O’Melveny Worldwide

Frances Mackay is a litigation associate in O’Melveny’s Dallas office. Her practice is focused on intellectual property and technology matters, with an emphasis on patent litigation. She has represented clients in a wide variety of fields, including telecommunications systems and standards, artificial intelligence and machine learning, computer hardware and software, automotive systems, fossil fuel extraction and energy production, medical devices, e-commerce, banking, semiconductor devices, railcar equipment, and cybersecurity. Frances has experience in district court litigation, inter partes review (IPR) proceedings, pre-suit investigations, and has worked directly with inventors to prepare nearly a hundred patent applications.

Prior to attending law school, Frances received a Ph.D. in Applied Mathematics for research conducted in the field of computational condensed matter physics.

PTAB Matters

  • Halliburton Energy Services, Inc. v. US Well Services, LLC (IPR2021-01066) – Prepared IPR Petition challenging the validity of a patent related to electrically powered hydraulic fracturing equipment. Prepared expert for deposition following IPR institution.
  • Ericsson Inc. v. Koninklijke KPN NV (IPR2022-00069) – Prepared IPR Petition that led to institution against patent related to telecommunications network access, overcoming patent owner’s Fintiv arguments.
  • Infineon Techs. AG v. Arigna Tech. Ltd. (IPR2021-01382) – Representing Infineon in IPR proceedings against patent involving semiconductor technologies.

District Court Patent Matters

  • Sonus Networks, Inc. v. Metaswitch Networks Ltd. (E.D. Tex. 2:18-cv-00155) – Represented plaintiff Sonus in a competitor suit against Metaswitch involving network equipment (call servers and media gateways). Worked with plaintiff’s expert to prepare infringement report, prior to favorable settlement.
  • Uniloc 2017 LLC v. AT&T Services, Inc. (E.D. Tex. 2:19-cv-00102) – Represented AT&T in a patent case against certain AT&T network components.
  • 3G Licensing, SA v. LG Electronics, Inc. (D. Del. 1:17-cv-00085) – Represented LG in a patent case against LG’s smartphones, which involved multiple issues related to standards essential patents. Prepared motions to strike, and worked with a joint defense group to draft summary judgement motions. Case settled shortly after summary judgement hearing.
  • Koninklijke KPN NV v. Telefonaktiebolaget LM Ericsson (E.D. Tex. 2:21-cv-00113) – Represented Ericsson in a patent case involving telecommunication network components. Prepared invalidity contentions, assisted Ericsson’s expert in preparing invalidity and non-infringement reports, and participated in claim construction briefing. 
  • MicroPairing Technologies LLC v. Toyota Motor Manufacturing Texas, Inc. (W.D. Tex. 6:20-cv-1001-ADA, 5:21-cv-00940-XR) – Represented Toyota in patent matter involving vehicle control systems and infotainment units. Prepared invalidity contentions, drafted motions to dismiss and transfer venue, and participated in claim construction briefing. Case settled favorably after transfer was secured out of the Waco Division of the Western District.
  • MicroPairing Technologies LLC v. Toyota Motor Manufacturing Texas, Inc. (W.D. Tex. 6:21-cv-00762-ADA, 5:21-cv-01233-XR) – Represented Toyota in follow-on patent infringement case filed by MicroPairing. Prepared invalidity contentions and drafted motions to dismiss and transfer venue, prior to settlement.
  • Scramoge Tech. Ltd. v. Samsung Electronics Co. (E.D. Tex. 2:22-cv-00015) – Represented Samsung in patent litigation related to wireless charging technology.

Admissions

Bar Admissions

  • Texas

Court Admissions

  • US District Court for the Eastern District of Texas

Education

  • Yale Law School, J.D.:Yale Journal of Law and Technology
  • Western University, Ph.D., Applied Mathematics
  • Western University, M.Sc., Astronomy with Scientific Computing
  • University of Alberta, B.Sc., Astrophysics: Honors

Professional Activities

Author

  • USPTO Releases Updated Patent Eligibility Guidance,” Intellectual Property & Technology Law Journal, Wolters Kluwer, Volume 32, Number 1 (2020)