Litigation
jmauri@onellp.com
(949) 432–9992
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Education
University of San Diego School of Law, J.D.
University of Southern California, B.S., Biological Sciences
Bar Admissions
California Bar
United States Court of Appeals, Federal Circuit
United States Court of Appeals, Ninth Circuit
United States District Court, Central District of California
Practice Areas
Copyright Litigation
Intellectual Property
Patent Litigation
Trade Secrets
Trademark Litigation
Trademark Prosecution
Jennifer A. Mauri is a partner in the Newport Beach office of One LLP. Jennifer’s practice focuses on complex intellectual property litigation, including patent, trademark, copyright and trade secret litigation. Jennifer handles all aspects of IP litigation, from pre-suit evaluation and portfolio analysis, to development of strategy, through trial and appeals. Jennifer has litigated cases across the U.S., including cases in Federal District Courts in Massachusetts, Kansas, Texas, Washington, and California, as well as the Federal and Ninth Circuit Courts of Appeals. As a registered Patent Attorney, Jennifer has also appeared as lead counsel before the Patent Trial and Appeal Board in an Inter Partes Review proceeding.
Prior to becoming an attorney, Jennifer earned a Bachelor of Science in Biological Sciences from the University of Southern California, and her first career was as a microbiologist at Baxter International, the global pharmaceutical company. Since becoming an attorney, Jennifer has used that experience and industry knowledge to represent clients in the life sciences and pharmaceutical industries. She has also expanded her experience by representing clients in a wide variety of technologies, from medical devices, to semiconductor manufacturing, to networked electronic notification systems, to machine learning/AI software.
In addition to litigation, Jennifer regularly counsels clients on enforcement strategies, portfolio management, and due diligence. She also regularly assists clients by prosecuting trademark applications before the U.S. Trademark Office. Jennifer’s strategies are driven by her client’s business needs and she has a deep appreciation for the practical considerations of businesses facing litigation. As such, Jennifer is also well versed in methods of alternative dispute resolution, including arbitration, mediation, and negotiated settlements.
Illustrative Professional Experience
- Patent: Defended a software and game developer against allegations of patent infringement based on its sales of video games that used lip-synchronization software to generate animated mouth movements synced to audio files. Assisted in successfully invalidating the patents-at-issue under Section 101 of the Patent Act.
- Patent: Represented a pharmaceutical company suing on behalf of the U.S. and state governments alleging that another pharmaceutical company wrongfully obtained patent rights and used those rights to overcharge government agencies, including Medicare and Medicaid and the Veterans’ Administration, during the term of the wrongfully obtained patent it claimed covered the drug.
- Patent: Negotiated a settlement for a large non-profit philanthropic organization, enforcing contract terms that limited the contractee’s ability to obtain patent rights on jointly developed technology, and created a settlement in which all patent rights on the jointly developed technology were abandoned and unenforceable by the contractee.
- Patent: Represented a generic pharmaceutical company in a patent infringement action involving two pharmaceutical test method patents, ultimately prevailing on summary judgment.
- Patent: Represented patent owner of machine learning patent in Inter Partes Review proceeding before Patent Trials and Appeals Board.
- Patent: Represented defendant in arbitration alleging patent infringement of patent related to electronic notification systems, wherein the matter was ultimately resolved via a favorable settlement.
- Patent: Evaluated patent portfolio of manufacturer of blind spot and lane departure systems for automobiles and drafted an opinion on their validity and the freedom to operate under them, all in advance of the sale of the successful sale of the manufacturer.
- Patent: Analyzed patent portfolio of pharmaceutical manufacturer as related to a specific drug product, for purposes of advising the manufacturer as to strategies to successfully file additional patent applications that maximized the patent coverage possible for the product.
- Patent: Analyzed patent portfolio of competing medical device manufacturer to advise client as to strategies for bringing a competing device to the market while avoiding infringement.
- Trade Secret: Represented software company alleging trade secret misappropriation by former employee, wherein the trade secrets included the source code and various methodologies related to the development of the source code.
- Trademark: Represented insurance company in litigation alleging trademark infringement by insurance quote aggregator. Successfully negotiated a favorable resolution early in the litigation.
- Trademark: Represented media company in a dispute over the unauthorized use of its trademarks by a competitor. Successfully engaged in pre-suit negotiations, which resulted in a favorable resolution to the dispute prior to the filing of a lawsuit.
- Trademark: Represented clothing brand against competitor who launched a new line of goods under an allegedly infringing brand name, ultimately prevailing on summary judgment.
- Trademark: Represented restaurant owner with common law trademark rights against famous restaurant chain that opened a competing restaurant in close proximity to original restaurant, resulting in a favorable settlement.
- Trademark: Represented trademark owner in pre-litigation negotiations against alleged infringing competitor, resulting in favorable settlement.
- Copyright: Successfully represented the plaintiffs in a class action that sought extensive damages against digital music service, Rhapsody International, Inc., for knowingly and unlawfully reproducing and distributing copyrighted compositions without obtaining mechanical licenses.
Publications & Media Mentions
- ‘Works for Hire’ Exception Takes Centre Stage in 2 Live Crew’s Copyright Victory
World IP Review, November 2024 - Biggest AI Developments of 2024 So Far and What’s Ahead
IP Watchdog, June 2024 - Quoted in Supreme Court Rules ‘Trump Too Small’ Trademark Violates Lanham Act
World IP Review, June 2024 - Quoted in SCOTUS Dodges Discovery Rule Issue in Warner Chappell but Lifts Damages Time Bar
World IP Review, May 2024 - Quoted in Copyright Act Places No Additional Time Limits on Damages Recovery for Timely Filed Claims
IP Law Daily, May 2024 - Quoted in Discovery Rule Dodge Puts Justices’ Damages Ruling on Thin Ice
Bloomberg Law, May 2024 - Quoted in U.S. Supreme Court Says No Time Limit on Damages in Copyright Dispute Involving Warner Music
The Global Legal Post, May 2024 - Quoted in US Bill Would Require AI Companies to Disclose Copyrighted Work in Training Models
The Global Legal Post, April 2024 - Quoted in Partial win for OpenAI in dispute with high-profile authors
The Global Legal Post, February 2024 - Quoted in Assessing the Arguments: Practitioners Predict Likely Loss for Trump Too Small Applicant
IP Watchdog, November 2023 - Quoted in ‘Trump Too Small’: SCOTUS Can Stop Being the Trademark Police, Say Lawyers
World Intellectual Property Review, November 2023 - Quoted in Justices Skeptical of Attempt to Trademark Trump’s Name
Daily Journal, November 2023 - Quoted in Napster Fights Sanctions Bid Over Settlement Site Language
Law360, May 2019 - A Virtual Certainty: the meta verse will give rise to plenty of trademark disputes Trademark Lawyer Magazine, November 2022
- Cheaters Never Prosper
Intellectual Property Magazine, September 2018 - A Different Route: Challenging Orange Book Patents Via Inter Partes Review
M&R Blog, July 2016 - Is Nome, Alaska ready for Paragraph 4 ANDA litigation? How about San Juan, Puerto Rico?
IP Watchdog, September 2016