Professional Experience

Marc J. Pensabene is active in all aspects of the firm’s patent practice, with a focus on complex patent and trade secret litigation. He has handled matters involving various computer, electrical and mechanical technologies, representing industry leaders such as IBM, Essilor International and the Schaeffler Group of companies. He also has extensive experience in the litigation of pharmaceutical patent cases under the Hatch-Waxman Act. Some of the technologies he has worked with include computer hardware and software, computer networks, digital communications standards, electronic commerce and trading systems, injection molding systems and processes, automotive electronics, automotive powertrain components and control systems, ophthalmic lens manufacturing processes, laser printing, surgical tools and accessories, cardiac pacemakers, differential scanning calorimeters and other scientific instruments.  Mr. Pensabene also has experience litigating copyright, trademark and unfair competition matters and is the Chairman of the firm’s Unfair Trade Practices Practice Group. 

His litigation experience includes representing:

• Reckitt Benckiser and UCB Manufacturing v. Tris Pharmaceuticals: claims of patent infringement, trade secret misappropriation, unfair competition, breach of contract and tortious interference with business expectations relating to Delsum®, a 12-hour cough suppressant.
  
  
• Gilead Sciences, Inc. v. Teva Pharmaceuticals: claim of patent infringement relating to Gilead’s Viread®, Truvada® and Atripla® antiretroviral drug products.
  
  
• IBM, Ascential Software Corp. and DataMirror, Inc. adv. JuxtaComm Technologies, Inc.: claim of patent infringement relating to software for transforming and exchanging data between distributed, heterogeneous computer systems.
  
  
• IBM adv. Automated Facilities Management Corp. (an Acacia company): claim of patent infringement relating to client-server system for managing operational facilities.
  
  
• IBM adv. Fair Isaac: claims of patent infringement, trade secret misappropriation, breach of contract and copyright infringement relating to business process management software.
  
  
• Canon adv. Nano-Proprietary: patent licensing dispute involving flat-panel television technology.
  
  
• IBM adv. Sky Technologies: claims of patent infringement, trade secret misappropriation, breach of contract, conversion and unjust enrichment relating to e-commerce software.
  
  
• Computer Packages, Inc. and Praxair, Inc. adv. WhitServe LLC: claim of patent infringement relating to patent docketing software.
  
  
• Essilor International SA and Essilor of America, Inc. adv. Vision-Ease Lens Inc.: claims of patent infringement and breach of non-disclosure agreement relating to injunction molded polarized ophthalmic lenses.
  
  
• ElringKlinger AG adv. Federal Mogul: an international arbitration involving claims of patent infringement and trade secret misappropriation relating to automotive cylinder-head gaskets.
  
  
• Essilor International v. Concepcion Technologies: claims of patent infringement and trade secret misappropriation relating to opthalmic lens manufacturing processes.
  
  
• Husky Injection Molding v. Watlow Electric Manufacturing: claim of patent infringement relating to injection molding machines.
  
  
• IBM adv. Shalom Ohayon: claim of patent infringement relating to cordless telephone technology. 
  
  
• IBM adv. Alexander S. Orenshteyen: claim of patent infringement relating to software for providing remote application services.
  
  
• Geyer adv. Spath: patent interference relating to automobile engine compondents (switchable valve lifters).
  
  
• Overlook Optical adv. Aspex Eyewear and Contour Optik: claim of patent infringement relating to eyeglass frames.
  
  
• Rotta Research Loboratorium and Rottapharm adv. Enzymatic Therapy: an international arbitration involving claims of patent infringement and breach of contract relating to a nutritional supplement. 
  
  
• Brasseler USA adv. Synvasive Technology: claim of patent infringement relating to medical devices.
  
  
• INA USA adv. The Torrington Company: claim of patent infringement relating to automotive powertrain components.
  
  
• Husky Injection Molding adv. Mold Masters: claim of patent infringement relating to injection molding machines.
  
  
• INA Schaeffler adv. Toledo Technologies: claims of patent infringement and trade secret misappropriation relating to automotive powertrain components.
  

While in law school, Mr. Pensabene served as a student law clerk to the Honorable A. Simon Chrein, of the United States District Court for the Eastern District of New York.

Awards and Recognition

Marc J. Pensabene and Christopher Loh were named recipients of the 2007 Burton Award for Legal Achievement for their article, "How to Access Trade Secret Damages," originally published in the June 2006 issue of Managing Intellectual Property.

For information on selection processes, see:

http://www.burtonawards.com/about.html

Education

J.D. cum laude, Brooklyn Law School, 1994
B.E., Electrical Engineering, State University of New York at Stony Brook, 1991, Tau Beta Pi (national engineering honor society), Eta Kappa Nu (national electrical engineering honor society)

Bar Admissions

State of New York, 1995; U.S. Court of Appeals for the Federal Circuit; U.S. District Courts for the Western and Eastern Districts of Michigan and for the Southern and Eastern Districts of New York; U.S. Patent and Trademark Office

Professional Activities

American Bar Association; New York Bar Association; New York Intellectual Property Law Association

Additional Publications

"Non-U.S. Business Method Patents," presented April 26, 2001, at the Joint Patent Practice Seminar co-sponsored by the Philadelphia, Connecticut, New Jersey and New York Intellectual Property Law Associations.

"Computer Law 1999," found in the 2000 edition of the New York Intellectual Property Law Association's Intellectual Property Law Annual.

Related Information

Representative Cases

Nano-Proprietary, Inc. v. Canon Inc.
5th Cir. 2008

Spath v Geyer
Board of Patent Appeals and Interferences 2008

Nano-Proprietary, Inc. v. Canon Inc. and Canon U.S.A., Inc.
W.D. Tx. 2007

Fair Isaac Corp. v. IBM Corp. / IBM Corp. v. Fair Isaac Corp.
D. Minn. 2006

Sky Technologies LLC v IBM Corporation
E.D. Tx. 2006

Shalom Ohayon v. AT & T Corp, et al.
E.D.N.Y. 2005

Federal-Mogul Corp. and Felt Products Mfg. Co. v. ElringKlinger AG
D.N.J. 2004

Vision-Ease Lens, Inc. v. Essilor International S.A.
D. Minn. 2004

Publications

Law of patent anticipation gets a new twist
The National Law Journal
January 19, 2009

Protecting against deception in standards-setting organizations
Intellectual Asset Management
June/July 2008

To Sue or Not to Sue: Risks of Unlocking Value Through Patent Litigation
Intellectual Property & Technology Law Journal
September 2007

Injunctions After 'ebay': Is the Specter Still Real?
Law.com
November 9, 2006

How To Assess Trade Secret Damages
Managing Intellectual Property
June 2006

Software Patent Damages for Foreign Sales: An Update
The Computer & Internet Lawyer
December 2004

Patent Locally, Win Damages Globally
IP Law & Business
August 2004

Software Patent Damages for Foreign Sales: Have The District Courts Gone Too Far?
The Computer & Internet Lawyer
July 2004

Events

Corporate IP Counsel Summit
World Research Group
April 29, 2009

Unlocking IP Value: What Every Corporate Patent Practitioner Should Know
22nd Annual ABA Intellectual Property Law Conference
April 13, 2007

Non-U.S. Business Method Patents
Joint Patent Practice Seminar - Philadelphia, CT, NJ and NY Intellectual Property Law Associations
2002

In The News

Respond Carefully to Notification of Adversely Held Patents
Counsel to Counsel
May 2009

Fitzpatrick Announces Two New Partners
January 1, 2003

Press Releases

Fitzpatrick, Cella, Harper, & Scinto Named “Decade Award Winner” in Legal Writing by the Burton Foundation
Burton Foundation
December 16, 2009

Fitzpatrick, Cella, Harper & Scinto Receives 2007 Burton Legal Achievement Award
April 26, 2007

Fitzpatrick Elects Two Partners
January 6, 2003