Mary Jane Peal

Mary Jane handles all phases of patent litigation, from pre-filing investigations through appeals. She oversees discovery, including electronic discovery and subpoena responses. She has prepared motions based on standing, noninfringement, joint infringement and invalidity. Her experience includes working with expert witnesses and company witnesses. She prepares design-around solutions, attends depositions, and works with opposing counsel and joint defense groups. She works on issues related to the International Trade Commission and nonpracticing entities.

Licensing
Mary Jane deals with indemnification claims, and she participates in negotiations with clients’ third-party partners regarding patent infringement issues. She analyzes offensive and defensive patent portfolios. Mary Jane responds to notice letters, cease and desist letters and inquires by licensees. She analyzes patent assets involved in standards bodies. Her work includes experience with the Bayh-Dole Act, technology transfer offices and field-of-use agreements. She prepares intellectual property license agreements and presentations for licensing negotiations.

Prosecution
For over eight years, Mary Jane has worked on patent prosecution matters. She manages prosecution of U.S. and international patent portfolios, and she directs prior art searches. She works on reexamination and reissue matters. Mary Jane has prepared petitions for inter partes review. Her work includes clearance, noninfringement and patentability opinions. She advises clients on patentable subject matter, directed prosecution and intervenor rights.

Technology Areas

• Athletic apparel
• Computer software and hardware:
  • Search, security (authentication/encryption), mapping, interface elements, online advertising, client/server architecture
  • Semiconductors, keyboards, touch screens, gaming units/peripherals, wireless receivers, smart phones
• Food processing
• Logistics
• Mechanical devices
• Medical devices
• Pharmaceuticals
• Telecommunications

She analyzes design patent, trademark and copyright issues, including ownership and fair use. She has experience with trade dress rights and trade secrets under state law and the Uniform Trade Secrets Act. Mary Jane advises on cloud computing and extraterritorial issues with respect to jurisdiction and potential liability.

Pro Bono
Mary Jane has handled several pro bono matters on behalf of minors and adults. She has appeared in family court on their behalf, and she has worked with agencies and medical professionals to resolve domestic and consumer issues.