Overview

Joel M. Wallace works primarily in intellectual property litigation, with significant experience in patent and trademark litigation and non-litigation analyses across a range of industries including pharmaceuticals, medical devices and consumer goods and services. As part of his practice, he regularly prepares Hatch-Waxman Paragraph IV letters, advises clients on patent and regulatory issues, and advocates for clients in litigation, including fact discovery, expert discovery, trial, and appeal. Joel also has experience in post-grant review practice before the PTO, including preparation of petitions for inter partes review.

Previous Experience

Prior to joining Schiff Hardin, Joel was an associate in the Chicago office of an international law firm.

  • Experience

     

    • Forest Laboratories, LLC v. Hikma Pharmaceuticals, LLC, 14-cv-1119 (D. Del.)
    • AstraZeneca AB v. Aurobindo Pharma Ltd., 14-cv-664 (D. Del.)
    • AztraZeneca AB v. Lupin Ltd., 11-cv-2317 (D.N.J.)
    • Allergan, Inc. v. Akorn, Inc., 14-cv-1034 (M.D.N.C.)
    • HomeVestors of America, Inc. v. Robyn Thompson, 15-cv-3616 (N.D. Tex.)
    • Antares Pharma, Inc. v. Medac Pharma Inc., 14-cv-270 (D.Del.)
    • Sanofi v. Alkem Laboratories, Ltd., 14-cv-292 (D.Del.)
    • Janssen Pharmaceuticals, Inc. v. Actavis Elizabeth LLC, 13-cv-4507 (D.N.J.)
    • Pfizer Inc. v. Fresenius Kabi USA, LLC, 13-cv-1893 (D.Del.)
    • Merck Sharp & Dohme Corp. v. Fresenius Kabi USA, LLC, 14-cv-4989 (D.N.J.)

    Joel also participated in the following patent litigation matters prior to joining Schiff Hardin:

    • In re Fenofibrate Patent Litigation, 11-md-2241 (S.D.N.Y.)
    • King Pharmaceuticals, Int. v. Teva Parenteral Medicines Inc., 09-cv-0652 (D.Del.)
    • Janssen Pharmaceuticals, Inc. v. Sun Global Pharma FZE, 11-cv-6089 (D.N.J.)
    • Shire Canada Inc. v. Alkem Laboratories, LLC, 11-cv-0206 (N.D.Ill.)
    • In re Nebivolol Patent (‘040) Litigation, 12-cv-5026 (N.D.Ill.)
    • Merck & Co., Inc. v. Sun Pharmaceutical Industries, Ltd., 12-cv-5374 (D.N.J.)
    • Avanir Pharmaceuticals, Inc. v. Actavis South Atlantic LLC, 11-cv-704 (D.Del.)
    • Endo Pharmaceuticals Inc. v. Watson Laboratories, Inc., 2:13-cv-192 (E.D.Tex.)
    • Antares Pharma, Inc. v. Medac Pharma, Inc., 14-cv-270 (D.Del.)
    • LoggerHead Tools, LLC v. Sears Holding Corp., 1:12-cv-9033 (N.D.Ill.)
  • Credentials

    Education

    • University of California - Berkeley - School of Law, J.D., 2010
      Order of the Coif
      Berkeley Technology Law Journal, Publication Editor, Articles Editor, Associate Editor
      Berkeley Center for Law & Technology, Fellow
    • Northwestern University, B.A., English, 2004

    Bar Admissions

    • Illinois
    • U.S. Court of Appeals for the Federal Circuit
    • U.S. District Court for the Northern District of Illinois
    • U.S. District Court for the Northern District of Texas
      • Insights

        TITLE
        Article

        What if Pfizer Could Donate Data to NIH? One Proposal to Promote Public Good

        Pfizer’s recent decision not to disclose data about Enbrel’s potential to treat Alzheimer’s disease has caused much debate about drugmakers’ obligations to the public.

        In The News
        Alert

        How Pharmaceutical Companies Can Navigate FDA During Shutdown

        As the government shutdown stretches on, pharmaceutical companies must manage the partial shutdown of the U.S. Food and Drug Administration (FDA).

        News Release

        Schiff Hardin Elects 10 New Partners

        Schiff Hardin is pleased to announce that 10 attorneys have been elected to its partnership, effective January 1, 2019.

        News Release

        Schiff Hardin Secures Patent Infringement Win

        Schiff Hardin successfully secured a favorable outcome for our client, Fresenius Kabi USA LLC, in a patent-infringement suit filed by Hospira Inc., which paves the way for Fresenius to market a new generic drug.

        In The News
        Alert

        U.S. Pharmaceutical and Biologics Industries Could See Steep Potential Consequences from Texas Judge’s ACA Decision

        In the quick pound of a gavel, the entire U.S. pharmaceutical and biologics industries were thrown into doubt after Judge Reed O’Connor of the United States District Court for the Northern District of Texas found the individual mandate of the Affordable Care Act (ACA) – and therefore the entire act – unconstitutional.

        Alert

        Pharmaceutical and Technology Industry Innovation Growth at Stake in Helsinn Healthcare v. Teva

        Today’s oral arguments in Supreme Court case Helsinn Healthcare v. Teva illustrate the power that a successful appeal could have to change a longstanding doctrine and significantly impact how businesses handle intellectual property transactions.

        Other Publications

        • "Rambus v. F.T.C. in the Context of Standard-Setting Organizations, Antitrust, and the Patent Hold-Up Problem," Berkeley Technology Law Journal (2009)
        • "Surfacing from the Depths: Submarine Issues in Copyright and Rights of Publicity Licensing," in Understanding the Intellectual Property License 2008, Practising Law Institute (2008)
      • Citizenship

        Pro Bono Activities

        Joel represented plaintiffs in a putative class action suit regarding the issuance of immigration detainers against foreign-born U.S. citizens or legal permanent residents without investigation.

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      How is Actavis rule of reason shaping state law?

      As demonstrated by the California Supreme Court's recent Cipro reverse payment decision, Actavis' ʺrule of reasonʺ is not just guiding federal courts anymore. More