A. Joy Arnold

Ms. Arnold is a partner in the Intellectual Property practice group in the firm's New York office.

Areas of Practice

Her practice focuses on all aspects of intellectual property litigation, with an emphasis on complex patent litigation involving the pharmaceutical and chemical arts.

Education

• J.D., University of Pennsylvania Law School, 1991, Associate Editor, The Law Review
• M.A., Wesleyan University
• A.B., Brown University

Admissions

• New York
• New York Eastern District Court
• New York Southern District Court
• New York Western District Court
• Court of Appeals for the Federal Circuit
• U.S. Supreme Court
• U.S. Patent and Trademark Office

Representative Engagements:

IP Litigation:

• Represented pharmaceutical company in an ANDA patent litigation regarding pramipexole dihydrochloride formulations. Boehringer Ingelheim v. Mylan Laboratories, Inc., (D. Del.).
• Represented pharmaceutical company in two ANDA patent litigations regarding ACE inhibitor formulations. Warner-Lambert Co. v. Teva Pharmaceuticals USA; Schwarz Pharma, Inc., Schwarz Pharma AG and Warner-Lambert Co. v. Teva Pharmaceuticals USA (D.N.J.).
• Represented eye-care products manufacturer in patent litigation regarding the antibacterial properties of contact lens care products containing proteolytic enzymes and antimicrobial agents. Bausch & Lomb Inc. v. Alcon Laboratories, Inc. (W.D.N.Y.).
• Represented the declaratory judgment plaintiffs in a three-month patent infringement jury trial involving a lung surfactant replacement drug for the treatment of respiratory distress syndrome. Forest Laboratories, Inc. and ONY, Inc. v. Abbott Laboratories and Tokyo Tanabe Co. (W.D.N.Y.).
• Represented eye-care products manufacturer in ANDA litigation concerning an ophthalmic eye care product. Merck & Co., Inc. v. Alcon Laboratories, Inc. (D. Del.).
• Represented licensing arm of limited partnership in patent litigation involving computer-telephony. Ronald A. Katz Technology Licensing L.P. v. Avon Products, Inc., et al., (C.D. Cal. MDL patent cases).
• Represented home furnishings manufacturer in design patent case regarding window shades. Park B. Smith v. CHF Industries, (S.D.N.Y)
• Represented knee-brace manufacturer appealing from an adverse jury verdict of patent infringement. Medical Technology, Inc. (d/b/a Bledsoe Brace Systems) v. Generation II Orthotics Inc. (Fed. Cir.).
• Represented plaintiff in a patent infringement litigation relating to tax-favored insurance for future contributions to 401(k) plans.  Schoen v. Corporate Compensation Plans, Inc. (D. Conn.).
• Represented defendant in patent infringement action pertaining to chip scale packaging technology. Texas Instruments Incorporated v. Tessera, Inc. (N.D. Cal.).
• Represented plaintiff in patent infringement action pertaining to microprocessor circuitry. Via Technologies, Inc. and Centaur Technology, Inc. v. Intel Corporation (W.D. Tex.).

 IP Opinion, Counseling, Patent Office and Due Diligence Experience:

• Represented Orc Software AB in connection with licensing dispute.
• Represented Teva Pharmaceuticals USA in connection with preparation of various Paragraph IV certifications.
• Represented Shell Oil Company in connection with patent opinion work on various chemical products.
• Represented Biogen Idec in connection with the prosecution of its world-wide patent portfolio directed to Hepatitis B vaccines and diagnostics.
• Represented Douglas G. Noiles and Johnson & Johnson in interference-related arbitration and industry-wide litigation arising from patents on modular total hip implant devices. Noiles v. Church, Interference No. 102,732; Joint Medical Products Corporation v. Depuy Inc. et al. (D. Conn.).
• Represented Alcon Laboratories in connection with an interference and a reexamination involving contact lens care products.
• Represented Bank of America in connection with due diligence investigation involving a potential acquisition.
• Represented eV3 in connection with the medical device manufacturer’s initial public offering.

Honors

• In 2000, Crain’s New York Business profiled Ms. Arnold’s litigation successes in its “Forty Under Forty: New York Rising Stars” feature.
• In 2005, the YWCA of the City of New York selected Ms. Arnold for induction into its Academy of Women Leaders in recognition of her outstanding professional accomplishments.

Memberships

• American Intellectual Property Bar Association
• American Intellectual Property Law Education Foundation Scholarship Committee
• New York Intellectual Property Law Association

Articles

Legal Publications:

• “Research Tool Patents in Legal Limbo: The Last Chapter in Integra v. Merck” IP Law and Business, September 2007.
•  “Authorized Generics:  The Latest Challenge To The Hatch-Waxman Act,” IP Value 2007:  Building and Enforcing Intellectual Property Value:  An International Guide for the Boardroom, 107 (Joff Wild ed. 2007).
•  “The Effect Of Proposed Patent Reform Legislation On Hatch Waxman’s Abbreviated New Drug Application Procedures,” IP Value 2006:  Building and Enforcing Intellectual Property Value:  An International Guide for the Boardroom, 97 (Joff Wild ed. 2006).
•  “Patent Business and Litigation Issues for Universities,” From IP to IPO:  Key Issues In Commercialising University Technology, 37 (Joff Wild ed. 2005).
•  “Recent Hatch Waxman Reform: Balancing Innovation, Competition and Affordability,” IP Value 2005: Building and Enforcing Intellectual Property Value: An International Guide for the Boardroom, 107 (Joff Wild ed. 2005).
•  “Pharmaceutical Manufacturers Confront New Patent Infringement Considerations and Increased Anti-Competitive Scrutiny In Connection With Hatch-Waxman Act Litigation,” IP Value 2004: Building And Enforcing Intellectual Property Value: An International Guide For The Boardroom, 118 (Joff Wild ed. 2004).
•  “Should ANDA Defendants Get Juries?,” National Law Journal, April 15, 2002, at C14.
•  “The Hatch-Waxman Act: Legal Considerations For Pharmaceutical Manufacturers,” Building And Enforcing Intellectual Property Value: An International Guide For The Boardroom 2003, 136 (Joff Wild ed. 2002).
•  “Split Trials Skirt Privilege Dilemma,” National Law Journal, May 14, 2001, at C9.
•  Developing, Testing, and Marketing an AIDS Vaccine:  Legal Concerns for Manufacturers, University of Pennsylvania Law Review, 139:1077 (April 1991).