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 major pharmaceutical and chemical patent litigations in bench and jury trials, and arguments on appeal. She specializes in pharmaceutical patent litigation with her experience spanning treatment of cancers, HIV, immunological disorders, diabetes, cardiovascular disease, neurological disorders, ophthalmic disorders and pain. Lisa also is well-known as an expert on litigation on biologics, including biosimilars. Lisa is well-versed in post grant review procedures in the Patent Office, particularly inter partes review procedures. Lisa is committed to diversity in the profession and is one of the co-founders of WIN: Women in IP Network.
The recipient of numerous accolades, Lisa remains most proud of clients’ continuing trust in the work of her team. Lisa was named a BTI Client Service All Star (2021, 2022), Hatch-Waxman Litigator of the Year - Branded by LMG Life Sciences (2020) and a “Life Science Star.” She was named to Managing Intellectual Property’s global list of the “Top 250 Women in IP” (2018-2022). 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 “take apart opposing experts on cross-examination with ease.” They recount that “Lisa is a great writer and a terrific advocate in court, and a true pleasure to deal with.” She repeatedly has 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.
- Lead counsel for international pharmaceutical company on patents related to treatment of irritable bowel syndrome.
- Lead counsel for international pharmaceutical company on patents related to treatment of hypotrichosis.
- Lead trial counsel for international pharmaceutical company against multiple generic challengers on patents related to treatment of HIV.
- Lead counsel for international pharmaceutical company in BPCIA litigation.
- Lead counsel for international pharmaceutical company in negotiations on phage display technology.
- 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.
- Lead counsel for international biotechnology company on issues of biosimilars and inter partes review.
- Lead trial counsel for international pharmaceutical companies against generic companies on patents related to anti-platelet treatment.
- Lead trial counsel for international pharmaceutical company against biotechnology company on patents related to recombinant antibodies.
- Patent counsel for international pharmaceutical company in antitrust action relating to enforcement of patents on syringes.
- Co-lead trial counsel for international pharmaceutical company against generic company on numerous patents covering an ophthalmic antibiotic preparation.
- Lead trial counsel for international pharmaceutical company against generic companies on a patent covering an immunosuppressant drug.
- Lead trial counsel for biotechnology company against the Patent Office in district court action on patent term extension.
- Lead trial counsel for international pharmaceutical company against generic company on a patent on an angiotensin receptor blocker used as an active ingredient in high blood pressure medicines.
- Represented international pharmaceutical company against generic company on a patent relating to a herpes treatment.
- Lead trial counsel for international pharmaceutical company against generic companies on a patent covering a treatment for symptoms of Sjogren's Syndrome.
- Represented international pharmaceutical company against generic companies on a patent covering a treatment for psychotic disorders.
- Lead trial counsel for international pharmaceutical company against generic companies on a patent for the formulation of a beta blocker treatment for high blood pressure and angina pectoris.
- Lead trial counsel for international pharmaceutical company against generic companies in a multi-district litigation on patents covering a calcium channel blocking treatment for high blood pressure.
- Represented international pharmaceutical company against another international pharmaceutical company on a patent for a treatment to prevent diabetes.
- Represented international pharmaceutical company against generic companies on a patent for a nasally administered pain medication.
- Represented international chemical company against international chemical company on a patent relating to a tire yarns.
- Represented international chemical company against international chemical company on a patent relating to magnetic recording tape.
Admissions
Bar Admissions
- New York
- Delaware
Court Admissions
- US District Court for the District of Delaware
- US District Court for the District of Colorado
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Second Circuit
- US Supreme Court
Education
- Georgetown University, J.D., 1991: magna cum laude, Order of the Coif
- Pennsylvania State University, B.S., Biology, 1986
Honors & Awards
- Named a “National Practice Area Star” and “Litigation Star” in Intellectual Property by Benchmark Litigation (2024)
- Recognized by Best Lawyers® for Biotechnology and Life Sciences Practice in New York (2024)
- Recognized by Chambers USA for Intellectual Property: Patent (2023)
- Recommended by The Legal 500 US for Patents: Litigation (Full Coverage) (2022, 2023)
- Recommended by The Legal 500 US for Healthcare: Life Sciences (2022, 2023)
- Repeatedly recognized as a leading attorney in IAM Patent 1000
- Included in the 2023 edition of the IAM Global Leaders Guide
- Recognized by Managing Intellectual Property's "Top 250 Women in IP" global list (2018-2022)
- Named a “Client Service All-Star” by The BTI Consulting Group (2021, 2022)
- Named a “National Practice Area Star” and “Local Litigation Star” in Intellectual Property by Benchmark Litigation (2021-2023)
- Named a "National Top 30 Life Sciences Practitioner in the US" in Euromoney's Best of the Best USA Expert Guide (2021)
- Named Hatch-Waxman Litigator of the Year - Branded by LMG Life Sciences (2020)
- Recognized in Euromoney's "Best of the Best USA Expert Guide" (multiple years)
- Named to Managing Intellectual Property's “IP Stars” list (2018-2020)
- Recognized by The Legal 500 US (2016-2021)
- Named a “Life Science Star” for Hatch-Waxman Patent Litigation, Patent Strategy & Management, General Patent Litigation by LMG Life Sciences (2015-2020, 2022)
- Nominated as Best Hatch-Waxman Litigator of the Year by LMG Life Sciences (2016-2019, 2022)
- 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)
- Listed among “The World’s Leading Patent Litigators,” IAM 250
- Noted as a “key partner” in the New York office by Chambers
Professional Activities
Co-founder
- WIN: Women in Intellectual Property Network
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)
- ChIPs
Author
- “AI and Life Sciences Patents: Separating Myth From Reality,” New York Law Journal (March 2020)
- “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
- Leading by Example: Elevating Women through Intentionality, ABA Landslide (December 2019)
- “Be All In: A Conversation with Lisa Pensabene,” Ms. JD (February 2015)
Speaker
- Panelist, "General Counsel Roundtable," Pro Bono Institute (October 26, 2021)
- Panelist, “World Recognition of Distinguished General Counsel: Honoring Jonathan Graham & The Law Department of Amgen,” Director’s Roundtable (April 20, 2021)
- Panelist, 2021 Sedona Conference on Remote Case management (June 10, 2021)
- Preconference Seminar on Careers in IP Law, ACI Women Leaders in IP Law (March 9, 2021)
- "The Present State of Paragraph IV Litigation and Its Impact on the Pharmaceutical Industry: Legal Analyses and Business Prognoses" ACI's 13th Annual Paragraph IV Disputes Conference (April 29, 2019)
- “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)
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