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
Nothing for free – the real costs of ChatGPT
May 11, 2023 | Blog | By Michael Renaud, Marguerite McConihe, Nana Liu
Five Tips For Every In-House Counsel Launching an Open Source Software Program
July 5, 2022 | Blog | By Marguerite McConihe, Greg Penoyer
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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Benefits of and Best Practices for Protecting Artificial Intelligence and Machine Learning Inventions as Trade Secrets
February 10, 2022 | Blog | By Marguerite McConihe, Meena Seralathan
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
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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Patenting Considerations for Artificial Intelligence in Biotech and Synthetic Biology – Part 2: Key Issues in Patent Subject Matter Eligibility
January 30, 2020 | Blog | By Terri Shieh-Newton, Marguerite McConihe
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 Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
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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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.
