Lisa Partain specializes in intellectual property, with a particular emphasis in patent litigation. Ms. Partain has also been involved in all other aspects of intellectual property practice, including patent and trademark prosecution, licensing, trademark opposition, and patent reexamination practice. She has counseled and represented clients in a wide variety of technical matters, including DNA hybridization techniques, heart related medical devices, ink-jet printing technologies, semi-conductor chip packaging, battery management in laptop computers, automated cash machines and motorcycle helmets. She is registered to practice before the U.S. Patent & Trademark Office. She has written and lectured on issues related to legislative efforts to reform the patent system.

Prior to attending law school, Ms. Partain was a chemist specializing in the detection of heavy metals. She also developed testing procedures to detect the presence of formaldehyde. During law school, Ms. Partain served as an extern to the Honorable Stephen V. Wilson in the United States District Court, Central District of California. Ms. Partain joined Irell & Manella in 1998.

Representative Matters

Representative cases in which Ms. Partain has served as counsel include:

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc./Guidant Corp. v. St. Jude Medical, Inc. Represented St. Jude Medical in this patent infringement case in Delaware involving implantable cardioverter defibrillators and other devices for treating heart problems such as life-threatening ventricular arrhythmias and congestive heart failure.  Following a hearing on summary judgment and claim construction issues, the case was settled successfully.

Biosense Webster, Inc. v. Endocardial Solutions, Inc.; St. Jude Medical, Atrial Fibrillation Division, Inc. Represented St. Jude Medical and Endocardial Solutions in a patent infringement matter involving a computer-based cardiac mapping system used to treat arrhythmias. The case was successfully settled in favor of St. Jude.

Unova, Inc. v. Compaq Corp.; Unova, Inc. v. Hewlett-Packard Co. An action alleging infringement of patents relating to battery management and removable disk drives by Compaq's notebook computers and servers. Also represented Hewlett-Packard in the defense of two actions; one involving the breach of a patent license agreement and the other involving alleged infringement of patents relating to battery management by Hewlett-Packard's notebook computers.

Edwards Lifesciences v. St. Jude Medical. Represented defendant St. Jude Medical in a patent infringement suit on four patents related to annuloplasty rings and the treatment of porcine tissue valves for implantation in humans. The case was successfully settled after several successful summary judgment motions and favorable claim construction rulings.

Xerox Corporation v. Hewlett-Packard, Inc. A series of patent infringement lawsuits in which Xerox accused HP's printers of infringement, resolved in favor of HP on summary judgment.

Tessera v. Micron and Infineon. A patent and antitrust lawsuit involving semiconductor packaging, resolved by a settlement that entitled the firm's client to $80 million and significant future royalties.

City of Hope National Medical Center v. Genentech, Inc. A breach of contract and fiduciary duty case involving patent related matters, which resulted in a $500 million verdict in favor of the firm's client and a full affirmance by the California Court of Appeal.

Japan Cash Machine v. Diversified Systems. Represented defendant in a patent infringement suit relating to automated cash machine technology. The case resulted in a settlement favorable to the client.

Regents of the University of California v. Gen-Probe. Represented plaintiff in a patent ownership case involving genetic probes, culminating in a four-week jury trial.

Winsford Corporation v. Architectural Brass. Represented plaintiff in a trademark infringement dispute involving birdcage bellman carts. The case was settled successfully.

Professional Activities

• Los Angeles Intellectual Property Law Association

Publications

• "Patent Litigation: Opening Phase of Litigation," Practising Law Institute, April 2007.
• "Congress and Federal Circuit To Review Willfulness Doctrine," IP Law 360, February 2007.
• "Pending Patent Reform Legislation,"  Los Angeles Intellectual Property Law Association Bulletin, August 2005.

Seminars & Speeches

• "Delivering Powerful Opening Statements and Closing Arguments in Patent Trials,"  ABA Intellectual Property Law Conference, April 12, 2007, Washington D.C.

Bar & Court Admissions

• 1995, California
• U.S. Patent and Trademark Office
• U.S. Court of Appeals, Federal Circuit
• U.S. District Court, Central District of California
• U.S. District Court, Southern District of California