Qualifications: U.S. Patent Attorney and Attorney at Law
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PRACTICE AREAS AND INDUSTRIES SERVED
Lisa Margonis’s practice includes foreign and domestic patent preparation and prosecution, IP litigation, validity and infringement opinions, and client counseling primarily in the field of mechanical engineering, with an emphasis on oilfield and automotive technologies.
Ms. Margonis’s experience includes patent drafting, patent prosecution, patent landscaping, and patent appeals. She has drafted and prosecuted hundreds of patent applications in various mechanical fields, including, but not limited to, automotive devices, consumer products, subsea technology, downhole tools, drilling assemblies, oilfield tubulars and support equipment, filtering equipment and systems, subsea pump systems, and health and wellness devices.
In the area of intellectual property counseling, Ms. Margonis has prepared non-infringement and invalidity opinions and freedom to operate analyses; counseled clients on patent design-around strategies, the strength of patents, and worldwide patent strategy in anticipation of litigation; and conducted intellectual property due diligence.
In the context of litigation, Ms. Margonis has prepared complaints, answers, motions, discovery requests, responses to discovery, and participated in depositions, settlement conferences, and hearings for various patent infringement, copyright, and trade secret cases, including Section 337 investigations before the U.S. International Trade Commission. Specifically, Ms. Margonis’s experience includes leading infringement and validity portions of a patent infringement case to trial before the ITC, as well as development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions before U.S. District Courts.
Additionally, Ms. Margonis has also handled Inter Partes Review proceedings, including preparation of petitions for Inter Partes Review, discovery, oral argument, and client counseling with respect to such proceedings in light of pending or anticipated litigation matters.
Previously, Ms. Margonis worked as a mechanical engineer for MPR Associates, where she assisted with various equipment designs, including pump systems for nuclear plants, and performed systems design analysis. She also served as a mechanical engineering intern at FMC Energy Systems, where she worked on subsea tie-back systems for tension leg platforms and was a mechanical engineering intern at CDI Engineering Group.
- Represented Standard Innovation (US) Corp. and Standard Innovation Corporation as plaintiff and defendant in various U.S. patent lawsuits.
- Represented Standard Innovation (US) Corp. and Standard Innovation Corporation in a Section 337 patent infringement investigation in the International Trade Commission, including leading infringement and validity portions of a patent infringement case to trial in which the patent was found valid and infringed.
- Provided freedom to operate analyses to a global oilfield services company as part of due diligence of an IP acquisition.
- Provided global patent portfolio counseling to a wellness device client in light of U.S. and foreign patent litigation.
- Provided research and opinion work related to various patent technology matters for a global oilfield services company.
- Represented patent owner in an inter partes review petition before the USPTO.
- Represented a drilling equipment company as a defendant in a patent infringement lawsuit regarding threaded tubulars.
- Represented a major oilfield drill bit company as a plaintiff in patent litigation, including support and preparation for Markman hearing.
- J.D., University of Houston Law Center (2009)
- B.S., highest honors, Mechanical Engineering, Georgia Institute of Technology (2003)
- State Bar of Texas
- United States Court of Appeals for the Federal Circuit
- United States District Court for the Eastern District of Texas
- United States District Court for the Southern District of Texas
- United States District Court for the Western District of Texas
- United States Patent and Trademark Office
- “Top Lawyer,” H Texas magazine (2016, 2017)
SELECTED PUBLICATIONS AND PRESENTATIONS
- Co-author, “The ITC as an attractive patent litigation forum for the biotechnology and pharamaceutical industry,” Pharmaceutical Patent Analyst (2013)
- “An Introduction to Intellectual Property and Patent Law,” American Society of Mechanical Engineers South Texas Section, Houston, Texas (2011)
- “Introduction to Intellectual Property,” Society of Women Engineers Houston Chapter, Houston, Texas (2009)
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
- Intellectual Property Owner’s Association, International Patent Law & Practice Committee