Marguerite McConihe focuses her practice on the development and implementation of unique and effective strategies that maximize the value of her clients’ IP portfolios. Marguerite has more than a decade of experience counseling industry innovators and the world’s leading technology companies on high-value IP transactions. Known for her business acumen and ability to rescue stalled transactions, Marguerite develops a deep knowledge of her clients’ objectives to create tailored IP strategies. Marguerite has been recognized by IAM Strategy 300 as one of the leading global IP strategists.
Marguerite has an established record as one of the top tactical IP litigators with significant victories in both the International Trade Commission and federal courts involving semiconductors and other high technology devices, software, data, consumer products and digital media. Recognized by Best Lawyers in America as One to Watch and Patexia as the one of the Best Performing ITC Attorneys Representing Complainants, Marguerite brings a depth of experience and expertise to provide effective and tactical guidance on the protection, monetization, and maximization of a corporations’ most valuable assets.
Experience
International Trade Commission
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297) - Represented video codec company in enforcing video and streaming media patents before the ITC and in the District of Delaware. The case was revolved in a client-favorable license.
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented a video codec company in enforcing digital rights management patents before the ITC and in the District of Delaware. The case was revolved in a client-favorable license.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented leading global semiconductor manufacturer in ITC and Texas district Court litigation against the worlds leading high technology device companies. The case was favorably revolved within 2.5 months of filing.
- Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Represented foundry technology company as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging against largest semiconductor fabrication and technology companies. Simultaneous cases in U.S. District Court and as well as Germany and China as well as the ITC investigation were resolved favorably prior to the conclusion of discovery.
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented leading global graphics and chip technology company asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. One global hand set and television company settled prior to the close of discovery and the ITC issued an exclusion order against the remaining companies, thereby excluding those companies products from the U.S. market.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Represented owner of portfolio of graphics processing and microprocessor patents against automotive manufacturers, and infotainment system and chip suppliers. The investigation resolved favorably prior to the conclusion of expert discovery.
viewpoints
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.
Read more
The Tall Tale of the Domestic Industry
March 4, 2019 | Blog | By Michael Renaud, James Wodarski, Marguerite McConihe, Courtney Herndon
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.
Read more
Key Strategies for Obtaining Patents Under the EPO’s New AI Guidelines
January 23, 2019 | Advisory | By Michael Renaud, Ralph Nack, Marguerite McConihe
Read about patenting strategies for the European Patent Office’s new artificial intelligence and machine learning guidelines and European Patent Convention requirements.
Read more
ITC to Review Controversial Apple-Qualcomm Decision
December 13, 2018 | Blog | By Michael Renaud, James Wodarski, Marguerite McConihe
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.
Read more
European Patent Office Issues New Guidelines on Artificial Intelligence and Machine Learning
November 7, 2018 | Blog | By Michael Renaud, Marguerite McConihe
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.”
Read more
ITC Provides Clarity on the Meaning of a Section 337(a)(2) “Article”
October 31, 2018 | Alert | By Michael Renaud, James Wodarski, Marguerite McConihe, Serge Subach
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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ALJ Pender: Apple Infringes, but No Exclusion Order for Qualcomm
October 4, 2018 | Alert | By Michael Renaud, James Wodarski, Robert Moore, Marguerite McConihe
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.
Read more
New Rules in the Northern District of California Aim to Encourage Patent Case Settlements
February 8, 2017 | Blog | By Michael Newman, Marguerite McConihe
New rules for patent cases in the Northern District of California will significantly affect litigation and settlement of cases in Silicon Valley’s backyard. Lawyers litigating cases in the district after the January 17, 2017 change should be wary of the new requirements that set the Northern District of California apart.
Read more
FTC and DOJ Issue Proposed Updates to Antitrust Guidelines for Licensing IP
October 14, 2016 | Blog | By Michael Renaud, Robert Kidwell, Andrew DeVoogd, Marguerite McConihe
For the first time in 26 years, the FTC and DOJ (the “Agencies”) have issued proposed updates to the Antitrust Guidelines for the Licensing of Intellectual Property, last revised in 1995.
Read more
News & Press
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
Inside the Deal: The Color of Money
August 18, 2023
Steven Andersen from LINE interviews Michael Renaud and Marguerite McConihe for the Spring 2023 issue.
Mintz members Lisa Adams and Marguerite McConihe contributed to Super Lawyers article titled, “How Do You Protect Intellectual Property in a Business Transaction?” The article helps give insight into the process of protecting your company's IP in a business transaction, including due diligence and getting legal help.
Mintz is pleased to announce that 120 firm attorneys have been recognized as leaders by Best Lawyers® in the 2024 edition of The Best Lawyers in America©.
Law360 published an article written by Members Michael Renaud, Marguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.
BOSTON – Mintz has been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2023 ITC Intelligence Report.
Artificial Intelligence and Intellectual Property
August 19, 2022
Samsung, LG Settle DivX Patent Fights Over Smart TVs
July 30, 2021
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.
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.
Mintz Announces Nine Newly Elevated Members
December 17, 2020
How Are IP Issues Sorted Out in a Business Transaction?
June 12, 2020
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.
Events & Speaking
Speaker
May
29
2024
16th Annual Practitioners' Think Tank on ITC Litigation & Enforcement
American Conference Institute - ITC Conference
Washington D.C.
Moderator
Moderator
Oct
28
2022
Critical Components of your IP Strategy: Are You and Your IP Protected?
The Engine's Tough Tech Summit
Panelist
Speaker
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Recognition & Awards
Named to IAM Strategy 300: Global Leaders (2024)
Ranked 19th by Patexia among the Most Active ITC Attorneys Representing Complainants and ranked among Most Active ITC Attorneys overall (2024)
Ranked 14th by Patexia among the Best Performing ITC Attorneys Representing Complainants and ranked among Best Performing ITC Attorneys overall (2024)
Best Lawyers: Ones to Watch - Patent Litigation (2024)
Involvement
- Women’s Leadership Program, Boston Chamber of Commerce, Fellow
- American Bar Association, Member
- Boston Bar Association, Member
- Women’s Bar Association, Member
Recent Insights
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
BOSTON – Nine Intellectual Property attorneys from Mintz have been recognized in the 2024 edition of the Intellectual Asset Management (IAM) Strategy 300 Global Leaders Guide.
Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew Galica, Frank Gerratana, Marguerite McConihe, Michael Newman, Adam Rizk, Adam Samansky, Daniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.
