Joseph M. Bennett-Paris, Ph.D.

Partner Emeritus (Retired) Chicago

Contact Info

Summary

Joe joined Taft’s Pharmaceutical and Life Sciences Litigation practice in 2014 and practiced in Atlanta and Chicago. For over 20 years, Joe counseled clients in all areas of patent law, including patent prosecution, non-infringement, patentability, freedom-to-operate, invalidity, and licensing. His practice primarily focused on biotechnology, pharmaceuticals, chemistry, biosimilars, and medical devices, including dental products. Joe expanded his practice to include client counseling in the cannabis and medical marijuana field.

Notably, for ten years, Joe represented Pharmasset, Inc., which was acquired by Gilead Inc. in 2011 for $11 billion. While representing Pharmasset, Joe directed the prosecution and strategy of the patents covering the recently approved drug SOVALDI® (sofosbuvir), a 2′-methyl nucleoside compound— the first in a new class of nucleotide polymerase inhibitors— that is the first all oral treatment to bring about a near eradication of hepatitis C in patients infected with the virus.

For several years, Joe’s practice focused on the generic drug industry. Prior to entering law, he served on the faculty of the Wake Forest University School of Medicine, and because of this intimate knowledge of academia, he provided unique contributions to several Hatch-Waxman cases, particularly in finding and working with expert witnesses and inventors.

Joe was a frequent lecturer and author on intellectual property-related topics and pharmaceuticals. He was a preceptor to PharmD students through the Mercer School of Pharmacy. Also, he co-authored a chapter with Richard Ruzich titled “Pre-Clinical R&D” in ANDA Litigation: Strategies & Tactics for Pharmaceutical Patent Litigators, 3rd ed. (in press).

Joe’s practice also included copyright matters and entertainment law, particularly with regard to the music and publishing industries. He devoted a significant amount of pro bono work to the arts community through the Georgia Lawyers for the Arts, where he also served on the Advisory Board. In 2020, Joe was recognized as a Patent Pro Bono Attorney by the USPTO. In addition, he sat on the board of several non-profit organizations, including A5 Volleyball Club, the premier junior club volleyball organization in the Southeast for both girls’ and boys’ volleyball.

Joe earned his J.D. from the University of North Carolina School of Law, his Ph.D. in pharmacology from Loyola University Chicago, and his bachelor’s degree in biological sciences from the University of Southern California. While at the University of Southern California, he had the good fortune to study undergraduate chemistry from Arieh Warchel, 2013 Nobel Prize recipient in Chemistry.

Awards

Taft Pro Bono Honor Roll Award

(2022)
USPTO Recognized Patent Pro Bono Attorney (2020-2021)

Education

University of North Carolina Chapel Hill School of Law (1999)
Loyola University of Chicago (1988)
Ph.D. – Pharmacology
University of Southern California (1983)
B.S. – Biological Sciences

Admissions

Federal - United States Patent and Trademark Office
State - Georgia

Notable Matters

Abbott Laboratories et al. v. Sandoz Inc., Case No. 11-424 (GMS). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s ZEMPLAR® (paricalcitol).
Aventis Pharma S.A. and Sanofi-Aventis U.S. LLC v. Apotex Inc. and Apotex Corp., Case No. 08-496-GMS (D. Del. 2010). Patent infringement action regarding Apotex’s ANDA to make a generic version of Sanofi-Aventis’ anticancer product TAXOTERE®, the active ingredient of which is docetaxel. Following a two-week trial, obtained an order for Apotex striking down the patents-in-issue as invalid as obvious and unenforceable due to Sanofi-Aventis’ inequitable conduct in procuring the patents. Successfully argued on appeal with the Federal Circuit affirming trial court decision. Of importance is that inequitable conduct defense remains viable in ANDA litigations because of this ruling.
Ferring v. Apotex, Case No. 3:11-cv-0481-RCJ-VPC (D. Nev.). Patent infringement action regarding Apotex’s ANDA to make a generic version of LYSTEDA® (tranexamic acid).
Allergan v. Apotex, Case No. 2:12-cv-178 (E.D. TX). Patent infringement action regarding Apotex’s ANDA to make a generic version of ACULAR LS® (0.4% ketorolac tromethamine).
Wyeth v. Apotex Inc. and Apotex Corp., Case No. 08-022308 (S.D. Fla.). Patent infringement action regarding Apotex’s ANDA to make a generic version of Wyeth’s anti-depressant product EFFEXOR XR® (venlafaxine hydrochloride).
Pfizer v. Apotex Inc., Case No. 1:12-cv-00809-SLR (D. Dela). Patent infringement action regarding Apotex’s ANDA to make a generic version of PRISTIQ® (desvenlafaxine).
Shire LLC, et al. v. Sandoz Inc., Case No. 11-01110-RBJ-KMT (D. Col.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Shire’s ADHD product INTUNIV® (guanfacine hydrochloride).
Genentech, et al. v. Sandoz, Case No. 11-1925-JSW (N.D.Cal.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Roche’s VALCYTE® (valganciclovir hydrochloride).
Helsinn Healthcare S.A. et al. v. Sandoz Inc. et al,, Case No. 3:11-03962-MLC (D.N.J.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Helsinn’s anti-nausea product ALOXI® (palonosetron hydrochloride injection).
Abbott Laboratories et al. v. Sandoz Inc., Case No. 10-538-SLR (D.Del.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s cholesterol product NIASPAN® (niacin).
Abbott Laboratories et al. v. Sandoz Inc., Case No. 11-424-GMS. Patent infringement action regarding Sandoz’s ANDA to make a generic version of Abbott’s ZEMPLAR® (paricalcitol).
Allergan, Inc. v. Sandoz Inc., Case No. 09-097-TJW (ED. Tex). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Allergan’s glaucoma drops COMBIGAN® (brimonidine tartrate/timolol maleate).
Medicis Pharmaceutical Corp. v. Sandoz Inc., et al., Case No. 09-033-JJF (D.Del.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Medicis’ acne product SOLODYN® (minocycline hydrochloride).
Alcon Research, Ltd. et al. v. Sandoz Inc., Case No. 09-0103-RLY-JMS (S.D. Ind.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Alcon’s eye allergy product PATANOL® (olopatadine hydrochloride).
Merck & Co., Inc. v. Sandoz Inc., Case No. 09-890-MLC-JJH (D. N.J.). Patent infringement action regarding Sandoz’s ANDA to make a generic version of Merck’s anti-nausea product EMEND® (aprepitant).

Speeches and Publications

“Obviousness Analysis Trends in Pharma Patent Cases,” in Law360, published May 6, 2019; co-authored with Roshan Shrestha, Ph.D.
“Pre-Clinical R&D” in Pre-ANDA Litigation: Strategies and Tactics for Developing a Drug Product and Patent Portfolio, Second Edition, Kenneth L. Dorsney (ed.) American Bar Association; (2018) ISBN: 978-1-64105-118-7; co-authored with Richard Ruzich
“Use of Reissue Proceedings In Hatch-Waxman Litigation, in ANDA Litigation: Strategies & Tactics for Pharmaceutical Patent Litigators Second Edition, Kenneth L. Dorsney (ed.) American Bar Association; (2016) ISBN 978-1-63425-458-8; co-authored with Andrew Alul and Richard Ruzich.