Terrence P. McMahon is an experienced trial lawyer, partner and head of the worldwide Intellectual Property, Media & Technology Department in the law firm of McDermott Will & Emery LLP based in the Silicon Valley office. Terry concentrates his trial practice on patent, copyright, trade secret, trade dress, trademark and other high stakes, “bet the company” litigation.
Terry has been widely recognized by the legal and business communities, having been named a worldwide leader of IP in Chambers Global: The World’s Leading Lawyers for Business (2001-2008), recognized by Chambers USA: America’s Leading Lawyers for Business 2008, recognized in the 2008 edition of The Best Lawyers in America for IP, recognized in the Daily Journal's 2008 Top 50 Intellectual Property Litigators, recognized in the 2007 edition of Who’s Who Legal: California for IP, recognized in The Legal 500 United States 2007 for patent litigation, recognized as one of the leading intellectual property lawyers in the California Lawyer “Best in the West” feature, named to the Lawdragon 500 Leading Lawyers in America and recognized as a leading intellectual property litigation attorney, according to Northern California Super Lawyers 2007.
Terry has more than 30 years of trial experience representing technology heavyweights including American Express, Aristocrat Technologies, Creative Labs, Extreme Networks, Fairchild, Fresenius Medical, General Electric, Logitech, Qualcomm Incorporated, Seagate Technology, Silicon Image and Tercica, Inc. on “bet the company” cases taking on major technology companies such as Baxter, Genesis Microchip, Hyundai, Intel and Lucent.
A well-known leader in his field, Terry frequently lectures and provides live demonstrations on trial practice and computer law issues. He has served as a faculty member and presenter at the annual Sedona Conference on Patent Litigation for several years. At the October 2006 Sedona Conference, he spoke on “Integrating PTO Proceedings in Litigation Strategy,” “Patent Damages” and “Opinion of Counsel Strategies and Willful Infringement Issues.” Along with McDermott partner Vera Elson, he participated on a panel for the Practising Law Institute, entitled “Demonstration of a Direct and Cross-Examination of a Technical Expert Contending for Obviousness.” He and McDermott partner David Dolkas spoke on “The Anatomy of a Patent Jury Trial” at the Silicon Valley Association of General Counsel 18th Annual All Hands Meeting.
Terry also has presented before the State Bar of California, the Association of Business Trial Lawyers, the Bar Association of San Francisco, the Los Angeles County Bar Association, PricewaterhouseCoopers Intellectual Property Leadership Forum, the Santa Clara County Bar Association, the Hastings Center for Trial and Appellate Advocacy and the Intellectual Property Inns of Court, among other organizations.
He serves as an adjunct professor of law teaching intellectual property litigation techniques at Santa Clara University’s Law School and also presents trial practice demonstrations at Stanford Law School. Additionally, Terry has authored numerous articles on intellectual property and trial topics.
Terry is admitted to practice in California, the U.S. Court of Appeals for the Ninth Circuit, the U.S. Court of Appeals for the Federal Circuit, the U.S. District Courts for the Northern, Central and Southern Districts of California, the District of Colorado and the Eastern District of Virginia. He is a member of the Santa Clara County Bar Association and the American Bar Association.
Representative Experience
- Extreme Networks, Extreme Networks v. Enterasys Networks. Terry was lead counsel in a patent infringement case filed against Enterasys Networks, Inc. in the W.D. of Wisconsin. Extreme Networks alleged infringement of three of its patents relating to quality of service in computer networks. A jury found that Enterasys infringed all three of Extreme Networks’ patents, awarding three times the amount of Enterasys' expert's proposed damages, Enterasys’ patent claims were dismissed by summary judgment.
- Seagate Technology, Convolve v. Seagate Technology. Terry is defending Seagate Technology against claims of patent infringement and trade secret misappropriation in a case involving disk drives. This case prompted the landmark Federal Circuit decision, In Re Seagate Technology, in which the court overturned 24 years of precedent in Seagate’s favor, preserving the attorney client privilege and abolishing the duty of care standard in response to a willfulness claim.
- Creative Labs., Terry was lead counsel in a global litigation for Creative Labs in a patent infringement case against Apple’s iPod family of products. The strategic approach to this massive litigation resulted in a very early and extremely favorable settlement ending all legal disputes between the two companies, as publicly reported, calling for Apple to pay at least $100 million for a license to use Creative's recently awarded Zen patent in all Apple products.
- Tercica, Inc., In a closely watched biotechnology case relating to recombinantly produced hormones that enable children of short stature to grow, a California jury ruled in favor of the Firm’s client Tercica, Inc., and Genentech. The jury found that defendants Insmed Incorporated and Insmed Therapeutic Proteins, Inc. infringed all claims of all of Genentech's patents in question, and further found that one of the three patents was willfully infringed, resulting in a significant upfront payment and royalties that were awarded to Tercica and Genentech.
- American Express, American Express Co. v. Goetz. Terry obtained complete summary judgment victory for American Express in a trademark infringement case related to the company’s global "My Life, My Card" advertising campaign after prevailing on venue battle.
- Extreme Networks, Inc., Lucent Technologies v. Extreme Networks. Terry was lead trial counsel in a victorious Delaware jury trial relating to patent infringement claims for managing communications data.
- QUALCOMM Incorporated. Terry is lead counsel in current patent infringement action brought before the International Trade Commission (ITC) and District Courts by QUALCOMM against Nokia Corporation and Nokia, Inc. Terry is also lead counsel in an arbitration brought by Nokia under a CDMA License Agreement.
- Silicon Image, Inc., Silicon Image v. Genesis Microchip. Terry was lead trial counsel and obtained very favorable Markman and summary judgment rulings, which resulted in a very advantageous settlement that was later contested by the defendant but ultimately upheld.
- Broadcom Corporation, Intel v. Broadcom. Terry was co-lead trial counsel in a victorious Delaware jury trial relating to digital video processing and computer network technology.
- Animatics Corporation, Animatics v. Qiucksilver Controls. Terry was lead trial counsel in a patent infringement case and obtained a favorable verdict which was upheld on appeal.
- SBC Communications Inc., (formerly known as Pacific Bell), Airtouch v. PacBell. Terry was lead trial counsel in defeating a temporary restraining order and preliminary injunction that would have stopped Pacific Bell’s $1 billion rollout of its PCS digital mobile telephone network.
- Aureal Semiconductor, Inc., Creative Technology Ltd. v. Aureal Semiconductor, Inc. Terry was successful in obtaining a unanimous jury verdict of non-infringement, thus freeing the Aureal product line from the threat of injunction and damages.
- Advanced Micro Devices, Intel v. AMD. Terry was lead trial counsel winning a Federal District Court jury trial relating to copyright and mask-work claims. This was but one part of a multi-faceted global war between AMD and Intel.
- Advanced Micro Devices, AMD v. Intel. Terry was lead trial counsel and won a hotly disputed binding arbitration relating to critical microprocessor technology that went all the way to the California Supreme Court.
- Lucasfilm Ltd., In 1999, surrounding the release of the blockbuster, Star Wars: Episode I—The Phantom Menace, Terry was hired to protect against the film's widespread distribution on the internet. By assembling a crack team of internet sleuths, he successfully prevented the film from being pirated.
Education
- Santa Clara University School of Law, J.D. (cum laude), 1976
- Santa Clara University, B.S.C., 1972
