Overview

Mansi H. Shah has over a decade of experience in intellectual property strategy and complex technology litigation for both start-ups and large companies. Mansi strategically manages patent, trademark, copyright, and trade secret litigation for her clients to achieve favorable results. She is also experienced in reviewing and negotiating IP license agreements, and managing corporate IP portfolios. With a background in software engineering and computer science, she has served as outside yet trusted “in-house” counsel for companies, analyzing, and advising on a spectrum of IP issues to facilitate growth, including a secondment leading a Fortune 500 technology client's litigation and IP, while the VP was on sabbatical.

Early victories in front of a jury have shaped Mansi’s approach to her cases and her career. Through her nuanced understanding of intellectual property and trial, she is able to provide highly strategic counsel to her clients in building patent portfolios, drafting licensing terms, or conducting everyday litigation tasks. Even discovery disputes are approached from the lens of how it can better position the client for the outcome being sought. A longtime client said "Mansi is tenacious, creative, and business-oriented in finding solutions to complex legal challenges."

Mansi has a full spectrum of litigation and trial experience, from pre-litigation investigation through jury and bench trials, including arguing Markman hearings and taking depositions; drafting dispositive motions, discovery, pretrial, trial and post-trial motions; and claim construction. In addition to her traditional intellectual property litigation practice, Mansi also counsels clients and conducts intellectual property due diligence and both written and oral advocacy before the U.S. Patent and Trademark Office. Mansi also has experience in cases involving design patents, trade dress, and trademarks, and in internal technology investigations at the intersection of patent and antitrust law.

Prior to joining the firm, Mansi was a founding partner in the Silicon Valley office of a national law firm where she was an intellectual property counselor and litigator. Prior to practicing law, Mansi was a coder for a defense contractor where she worked on satellite and missile systems.

Last year, Mansi received Legal Momentum’s Women of Achievement Award, showcasing women who have achieved distinction in law, business, and public service. She received the Silicon Valley Women of Influence Award in 2018 from the Silicon Valley Business Journal, and the Cornerstone Award from the South Asian Bar Association of North America in 2017. Mansi was named a “Best Lawyer Under 40” in 2016 by the National Asian Pacific American Bar Association. She was recognized as a Northern California “Super Lawyer” in 2016-2020, an Illinois “Rising Star” in 2013, and an Illinois “Super Lawyer” in 2014-2015 for Intellectual Property Litigation by Super Lawyers magazine. Mansi made the Lawyers of Color Power List in 2015.

While attending law school, Mansi served as the Executive Notes Editor for the American Intellectual Property Law Association Quarterly Journal, an instructor at George Washington University Law School’s Street Law Clinic, and an internship at the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences.

Mansi is conversational in Hindi, Gujarati, and Spanish.

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Experience

Obtained a favorable settlement for a startup developer of novel implantable medical device against claims of trade secret misappropriation in the Southern District of California.

Successfully defended an insurance software company in a two patent infringement lawsuit in the Southern District of California and obtained a stay pending CBM review of the asserted patents. The patents related to back end insurance processing software.

Obtained a favorable settlement for defendant in a motorbike design patent infringement suit after filing a summary judgment motion in the District of Arizona.

Obtained a favorable settlement in patent infringement lawsuits for a major internet search company after Markman ruling in District of Delaware and the Northern District of California. The patents related to video conferencing technologies.

Obtained a defense jury verdict of non-infringement and invalidity in a patent infringement lawsuit for a major internet search company after a jury trial in the Eastern District of Texas where plaintiff sought $28 million in damages. The patent related to a method for processing electronic messages by providing internet search advertising. The jury returned a verdict on the first day of deliberation of non-infringement in favor of defendants and found that none of the asserted claims were infringed literally or under the doctrine of equivalents. The jury further found by clear and convincing evidence that all three claims were invalid under public use, obviousness, and lack of sufficient written description, and the patent was also invalid for improper inventorship.

Obtained a summary judgment ruling of non-infringement in a patent infringement lawsuit for a major internet search company in the Eastern District of Texas in which the Chief Judge of the Federal Circuit sat by designation and issued the summary judgment ruling. The patent is related to the creation of user profiles for use in Internet searches before the trial court, which awarded summary judgment for non-infringement.

Represented a wireless telecommunications research and development company in a long-running proceeding before the Korea Fair Trade Commission. Following the longest series of plenary hearings before the Commission, the Commission dismissed essential facility and tying claims challenging the company's integration of video software in chipset solutions. Dismissals by the commission following hearings are extremely rare.

Successfully defended a television company in a patent infringement lawsuit at the motion to dismiss stage for failing to allege facts sufficient to state a claim, and prevailed on a sanctions motion, in the Southern District of New York.

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Education

George Washington University Law School, J.D. (2006)

University of California, San Diego, B.S., Computer Science (2003)

Admissions

California (2006)

Illinois (2009)

Court Admissions

U.S. Patent and Trademark Office (2007)

U.S. Court of Appeals for the Ninth Circuit (2008)

U.S. District Court for the Northern District of California (2007)

U.S. District Court for the Central District of California (2007)

U.S. District Court for the Southern District of California (2007)

U.S. District Court for the Southern District of California (2007)

U.S. District Court for the Eastern District of Texas (2010)

U.S. District Court for the Northern District of Illinois (2010)

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Professional & Community Activities

American Bar Foundation, Fellow

South Asian Bar Association of North America, National Advisory Council, Chair (2017-Present), Past President (2014-2015), Past President-Elect, Past Treasurer

Ecumenical Hunger Program (East Palo Alto), Board Member

International Senior Lawyers Project, Board Member

Facing History and Ourselves – San Francisco Bay Area, Advisory Board Member

American Intellectual Property Law Association (AIPLA), Member

APABA-Silicon Valley and Affiliate Member, National Asian Pacific American Bar Association, Member

SABA Northern California, Life Member

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