Professional Experience
Lisa Barons Pensabene is Chair of the firm's Chemicals Practice and has extensive experience in patent litigation across a broad range of technologies, particularly in the chemical, biological and pharmaceutical areas. Some of the technologies she has worked with include drugs for the treatment of diabetes, cardiovascular problems, cold symptoms, glaucoma and pain, laser eye surgery apparatus, agricultural chemicals, polyester fibers for tire and industrial use, magnetic recording particles, petroleum additives, carpet yarn, semiconductor chips and processing, charged coupled devices and recycled plastic processing.
Ms. Pensabene has served as lead counsel in various pharmaceutical patent litigations, through all phases of litigation, including argument to the Federal Circuit.
Ms. Pensabene serves as Chair of the firm's Professional Development Committee. Her pro bono work has included child protection litigation and artists' contract negotiation.
Awards and Recognition
Ms. Pensabene is listed as an up-and-coming figure on the patent litigation scene, with a particular focus on the pharmaceutical, biotech and chemical sectors in the Practical Law Company Cross-Border Handbooks of Intellectual Property 2007/2008. She was listed as a Top New York City Intellectual Property Litigator in the 2006, 2007 and 2008 Super Lawyers: New York Metro Edition. In 2008, Ms. Pensabene was listed in the Practical Law Company's Which Lawyer? Yearbook as a recognized individual in IP patent litigation. She was also listed in IAM 250: The World's Leading Patent Litigators 2011. Ms. Pensabene was recognized in the PLC Which Lawyer 2011 edition as a top IP non-patent litigation attorney.
Professional Activities
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
Additional Publications
"Amending of § 337 to Obtain Gatt Consistency and Retain Border Protection" Law and Policy in International Business, Vol. 22 (1991).
Representative Matters
· Merck against Sandoz on numerous patents covering Azasite®, an ophthalmic antibiotic preparation.
· Novartis against Mylan and Apotex on a patent covering Myfortic®, an immunosuppressant drug.
· ArQule, Inc. against Hon. David J. Kappos, on patent term extension summary judgment in favor of client ArQule, Inc.
· Daiichi Sankyo against Mylan, on a patent on the active ingredient in Daiichi Sankyo's Benicar® family of high blood pressure medicines.
· Novartis against Teva on a patent relating to the herpes drug famciclovir.
· Daiichi Sankyo against Apotex and Sandoz on a patent covering Evoxac®, a treatment for symptoms of Sjögren's Syndrome.
· AstraZeneca against Teva and Sandoz, on a patent covering Seroquel®, a treatment for psychotic disorders.
· AstraZeneca against Mutual Pharma on a patent for the formulation of Plendil®, a treatment for high blood pressure and angina pectoris.
· AstraZeneca against Eon Pharmaceuticals, KV Pharmaceuticals and Andrx Pharmaceuticals, a multi-district litigation on patents relating to Toprol-XL®, a treatment for high blood pressure.
· Sankyo and Warner Lambert against SmithKline Beecham, on a patent for a treatment with troglitazone to prevent diabetes.
· Bristol-Myers Squibb against Apotex, on a patent for Stadol®, a nasally administered pain medication.
· Hoechst Celanese against Allied Signal, on a patent relating to a tire yarns.
· Sony Electronics Limited and Dowa Chemicals against Bayer, on a patent relating to magnetic recording tape.
Decisions
Representative Cases
Pieczenik v. Bayer Corp., et al.
Fed. Cir. 2012
Arqule, Inc. v. Hon. David J. Kappos
D.Columbia 2011
Daiichi Sankyo Company, Ltd., et al. v. Mylan Pharmaceuticals, Inc. et al.
S. Ct. 2011
Daiichi Sankyo Company, Ltd., et al. v. Mylan Pharmaceuticals, Inc. et al.
Fed. Cir 2010
Novartis Pharmaceuticals Corporation and Novartis Pharma AG v. Teva Pharmaceuticals USA Inc.
D.N.J. 2009
AstraZeneca Pharmaceuticals LP and AstraZeneca UK Ltd., v. Teva Pharmaceuticals USA, Inc. and Teva Pharmaceutical Industries, Ltd and Sandoz, Inc.
Fed. Cir. 2009
Daiichi Sankyo Company, Ltd., et al. v. Mylan Pharmaceuticals, Inc. et al.
D.N.J., 2009
AstraZeneca Pharmaceutical LP et al. v. Teva Pharmaceuticals USA, Inc, et al.
D.N.J. 2008
AstraZeneca AB, et al. v. Mutual Pharmaceutical Co., Inc.
E.D.Pa 2003
AstraZeneca AB, et al. v. Mutual Pharmaceutical Co., Inc.
E.D.Pa. 2002
Publications/Events
Publications
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
Events
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
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