Lisa M. Ferri
`
`Partner
`lferri@mayerbrown.com
`New York
`T +1 212 506 2340
`"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
`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 expertise 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 2019 for "Patent Strategist of the
`Year," in 2018 for "New York General Patent Litigator 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."
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`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.
`Experience
`Representative Experience
` Lead counsel in Hatch-Waxman patent litigation involving Lexiscan® (Astellas US and Gilead Sciences v.
`Apotex, Sandoz, Sun Pharma and Wockhardt, D. Del.)
` 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
`
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` 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.)
`
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`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)
`Education
` Seton Hall University Law School, JD, Editor of the Seton Hall Law Review
` University of Virginia, BA
`Admissions
`Bar
` New York
` New Jersey
`
`Court
` 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
`
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`Activities
` 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)
`Perspectives
` "COVID-19 Update: How Life Sciences Companies Can Protect Valuable Trade Secrets While Employees Work
`From Home," 1 April 2020
` "Asia IP & TMT: Quarterly Review - Second Quarter 2019," 2019 Q2
` "Supreme Court Biosimilar Decision — What Developers Need To Know," Biosimilar Development, 20 July
`2017
` "What Current Legal Developments Mean For Biosimilars," Law360, 20 April 2017
` "5 Tips To Avoid Spoliation Sanctions," Law360, 3 December 2015
` "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
` "Attorney's Fee Awards Post-Octane: A Guide for Practitioners," InsideCounsel, 23 September 2015
` "IP Law Update: Federal Circuit Court Allows Inequitable Conduct Claim to Proceed; Gives Insight Into
`Application of Therasense Standard," 8 January 2014
` "IP Law Update: Objective Indicia of Non-Obviousness Lead To Reversal of Board's Obviousness
`Determination," 16 October 2013
` "Assessing the Value of Biotech Royalty Financing," MWE International News,
` "Partnering With IP, An Investor's Checklist," Venture Capital Journal,
` "Protecting Against Parallel Importation: Drug Companies Look to Trademark Laws, Licenses to Bar Imports,"
`National Law Journal, Health Care Section,
` "Reverse Payment Patent Settlements: The Interplay of Antitrust and Patent Policies," Intellectual Property &
`Technology Law Journal,
` "Trademark Rights v. Gray Market Drug Imports," MWE IP Review,
`News
` "Drug Companies Reserving Seat for Patent Lawyers at Deal Table," Bloomberg Law, 9 July 2020
`
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` "Mayer Brown partners Lisa Ferri and Gabriela Kennedy named to list of "Top 250 Women in IP 2020" by
`Managing Intellectual Property," 12 June 2020
` "Mayer Brown launches Immuno-Innovation blog," 9 June 2020
` "Mayer Brown and 14 partners recognized in LMG Life Sciences 2019 rankings," 12 December 2019
` "Mayer Brown partners Lisa Ferri and Stephen Rooney recognized for pro bono service," 11 November 2019
` "Fifteen Mayer Brown IP partners in seven offices recognized by IAM Patent 1000," 13 June 2019
` "Nine Mayer Brown partners recognized as 2019 "IP Stars" by Managing Intellectual Property," 5 June 2019
` "Lisa Ferri named to list of "Top 250 Women in IP" by Managing Intellectual Property," 4 June 2019
` "Law360's Intellectual Property Editorial Advisory Board," Law360, 3 April 2019
` "Bristol-Myers' $74B Celgene Buy Gives 2019 M&A Fast Start," Law360, 3 January 2019
` "Mayer Brown advises Bristol-Myers Squibb on $74 billion acquisition of Celgene," 3 January 2019
` "Mayer Brown partner Lisa Ferri recognized as "Distinguished Leader" by New York Law Journal," 10 October
`2018
` "Mayer Brown and 16 partners recognized in LMG 2018 Life Sciences rankings," 5 October 2018
` "Sixteen Mayer Brown IP partners across six worldwide offices recognized by IAM Patent 1000," 12 June 2018
` "11 Mayer Brown partners recognized as "IP Stars" by Managing IP's 2018 World IP Handbook and Survey," 4
`June 2018
` "Mayer Brown partners named top women in IP by Managing Intellectual Property," 30 April 2018
` "Mayer Brown partner Lisa Ferri named a "Leading Woman Lawyer in NYC" by Crain's New York Business," 28
`December 2017
` "Mayer Brown, 15 partners recognized by LMG 2017 Life Sciences rankings," 28 December 2017
` "Meet some of the New York Bar's most talented lawyers, who just happen to be women," Crain's New York
`Business, 18 December 2017
` "Mayer Brown secures victory at the USPTO for ViiV Healthcare and Vertex Pharmaceuticals in Hatch-
`Waxman Inter Partes Review," 3 August 2017
` "Seventeen Mayer Brown IP partners across seven worldwide offices recognized by IAM Patent 1000," 12 June
`2017
` "13 Mayer Brown partners recognized as "IP Stars" by Managing IP's 2017 World IP Handbook and Survey,"
`26 May 2017
` "Mayer Brown partners listed in "Top 250 Women in IP" by Managing Intellectual Property," 26 May 2017
` "High Court Grapples With Biosimilars Law," Bloomberg BNA's Health Care Daily Report, 27 April 2017
` "Biosimilar Rules Likely To Survive ACA Battle, Lawyers Say," Law360, 2 March 2017
`
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` "Life Sciences Group Of The Year: Mayer Brown," Law360, 15 February 2017
` "How Can Barriers to Advancement be Removed for Women at Large Law Firms?," ABA Journal, 1 January
`2017
` "Mayer Brown and partners recognized by LMG 2016 Life Sciences rankings," 5 December 2016
` "How Can Law Firms Remove Barriers to Women in the Profession?," ABA Journal, 21 October 2016
` "4 Ways to Reduce the Legal Industry's Gender Divide," Bloomberg Law, 20 October 2016
` "Panel Urges Big Reforms to Boost Law Firm Diversity," The American Lawyer, 20 October 2016
` "Pushing Diversity Doesn't Ensure Success For Women Attys," Law360, 20 October 2016
` "Mayer Brown partner Lisa Ferri named "Woman Worth Watching" by Profiles in Diversity Journal," 19
`October 2016
` "Intellectual Property Lawyer on Front Lines," Profiles in Diversity Journal, Summer 2016
` "Mayer Brown partner Lisa Ferri named "Woman to Watch" by American Intellectual Property Law
`Association," 13 October 2016
` "The Women in IP Committee of the AIPLA is pleased to announce LISA FERRI as a Woman to Watch!,"
`Women in IP Law AIPLA Committee Blog, 5 October 2016
` "Eighteen Mayer Brown IP partners across seven worldwide offices recognized by IAM Patent 1000," 31 May
`2016
` "Fifteen Mayer Brown partners recognized as "IP Stars" by Managing IP's 2016 World IP Handbook and
`Survey," 19 May 2016
` "Mayer Brown partners listed in "Top 250 Women in IP"," 17 May 2016
` "Prepping for Battle - Best Practices for IP Litigation Strategy Vary Depending on Venue and Industry,"
`InsideCounsel, 1 September 2015
` "Mayer Brown secures victory at the USPTO for ViiV Healthcare and Vertex Pharmaceuticals in Hatch-
`Waxman Inter Partes Review," 10 July 2015
` "Mayer Brown partners recognized by IAM Patent 1000," 17 June 2015
` "Ten Mayer Brown partners recognized as "IP Stars" in Managing IP's 2015 World IP Handbook and Survey,"
`28 May 2015
` "Mayer Brown partners Lisa Ferri and Terri Gillis named to list of "Top 250 Women in IP"," 30 September 2014
` "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
` "Assessing the Post-'Myriad' and 'Mayo' Landscape," New York Law Journal, 13 January 2014
` "Mayer Brown partners Lisa Ferri and Terri Gillis listed among top 250 women in intellectual property law," 1
`October 2013
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` "Mayer Brown attorneys honored as LMG 2013 "Life Sciences Stars"," 1 July 2013
` "Mayer Brown receives top rankings in Managing IP's 2013 World IP Handbook and Survey," 16 May 2013
` "GSK Backed By Fed. Circ. In Leukemia Drug Patent Suit," Law360, 16 April 2013
` "Mayer Brown secures appellate victory for GSK in patent infringement case," 16 April 2013
`Events
` Hot Topics in Life Sciences Law Symposium, 28 February 2020 - 27 February 2020
` Hot Topics in Life Sciences Law, 25 October 2018
` ACI's Paragraph IV Disputes Conference, 24 April 2018 - 26 April 2018
` Symposium: Hot Topics in Life Sciences Law, 2 March 2017
` Visible Difference: Reversing the Trend of Women Leaving Law Practice, 20 October 2016
` American Conference Institute's 10th Annual Paragraph IV Disputes Conference, 25 April 2016
` Symposium: Hot Topics in Life Sciences Law, 30 October 2015
` Obviousness Considerations in Light of Baraclude, American Conference Institute's 9th Annual Paragraph IV
`Disputes Conference, 27 April 2015 - 28 April 2015
` 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
` 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
` GlaxoSmithKline Global Patent Lawyers Meeting, 29 April 2014
` American Conference Institute's 8th Annual Paragraph IV Disputes Conference, 28-29 April 2014
` 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
` The Interplay Between Hatch-Waxman Litigation and Inter Partes Review, Patent Litigation Seminar - New
`Jersey Intellectual Property Law Association, 12 March 2014
` 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
` Monoclonal Antibodies: Successful and Practical Strategies for Developing and Commercializing Antibody
`Therapies, ACI's Fourth Advanced Forum on Biosimilars, 5-7 June 2013
` Throwing Down the Gauntlet: The Paragraph IV Notice Letter-The Branded View, ACI's Seventh Annual
`Paragraph IV Disputes Conference, 7-8 May 2013
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` Hatch-Waxman Litigation Process Fundamentals and Strategies, GlaxoSmithKline Law Program, 22-23 April
`2013
` Experts in Patent Litigation, NYIPLA, 28 February 2013
` New Claim Construction Considerations in Paragraph IV Challenges, ACI's Sixth Annual Paragraph IV Disputes
`Conference, 24-25 April 2012
` 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
` Litigating with Multiple ANDA Filers: The Brand Name Perspective, ACI's Fourth Annual Paragraph IV Disputes
`Conference, 27-28 April 2010
` Bloomberg's Annual Law Speaker Series, 2010
` Bloomberg's Annual Law Speaker Series, 2009
` Litigating with Multiple ANDA Filers: The Brand Name Perspective, ACI's Third Annual Paragraph IV Disputes
`Conference, 27-28 April 2009
` Master Class, Obtaining Optimal Terms and Mitigating Antitrust Concerns When Settling Paragraph IV
`Disputes, ACI Conference, 2009
` Patent Licensing and Litigation: Strategies to Consider in the Wake of MedImmune, Sandisk and Quanta,
`MWE Intellectual Property Roundtable, 2008
` Bloomberg's Annual Law Speaker Series, 2008
` Cross-Licensing and Injunctions, Fordham University School of Law, Intellectual Property Journal Annual
`Symposium, 2008
` Licensing and Litigation in the Wake of MedImmune and Quanta Computer, IPO Annual Meeting, 2008
` Reverse Payment Settlement Agreements, MWE Intellectual Property Roundtable, 2008
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