Marc J. Pensabene

Partner

Thank you for your interest. Before you communicate with one of our attorneys, please note: Any comments our attorneys share with you are general information and not legal advice. No attorney-client relationship will exist between you or your business and O’Melveny or any of its attorneys unless conflicts have been cleared, our management has given its approval, and an engagement letter has been signed. Meanwhile, you agree: we have no duty to advise you or provide you with legal assistance; you will not divulge any confidences or send any confidential or sensitive information to our attorneys (we are not in a position to keep it confidential and might be required to convey it to our clients); and, you may not use this contact to attempt to disqualify O’Melveny from representing other clients adverse to you or your business. By clicking "accept" you acknowledge receipt and agree to all of the terms of this paragraph and our Disclaimer.

pdf

Marc Pensabene is an accomplished trial litigator, with a focus on complex intellectual property and technology litigation. Marc’s practice encompasses all aspects of such disputes, including representing clients in District Court and the International Trade Commission (ITC), as well as before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office and the Federal Circuit.

With a degree in electrical engineering, Marc has particularly extensive experience representing leading clients in the computer, consumer electronics, and mechanical industries. He has handled matters involving a wide range of technologies, including computer hardware and software, digital and wireless communications standards, graphic processors and image processing, flat panel displays, electronic commerce and trading systems, human machine interfaces, semiconductor manufacturing, surgical tools and medical devices, and other scientific instruments. Marc has also litigated copyright, trademark and unfair competition matters.

VIEW MORE

Honors & Awards

  • 2007 Burton Award for Legal Achievement for article “How to Access Trade Secret Damages,” Managing Intellectual Property (June 2006)

Admissions

Bar Admissions

  • New York

Court Admissions

  • US District Court for the Western and Eastern Districts of Michigan
  • US District Court for the Southern and Eastern Districts of New York
  • US Court of Appeals for the Federal Circuit

Registered to Practice

  • US Patent and Trademark Office

Education

  • Brooklyn Law School, J.D., 1994: cum laude 
  • State University of New York at Stony Brook, B.E., Electrical Engineering, 1991: Tau Beta Pi (national engineering honor society), Eta Kappa Nu (national electrical engineering honor society)

Professional Activities

Member

  • New York Intellectual Property Law Association
    • Board Member (2019-present)
    • Co-Chair Patent Litigation Committee (2017-2019)
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association
  • American Bar Association
  • New York Bar Association

Author

  • The Face Of Patent Litigation After Federal Rules Amendments,” IP Law360 (June 23, 2016)
  • “The Evolving Landscape of CBM Review: Emerging Trends in the Program’s First Year,” Bloomberg Law Reports (November 2013)
  • “How the America Invents Act Impacts Your Business: Changes in Patent Strategies,” Financier Worldwide Magazine (June 2013)
  • “Law of patent anticipation gets a new twist,” The National Law Journal (January 19, 2009)
  • “Protecting against deception in standards-setting organizations,” Intellectual Asset Management (June/July 2008)
  • “To Sue or Not to Sue: Risks of Unlocking Value Through Patent Litigation,” Intellectual Property & Technology Law Journal (September 2007)
  • “Injunctions After ‘ebay’: Is the Specter Still Real?” Law.com (November 9, 2006)
  • “How To Assess Trade Secret Damages,” Managing Intellectual Property (June 2006)
  • “Software Patent Damages for Foreign Sales: An Update,” The Computer & Internet Lawyer (December 2004)
  • “Patent Locally, Win Damages Globally,” IP Law & Business (August 2004)
  • “Software Patent Damages for Foreign Sales: Have The District Courts Gone Too Far?” The Computer & Internet Lawyer (July 2004)

Speaker

  • Panel discussion “Looking at Bilski from Every Angle,” Corporate IP Counsel Summit, World Research Group (April 2009)
  • “Unlocking IP Value: What Every Corporate Patent Practitioner Should Know,” 22nd Annual ABA Intellectual Property Law Conference (April 2007)
  • “Non-US Business Method Patents,” Joint Patent Practice Seminar - Philadelphia, CT, NJ and NY Intellectual Property Law Associations (September 2002)

Clerkships

  • Honorable A. Simon Chrein, US District Court for the Eastern District of New York
  • Defending international consumer electronics company in ITC and district court actions alleging patent infringement relating to touchscreen and touchscreen controller technology.
  • Defended international consumer electronics company against claim of patent infringement relating to video and image processing, including H.265 or High Efficiency Video Coding (HEVC).
  • Defended international consumer electronics company against claim of patent infringement relating to wafer bonding.
  • Defended international consumer electronics company against claim of patent infringement relating to image processing and motion detection/tracking.
  • Defended financial institution against claim of patent infringement relating to mobile web Internet content management.
  • Lead counsel for an international consumer electronics company in patent infringement litigation and related Inter Partes Review of patents directed to image processing technology.
  • Lead counsel for a financial institution in patent infringement litigation relating to digital communications.
  • Lead counsel for a financial institution in patent infringement litigation relating to SMS banking.
  • Lead counsel for a media and entertainment company in patent infringement litigation and related Covered Business Method review of asserted patent directed to In-Band/On-Channel broadcasting.
  • Lead counsel for a financial institution in patent infringement litigation relating to online financial management.
VIEW MORE