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Lisa Margonis

Lisa Margonis

Partner

Heritage Plaza
1111 Bagby Street
Suite 2100
Houston, TX 77002
lisa.margonis@nelsonmullins.com

Lisa has more than 20 years of experience helping clients manage their intellectual property portfolios and enforce their IP rights. She focuses her practice primarily on intellectual property matters within the mechanical engineering sector, particularly oilfield technologies, automotive technologies, and consumer products, including health and wellness devices.

Armed with a strong technical background, sharp analytical skills,...

Lisa has more than 20 years of experience helping clients manage their intellectual property portfolios and enforce their IP rights. She focuses her practice primarily on intellectual property matters within the mechanical engineering sector, particularly oilfield technologies, automotive technologies, and consumer products, including health and wellness devices.

Armed with a strong technical background, sharp analytical skills, and legal knowledge, Lisa provides clients with exceptional guidance and assistance with foreign and domestic patent preparation and prosecution, IP litigation, invalidity and infringement options, and IP counseling.

On the litigation side, she has worked on numerous patent infringement, copyright, and trade secret cases, including Section 337 investigations before the U.S. International Trade Commission. She has considerable experience with development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions before U.S. District Courts, as well as leading infringement and validity portions of patent infringement cases to trial.  Lisa’s experience also includes proceedings before the Patent Trial and Appeal Board.  She also represents clients in alternative enforcement actions, including Amazon’s Patent Evaluation Express (APEX) program.

Additionally, her experience extends to patent drafting, patent prosecution, and patent appeals. She has drafted and prosecuted hundreds of patent applications in various mechanical fields such as 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, Lisa 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.

Lisa Margonis

and legal knowledge, Lisa provides clients with exceptional guidance and assistance with foreign and domestic patent preparation and prosecution, IP litigation, invalidity and infringement options, and IP counseling.

On the litigation side, she has worked on numerous patent infringement, copyright, and trade secret cases, including Section 337 investigations before the U.S. International Trade Commission. She has considerable experience with development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions before U.S. District Courts, as well as leading infringement and validity portions of patent infringement cases to trial.  Lisa’s experience also includes proceedings before the Patent Trial and Appeal Board.  She also represents clients in alternative enforcement actions, including Amazon’s Patent Evaluation Express (APEX) program.

Additionally, her experience extends to patent drafting, patent prosecution, and patent appeals. She has drafted and prosecuted hundreds of patent applications in various mechanical fields such as 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, Lisa 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.

Lisa has more than 20 years of experience helping clients manage their intellectual property portfolios and enforce their IP rights. She focuses her practice primarily on intellectual property matters within the mechanical engineering sector, particularly oilfield technologies, automotive technologies, and consumer products, including health and wellness devices.

Armed with a strong technical background, sharp analytical skills,... and legal knowledge, Lisa provides clients with exceptional guidance and assistance with foreign and domestic patent preparation and prosecution, IP litigation, invalidity and infringement options, and IP counseling.

On the litigation side, she has worked on numerous patent infringement, copyright, and trade secret cases, including Section 337 investigations before the U.S. International Trade Commission. She has considerable experience with development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions before U.S. District Courts, as well as leading infringement and validity portions of patent infringement cases to trial.  Lisa’s experience also includes proceedings before the Patent Trial and Appeal Board.  She also represents clients in alternative enforcement actions, including Amazon’s Patent Evaluation Express (APEX) program.

Additionally, her experience extends to patent drafting, patent prosecution, and patent appeals. She has drafted and prosecuted hundreds of patent applications in various mechanical fields such as 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, Lisa 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.

Experience

The following is a selected sampling of matters and is provided for informational purposes only. Past success does not indicate the likelihood of success in any future matter.

  • Partner, Houston-based boutique IP firm (2003–2025)
  • Mechanical Engineer, Virginia-based engineering consulting firm (2003-2004)
  • Represented defendants in federal district court litigation in the United States District Court for the District of Delaware. Lisa led the patent infringement and validity portions of the case through a jury trial that resulted in a $12.8 million jury verdict including findings of willful patent infringement against the original plaintiff and counter-defendants.
  • Successfully defended inter partes reviews challenging the patentability of three different patents for patent owner Novoluto GmbH.  Represented patent owner in the consolidated appeal in the United States Court of Appeals for the Federal Circuit in which the Federal Circuit affirmed the PTAB’s decisions affirming the patentability of all three patents.
  • Represented a well containment company as a defendant in a patent infringement lawsuit and successfully obtained a finding of inequitable conduct.
  • 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.

Education

  • University of Houston Law Center, JD (2009)
  • Georgia Institute of Technology, BS, Mechanical Engineering, highest honors (2003)

Admissions

  • Texas
  • U.S. Patent & Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. District Court for the District of Colorado

Practice Areas

Industries

The bar rules of some states require that the standards for an attorney's inclusion in certain public accolades or recognitions be provided. When such accolades or recognitions are listed, a hyperlink is provided that leads to a description of the respective selection methodology.

  • "Top Lawyer," H Texas magazine (2016-present)
  • Intellectual Property Owner's Association
  • Participant, UH Law Center Professional Mentoring Program 
  • Advisory Board Member, Georgia Tech George W. Woodruff School of Mechanical Engineering Advisory Board