Lisa is a partner at Sunstein and the Chair of the Litigation Practice. Lisa is a seasoned litigator, serving as lead counsel in patent, trademark and copyright litigation in federal courts throughout the United States. Lisa has extensive experience in intellectual property matters, providing strategic counsel to clients on both domestic and international issues and guiding the firm’s efforts in protecting and enforcing clients’ valuable brands and ideas. Lisa is a member of the firm’s Management Committee.
- Litigates patent, copyright, trademark, trade dress and other business disputes; representative cases include:
- Sage Therapeutics, Inc. v. Sage Naturals, Inc., United States District Court for the District of Massachusetts, (represented plaintiff Sage Therapeutics, a biopharmaceutical company, in trademark dispute; defendant changed its name to Sira Naturals)(lead attorney)
- FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc., United States Court of Appeals for the Federal Circuit, United States District Court for the Middle District of Florida (represented defendants Iatric and its customer CynergisTek in obtaining CAFC affirmance of dismissal of lawsuits due to patent invalidity) (lead attorney, both cases)
- Lennon Image Technologies, LLC v. L’Oréal USA, Inc., United States District Court for the Eastern District of Texas Marshall Division (represented defendant L’Oreal USA, Inc. when it was sued for patent infringement by Lennon Image Technologies, LLC) (lead attorney)
- Crutchfield Corp. v. Focusrite PLC, Focusrite Novation Inc., Focusrite Audio Engineering Limited, United States District Court for the Western District of Virgina Charlottesville Division (represented defendant Focusrite, a global music and audio products, defending against patent infringement claims by Crutchfield Corporation) (lead attorney)
- Cinsay, Inc. v. Wirewax U.S., Inc., United States District Court for the Northern District of Texas Dallas Division (represented defendant Wirewax U.S., Inc. in patent lawsuit brought by Cinsay, Inc.; we filed a motion to dismiss the suit in light of patent invalidity pursuant to 35 U.S.C. § 101 and case was dismissed by stipulation of the parties prior to the motion being decided) (lead counsel)
- Metabolix, Inc. v. International Paper Company, United States District Court for the District of Massachusetts (represented plaintiff Metabolix, exclusive licensee of patent for polylactic acid-based blends) (lead attorney)
- Romek Figa d/b/a Abraham & Son v. Apple, Inc., United States District Court for the District of Massachusetts (represented plaintiff Romek Figa, enforcing patent for automatic incoming telephone call originating number and party display system); Romek Figa d/b/a Abraham & Son v. High Tech Computer Corp., a/k/a HTC Corp. HTC America, Inc., and Exedea, Inc., United States District Court for the District of Massachusetts; Romek Figa d/b/a Abraham & Son v. Sony Ericsson Mobile Communications (USA), Inc. and AT&T Mobility LLC., United States District Court for the District of Massachusetts (lead attorney, all cases)
- Softspikes, LLC et al. v. MacNeill Engineering Company, Inc. and Trisport, Ltd. et al. v. MacNeill Engineering Company, Inc. et al., United States District Court for the District of Delaware (represented MacNeill Engineering in two suits involving 3 MacNeill patents and defending against 5 other patents, concerning golf cleats and receptacles)
- Fotomedia Technologies, LLC v. Fujifilm USA et al., United States District Court for the Eastern District of Texas (defended MyPublisher, Inc., one of numerous defendants in suit brought by NPE, against patent for method and system for creating messages including image information; resolved after patent narrowed in re-examination) (lead attorney)
- AOL, LLC, Time Warner, et al. v. NameMedia, Inc., United States District Court for the Eastern District of Virginia (represented defendant against claims of trademark infringement, cybersquatting; resolved after successful motion practice on numerous issues, including reverse domain name hijacking counterclaim, an issue of first impression) (lead attorney)
- First Act Inc. v. Brook Mays Music Company, Inc., United States District Court for the District of Massachusetts ($20.7 million jury verdict, represented plaintiff in false advertising and commercial disparagement lawsuit)
- Counsels clients regarding development and enforcement of trademark portfolios, including global pharmaceutical, software, retail, apparel, and consumer products companies, including:
- ’47 Brand, LLC v. Contrast Imports, Inc., USPTO, Trademark Trial and Appeal Board (we represented ’47, a premium sportswear and lifestyle brand, in opposing Contrast Imports’ application to register a 47 in a circle; opposition sustained by the TTAB) (lead counsel).
- Vertex Pharmaceuticals Incorporated v. Hercules Brand Corp., USPTO, Trademark Trial and Appeal Board (we represented Vertex in successful opposition to the mark VERTOX in trial proceedings before the TTAB) (lead counsel).
- Prosecution trademark applications before the United States Patent and Trademark Office (USPTO); opposition proceedings and argument before the USPTO Trademark Trial and Appeal Board
- Working with international network of attorneys on prosecution and enforcement of trademark applications and registrations, including matters before the European Office for Harmonization in the Internal Market (OHIM) and other jurisdictions.
- Significant experience advising clients on pharmaceutical trademarks. Presents frequently on the topic, see, e.g., slides regarding the USPTO and FDA drug name approval process.
Professional and Community Involvement
- Member of the Boston Bar Association Law Firm Leadership Forum. Numerous past leadership positions within the BBA, including former member of BBA Council; Co-Chair, Litigation Section; member of Children and Youth Outreach Leadership Task Force.
- Member of the AIPLA Amicus Committee
- Co-author of then U.S. Supreme Court "Bad Spaniels" Amicus Brief for AIPLA
- Member of the Board of Advisors and the Women in Science & Engineering (WISE) Commitee for the Museum of Science Boston
- Co-director of the firm's Practicum Program in partnership with New England Law Boston.
- Past-President, Federal Bar Association, Massachusetts Chapter
- Women’s Bar Association Women’s Leadership Initiative Mentor; leader of WBA Mentoring Circle; WBA Awards and Recognition Committee member
- Performs significant pro bono work, including representation of GoodWeave. GoodWeave’s founder Kailash Satyarthi, was a co-recipient of the 2014 Nobel Peace Prize. GoodWeave’s mission is to end child labor in the carpet industry and offer educational opportunities to children in weaving communities. Has also provided pro bono legal services for artists and artisans as a panel member for the Volunteer Lawyers for the Arts Legal Referral Program.
- Initiated the firm’s involvement in the Citizen Schools 8th Grade Academy; over a decade working as a tutor of students in Boston Public Schools.
- Publishes frequently on the topic of intellectual property protection. Author of practice guide “Protecting and Enforcing Copyright” (MCLE, Inc., 3rd Edition).
- Member of: American Bar Association (ABA), American Intellectual Property Law Association (AIPLA), Boston Bar Association (BBA), Boston Patent Law Association (BPLA), Federal Bar Association (FBA), International Trademark Association (INTA), Massachusetts Bar Association, Pharmaceutical Trademarks Group, Women’s Bar Association of Massachusetts and Women in Bio.
- Selected by World Trademark Review to the WTR 1000 list under Silver - Individuals: Prosecution and Strategy, and Silver - Individuals: Enforcement and Litigation in 2023. The WTR 1000 is the only definitive guide dedicated to identifying the world’s leading trademark legal services providers.
- Selected by her peers for inclusion in The Best Lawyers in America® 2017-2023 editions for Litigation – Intellectual Property and Trademark Law
- Named to the 2020 "Circle of Excellence" by Massachusetts Lawyers Weekly
- Recognized by as a Super Lawyers® from 2004-2022 in Massachusetts
- Named to the "Top 100" Lawyers and "Top 50" Women Lawyers in Massachusetts lists by Super Lawyers®
- Chosen as a "Women Leaders in Law," an honor that was recognized in the Fall 2014 issue of Fortune Magazine
- Selected as a 2010 “Top Women of the Law” honoree by Massachusetts Lawyers Weekly
- Awarded the BBA’s "Children and Youth Outreach Leadership Award" for outstanding commitment to the Boston Bar Association and Boston’s young people
- Recognized as AV Preeminent® by Martindale-Hubbell®
Bar and Court Admissions
- Member of the bar of the Supreme Judicial Court of Massachusetts, and the bars of the United States Courts of Appeal for the First and Federal Circuits, the United States District Courts for the District of Massachusetts, the Eastern District of Wisconsin, the Eastern District of Texas, and the United States Supreme Court.
“Lisa is the type of counsel who serves her clients best. She is as interested in the areas of her expertise as she is in building strong relationships with her colleagues and clients. Her interpersonal skills, her expertise and her outstanding negotiation skills make her the best possible advocate in a dispute. Lisa is also committed to the community and to the practice of law, and serves organizations and individuals with great energy and dedication, especially in the mentoring and advancement of women in the profession. I recommend her without reservation.”