Overview

Joseph A. Hynds is a first-chair patent litigator with over three decades of experience achieving successful outcomes in complex cases for clients that span the technical gamut, including pharmaceuticals, biotechnology, medical devices, agricultural equipment, security systems, telecommunications, and e-commerce. Whether representing his clients in litigation or post-grant proceedings before the Patent Trial and Appeal Board (PTAB), providing pivotal counsel on a variety of IP issues, or managing complex patent portfolios, Joe is focused on aggressively representing his clients’ interests.

While the majority of Joe’s work concentrates on representing clients in federal courts around the country and appeals to the U.S. Court of Appeals for the Federal Circuit, he also has substantial experience in handling post-grant proceedings before the PTAB. He has been lead counsel in numerous inter partes review (IPR), post grant review (PGR), and covered business method (CBM) proceedings. He also has significant experience in patent interference matters before the U.S. Patent and Trademark Office (USPTO) and in the federal courts.

Joe regularly counsels clients on a wide variety of intellectual property matters, including opinions of counsel on infringement, validity, and enforceability issues, freedom to operate evaluations, and on licensing matters. He also has substantial experience in conducting due diligence investigations in connection with IP portfolio evaluation and acquisition.

Joe also manages, oversees, and provides strategic guidance on sizeable patent portfolios for many clients in a wide variety of technical areas. He began his career as a patent examiner at the USPTO, which was a natural segue into front-line patent drafting and prosecution. Over time, he has evolved in to a manager of teams of patent attorneys, operating in a strategic, supervisory role that leverages his experience, judgment, and expertise.

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

Various third-party attorney rankings have included Joe in their lists that identify attorneys who provide exemplary results and service to their clients. Joe is recognized by Intellectual Asset Management’s (IAM) Patent 1000 – The World’s Leading Patent Professionals (2013-2021) in the DC Metro Area and Nationally, and he was selected to the Washington, DC Super Lawyers list in the field of Intellectual Property Litigation (2012-2022). In 2018, 2020, and 2021, he was included in the Top 100 Washington, DC Super Lawyers list. He is ranked as a Life Sciences Star by LMG Life Sciences (2016-2021) and he has repeatedly been included in The Best Lawyers in America® guide (2013-2022) in the fields of Litigation – Intellectual Property, Litigation – Patent and Patent Law.

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

U.S. 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 (ITC)

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

Honors & Recognitions

Intellectual Asset Management’s (IAM) Patent 1000 – The World’s Leading Patent Professionals (2013-2021)
Ranked silver in Litigation in the D.C. Metro Area; ranked for Post-Grant Proceedings nationwide

Washington, D.C. Super Lawyers (2012-2022)
Ranked for Intellectual Property Litigation
Included in the Washington, D.C. Super Lawyers Top 100 list (2018, 2020 and 2021)

The Best Lawyers in America© in Washington, D.C. (2010-2022)
Ranked in the fields of
Litigation – Intellectual Property, Litigation – Patent, Patent Law, and Trademark Law

LMG Life Sciences (2016-2021)
Named a Life Sciences Star

Managing Intellectual Property (MIP) IP Stars (2017-2022)
Ranked as a Patent Star in the District of Columbia and in the U.S. (National)

Newsroom

News

Speaking Engagements

American Conference Institute's (ACI) Paragraph IV Disputes Conference, "PTAB Update: Wins, Losses and Appeals" panel participant - New York, NY - April 23-24, 2018

American Conference Institute's (ACI) Paragraph IV Dispute Conference, "Pharmaceutical Patent Invalidity Challenge Score Card: District Courts v. The PTAB" panel participant - New York, NY - April 25-26, 2016

American Conference Institute's (ACI) 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 

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)

Publications

Intellectual Asset Management (IAM) Issue 76 Co-published feature, "A closer look at the PTAB’s new post-issuance review procedures", Interviewee, March/April 2016

"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

Community & Professional

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

Member of the American Intellectual Property Law Association (AIPLA)

Education

J.D., The George Washington University Law School (with honors)

B.A., Physics, Wabash College

Bar & Court Admissions

Bar Admissions

  • District of Columbia
  • Virginia
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U. S. Court of Appeals for the District of Columbia
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