reisman has a wealth of experience crafting intellectual property opinion letters, and he serves as the Chair Knobbe Martens’ Opinion Letter committee. Dr. Reisman also has extensive experience navigating the complex issues relating to Patent Term Extensions (PTEs), Orange Book listing, and Hatch-Waxman Notice Letter practices.
During his graduate studies in biochemistry, Dr. Reisman was awarded “La Bourse Chateaubriand” by the French Ministry of Foreign Affairs and the French Embassy to the United States. Under that six-month grant, he continued his doctoral research (at the University of California, San Diego) on the structure and function of certain DNA-binding proteins, while working at the Université de Montpellier in Montpellier, France. After graduating from law school at the University of California, Berkeley, Dr. Reisman served for two years as a Law Clerk to the Honorable Alan D. Lourie, Circuit Judge, at the United States Court of Appeals for the Federal Circuit.
In every year since 2012, Dr. Reisman has been included on the list of The Best Lawyers in America. He has been recognized in the field of Patent Prosecution, Patent Advisory, Strategy, and Management, and Patent Litigation. Since 2000, he has consistently served as an Adjunct Professor of Patent Law at the University of San Diego, School of Law. He is also an active member of the Federal Circuit Bar Association. He served, for several years, as a member of the Association’s Board of Directors and its executive leadership team. In 2022-23, he served as the Association’s President.
Dr. Reisman joined the firm in 1998 and became a partner in 2002.
Clerk Experience
Law Clerk to the Honorable Alan D. Lourie, Circuit Judge
United States Court of Appeals for the Federal Circuit, 1996-1998
Education
- University of California - Berkeley - School of Law (J.D., 1996), Executive Editor - The Berkeley Technology Law Journal
- University of California - San Diego (Ph.D. Chemistry, 1993), Dissertation Title: “Analyses of Two Bacteriophage-encoded DNA-binding Proteins in Solution”
- University of California - San Diego (M.S. Chemistry, 1989)
- Yale University (B.S. Chemistry, 1987)
Representative Matters
ViiV Healthcare v. Exavir Therapeutics Inc. (Del. Ch. 2022-2023)
Represented plaintiff in tortuous interference and unjust enrichment matter stemming from a Research Collaboration Agreement between ViiV and the University of Nebraska Medical Center (“UNeMed”) relating to the developing ultra-long-acting prodrugs of known anti-HIV medications. Obtained favorable settlement after oral argument on university-licensee Defendant’s motion to dismiss.
Roche Palo Alto LLC v. Ranbaxy Pharmaceuticals, Inc. (D. N.J./Fed. Cir. 2005-2010). Pharmaceuticals.
Representing defendant in patent litigation regarding Valcyte-brand anti-viral medication, and obtained ruling of non-infringement. Obtained favorable settlement while appeal was pending.
The Rockefeller University v. Ligand Pharmaceuticals, Inc. (S.D. N.Y. 2008-2009). Biological Assay Technology Related to Drug Development.
Representing defendant in a technology license dispute relating to GlaxoSmithKline’s Promacta-brand product. Obtained a favorable settlement and dismissal of lawsuit prior to expert discovery.
Pfizer Inc. v. Ranbaxy Pharmaceuticals, Inc. (D. Del./Fed. Cir. 2002 - 2007). Pharmaceuticals.
Representing defendant on appeal regarding Lipitor-brand anti-cholesterol medication; obtained ruling of invalidity against one of the two asserted patents; later obtained settlement while asserted patents were before Patent Office in reexamination and re-issue proceedings.
Aventis Inc. v. Ranbaxy Pharmaceuticals, Inc. (D. N.J./Fed. Cir. 2002-2006). Pharmaceuticals.
Representing defendant in coordinated Hatch-Waxman patent litigation regarding Allegra-brand antihistimine defeated motion for preliminary injunction, and successfully sustained decision on appeal.
Petrochem Marketing, Inc. et al. v. Advantage Systems, Inc. (S.D. Cal./Fed. Cir. 1999-2002). Asphalt Emulsions.
Represented plaintiff in patent litigation, including appellate practice and obtained preliminary injunction; defeated motion to void injunction and motion for summary judgment of invalidity, sustained denial of motion to void injunction on appeal at the Court of Appeals for the Federal Circuit, and obtained favorable settlement for patentee.
Recognition
Awards & Honors
Dr. Reisman has received multiple awards and has been honored in both national and international forums for his legal accomplishments:
- Recognized in the “Best Lawyers 2025 Guide” for Intellectual Property Litigation, Patent Litigation, and Patent Law in Best Lawyers in America (2024)
- Recognized for outstanding work in patent law in the 2024 edition of the Intellectual Asset Management (IAM) “Patent 1000 Guide” for Prosecution (2024)
- Selected to The Best Lawyers in America® for his work in Intellectual Property Litigation and Patent Law (2010 – 2024) and Patent Litigation (2023 – 2024)
- Recognized by The Legal 500 “United States” for Patent Litigation (2021 – 2023)
- Named one of the “World’s Leading Patent Professionals” in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine for Prosecution. (2015-2023). In the 2018 guide, Dr. Reisman was described as being “extremely astute in counselling his pharmaceutical clients and narrowing their risk profile” and recognized for “leveraging his trial experience to prosecute patents that can withstand the rigours of litigation”. In the 2023 guide, he was described as someone who “has a vast understanding of contentious/non-contentious IP issues, which has given him a bird’s-eye view of multifaceted issues.”
- Named Top Patent Challenger Attorney 2020 by Docket Navigator
- Named a “Life Science Star” in Legal Media Group (LMG) “Life Sciences”. He has been recognized in all areas of the survey which include patent prosecution, patent advisory, strategy and management, general patent litigation/protection, and Hatch-Waxman litigation (2012 – 2018 and 2022-2024)
- Named by Legal Media Group (LMG) as one of the ” World’s Leading Patent Law Experts” (2015)
Affiliations
American Intellectual Property Law Association
Federal Circuit Bar Association – President (2022-2023); Chair, Amicus Committee (2009-2012)
American Chemical Society – Division of Chemistry and the Law
News & Insights
Articles
Quoted in, “The IP dangers in life sciences collaborations and how to avoid them,” which was published by IAM. (June 2021)
Intellectual Property Issues Under the Trans-Pacific Partnership, Biosimilar Development, December 2015 (with Sheila Swaroop and Scott Seeley)
Southern District Rolls Out New Patent Local Rules, Association of Business Trial Lawyers – San Diego (ABTL) Report, Fall 2006 (with Fred Berretta)
Generic Biotech Products: Provisions in Patent and Drug Development Law, BioProcess International, October 2003 (with Arman H. Nadershahi)
Recent Developments in Intellectual Property Law, San Diego Business Journal, June 2000 (with Drew S. Hamilton)
Physicians and Surgeons as Inventors: Reconciling Medical Process Patents and Medical Ethics, Berkeley Technology Law Journal 10:355 (1995)
Medical Device Blog
Speeches & Seminars
Revisiting Obviousness in the Hatch-Waxman Realm: Prior Art, Obvious-Type Double Patenting, Inherency by Anticipation and PTAB Findings, ACI Paragragh IV Disputes Conference, New York, NY, April 2016
Industry Panel, PatCon 4: The Annual Patent Conference, San Diego, CA, April 2014
Invalidity and Non-infringement Post-Microsoft v. i4i: Reaffirming of the ANDA Applicant’s Pre-Litigation Obligations and Assertions, Sixth Annual Paragraph IV Disputes Conference, New York, NY, April 2012
Practitioners’ Perspective on the Future of Patent Law, The University of San Diego School of Law’s Second Annual Patent Law Conference, San Diego, CA, January 2012
Best Practices in Amicus Briefing (Moderator), The Federal Circuit Bar Association, Thirteenth Annual Bench & Bar Conference, Key Biscayne, FL, June 2011
Pharmaceutical Patent Protection in the United States, China Pharmaceuticals News’ Patent Law Conference, WuXi, China, May 2010
Anti-Trust and Competition Law Issues Related to Generic Pharmaceutical Market Entry, The Eighth Generics, SuperGenerics & Patent Strategies Conference, London, England, May 2005.
Markman Hearings – Timing is Everything; When Are They Best Conducted, The Federal Circuit Bar Association’s Fourth Bench & Bar Conference, San Diego, CA, June 2002.
From the Benchtop to the Bar, to the Bench: Protection and Defense of Chemical and Pharmaceutical Inventions, American Chemical Society, San Diego Section, San Diego, CA, November 2002.
