Mayer Brown
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`Lisa M. Ferri
`Partner
`lferri@mayerbrown.com
`New York
`T +1 212 506 2340
`F +1 212 262 1910
`
`Lisa M. Ferri is a partner in Mayer Brown's Intellectual Property practice and serves as the IP Practice Leader
`for the New York Office. She focuses her practice on the trial and appeal of patent matters in the Life
`Sciences field, including representing innovator companies in cases brought pursuant to the Hatch-Waxman
`Act. Lisa serves as lead counsel on behalf of high-profile companies in federal courts across the country,
`Patent Office inter partes reviews, the International Trade Commission and the Federal Circuit Court of
`Appeals.
`
`Lisa has been recognized by clients and peers as a leading lawyer in intellectual property. She was named one
`of the "Top 250 Women in IP" by Managing Intellectual Property. Lisa was recognized by IAM Patent 1000 as
`"spectacular . . . [she] demonstrates a lot of powerful qualities as a patent litigator" and is "extremely
`persuasive." She was named a "Life Sciences Star" and an "IP Star" by the Legal Media Group, which noted
`that "Lisa is professional, intelligent, people savvy, tough when need be, and has a great command of the
`applicable law." Lisa was nominated in 2014 as "Hatch-Waxman Litigator of the Year" by the LMG Life
`Sciences Awards. In addition, she has been recognized in the area of patent litigation by the Legal 500. Her
`recent victory at the Federal Circuit Court of Appeals in Biogen IDEC, Inc. and Genentech v. GlaxoSmithKline,
`which involved the monoclonal antibody therapy Arzerra®, was shortlisted for "Patent Impact Case of the
`Year" by the LMG Life Sciences Awards.
`
`Lisa's life sciences practice spans a broad range of therapeutic areas and technologies—from pharmaceuticals
`and biologics for the treatment of HIV/AIDS, cancer, hepatitis, influenza, auto-immunities, anemia, emesis
`and BPH, to drug delivery systems, research tools, recombinant DNA, RNAi and a variety of medical devices.
`Her pharmaceutical practice focuses on representing innovator companies in cases brought pursuant to the
`Hatch-Waxman Act. She has successfully defended a number of key blockbuster drugs. Following enactment
`of the AIA, Lisa handled one of the first co-pending inter partes reviews and district court litigations relating
`to the Orange Book listed drug Lexiva® -- which was the first "lead compound" IPR before the PTAB as well.
`Lisa also concentrates on patent litigation dealing with large molecule biologics products including a series of
`antibody litigations involving the well-known "Cabilly" patent portfolio.
`
`Lisa is an adjunct professor at Fordham University School of Law where she teaches Patent Litigation.
`
`Lisa serves as co-chair of the firm's global Women's Leadership Committee.
`
`Experience
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`Representative Litigation and Trial Experience
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`l Lead counsel in Hatch-Waxman patent litigation involving cancer treatment Trisenox® (Cephalon and
`Memorial Sloan-Kettering Cancer Center v. Fresenius Kabi, D.Del.)
`l 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.)
`l 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
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`https://www.mayerbrown.com/people/detailprint.aspx?attorney=409
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`2/18/2016
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`Mayer Brown
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`Page 2 of 4
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`City of Hope, USPTO)
`l Lead counsel in Hatch-Waxman patent litigation involving HIV therapy Lexiva® (ViiV Healthcare and
`Vertex Pharmaceuticals v. Mylan, 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)
`l 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.)
`l Representing innovator pharmaceutical company Egalet in Hatch‐Waxman litigation relating to
`ketorolac (Sprix®) pending in N.J. (Egalet v. Apotex, D.N.J.)
`l 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.)
`l 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.)
`l 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.)
`l 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.)
`l 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.)
`l 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.)
`l 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.)
`l Represented pharma-biotechnology company in patent litigation involving transdermal drug delivery
`product (Elan Corp. v. Cygnus Therapeutics, N.D. Cal.)
`l 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)
`l Represented major manufacturer of hard-drives and storage solutions in trade secret litigation
`(Nanonex Corp. v. Seagate Technology, D. N.J.)
`l Represented internet based e-commerce company in trademark infringement litigation (GreenPoint
`Financial v. Sperry Hutchinson, S.D.N.Y.)
`l Represented patentee in business method patent infringement suit (Xinetic, Inc. v. Copient
`Technologies, LLC, S.D. Ind.).
`l Representation of cash management and mutual fund corporation in trademark infringement suit
`(Reserve Management Corp. v. Reserve Inc., S.D.N.Y.).
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`Representative Appellate Experience
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`l Implant Direct v. Zest Anchors and Zest IP Holding, Appeal No. 2015-1927 (Fed. Cir.)
`l Biogen IDEC and Genentech Inc. v. GlaxoSmithKline LLC and Glaxo Group Ltd., Appeal No. 2012-1120
`(Fed. Cir.)
`l Metrologic Instr. v. Int’l Trade Comm., Appeal No. 07-1582 (Fed. Cir.)
`l Symbol Technologies v. Int’l Trade Comm., Appeal No. 07-1472 (Fed. Cir.)
`l Glaxo Group Ltd. v. Kali Labs., Appeal No. 06-1026 (Fed. Cir.)
`l Ferring Pharm. v. Barr Labs., Appeal No. 05-1284 (Fed. Cir.)
`l Glaxo Group Ltd. v. Teva Pharm., Appeal No. 05-1057 (Fed. Cir.)
`l Marshak v. Treadwell, Appeal No. 99-5678, 5614 (3d Cir.)
`l Nashua Co. v. Ricoh, et al., No. 98-1872 (U.S. Supreme Court)
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`Education
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`l Seton Hall University Law School, JD; Editor of the Seton Hall Law Review
`l University of Virginia, BA
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`https://www.mayerbrown.com/people/detailprint.aspx?attorney=409
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`2/18/2016
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`Mayer Brown
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`Admissions
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`l New York
`l New Jersey
`l US District Court for the District of New Jersey
`l US District Court for the Southern District of New York
`l US District Court for the Eastern District of New York
`l US Court of Appeals for the Federal Circuit
`l US Court of Appeals for the Second Circuit
`l US Court of Appeals for the Third Circuit
`l US Supreme Court
`l US Court of International Trade
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`Activities
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`l Member of the American Bar Association, Litigation and Intellectual Property Law sections
`l Member of the New York State Bar Association, Intellectual Property Law section
`l Intellectual Property Owners Association, Litigation Committee, NYIPLA and AIPLA
`l Member New York Intellectual Property Law Association
`l Member American Intellectual Property Law Association
`l Board Member, Women in Law Empowerment Forum (WILEF)
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`News & Publications
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`l "5 Tips To Avoid Spoliation Sanctions," Law360, 3 December 2015
`l "The Doctrine of Equivalents and the Challenge of Giving Meaning to ‘‘Substantial’’ in Patent Jury
`Trials," Bloomberg BNA's Patent, Trademark & Copyright Journal, 16 October 2015
`l "Attorney's Fee Awards Post-Octane: A Guide for Practitioners," InsideCounsel, 23 September 2015
`l "Prepping for Battle - Best Practices for IP Litigation Strategy Vary Depending on Venue and Industry,"
`InsideCounsel, 1 September 2015
`l "Mayer Brown secures victory at the USPTO for ViiV Healthcare and Vertex Pharmaceuticals in Hatch-
`Waxman Inter Partes Review," 10 July 2015
`l "Mayer Brown partners recognized by IAM Patent 1000," 17 June 2015
`l "Ten Mayer Brown partners recognized as “IP Stars” in Managing IP’s 2015 World IP Handbook and
`Survey," 28 May 2015
`l "Mayer Brown partners Lisa Ferri and Terri Gillis named to list of “Top 250 Women in IP”," 30
`September 2014
`l "Mayer Brown partners Lisa Ferri and Terri Gillis named “IP: Hatch-Waxman (Branded) Litigator of the
`Year” finalists for LMG Life Sciences Awards," 29 July 2014
`l "Assessing the Post-'Myriad' and 'Mayo' Landscape," New York Law Journal, 13 January 2014
`l "IP Law Update: Federal Circuit Court Allows Inequitable Conduct Claim to Proceed; Gives Insight Into
`Application of Therasense Standard," Mayer Brown Legal Update, 8 January 2014
`l "IP Law Update: Objective Indicia of Non-Obviousness Lead To Reversal of Board’s Obviousness
`Determination," Mayer Brown Legal Update, 16 October 2013
`l "Mayer Brown partners Lisa Ferri and Terri Gillis listed among top 250 women in intellectual property
`law," 1 October 2013
`l "Mayer Brown attorneys honored as LMG 2013 "Life Sciences Stars"," 1 July 2013
`l "Mayer Brown receives top rankings in Managing IP’s 2013 World IP Handbook and Survey," 16 May
`2013
`l "GSK Backed By Fed. Circ. In Leukemia Drug Patent Suit," Law360, 16 April 2013
`l "Mayer Brown secures appellate victory for GSK in patent infringement case," 16 April 2013
`l "Reverse Payment Patent Settlements: The Interplay of Antitrust and Patent Policies," Intellectual
`Property & Technology Law Journal,
`l "Trademark Rights v. Gray Market Drug Imports," MWE IP Review,
`l "Protecting Against Parallel Importation: Drug Companies Look to Trademark Laws, Licenses to Bar
`Imports," National Law Journal, Health Care Section,
`l "Assessing the Value of Biotech Royalty Financing," MWE International News,
`l "Partnering With IP, An Investor’s Checklist," Venture Capital Journal,
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`https://www.mayerbrown.com/people/detailprint.aspx?attorney=409
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`2/18/2016
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`Mayer Brown
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`Events
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`Page 4 of 4
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`l Symposium: Hot Topics in Life Sciences Law, 30 October 2015
`l "Obviousness Considerations in Light of Baraclude," American Conference Institute's 9th Annual
`Paragraph IV Disputes Conference, 27 April 2015 - 28 April 2015
`l "May It Please the Court: Rules of Engagement for Appearing Before the PTAB," ACI’s Post-Grant PTO
`Proceedings, 25 March 2015 - 26 March 2015
`l "Ethical Considerations for Paragraph IV Matters Before the PTO and District Courts: Looking Beyond
`Inequitable Conduct," ACI’s Paragraph IV Disputes Master Symposium, 30 September - 1 October 2014
`l GlaxoSmithKline Global Patent Lawyers Meeting, 29 April 2014
`l American Conference Institute's 8th Annual Paragraph IV Disputes Conference, 28-29 April 2014
`l "Use of IPR and Other PTO Proceedings in A Paragraph IV Challenge: Strategies For Brand Names and
`Generics in Navigating PTO Proceedings in ANDA Litigation," American Conference Institute's 8th
`Annual Paragraph IV Disputes Conference: Expert Insights on Hatch-Waxman Litigation Strategies for
`Brand Names and Generics, 28 April 2014
`l "The Interplay Between Hatch-Waxman Litigation and Inter Partes Review," Patent Litigation Seminar
`– New Jersey Intellectual Property Law Association, 12 March 2014
`l "A Litigator's Guide to Effectively Preserving issues for Appeal and Keeping Your Case Alive Post-
`District Court," International Congress on Paragraph IV Litigation, 23-24 September 2013
`l "Monoclonal Antibodies: Successful and Practical Strategies for Developing and Commercializing
`Antibody Therapies," ACI's Fourth Advanced Forum on Biosimilars, 5-7 June 2013
`l "Throwing Down the Gauntlet: The Paragraph IV Notice Letter–The Branded View," ACI's Seventh
`Annual Paragraph IV Disputes Conference, 7-8 May 2013
`l "Hatch-Waxman Litigation Process Fundamentals and Strategies," GlaxoSmithKline Law Program, 22-
`23 April 2013
`l "Experts in Patent Litigation," NYIPLA, 28 February 2013
`l "New Claim Construction Considerations in Paragraph IV Challenges," ACI's Sixth Annual Paragraph IV
`Disputes Conference, 24-25 April 2012
`l "New Standards and Controversies in Obviousness-Type Double Patenting: Repercussions for
`Paragraph IV Challenges," ACI's Fifth Annual Paragraph IV Disputes Conference, 3-4 May 2011
`l "Litigating with Multiple ANDA Filers: The Brand Name Perspective," ACI's Fourth Annual Paragraph IV
`Disputes Conference, 27-28 April 2010
`l Bloomberg’s Annual Law Speaker Series, 2010
`l Bloomberg’s Annual Law Speaker Series, 2009
`l "Litigating with Multiple ANDA Filers: The Brand Name Perspective," ACI's Third Annual Paragraph IV
`Disputes Conference, 27-28 April 2009
`l "Master Class, Obtaining Optimal Terms and Mitigating Antitrust Concerns When Settling Paragraph IV
`Disputes," ACI Conference, 2009
`l "Patent Licensing and Litigation: Strategies to Consider in the Wake of MedImmune, Sandisk and
`Quanta," MWE Intellectual Property Roundtable, 2008
`l Bloomberg’s Annual Law Speaker Series, 2008
`l "Cross-Licensing and Injunctions," Fordham University School of Law, Intellectual Property Journal
`Annual Symposium, 2008
`l "Licensing and Litigation in the Wake of MedImmune and Quanta Computer," IPO Annual Meeting,
`2008
`l "Reverse Payment Settlement Agreements," MWE Intellectual Property Roundtable, 2008
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`https://www.mayerbrown.com/people/detailprint.aspx?attorney=409
`
`2/18/2016