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Marguerite McConihe

Member

MMcConihe@mintz.com

+1.617.348.1889

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Marguerite is a seasoned litigator and intellectual property transactional attorney who counsels clients in maximizing the value of their intellectual property and technology assets, including trade secrets, patents, copyrights, and trademarks. She has an emphasis on representing technology companies, particularly in the hardware, software, internet, semiconductor, biotechnology, and medical device industries, including innovators leveraging artificial intelligence and machine learning. Representative matters include: licensing transactions, acquisitions and divestitures, collaborations, joint ventures, strategic alliances and arrangements in connection with private equity, M&A and other corporate transactions.

Marguerite has achieved victories on behalf of both patent owners and accused infringers in complex litigation at both the International Trade Commission and federal district courts.

Experience

Federal District Court

  • Preservation Wellness Technologies LLC v. NextGen Healthcare Information Systems LLC (E.D. Tex., 2:15-cv-01562) – Represented the defendant in a single-patent case involving a medical records system. Prior to answering the complaint, the court granted our client’s motion to dismiss on the basis that the patent claims were drawn to patent-ineligible subject matter under 35 U.S.C. § 101.
  • Message Notification Technologies LLC v. Unify Inc. f/k/a Siemens Enterprise Communications (D. De.– 1:13cv1883) – Represented the defendant in a single-patent case involving automated e-mail notification technology. The case settled on terms favorable to our client after nearly two years of litigation.
  • Clouding IP, LLC v. Siemens Enterprise Communications, Inc. (D. De. – 1:13cv1457) Represented global communications software and services company in defending patent infringement action regarding cloud computing. Case settled favorably.
  • Presqriber, LLC v. NextGen Healthcare Information Systems, LLC. (E.D. Tex. – 6:14cv00458) Successfully represented national healthcare technology company in defending patent infringement action.
  • Polartec LLC, et al. v. Lamour Global, Inc. (D. Mass. – 1:14cv10017) Obtained favorable settlement for international clothing company in patent infringement action.
  • Cardsoft (Assignment for the Benefit of Creditors), LLC v. The Gores Group, LLC, et al. (E.D. Tex. – 2:12cv00325) Defended patent infringement action involving patents related to electronic point-of-sale systems. Case settled on favorable terms.

International Trade Commission

  • Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
  • Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) Represent owner of portfolio of graphics processing and microprocessor patents as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
  • Certain Communications or Computing Devices and Components Thereof (337-TA-925) – Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company, Enterprise System Technologies, S.A.R.L. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
  • Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.
  • Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space – Apple, LG, Research in Motion, Samsung, and Sony.
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viewpoints

Five Tips For Every In-House Counsel Launching an Open Source Software Program

July 5, 2022 | Blog | By Marguerite McConihe, Greg Penoyer

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A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

February 22, 2022 | Blog | By William Meunier, Peter Cuomo, Marguerite McConihe, Sean Casey

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.
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We previously discussed which portions of an artificial intelligence/machine-learning (“AI/ML”) platform can be patented.  Under what circumstances, however, is it best to keep at least a portion of the platform a trade secret? And what are some best practices for protecting trade secrets? In this post, we explore important considerations and essential business practices to keep in mind when working to protect the value of trade secrets specific to AI/ML platforms, as well as the pros and cons of trade secret versus patent protection.
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Domestic Industry Alive and Well at ITC; Important New Opinion Continues Trend

February 1, 2022 | Blog | By Jonathan Engler, Marguerite McConihe, Michael Renaud

The U.S. International Trade Commission (the “ITC”), in an important new opinion, recently extended a series of final determinations that complainants had satisfied the “economic prong” of Section 337’s domestic injury requirement.  This decision reinforces the Commission’s critical role in defending U.S. intellectual property rights and bodes well for patent owners.  In Certain Percussive Massage Devices, Inv. No. 337-TA-1206, the Commission found that complainant Hyperice Inc. proved it had “significant” domestic industry investments in labor, notwithstanding that all of the domestic industry devices were manufactured overseas.  Indeed, thus far in 2022, the Commission has found the economic prong of the domestic industry requirement satisfied in all four public final determinations.  In 2021 and 2022 combined, the Commission found the economic prong of the domestic industry requirement satisfied in 80% of all patent-based investigations that resolved on the merits, demonstrating that Complainants with well-organized, substantiated domestic industry cases continue to meet with success at the ITC.
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Entire Market Value Rule Strikes Again in WDTX

January 19, 2022 | Blog | By Brad M Scheller, Marguerite McConihe, Robert Sweeney

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Year in Review: The Most Popular IP Posts of 2020

January 14, 2021 | Blog | By Christina Sperry

As 2021 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2020.  According to many readers, hot topics included Chinese foreign filing licenses, patenting involving either artificial intelligence (AI) or COVID-19, inter partes review, and attorney fee awards.
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In our first blog in this multi-part series, we explored key considerations for protecting artificial intelligence (“AI”) inventions in biotech and synthetic biology. In this part 2 of the series, we will examine some key considerations and hurdles in patenting machine learning-based biotech or synthetic biology inventions.
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Mintz is recognized as among the top ten firms in ITC Section 337 litigation by Patexia in its inaugural "ITC Intelligence Report". We are pleased to be among the firms included in this publication and thrilled that it has come on the heels of a great year at the ITC for the Mintz team.
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Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology - Part 1

September 30, 2019 | Blog | By Terri Shieh-Newton, Marguerite McConihe

Artificial Intelligence (AI) inventions have aided development in nearly every industry, but perhaps none more so than synthetic biology. For synthetic biology researchers, AI has developed into a vital tool to create cutting edge applications.
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Emerging Legal Trends AI: Can Israel Join the U.S. and Europe as a Leader in AI Protections?

June 10, 2019 | Blog | By Michael Renaud, Asa Kling, Marguerite McConihe

The intersection of artificial intelligence (AI) and intellectual property invokes fascinating theoretical questions.  With these questions, however, come significant practical issues that businesses, legal practitioners, and governments need to address proactively. Israel is embracing the challenge.
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News & Press

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Law360 reported that Mintz client American video codec company DivX, an early innovator in the digital streaming video and digital rights management scene, has reached confidential settlements with LG and Samsung, resolving international litigation claiming they infringe DivX’s streaming patents with their smart televisions. The Mintz team representing DivX is led by Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Member Adam Rizk and includes Member and Chair of the firm’s Intellectual Property Litigation Practice Matthew Hurley, Members Keith Carroll, Marguerite McConihe, Michael McNamara, Samuel Davenport, and Daniel Weinger, and Associates Matthew Karambelas, Jessica Perry, and Nana Liu.
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In an article published by Managing IP, Mintz Member Marguerite McConihe was quoted on the Department of Justice’s recent decision to move a 2020 letter to the competition section of its website and what it may signal for standard essential patent policy under the Biden administration. Ms. McConihe stated that it’s too soon to tell whether the move is a clear sign of where the Biden administration is going and added that the pending appointment of the Assistant Attorney General for Antitrust will be a better indicator of the administration’s position.
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Mintz Member Lisa Adams and Associate Marguerite McConihe were quoted in an article published by Super Lawyers on legal considerations for business transactions in Massachusetts that involve the transfer of intellectual property assets.
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Events & Speaking

Moderator
Nov
9
2022
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Moderator
Panelist
Apr
28
2021

Patent Transactions 2021

IAM

Virtual Event

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Speaker
Dec
15
2020

IP Advice for Tech Startups

Boston Bar Association

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Involvement

  • Women’s Leadership Program, Boston Chamber of Commerce, Fellow
  • American Bar Association, Member
  • Boston Bar Association, Member
  • Women’s Bar Association, Member
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Marguerite McConihe

Member

Boston