Marc Pensabene

O'Melveny & Myers LLP

$ $$$

New York 10036 NY US

Marc J. Pensabene is an accomplished trial litigator with a focus on complex patent and trade secret litigation, particularly in the computer, electrical, and mechanical industries. A registered patent attorney with a degree in electrical engineering, Marc immerses himself in the technology at stake and draws on his litigation experience to effectively argue complex technical concepts to judge and jury, who may have little or no technical training.

Marc also has an active practice representing clients in Inter Partes Review and other post-grant review proceedings in the US Patent & Trademark Office.

Marc represents clients of all sizes, including both startups and international corporations, and his representative matters encompass a broad range of technologies, including computer hardware and software, digital communications, electronic commerce, semiconductor manufacturing, graphics processors and image processing, automotive powertrain components and control systems, pharmaceuticals, and medical devices.

In addition to his technical patent and trade secret work, Marc also handles copyright, trademark and unfair competition matters.

Marc is active in the firm’s pro bono activities, representing clients in intellectual property and non-intellectual property matters.

Experience:

  • Lead counsel defending 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.
  • Represented an international consumer electronics company in patent infringement litigation involving semiconductor memory and semiconductor manufacturing technology used in graphics cards.
  • Represented international pharmaceutical company against multiple generic challengers on patents related to breast cancer treatment.
  • Represented international consumer electronics company in litigation regarding the licensing of standard essential patents for digital television technology.
  • Lead counsel for a leading computer company in patent infringement litigation relating to remote application services. Obtained summary judgment of invalidity as to all asserted claims.
  • Represented a leading computer company in a litigation involving claims of patent infringement, trade secret misappropriation, breach of contract and copyright infringement relating to business process management software. Successfully defeated a motion for a preliminary injunction and thereafter obtained a settlement favorable to the client.
  • Represented a global camera and office equipment company in a pair of patent infringement litigations involving 17 patents relating to image sensors, graphical user interfaces, laser driver circuits, optical scanning hardware and software, automated camera operation and Wi-Fi communication.
  • Lead counsel for start-up technology company in patent litigation relating to audio signal abstracting and analysis.
  • Lead counsel for an international automotive supplier in asserting claims of patent infringement relating to valve train components for an internal combustion engine.
  • Represented international pharmaceutical company in litigation asserting patents relating to antiretroviral drugs for the treatment of HIV/AIDS.
  • Represented major motion picture studios in patent litigation relating to video disc technology.
  • Represented international pharmaceutical companies in litigation asserting claims of patent infringement, trade secret misappropriation, unfair competition, breach of contract and tortious interference with business expectations relating to extended release cough suppressant.
  • Lead counsel for leading computer company in a patent infringement action relating to client-server system for managing operational facilities. Successfully achieved dismissal in the Eastern District of Texas and thereafter obtained favorable settlement in related litigation.
  • Represented a global camera and office equipment company in a licensing dispute involving flat-panel television technology. Succeeded in defeating claim of fraud and obtained jury verdict of no damages on all other claims.
  • Represented a leading computer company in a litigation involving claims of patent infringement, trade secret misappropriation, breach of contract, conversion and unjust enrichment relating to e-commerce software.
  • Represented global ophthalmic lens manufacturing company in litigation involving claims of patent infringement and breach of non-disclosure agreement. Defeated motion for a preliminary injunction and obtained a favorable settlement.
  • Represented automotive component supplier in district court litigation and international arbitration involving claims of patent infringement and trade secret misappropriation relating to automotive cylinder-head gaskets. Obtained dismissal of district court action and prevailed on the merits in arbitration.
  • Represented global ophthalmic lens manufacturing company in asserting claims of patent infringement and trade secret misappropriation. Succeeded in causing defendants to cease operations.
  • Represented a leading computer company in a litigation involving claim of patent infringement relating to cordless telephone technology. Successfully obtained summary judgment of non-infringement.
  • Represented pharmaceutical company in district court action and international arbitration involving claims of patent infringement and breach of contract relating to a nutritional supplement. Obtained dismissal of district court action and prevailed on the merits in arbitration.

Admissions:

  • New York
  • 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

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)

Member:

  • American Bar Association
  • New York Bar Association
  • New York Intellectual Property Law Association
  • Federal Circuit Bar Association
  • Intellectual Property Owners Association

Clerkships:

  • Honorable A. Simon Chrein, US District Court for the Eastern District of New York

Cost

Rate : $$$$

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New York 10036 NY US
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