Lisa B. Pensabene

Partner

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Lisa Barons Pensabene, head of the Firm’s Life Science Litigation practice, handles high stakes patent litigation in the pharmaceutical and chemical industries. A first chair trial lawyer, she has led more than twenty major pharmaceutical and chemical patent litigations, leading cases in bench and jury trials, arguing to the Federal Circuit, and leading briefing to the US Supreme Court. She specializes in pharmaceutical patent litigation with her experience spanning drugs for the treatment of cancers, HIV, immunological disorders, diabetes, cardiovascular disease, cold symptoms, neurological disorders, glaucoma, ophthalmic inflammation and pain. Lisa also is well-known as an expert on biosimilars litigation, and was honored to be asked by the largest biotechnology trade organization to file its amicus briefing on the meanings of the statute. Lisa is well-versed in post grant review procedures in the Patent Office, particularly inter partes review procedures.

The recipient of numerous accolades, Lisa remains most proud of clients' continuing trust in the work of her team. Lisa was nominated by LMG Life Sciences as Hatch-Waxman Litigator of the Year - Branded (2016), General Patent Litigator of the Year (2015), and named a “Life Science Star.” She was recently named to Managing Intellectual Property’s global list of the “Top 250 Women in IP” (2018-2019). She was shortlisted for the “Best Woman in Patent Law” by Euromoney in 2014 and was one of only 19 women patent lawyers in the US to be recognized in Euromoney’s “Women in Business Law Expert Guides 2013.” In her repeated recognition as a leading attorney in IAM Patent 1000, clients say: “Tenacious, tireless and thorough, Lisa is always someone you can trust.” IAM reports clients call Lisa “smart and strategic,” praise her ability to “master very complex science and explain it to a lay audience” and recount that “Lisa is a great writer and a terrific advocate in court, and a true pleasure to deal with.” She has also been listed in IAM 250: The World's Leading Patent Litigators. She is recognized by Legal 500 which notes that she heads O’Melveny’s life sciences practice. Chambers notes that she is a “key partner” in the New York office.

Honors & Awards

  • Named to Managing Intellectual Property's “Top 250 Women in IP” list and recognized as an “IP Star” (2018-2019)
  • Recognized by The Legal 500 (2016-2019)
  • Named a “Life Science Star” for Hatch-Waxman Patent Litigation, Patent Strategy & Management, General Patent Litigation by LMG Life Sciences (2015-2019)
  • Nominated as General Patent Litigator of the Year by LMG Life Sciences (2015)
  • Shortlisted, Best Woman in Patent Law, Euromoney (2014)
  • Recognized in Euromoney’s “Women in Business Law Expert Guides” (2013)
  • Recognized as a leading attorney in IAM Patent 1000
  • Listed among “The World’s Leading Patent Litigators,” IAM 250
  • Noted as a “key partner” in the New York office by Chambers

Admissions

Bar Admissions

  • New York
  • Delaware

Court Admissions

  • US District Court for the District of Delaware
  • US Court of Appeals for the Federal Circuit
  • US Supreme Court 

Education

  • Georgetown University, J.D., 1991:  magna cum laude, Order of the Coif 
  • Pennsylvania State University, B.S., Biology, 1986 

Professional Activities

Member

  • American Bar Association
  • New York State Bar Association
  • Delaware Bar Association
  • New York Intellectual Property Law Association
  • Delaware Intellectual Property Law Association
  • National Association of Women Lawyers (NAWL)

Author

  • “Potential Crisis in Patent Law?  Patent Eligibility of Medical Advances,” Legal Media Group's Expert Guides (August 2016)
  • “Solving the mystery of the patent dance,” Life Sciences Intellectual Property Review (May 2016)
  • Contributing Editor, The Sedona Conference Commentary on Patent Litigation Best Practices: Use of Experts, Daubert, and Motions in Limine Chapter (December 2015)
  • “Supreme Court to Decide Legality of Reverse-Payment Settlements in Paragraph IV Disputes,” Financier Worldwide Magazine (March 2013)
  • “Hatch-Waxman Act: Overview,” Practical Law Company (March 2013)
  • “Proving Obviousness? Understanding the Implications of In re Cyclobenzaprine,” China Intellectual Property Magazine (December 2012)
  • “New Uncertainty In Subject Matter Eligibility For Biopharma Products,” Financier Worldwide Magazine (July 2012)
  • “The Legality of Reverse Payment Settlements in Paragraph IV Disputes,” IAM Magazine (July/August 2012)
  • “Pay-for-delay – Payment Settlements in Paragraph IV Hatch-Waxman Disputes,” Financier Worldwide Magazine (April 2012)
  • “Patent Pitfalls and Opportunities for Foreign Companies Operating in the US,” China Legal Review (September 2010)
  • “Significance of Takeda v. Mylan,” IP LAW 360 (March 6, 2009)
  • “A sea change in wilful infringement,” Intellectual Asset Management (October/November 2007)
  • “Amending of § 337 to Obtain Gatt Consistency and Retain Border Protection,” Law and Policy in International Business, Vol. 22 (1991).

Featured

  • “Be All In: A Conversation with Lisa Pensabene,” Ms. JD  (February 2015)

Speaker

  • “What Can Medical Biotechnology Learn from Patent Litigation in Industrial and Agricultural Biotech?” Bio IP Counsels Committee Conference (November 14-16, 2018)
  • “The Federal Judges Speak on Paragraph IV Litigation,” ACI’s 12th Annual Paragraph IV Disputes Conference (April 23, 2018)
  • “Obviousness Update for PIV Litigation: Latest Developments in the Federal Courts and PTAB,” ACI’s 11th Annual Paragraph IV Disputes Conference (April 24, 2017)
  • “Goliath vs. Goliath Patent Wars,” BIO IP Counsels Committee Conference (November 14, 2016)
  • “On Sale Bar in a Hatch-Waxman Setting,” ACI’s 10th Annual Paragraph IV Disputes Conference (April 25-27, 2016)
  • “The Evolving Landscape of Biosimilars Litigation in the United States,” BIO IP Counsels Committee Conference (November 16, 2015)
  • “Understanding Biosimilars Law to Be Slow, Gradual Process,” Patent, Trademark & Copyright Journal, Bloomberg BNA (November 16, 2015)
  • “Biotech and Diagnostic Patents Risks:  What You Need to Know,” The Knowledge Group (June 21, 2015)
  • “Biosimilars Litigation: What’s Happening on the Dance Floor?,” NJIPLA Patent Litigation Seminar (March 18, 2015)
  • “Biosimilars Strategy Update,” BIO IP Counsels Committee Conference (November 10, 2014)
  • “Strategies for Hatch-Waxman Trials,” ACI Hatch-Waxman Master Class Conference (October 1, 2014)
  • “Supreme Court Developments,” Organization for International Investment meeting of General Counsel (September 19, 2014)
  • “Paragraph IV Disputes,” American Conference Institute (April 2014)
  • “Bio War Games,” Bio IP Counsels Committee Conference, Biotechnology Industry Organization (November 6-8, 2013)
  • “Maximizing Pharmaceutical Patent Lifecycles,” American Conference Institute (October 10, 2012)
  • “Through the Eyes of One of Ordinary Skill in the Art,” 27th Annual Joint Patent Practice Seminar, Daiichi Sankyo Co. v. Matrix Laboratories Ltd. (Fed. Cir. 2010) (April 2011)
  • “27th Annual Joint Patent Practice Seminar,” New York Intellectual Property Law Association (April 2011)
  • “Managing the Risks Associated with Injunctions and At-Risk Launches During Litigation and Appeal,” American Conference Institute’s 2nd Annual Paragraph IV Disputes: Expert Insights on Hatch-Waxman Litigation Strategies for Brand Names and Generics (May 1, 2008)
  • “Best Practices in Pharmaceutical Patent Litigation,” Polymorphism & Crystallization Forum 2004: Science, Technology & Intellectual Property (April 26, 2004)
  • “Mentoring Programs - There is One That Will Work For You!” The 2004 Women’s Leadership Conference (March 18, 2004)
  • “Walking the Tightrope: Work/Life Balance in the Profession,” Minority Corporate Counsel Association’s 4th Annual Creating Pathways to Diversity Conference (October 30, 2003)
  • Lead trial counsel for international pharmaceutical company against multiple generic challengers on patents related to treatment of HIV.
  • Lead trial counsel for international pharmaceutical company against multiple generic challengers on patents related to injectable multiple myeloma treatment.
  • Lead counsel in inter partes review relating to breast cancer treatment.
  • Lead trial counsel for international pharmaceutical company against multiple generic challengers on patents related to breast cancer treatment.
  • Lead trial counsel for international pharmaceutical company against generic company on patents related to treatment for ophthalmic inflammation in district court litigation and representing company in inter partes review.
  • Lead counsel for international biotechnology trade organization in amicus briefing in the Federal Circuit.
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