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Mary Prendergast

Partner | Washington, D.C.

Mary is a trial lawyer with extensive experience litigating patent and trade secrets cases in courts across the country and at the International Trade Commission (ITC). In particular, Mary helps clients navigate the unique procedural and substantive challenges (and opportunities) presented by the ITC. Recognized by Legal500, clients have noted that Mary “has deep knowledge of Section 337 practice and procedure and is a strong strategic thinker.” Mary is co-head of the litigation department in Washington, D.C. and an editor of the MoFo@ITC guide to Section 337 investigations.  

Over the past 15 years, Mary has represented some of the world’s largest life sciences and technology companies in high-stakes IP litigation matters. She has tried cases in many areas of technology including semiconductors, medical devices, pharmaceuticals, and consumer electronics, and was a member of the trial team for high-profile smartphone litigation resulting in verdicts of over $1 billion. Mary has substantial experience with Hatch-Waxman and BPCIA litigation, and has argued before the Patent Trial and Appeal Board (PTAB).

Experience

(International Trade Commission). Represented Magic Leap in investigation related to augmented-reality eyewear.

(International Trade Commission, PTAB). Represented respondent Renesas in an ITC investigation initiated by Broadcom involving systems-on-chip powering automobile infotainment systems. Following an ITC trial, secured a complete victory before the Administrative Law Judge and the Commission on all four patents asserted against Renesas. Also argued in a related IPR for Renesas that resulted in cancellation of all challenged claims, which was summarily affirmed by the Federal Circuit.

Represented a smartphone manufacturer in high-profile patent litigation that resulted in jury verdicts totaling over $1.1 billion.

(Northern District of California). Representing Teradata against SAP in complex litigation alleging misappropriation of trade secrets under the DTSA and California Civil Code, copyright infringement, and antitrust violations. Matter is pending.

(District of Delaware). Represented BASF in patent litigation involving materials used to catalyze and reduce NOx and NH3 oxidation in exhaust systems. Matter resolved due to favorable settlement.

(ITC, Inv. 337-TA-1059). Represented Nikon Corporation in an investigation alleging infringement of patents related to digital cameras. The case settled after trial on favorable terms.

(Central District of California). Represented Entrata Inc. in six-year-long trade secret, copyright, and antitrust dispute involving property management software. Case settled on favorable terms after jury selection.

(Central District of California). Represented several Alcon entities in patent litigation regarding femtosecond lasers for eye surgery. Prevailed on summary judgment that the three asserted patents were not infringed by the accused devices.

(International Trade Commission, 337-TA-994). Represented respondent BlackBerry in an ITC investigation involving a hierarchical user interface for accessing music tracks on portable media players. Obtained an early initial determination from the ALJ finding the asserted patent invalid under 35 U.S.C. § 101.

(Arbitration/Central District of California). Represented Alcon LenSx in a three-day patent infringement and licensing arbitration hearing involving laser-tissue interaction technology, resulting in a complete victory for Alcon LenSx that was confirmed by the district court and affirmed by the Federal Circuit.


Next Gen Partner, Patent: Litigation (International Trade Commission)

Legal 500 2024

Ones to Watch: Intellectual Property

Best Lawyers 2021-2024