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Marguerite McConihe

Associate

[email protected]

+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. 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.

Education

  • MIT Sloan School of Management (EP, Artificial Intelligence in Business Strategy )
  • Vermont Law School (JD)
  • Vermont Law School (MSt)
  • George Washington University (BS)

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.

Involvement

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

Viewpoints

Intellectual Property Viewpoints Thumbnail
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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Practice Hero Artificial-Intelligence Mintz
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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A.I. Viewpoint
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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There is a common misconception the domestic industry economic prong requirement is insurmountable and an unknowable factor in a patent infringement action at the International Trade Commission (“ITC” or “Commission”), especially for foreign-based companies or non-practicing entities (“NPEs”). This could not be further from the truth. Those in the trenches at the ITC have seen recent trends that show with effective and strategic pre-suit diligence, creative thinking, and experienced counsel, the domestic industry requirement is no bar to a successful investigation.
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Read about patenting strategies for the European Patent Office’s new artificial intelligence and machine learning guidelines and European Patent Convention requirements.
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As anticipated https://www.mintz.com/insights-center/viewpoints/2231/2018-10-alj-pender-apple-infringes-no-exclusion-order-qualcomm, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”) Pender in In the Matter of Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), where ALJ Pender, despite finding that a valid patent was infringed and all jurisdictional requirements met, recommended that no Limited Exclusion Order be issued against Apple because it would be contrary to the public interest.
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On November 1, 2018, the European Patent Office (“EPO”) issued new guidelines for the patentability of artificial intelligence (“AI”) and machine learning (“ML”) inventions which indicate that applications within this subject matter may be treated as largely unpatentable. The new guidelines, G-II 3.3.1, provide that AI and ML are “based on computational models and algorithms for classification, clustering, regression and dimensionality reduction, such as neural networks, genetic algorithms, support vector machines, k-means, kernel regression and discriminant analysis.” These “computational models and algorithms” are, according to the guidelines, “per se of an abstract mathematical nature.”
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This article examines a recent International Trade Commission decision that opens up the ITC to complainants in an earlier phase of product development.
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Read about an International Trade Commission in which a judge ruled that Apple infringed a valid Qualcomm patent, but recommended against an exclusion order for Qualcomm.
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