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Associé

Co-leader of Life Sciences, Co-leader of Intellectual Property

Lisa M. Ferri

Intellectual Property, Life Sciences, Trademark Litigation

"Lisa is truly excellent. More than just a legal expert, she is brilliant from a strategic standpoint . . . . considered among the very best in the life sciences patent litigation space"
"Spectacular . . . [Lisa] demonstrates a lot of powerful qualities as a patent litigator"
IAM Patent 1000

Aperçu

Lisa M. Ferri is global co-chair of the firm's Intellectual Property practice and the Life Sciences group. She serves as lead trial and appellate counsel on behalf of high-profile companies in the pharmaceutical, biotechnology and medical device industries. Lisa is a seasoned and versatile litigator having tried high-stakes cases in federal courts across the country and the International Trade Commission, argued before the Patent Trial and Appeal Board (PTAB), and the Federal Circuit Court of Appeals. She has significant experience guiding companies through patent challenges under the Hatch-Waxman Act and Biologics Price Competition and Innovation Act (BPCIA).

Lisa also advises companies and investors in the life sciences industry in transactions involving intellectual property including mergers and acquisitions, collaborations, joint ventures and other strategic commercial arrangements. She combines a litigator's perspective with intellectual property expertise to evaluate and identify both risks and opportunities for clients. For instance, Lisa recently provided intellectual property counsel to Bristol-Myers Squibb in its $74 billion acquisition of Celgene.

Clients and peers alike recognize Lisa as a leading intellectual property lawyer. Lisa is a Chambers ranked patent lawyer. Chambers USA 2020 states that she is “regularly called upon to handle complex patent disputes” and describes Lisa as an “excellent lawyer” with a “strong life sciences practice.” Managing Intellectual Property has chosen Lisa as one of the "Top 250 Women in IP" every year since the list's inception in 2013. Who's Who Legal: Patents 2016-2020 named Lisa as a leading patent litigation lawyer. IAM Patent 1000 has consistently ranked Lisa as a Silver Band leading practitioner. The Legal Media Group named her a "Life Sciences Star" and an "IP Star," noting that "Lisa is professional, intelligent, people savvy, tough when need be, and has a great command of the applicable law." LMG Life Sciences Awards considered Lisa a finalist in 2020 and 2018 for "New York General Patent Litigator of the Year," in 2019 for "Patent Strategist of the Year," and in 2014 for "Hatch‐Waxman Litigator of the Year." In addition, she has been recognized in the area of patent litigation by the Legal 500. LMG Life Sciences Awards shortlisted Lisa's victory at the Federal Circuit Court of Appeals in Biogen IDEC, Inc. and Genentech v. GlaxoSmithKline, a case involving the monoclonal antibody therapy Arzerra® for "Patent Impact Case of the Year."

Lisa has been recognized for her leadership in the legal industry and her commitment to diversity and inclusion in the profession. The New York Law Journal honored her as one of its Distinguished Leaders for 2018. The award is presented to twenty attorneys in leadership roles across the country who have achieved extraordinary results over the past year. In 2017, she was named to Crain's New York Business' inaugural list of "Leading Women Lawyers" in New York City as a trailblazer who juggles a distinguished career and exceptional civic and philanthropic activities. She has also been named a "Woman Worth Watching" by Profiles in Diversity Journal and a "Woman to Watch" by the American Intellectual Property Law Association. Lisa is active in professional organizations devoted to women's leadership, including as a member of the Advisory Board of Women in Law Empowerment Forum (WILEF).

Lisa serves as Chair of the firm's global Women's Leadership Committee and the New York Office Women's Forum and as a member of the firm's Diversity Steering Board.

Lisa is an adjunct professor at Fordham University School of Law where she teaches Patent Litigation.

Expérience

Representative Experience

  • Lead counsel in multi-defendant Hatch-Waxman patent litigation involving Lexiscan® (Astellas US and Gilead Sciences v. Apotex, et al., D. Del.)
  • Lead counsel in an Inter Partes Review before the U.S. Patent and Trademark Office (Astellas US v. Imperial College Innovations, USPTO)
  • Trial counsel in biotech patent infringement action relating to Ultomiris® (ravulizumab) (Chugai v. Alexion, D. Del)
  • Lead counsel in biotech patent infringement suit involving PD-1/PD-L1 immunotherapy technology (Bristol-Myers Squibb, Ono Pharmaceutical and Tasuku Honjo v. EMD Serono, Merck KGaA and Pfizer, D. Del.)
  • Lead counsel in patent infringement suit involving cancer treatment Elitek® (Washington Research Foundation and Genentech v. Sanofi, Sanofi-Synthelabo LLC, and Sanofi-Aventis, W.D. Wash.)
  • Lead counsel in Hatch-Waxman patent litigations involving HIV therapy Lexiva® (ViiV Healthcare and Vertex Pharmaceuticals v. Mylan, D. Del.; ViiV Healthcare and Vertex Pharmaceuticals v. Lupin, D. Del.) as well as related Inter Partes reviews before the U.S. Patent and Trademark Office (Ranbaxy v. Vertex Pharmaceuticals and Lupin v. Vertex Pharmaceuticals, USPTO)
  • Lead counsel in patent infringement suit involving antibody drug Lemtrada® for the treatment of multiple sclerosis (Genzyme v. Genentech and City of Hope, C.D. Cal.) as well as related Inter Partes Review before the US Patent and Trademark Office (Genzyme v. Genentech and City of Hope, USPTO)
  • Lead counsel in Hatch-Waxman patent litigation involving cancer treatment Trisenox® (Cephalon and Memorial Sloan-Kettering Cancer Center v. Fresenius Kabi, D.Del.)
  • Lead counsel in patent infringement suit involving anti‐cholesterol (PCSK‐9) antibody therapy Praluent® (Sanofi and Regeneron v. Genentech and City of Hope, C.D. Cal.) as well as related Inter Partes review before the U.S. Patent and Trademark Office (Sanofi and Regeneron v. Genentech and City of Hope, USPTO) relating to the "Cabilly" patent portfolio
  • Lead counsel in biotech patent infringement suit involving antibody therapies Erbitux® and Yervoy® (Bristol‐Myers Squibb v. Genentech and City of Hope, C.D. Cal.)
  • Trial counsel representing innovator pharmaceutical company Egalet in Hatch-Waxman litigation relating to ketorolac (Sprix®) pending in N.J. (Egalet v. Apotex, D.N.J.) 
  • Lead counsel in patent infringement suit involving the use of antibody product Arzerra® in the treatment of chronic lymphocytic leukemia (Biogen Idec, Inc. and Genentech v. GlaxoSmithKline et al., S.D. Cal.)
  • Lead counsel in biotech patent infringement suits relating to the "Cabilly" portfolio, involving the monoclonal antibodies Arzerra® and Benlysta® (Glaxo Group Ltd, GlaxoSmithKline and Lonza Biologics v. Genentech and City of Hope, C.D. Cal.; Genentech Inc. v. Glaxo Group Ltd., GlaxoSmithKline and Human Genome Sciences, C.D. Cal.)
  • Lead counsel in life sciences patent and trademark litigation for IP holder relating to medical devices (Zest IP Holdings LLC et al. v. Implant Direct et al.; S.D. Cal.)
  • Lead counsel in false advertising, unfair competition suit for medical device manufacturer (Implant Direct Sybron v. Zest IP Holdings and Zest Anchors; S.D. Cal.)
  • Lead counsel in defense of patent infringement suit for consumer and construction products designer and manufacturer (Cobra Fixations Cie Lteé – Cobra Anchors v. Newell Operating Co.; M.D.N.C.)
  • Successfully represented GlaxoSmithKline as trial counsel in several patent infringement suits brought against generic challengers to blockbuster drug Zofran® (Glaxo Group Limited and SmithKline Beecham Corp. v. Teva Pharmaceuticals, Inc., D. Del.; Glaxo Group Limited and SmithKline Beecham Corp. v. Dr. Reddy's Laboratories, Inc., D. N.J.; Glaxo Group Limited and SmithKline Beecham Corp. v. Kali Laboratories, D. N.J.; Glaxo Group Limited and Smith Kline Beecham Corp. v. Pliva, D. N.J.; Glaxo Group Limited and Smith Kline Beecham Corp. v. Sandoz, D. N.J.)
  • Represented Pfizer Inc. as trial counsel in successful patent infringement suit brought against generic challenger to Cardura® drug (Pfizer Inc. v. Apotex Corp., N.D. Ill.)
  • Represented pharma-biotechnology company in patent litigation involving transdermal drug delivery product (Elan Corp. v. Cygnus Therapeutics, N.D. Cal.)
  • Represented Metrologic as trial counsel in multi-patent infringement suit relating to laser bar code scanning and digital imaging technology (Symbol Technologies v. Metrologic Instruments, E.D. Tex.)
  • Represented major manufacturer of hard-drives and storage solutions in trade secret litigation (Nanonex Corp. v. Seagate Technology, D. N.J.)
  • Represented internet based e-commerce company in trademark infringement litigation (GreenPoint Financial v. Sperry Hutchinson, S.D.N.Y.)
  • Represented patentee in business method patent infringement suit (Xinetic, Inc. v. Copient Technologies, LLC, S.D. Ind.).
  • Representation of cash management and mutual fund corporation in trademark infringement suit (Reserve Management Corp. v. Reserve Inc., S.D.N.Y.)

Representative Appellate Experience

  • Washington Research Foundation and Genentech v. Sanofi, Appeal No. 2018-1612 (Fed. Cir.)
  • Implant Direct v. Zest Anchors and Zest IP Holding, Appeal No. 2015-1927 (Fed. Cir.)
  • Biogen IDEC and Genentech Inc. v. GlaxoSmithKline LLC and Glaxo Group Ltd., Appeal No. 2012-1120 (Fed. Cir.)
  • Metrologic Instr. v. Int'l Trade Comm., Appeal No. 07-1582 (Fed. Cir.)
  • Symbol Technologies v. Int'l Trade Comm., Appeal No. 07-1472 (Fed. Cir.)
  • Glaxo Group Ltd. v. Kali Labs., Appeal No. 06-1026 (Fed. Cir.)
  • Ferring Pharm. v. Barr Labs., Appeal No. 05-1284 (Fed. Cir.)
  • Glaxo Group Ltd. v. Teva Pharm., Appeal No. 05-1057 (Fed. Cir.)
  • Marshak v. Treadwell, Appeal No. 99-5678, 5614 (3d Cir.)
  • Nashua Co. v. Ricoh, et al., No. 98-1872 (U.S. Supreme Court)

Distinctions

  • Ranked for Patent Law – Chambers
  • “Regularly called upon to handle complex patent disputes” … an “excellent lawyer” with a “strong life sciences practice.” – Chambers USA
  • Top 250 Women in IP – Managing Intellectual Property
  • “Leading patent litigation lawyer” – Who’s Who Legal: Patents
  • A “Silver Band” leading practitioner – IAM Patent 1000
  • Ranked over several years as a leading Patent lawyer by Chambers & Partners USA.
  • Recognized by Managing IP’s “Top 250 Women in IP” since its inception in 2013.

Formation

  • Seton Hall University Law School, JD
    Editor of the Seton Hall Law Review
  • University of Virginia, BA

Inscription au Barreau

  • New York
  • New Jersey

Courts

  • US District Court for the District of New Jersey
  • US District Court for the Southern District of New York
  • US District Court for the Eastern District of New York
  • US Court of Appeals for the Federal Circuit
  • US Court of Appeals for the Second Circuit
  • US Court of Appeals for the Third Circuit
  • US Supreme Court
  • US Court of International Trade

Engagement professionnel et communautaire

  • Member of the American Bar Association, Litigation and Intellectual Property Law sections
  • Member of the New York State Bar Association, Intellectual Property Law section
  • Intellectual Property Owners Association, Litigation Committee, NYIPLA and AIPLA
  • Member New York Intellectual Property Law Association
  • Member American Intellectual Property Law Association
  • Board Member, Women in Law Empowerment Forum (WILEF)
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