Mary Prendergast
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).
With an active pro bono practice, Mary has evaluated potential cases for the California Innocence Project, represented tenants seeking to remedy dangerous housing conditions, obtained asylum for activists fleeing political persecution, and worked on civil rights matters with the ACLU. Mary also serves on MoFo’s Women’s Strategy Committee, where she focuses on advancing women within the firm and the profession as a whole.
Mary received her J.D. from the University of California, Los Angeles, where she was editor-in-chief of the UCLA Journal of International Law & Foreign Affairs. She received her B.F.A. cum laude from the University of Notre Dame.
Mary has worked as a law clerk for the California Attorney General’s Office, and as a legal extern at the Department of Defense General Counsel’s Office for International Affairs.
Experience
Certain Electronic Eyewear Products and Components Thereof
(International Trade Commission). Represented Magic Leap in investigation related to augmented-reality eyewear.
Certain Infotainment Systems, Components Thereof, and Automobiles Containing the Same
(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.
Smartphone Litigation
Represented a smartphone manufacturer in high-profile patent litigation that resulted in jury verdicts totaling over $1.1 billion.
Teradata Corp. v. SAP SE, SAP America, and SAP Labs
(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.
BASF v. James Matthey Inc.
(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.
Certain Digital Cameras, Software, and Components Thereof
(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.
Yardi Systems v. Entrata Inc.
(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.
Lawrence Livermore National Security LLC et al. v. Alcon Laboratories, Inc. et al.
(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.
Certain Portable Electronic Devices and Components Thereof
(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.
Alcon LenSx v. Neev
(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.
Nikon Metrology v. Faro Technologies
(District of Massachusetts). Represented Nikon Metrology in a two-week jury trial in a patent case involving laser line scanner and articulated arm metrology solutions.
Anvik v. Nikon
(Southern District of New York). Defended Nikon against patent infringement claims aimed at lithography machines used in fabrication of most of the large-panel LCD displays in the world, including drafting of summary judgment briefing that resulted in a judgment of invalidity on all asserted patents.
Teva v. Sandoz
(Southern District of New York). Represented the manufacturer of a generic version of Copaxone, Teva’s $4 billion multiple sclerosis drug, in a three-week trial under the Hatch-Waxman Act.
Allergan v. Sandoz
(Eastern District of Texas). Represented the manufacturer of a generic version of the glaucoma treatment Lumigan 0.01% in a week-long trial under the Hatch-Waxman Act.
Rankings
Next Gen Partner, Patent: Litigation (International Trade Commission)
Legal 500 2024
Ones to Watch: Intellectual Property
Best Lawyers 2021-2024
D.C. Rising Star
The National Law Journal 2021