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Marguerite McConihe

Member

[email protected]

+1.617.348.1889

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Marguerite is a seasoned patent strategist and litigator known for her business acumen and ability to rescue stalled transactions. With more than a decade of experience counseling industry innovators and the world’s largest technology companies, Marguerite develops a deep knowledge of her clients’ business objectives to create tailored IP strategies that maximize the value of their IP portfolios. 

Marguerite has a reputation for guiding clients through complex, high-stakes transactions with a litigator’s eye for assessing risk: counseling clients on IP strategy pre-deal, monetizing and structuring throughout the process, and, when necessary, navigating complex multi-district litigation. Marguerite has an established record as one of the top tactical IP litigators, with significant victories in both the International Trade Commission (ITC) and federal courts involving semiconductors and other high technology devices, software, data, consumer products, and digital media. 

Recognized by IAM Strategy 300 as one of the leading global IP strategists, Best Lawyers in America as One to Watch, and consistently listed by Patexia among the top 10 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 corporation’s most valuable assets.

Experience

Representative Transactions

  • Represented AMD in developing and executing IP strategy, including transactions with global semiconductor and consumer product manufacturers, such as Samsung and LG. 
  • Represented private equity client on behalf of OLED technology company in sale of trade secrets and patent portfolios to Samsung. 
  • Represented GE in monetizing codec portfolio, including negotiating licenses with industry leaders, such as Apple. 
  • Represented Juul in developing and executing IP strategy, including obtaining license to Altria IP portfolio. 
  • Represented software company in merger with national security contractor. 
  • Represented global financial institution in acquisition of machine learning technology. 
  • Represented global biotech company in acquisitions of multiple vanguard technologies, including CRISPR, machine learning, and gene therapy. 
  • Represented private equity client in investment in security technology company, including escrow of trade secret protected analytical procedures. 

International Trade Commission

  • In the Matter of Certain Vaporizer Devices, Cartridges Used Therewith, and Components Thereof (337-TA-1372) - Represented Juul Labs Inc. (“JLI”) in an ITC investigation defending against an assertion of patents owned by Altria’s e-cigarette subsidiary, NJOY.  After a one-week hearing in front of ALJ Johnson Hines, we obtained an initial determination finding, among other things, that JLI’s products do not infringe either of NJOY’s two asserted patents, and therefore do not violate Section 337.  On Mar. 3, 2025, the ITC Commission affirmed the ALJ’s non-infringement findings and ultimate finding of no violation.  Accordingly, the ITC declined to issue an exclusion order against JLI.
  • Certain Semiconductor Devices, Mobile Devices Containing the Same, and Components Thereof (337-TA-1336) – Represented patent owner Daedalus Prime in ITC investigation involving four patents related to semiconductor manufacturing processes used to make FINFET transistors. The case against Samsung was dismissed following a confidential license and settlement agreement. TSMC settled just prior to trial.
  • Certain Integrated Circuits, Mobile Devices Containing the Same, and Components Thereof (337-TA-1335) - Represented Daedalus Prime against Samsung Electronics and Qualcomm Corporation in ITC investigation involving four patents related to power management techniques in computer processors. The case against Samsung was dismissed following a confidential license and settlement agreement. Evidentiary hearing involving the remaining parties was held in August 2023 and ultimately settled before a final decision on the merits.
  • Certain Graphics Systems, Components Thereof, and Digital Televisions Containing the Same; Inv. (337-TA-1318) – Represented Advanced Micro Devices in an ITC investigation asserting AMD’s proprietary graphics processing unit (GPU) patents against TCL and Realtek Semiconductor. After a week-long trial, and multiple rounds of briefing to the ALJ and the Commission, the Commission found and upheld the ALJ’s initial determination that all respondents violated Section 337, and issued a limited exclusion order against both TCL and Realtek, as well as a cease-and-desist order against TCL. The limited exclusion order blocks TCL and Realtek from importing "certain graphics systems, components thereof, and digital televisions containing the same” that infringe AMD’s proprietary graphics IP.
  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (II) (337-TA-1297) - Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC and in the District of Delaware against Respondent TCL. The asserted patents involve innovations relating to internet video and streaming media, and in the ITC action, Amazon has moved to participate as an Intervenor. These additional filings, in addition to the original filings, and related negotiations resulted in TCL and DivX signing an IP licensing agreement which resolved all pending litigations.
  • Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
  • Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries as lead counsel at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
  • Certain Semiconductor Devices, Integrated Circuits, and Consumer Products Containing the Same (337-TA-1149) – Mintz represented Innovative Foundry Technologies as part of a global enforcement strategy to protect 5 asserted patents relating to semiconductor fabrication and packaging. Respondents for the ITC matter included Taiwan Semiconductor Manufacturing Company, Qualcomm Incorporated, MediaTek, and Vizio. Cases were simultaneously filed in U.S. District Court and internationally in Germany and China. The investigation was instituted in March of 2019 and resolved favorably prior to the conclusion of discovery in August of 2019.
  • 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) – Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, 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.

District Court

  • Successfully represented international software company in copyright infringement and trade secret theft defense. 
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viewpoints

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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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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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.
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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.
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News & Press

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A team of attorneys in Mintz’s renowned Patent Litigation Practice, led by Intellectual Property Division Chair Michael Renaud, was recognized as a ‘Litigator of the Week Runner-Up’ by The Am Law Litigation Daily for securing a significant defense victory for Juul Labs at the US International Trade Commission. The article highlights that the “full commission affirmed an administrative law judge’s decision finding that Juul didn’t infringe upon patents held by Altria’s NJOY covering certain vaporizer and cartridge technology, preventing any potential exclusion order.”

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Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2025 ITC Intelligence Report. 

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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam Rizk, and James Wodarski have been named to the 2024 IAM Strategy 300: The World’s Leading IP Strategists list.

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187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.

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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. 

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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.

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Mintz is pleased to announce that Member and Chair of the firm’s Intellectual Property Division Michael Renaud and Members Matthew GalicaFrank GerratanaMarguerite McConiheMichael NewmanAdam RizkAdam SamanskyDaniel Weinger, and James Wodarski have been named to the 2023 IAM Strategy 300: The World’s Leading IP Strategists list.

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Steven Andersen from LINE interviews Michael Renaud and Marguerite McConihe for the Spring 2023 issue.

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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.

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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©.

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Law360 published an article written by Members Michael RenaudMarguerite McConihe, and Associate Nana Liu analyzing potential intellectual property risks companies should consider when utilizing AI tools.

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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.

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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
Oct
1
2024

IAM Live: Patent Transactions 2024

Hotel Kabuki, San Francisco

Speaker
May
29
2024

16th Annual Practitioners' Think Tank on ITC Litigation & Enforcement

American Conference Institute - ITC Conference

Washington D.C.

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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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Recognition & Awards

  • Best LawyersOnes to Watch - Patent Litigation (2024 - 2025)

  • 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)

  • IAM Strategy 300: The World's Leading IP Strategists (2023 - 2024)

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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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