Joshua A. Davis
Joshua A. DavisCounsel
New York
jdavis@oreillyip.com
212 540 0645

Highlights

Joshua is a former general counsel with over a decade of experience litigating Hatch-Waxman and other pharma and biotech patent disputes.

Joshua has played leading roles in more than 16 disputes involving patented small molecule and biologic drugs. (See representative matters below.) He has supported numerous trials and Federal Circuit appeals; taken and defended dozens of depositions; developed winning case theories; and led attorney teams throughout complex international discovery. He particularly enjoys identifying, vetting, and working with expert witnesses. Joshua has been recognized as a Super Lawyers Rising Star in IP Litigation.

In addition to his litigation experience, Joshua has counseled clients on patent and FDA regulatory matters at all stages of the product life cycle. Joshua has also worked with smaller, entrepreneurial clients on technology commercialization, IP and software licensing, data privacy, and a wide variety of commercial contracting issues.

Joshua has a strong background in life sciences research. At Yale, he studied RNA-protein interactions in the laboratory of Jennifer Doudna. As a graduate student at The Scripps Research Institute, he developed electronic microscopy techniques and image processing software to study large molecular structures, generating the first 3D model of a complex at the heart of regulated gene expression.

Earlier in his legal career, Joshua was an associate with Fitzpatrick, Cella, Harper & Scinto in New York before serving as Of Counsel to Womble Bond Dickinson in Atlanta.  Joshua was recently the GC and COO of an innovative pharmacy engaged in formulation and dosage form development and the custom preparation of prescription drug therapies.

Joshua is admitted to practice in New York and Georgia and is registered to practice before the USPTO. He is also admitted in the following federal courts: Federal Circuit, SDNY, EDNY, WDNY, and N.D. Ga. He has appeared in numerous other federal courts and in the ICC International Court of Arbitration.

  • Emory University School of Law, J.D.
  • Yale University, B.S. with distinction in Molecular Biophysics and Biochemistry
  • The Scripps Research Institute, graduate studies in Macromolecular and Cellular Structure and Chemistry
  • Obtained $100M+ award in international biotechnology license arbitration. Conceived and marshaled evidence to support additional royalty theory resulting in $10M+ increased award. Led U.S. team in successful, coordinated international enforcement strategy.
  • Orchestrated document collections from US, UK, France, and Switzerland and managed 15+ attorneys in the on-time production of 2M+ pages of documents.
  • Negotiated client’s dismissal from Hatch-Waxman declaratory judgment action involving disclaimed Orange Book patents and “parked” exclusivity for a peptide drug.
  • Represented client in false advertising and patent infringement action involving nutritional supplements. Uncovered critical case law to defeat motion to dismiss. Argued claim construction and motions to compel discovery. Successfully defended in-house legal team accused of spoliation of evidence.
  • SANOFI/BMS v. Apotex (SDNY/CAFC) Plavix® Hatch-Waxman, trial + appeal
  • SANOFI/DEBIOPHARM v. 10+ (DNJ/CAFC) Eloxatin® Hatch-Waxman, settled
  • UCB v. Mylan/Dr. Reddy’s/Cobalt (N.D. Ga.) Keppra® Hatch-Waxman, settled
  • WARNER-CHILCOTT v. 3+ generics (DNJ) Atelvia® Hatch-Waxman
  • Glenmark v. Ferring/SANOFI (DNJ) desmopressin Hatch-Waxman, DJ dismissal
  • ASTRAZENECA v. 8+ generics (DNJ/CAFC) Seroquel XR® Hatch-Waxman, bench trial + appeal
  • Sunovion v. various (DNJ) (non-party SANOFI) Lunesta® Hatch-Waxman, contractual
  • Purdue v. Novel/Actavis (non-party SANOFI) Intermezzo® Hatch-Waxman, subpoena
  • HOECHST v. Genentech (ICC/SDNY) (arbitration) Rituxan® biotech, antibodies, $100M+ award
  • SANOFI v. Genentech/Biogen (N.D. Cal./CAFC) HCMV enhancer biotech, expression system
  • BAYER HEALTHCARE v. Abbott Labs (D.Mass.) Humira® biotech, antibodies, settled on appeal
  • Genentech v. REGENERON/SANOFI (SDNY) Zaltrap®/Eylea® biotech, fusion proteins, settled
  • Regeneron v. Merus (SDNY) (non-party SANOFI) VelocImmune® mouse biotech, GMO, subpoena
  • Esoterix v. Life Techs. (non-party GENZYME) DNA diagnostics biotech, subpoena
  • EUROPEAN CENTRAL BANK v. DSS (WDNY) foreign judgment settled, full payment to client
  • MARS PETCARE v. TruRX (E.D. Va.) Temptations® treats animal health, settled
  • MARS PETCARE v. TruRX (E.D. Tex.) pet breath fresheners animal health, jury trial
  • MARS PETCARE v. TruRX (M.D. Tenn.) pet health products animal health, settled
  • BAUSCH & LOMB v. Vitamin Health (WDNY) PreserVision® nutritional supplement, settled
  • FERRING v. Serenity (D.Del./SDNY) NoctivaTM pharma / non-Hatch-Waxman