Joseph M. Reisman, Ph.D., is a partner with Knobbe Martens Olson & Bear LLP in the firm’s San Diego office.
Reisman holds a bachelor’s degree from Yale, a doctorate from the University of California, San Diego, and a law degree from the University of California, Berkeley. From 1996-98, he served as a judicial clerk to Circuit Judge Alan D. Lourie, on the U.S. Court of Appeals for the Federal Circuit.
Reisman’s practice involves patent prosecution, counseling and litigation for clients in the pharmaceutical and chemical industries. His work for generic pharmaceutical manufacturers has led to the early market entry of affordable generic versions of several well-known pharmaceuticals. He also teaches patent law as an adjunct professor at the University of San Diego, School of Law.
Q: What is the most challenging case you have worked on and what made it challenging?
A: My most challenging case has been contesting Pfizer Inc.’s Lipitor patent estate, which involved a coordinated, worldwide counseling and litigation effort by Knobbe Martens, handled on behalf of our client, Ranbaxy Pharmaceuticals Ltd.
Numerous issues of chemistry and biochemistry — complex syntheses, multiple chiral centers (and the associated issues of chemical nomenclature) and appreciation of various metabolic pathways — were coupled with a complex array of patent prosecution tactics, both foreign and domestic.
Knobbe Martens excels at seamlessly addressing such complex technical and legal issues, but the issues presented in this case were especially challenging because they required us to convey our strategies to foreign associates, who were often versed in the technology or the law, but not in both.
Moreover, the financial stakes were substantial. These issues required us to develop multiple strategies, often varying from country to country, to best present arguments to lay jurists and patent examiners around the world.
The wide array of different procedures for patent enforcement and challenging validity in the different jurisdictions, not to mention the different substantive patent laws, presented a wonderful education even as they presented a constant challenge. It was a pleasure to pursue, and ultimately obtain, our client’s business objective.
Q: What aspects of your practice area are in need of reform and why?
A: The increasing pendency of U.S. patent applications, and particularly the long pendency of appeals and reexaminations, leads to many distortions in patent practice. Market players are often left to choose between safe, but less innovative, technologies as they are confronted by the looming prosecution of competitors’ uncertain applications.
The current administration has created — and is actively proposing — various tools to fight long pendency, but it is not clear that those tools will be sufficient. Properly funding the U.S. Patent and Trademark Office, and the patent examiner corps in particular, may be the only path forward.
Q: What is an important issue or case relevant to your practice area and why?
A: As a practitioner in the life sciences, and as a recent past co-chairman of the Federal Circuit Bar Association’s Amicus Committee, I have long been concerned about the developing law of patentable subject matter under 35 U.S.C. § 101.
The U.S. Supreme Court’s recent decision in Mayo v. Prometheus announced a test that, while easy to state, may prove difficult to apply. It may also provide a new basis for challenging patents long thought to satisfy the statute.
That test, when combined with the remand of the Myriad case to the Federal Circuit, raises issues regarding the scope of the “product of nature” exception. I, and many of my colleagues, will certainly be watching for developments in that area of patent law.
Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.
A: I have long been impressed by Steven J. Lee, Ph.D., the co-chairman of the chemistry/life sciences practice group at Kenyon & Kenyon LLP in New York. Steve is extremely knowledgeable in both the technology and the law, and is a fierce advocate even as he maintains a calm demeanor.
Several years ago, Steve and I represented co-appellees in a complex appeal at the Federal Circuit. We asked, and were permitted, to present separate and distinct oral arguments during our jointly allotted time.
When it turned out that the oral argument focused on the issues for which I had prepared, he was most gracious in letting me use all of our time. He was even understanding when I failed to correct one of the judges after she addressed me as “Mr. Lee.” His good humor was confirmed when he later suggested that I should have responded, “Please, it’s Dr. Lee.”
Q: What is a mistake you made early in your career and what did you learn from it?
A: I began practicing law only a week after finishing a two-year clerkship with Judge Alan Lourie at the Federal Circuit. Having been a clerk for that long, I became accustomed to discussing the intricacies of patent law. Such discussions were a regular part of the workday, particularly in Lourie’s chambers.
Most clients assume that their attorneys know the law, but those same clients are not particularly interested in lengthy discussions on the finer points of the law. As I soon discovered, a client’s patience for such a discussion disappears as the number of “fires” to be put out and attorney’s billing rate increase.
One of my early clients remarked, in response to my soliloquy on a long-forgotten legal nuance, that “the clock is running,” and asked that I just provide my recommendation. Since then, I have kept my focus on linking the legal issue at hand with my clients’ need for guidance and a path forward.
With my responsibilities as an adjunct professor and my general desire to stay abreast of the law, I will always be ready for the rare occasions when the path forwarded is clouded by a legal uncertainty, but I must thank that early client for not being shy and for cutting me off so many years ago.
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The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
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This article was originally published in Law360 on July 10, 2012.
