Scott Beall

Scott Beall is Of Counsel at Rakoczy Molino Mazzochi Siwik LLP.

Litigation

Dr. Beall’s practice is primarily within the field of intellectual property law and focuses on chemical, pharmaceutical, and biotechnology litigation—particularly litigation arising under the Amendments to the Food, Drug and Cosmetic Act and/or Biologics Price Competition and Innovation Act (BPCIA).

Dr. Beall has experience representing clients in proceedings before U.S. District Courts and the Federal Circuit. Dr. Beall has experience in a number of stages of litigation, including pre-suit strategy development, fact and expert discovery, the pre-trial and trial phases of federal litigation, and at the federal appellate level.

As a litigation attorney, Dr. Beall manages external clients and has built a solid base of knowledge and expertise in providing counsel. Dr. Beall is a tech-savvy professional with a diverse legal and scientific background spanning more than 15 years.

Practice Before the U.S. Patent and Trademark Office

Dr. Beall, who has a Doctorate in Organic Chemistry and is registered to practice before the United States Patent and Trademark Office, has experience with inter partes review petitions, including preparation of IPR petitions.

Opinion Work and Patent Counseling

Dr. Beall has prepared opinions of counsel for clients on a variety of intellectual property issues and with respect to a wide range of pharmaceutical technologies, including with respect to small molecule chemistry, pharmaceutical compounds, pharmaceutical formulations, polymorphic forms of active pharmaceutical ingredients, immediate and extended-release dosage forms, injectable dosage forms, inhalation dosage forms, topical dosage forms, and/or pharmaceutical dosing methods.

Dr. Beall has also prepared a number of freedom to operate opinions and has assisted clients with their due-diligence efforts.

Representative Matters

Vifor Fresenius Medical Care Renal Pharma Ltd. et al v. Lupin Atlantis Holdings SA et al. (D. Del.): Represented Lupin in a Hatch-Waxman litigation concerning patents related to sucroferric oxyhydroxide (Velphoro®). Case resolved by settlement with favorable terms for client.‘

Previous Experience

Prior to joining RakoczyMolinoMazzochiSiwikLLP, Dr. Beall was an associate at Green, Griffith & Borg-Breen LLP and Leydig, Voit & Mayer, Ltd.

Prior to joining RakoczyMolinoMazzochiSiwikLLP, Dr. Beall’s litigation experience included:

• Coordinating inventors and experts to analyze and map proof of patent validity concerning Horizon Pharma’s PENNSAID® (diclofenac sodium topical solution) 2% w/w that delivered a victory over potential generic competitors in the District Court ensuring years of market exclusivity.
• Directing scientific experts to define and establish proof of patent infringement by potential generic competitor of Horizon Pharma’s RAYOS® (prednisone) delayed-release tablets that resulted in a favorable settlement that saved the client significant legal fees and ensured years of market exclusivity.
• Strategizing and executing creative patent infringement defense resulting in a victorious finding of non-infringement of x-ray film patents at issue in the District Court and on appeal to the Federal Circuit saving client millions in damages.
• Implementing successful patent infringement action against competitor manufacturer of stereolithography machines that attained millions in damages for our client.
• Devising strategy to identify chemical entity in client’s product that avoided lengthy and costly patent infringement action.
• Establishing crucial evidentiary record through developing, advising, consulting, educating, and training on legal hold, large-scale e-discovery, document preservation and collection projects resulting in reviewing and producing millions of pages effectively, efficiently, and within budget.
• Co-authoring the Intellectual Property Law Association of Chicago’s (IPLAC) amicus brief to the Supreme Court in Nautilus v. Biosig Instruments that foreshadowed the Court’s ultimate decision articulating the ‘reasonable certainty’ standard for claim definiteness.

Prior to attending law school, Dr. Beall performed pharmaceutical research for the R.W. Johnson Pharmaceutical Research Institute (Johnson & Johnson). Dr. Beall was a NIH Postdoctoral Fellow (National Research Service Award). During his fellowship, Dr. Beall utilized novel chemical rearrangements to synthesize the alkaloid framework of many heterocyclic natural products.