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

        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.

      image description

      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