Marc Pensabene is an accomplished trial litigator, with a focus on complex intellectual property and technology litigation. Marc’s practice encompasses all aspects of such disputes, including representing clients in District Court and the International Trade Commission (ITC), as well as before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office and the Federal Circuit.
With a degree in electrical engineering, Marc has particularly extensive experience representing leading clients in the computer, consumer electronics, and mechanical industries. He has handled matters involving a wide range of technologies, including computer hardware and software, digital and wireless communications standards, graphic processors and image processing, flat panel displays, electronic commerce and trading systems, human machine interfaces, semiconductor manufacturing, surgical tools and medical devices, and other scientific instruments. Marc has also litigated 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.
- Defended leading international technology company in patent litigations relating to video streaming technology.
- Defended international consumer electronics company in patent litigation relating to biometric user authentication.
- Defended leading international technology company in patent infringement litigation relating to smart video displays.
- Defended international consumer electronics company in ITC and district court actions alleging patent infringement relating to touchscreen and touchscreen controller technology.
- Defended international consumer electronics company against claim of patent infringement relating to video and image processing, including H.265 or High Efficiency Video Coding (HEVC).
- Defended international consumer electronics company against claim of patent infringement relating to wafer bonding.
- Defended international consumer electronics company against claim of patent infringement relating to image processing and motion detection/tracking.
- Defended financial institution against claim of patent infringement relating to mobile web Internet content management.
- Lead counsel for 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.
- Lead counsel for a financial institution in patent infringement litigation and related Covered Business Method review of asserted patent directed to secure identity verification.
- 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.
- Represented surgical tool manufacturer in patent litigation relating to medical devices.
- Represented a large automotive supplier in litigation involving claims of patent infringement and trade secret misappropriation relating to automotive powertrain components.
Admissions
Bar Admissions
- New York
Court Admissions
- 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
Registered to Practice
- US Patent and Trademark Office
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)
Honors & Awards
- 2007 Burton Award for Legal Achievement for article “How to Access Trade Secret Damages,” Managing Intellectual Property (June 2006)
Professional Activities
Member
- New York Intellectual Property Law Association
- Board Member (2019-present)
- Co-Chair Patent Litigation Committee (2017-2019)
- Federal Circuit Bar Association
- Intellectual Property Owners Association
- American Bar Association
- New York Bar Association
Author
- “The Face Of Patent Litigation After Federal Rules Amendments,” IP Law360 (June 23, 2016)
- “The Evolving Landscape of CBM Review: Emerging Trends in the Program’s First Year,” Bloomberg Law Reports (November 2013)
- “How the America Invents Act Impacts Your Business: Changes in Patent Strategies,” Financier Worldwide Magazine (June 2013)
- “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)
Speaker
- Panel discussion “Looking at Bilski from Every Angle,” Corporate IP Counsel Summit, World Research Group (April 2009)
- “Unlocking IP Value: What Every Corporate Patent Practitioner Should Know,” 22nd Annual ABA Intellectual Property Law Conference (April 2007)
- “Non-US Business Method Patents,” Joint Patent Practice Seminar - Philadelphia, CT, NJ and NY Intellectual Property Law Associations (September 2002)
Clerkships
- Honorable A. Simon Chrein, US District Court for the Eastern District of New York
Related Practices
Intellectual Property & Technology
Intellectual Property: Copyright & Trademark
Intellectual Property: ITC Section 337
Intellectual Property: Life Sciences
Intellectual Property: Patent Law
Intellectual Property: Post-Grant Review Proceedings
Litigation & Investigations
Trade Secrets & Restrictive Covenants
Related Industries