Lisa A. Chiarini

Lisa is an intellectual property litigator and strategist with a chemistry background and a record of delivering results where IP and business imperatives intersect. She began practicing law in 2000 and draws on more than two decades of IP experience advising clients on high-stakes litigation, patent portfolio development, and complex IP transactions. Clients turn to Lisa for counsel that is practical, data‑driven, and directly tied to commercial outcomes.

Versatile, industry‑informed counsel

Lisa’s practice spans the full spectrum of IP-intensive industries, including financial services, automotive, pharmaceuticals, biotechnology, medical devices, and agriculture. Her interdisciplinary training enables her to translate technical complexity into clear legal strategies, whether protecting market share, enabling product launches, or unlocking deal value across jurisdictions.

High‑stakes litigation leadership

Clients rely on Lisa to manage and lead strategies in bet‑the‑company disputes, including patent infringement, trade secret misappropriation, and breach‑of‑collaboration actions in U.S. district courts, the International Trade Commission, and arbitration. She is undefeated on patent validity issues at the PTAB, pairing procedural command with substantive technical analysis to secure durable results. Lisa regularly coordinates parallel proceedings and designs cross‑forum strategies that mitigate risk, preserve business continuity, and position matters for efficient resolution.

Patent strategy across the product lifecycle

From proof‑of‑concept through launch, Lisa provides tactical guidance at critical decision points. Her work includes patent landscape analyses and white‑space identification, freedom‑to‑operate assessments, and portfolio development tailored to go‑to‑market plans and revenue models. She builds patent positions that anticipate competitor behavior, regulatory milestones, and downstream enforcement needs, ensuring that IP assets align with the client’s growth strategy.

Transactions and strategic agreements

Lisa structures and negotiates the IP terms that drive value in complex deals. Her experience includes licenses, master services agreements, non-clinical research agreements, sponsor research agreements, technology procurement and development agreements, and the IP aspects of M&A and other strategic transactions. She focuses on deal architecture, diligence, and risk allocation to capture innovation value while safeguarding long‑term optionality.

Experience

Representative matters

TIZ Inc. d/b/a PROVI v. Jason Smith d/b/a DUST BOWL, CBM2020-00029 (PTAB). Lead counsel in a successful Covered Business Method Patent Review challenging the validity of Dust Bowl Patent involving software technology relating to maintaining inventory and purchases of alcoholic beverages in three-tiered system

Nasdaq, Inc. et al. v. Miami International Holdings, Inc. et al. (D.NJ). Representing Miami International Holdings, Inc. et al. in a patent litigation and trade secrets action involving systems and methods for electronic securities trading.

Miami International Holdings, Inc. et al. v. Nasdaq, Inc. CBM2018-00032 (PTAB). Lead counsel in Covered Business Method Review challenging the validity of Nasdaq Patent involving system for automated securities trading using a look-up table to route security interest messages.

Miami International Holdings, Inc. et al. v. Nasdaq, Inc. CBM2018-00030 (PTAB). Lead counsel in Covered Business Method Review challenging the validity of Nasdaq Patent involving system for routing of security interest messages in an automated trading system.

Miami International Holdings, Inc. et al. v. Nasdaq, Inc. CBM2018-00029 (PTAB). Lead counsel in Covered Business Method Review challenging the validity of Nasdaq Patent involving securities trading system employing heartbeat or keep-alive signal technology.

Miami International Holdings, Inc. et al. v. Nasdaq, Inc. CBM2018-00028 (PTAB). Lead counsel in Covered Business Method Review challenging the validity of Nasdaq Patent involving securities trading system employing a dual quote GUI.

Axalta Coating Systems, LLC v. PPG Industries Inc., IPR2022-000675 (PTAB). Lead counsel in Inter Partes Review challenging the validity of PPG Patent involving automotive coating incorporating nanotechnology.

Axalta Coating Systems, LLC v. PPG Industries Inc., IPR2022-000676 (PTAB). Lead counsel in Inter Partes Review challenging the validity of PPG Patent involving automotive coating incorporating nanotechnology

PPG Industries, Inc. et al. v. Axalta Coatings Systems LLC (D. Del.) Representing PPG in patent litigation involving coatings nanotechnology.

BASF Corp. v. SNF Holding Company et al. (S.D. Ga). Representing BASF in patent litigation involving chemical process.

Merck Sharp & Dohme Corp. v. Amneal Pharmaceuticals LLC, (D. Del.). Prosecuted Hatch-Waxman patent infringement case regarding Nasonex ®.

FMC Corp. v. Summit Agro USA LLC. (D. Del). Represented FMC in patent litigation involving process for making sulfentrazone herbicide.

FMC Corporation v. Summit Agro USA LLC et al. (ITC) –Trial counsel for FMC Corp. before the U.S. International Trade Commission in a patent case involving sulfentrazone herbicide.

Counsel for major pharmaceutical company in ICC arbitration involving pharmaceutical collaboration agreement involving license to patents and trade secrets for a drug to treat schizophrenia.

Elan Pharma International Ltd. v. Abraxis Bioscience, Inc. (D. Del.). Prosecuted first patent infringement case involving nanotechnology/nanomedicine. Two week jury trial involving patent infringement, invalidity, and unenforceability claims. Jury found in favor of client, upholding validity and enforceability of patent. Jury also found infringement and awarded client $55.2 million in damages. Post-verdict, the parties settled and entered into a license agreement for $78 million.

Represented pharmaceutical company in a worldwide licensing agreement for the development of therapeutic suite of products for treatment of cancer.

Represented pharmaceutical company in worldwide exclusive licensing agreement for the development of a therapeutic formulation for the treatment of viruses, including COVID-19.

Represented pharmaceutical start-up company in worldwide exclusive licensing and supply agreement for the development and marketing of an inhaler device for treating epilepsy.

Represented investment firm in IP due diligence and assignment agreements for a multi-million dollar investment to explore and promote a new technology relating to tissue remodelling medical devices.

Represented investment firm in IP due diligence for a multi-million dollar investment to promote a new technology relating to human milk based fortifiers and related formulations.

Recognitions

Named a Global Leader by IAM Patent 1000, the market-leading annual directory that identifies the top law firms and individuals in the world’s most significant patent jurisdictions, 2025
Selected to the IAM Patent 1000, which identifies the top patent practitioners throughout the world

Credentials

Education

Brooklyn Law School, 2000, J.D., cum laude; Judge Nathan R. Sobel Prize for Criminal Law; CALI Excellence for the Future Award in Appellate Advocacy; CALI Excellence for the Future Award in Criminal Law; Corpus Juris Secundum Award for Scholastic Excellence in Criminal Law
Hofstra University, 1994, M.S., with distinction, Secondary Education
St. Joseph's College, 1990, B.S., Chemistry