Mansi H. Shah

Partner
Silicon Valley
55 South Market Street, Suite 1500
San Jose, CA 95113
D: 408.938.3886
Contact My Assistant
Wathena "Tina" Galeana

Education

The George Washington University Law School
J.D.
Executive Notes Editor, AIPLA Quarterly Journal
Instructor, Street Law

University of California, San Diego
B.S. Computer Science

Bar and Court Admissions

State Bar of Illinois, 2009
State Bar of California, 2006
U.S. Patent and Trademark Office, 2006

Professional Affiliations

South Asian Bar Association of North America
   President, 2014-2015
   President-Elect, 2013-2014
   Treasurer, 2012-2103

American Intellectual Property Law Association (AIPLA)
   Served as Liaison for Women in IP Committee, 2011-2013
The Club Silicon Valley
California Minority Counsel Program
South Asian Women Attorneys’ Network
   Co-Chair, 2007-2010
The Richard Linn American Inn of Court, Chicago, IL
   Former member
   Pupilage Group Vice Chair, 2012-2013, 2014-2015

Coalition for Women's Initiatives in Law, Chicago, IL
   Former member
American Bar Foundation
   Fellow, 2017

Awards & Recognition

Recipient of the South Asian Bar Association annual Cornerstone Award, 2017
Named a "Best Lawyer Under 40" by the National Asian Pacific American Bar Association, 2016
Northern California Super Lawyer, 2016
Lawyers of Color Power List, 2015
Illinois Super Lawyer, 2014, 2015
Illinois Rising Star, 2013
President's Pro Bono Service Award, State Bar of California Board of Governors, 2008
Hon. Benjamin Aranda III Outstanding Public Service Award, Los Angeles County Bar Association, 2008

Publications & Speaking

PUBLICATIONS
The Legal Profession Can Benefit from the Rooney Rule – Here’s How, co-authored with Anne Gwal, ACC Docket (May 2016)

Improper race and religion references in Adnan Syed trial, on behalf of the South Asian Bar Association of North America, Baltimore Sun (January 28, 2015)

Intellectual Property Laws in Cyberspace, Second Edition, The Bureau of National Affairs, Chapter 12, “Personal Jurisdiction and the Internet,” co-author (2011)

The Latest Incarnation of Prior Art Subtraction in Patent Damages Reform, co-authored with William C. Rooklidge, Andrews Intellectual Property Litigation Reporter (March 24, 2009)

Congress' Latest Patent Reform Acts Are Already Damaged Goods, co-authored with William C. Rooklidge and Jesse D. Mulholland,The Los Angeles Daily Journal (March 18, 2009)

Essential Features of the Invention: Patent Damages Reform Dead End, co-authored with William C. Rooklidge, Intellectual Property Today (March 10, 2009)

Patent Claims: Construction and Drafting, First Edition, The Icfai University Press, Chapter 5 “Creation of the Right to Interlocutory Appeal of Patent Claim Construction Rulings and Mandatory Stay Pending Appeal,” contributing author, 2008

Creation of the Right to Interlocutory Appeal of Patent Claim Construction Rulings and Mandatory Stay Pending Appeal, co-authored with William C. Rooklidge, Patents Matter (July 2, 2007)

SPEAKING ENGAGEMENTS
Moderator, Patent Licensing House of Horrors: Avoiding the Terror of Patent Licensing Issues with the Do's and Don'ts for Drafting and Negotiating License Agreements, American Intellectual Property Law Association's Annual Meeting, Washington, D.C. (October 2015)

Moderator, Forks in the Road: The Many Paths of Success in IP Law, American Intellectual Property Law Association, Webinar (November 13, 2012)

Speaker, Beware the Tower of Techno-babble: Tips on Interviewing and Deposing Engineers, American Intellectual Property Law Association's Annual Meeting, Washington, D.C. (October 2011)

Moderator, Mentoring our South Asian Sisters: She Wins, You Win!, NASABA Convention 2009, Vancouver, BC (June 27, 2009)

Protecting Your Business Assets: Intellectual Property, PACE

Languages

Conversational proficiency in Hindi, Gujarati, and Spanish

Judicial Clerkship

Law clerk intern for the USPTO Board of Patent Appeals and Inferences, Alexandria, VA, 2005

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. 

Mansi is an intellectual property attorney in Merchant & Gould’s Silicon Valley office where she manages patent, trademark, copyright, and trade secret litigation for her clients and achieves favorable results.  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. She constructs briefs at all stages, handles fact and expert discovery, and prepares witnesses for deposition and examination at trial. Mansi has represented Fortune 500 corporations—as both plaintiff and defendant—in complex cases involving technologies such as internet software, wireless communications, videoconferencing, databases, audio and video processing, printers, microprocessors, memory devices, and networking technology. 

In addition to her traditional IP litigation practice, Mansi also counsels clients and conducts IP due diligence and both written and oral advocacy before the U.S. Patent and Trademark Office. She has experience in internal technology investigations and cases involving design patents, trade dress, and trademarks. With a background in software engineering and computer science, Mansi has served as outside yet trusted “in-house” counsel for technology companies, analyzing and advising on a spectrum of IP issues to facilitate growth.

In 2016, Mansi was named a Best Lawyer Under 40 by the National Asian Pacific American Bar Association and a Northern California Super Lawyer. In 2015, Mansi made the Lawyers of Color Power List, and was named an Illinois Super Lawyer.  Mansi is a past President of the South Asian Bar Association of North America.  She is also a member of the Club Silicon Valley, and co-chair of its Thriving Workplace initiative.

Throughout her career, Mansi represented a diverse group of pro bono clients.  Her first pro bono client was a Mexican transgender immigrant with HIV, who was seeking asylum.  She was able to help her obtain a favorable outcome, and was recognized by the State Bar of California and the Los Angeles County Bar Association. 

Prior to practicing law, Mansi was a coder for a defense contractor, where she worked on satellite and missile systems.

Representative Cases

Obtained a complete dismissal after a favorable ruling from the Patent Trial and Appeal Board upon CBM review of the asserted patents on behalf of an insurance software company in a two patent infringement lawsuit in the Southern District of California. The patents related to backend insurance processing software.

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.


MEDIA CENTER

All Media
Press Releases
3/31/17
Mansi Shah Elected as Fellow to American Bar Foundation
Merchant & Gould is pleased to announce that Mansi Shah, a partner in the firm’s Silicon Valley office, has been elected as a Fellow to the American Bar Foundation (“ABF”) upon the recommendation of the national officers of The Fellows ...
Press Releases
3/17/17
Mansi Shah and Linhda Nguyen Named to Leadership Council on Legal Diversity, Respectively as Fellow and Pathfinder
Merchant & Gould is pleased to announce that attorneys Mansi H. Shah and Linhda Nguyen have been selected as members of the Leadership Council on Legal Diversity (LCLD) 2017 class of Fellows and Pathfinders, respectively.“This is an honor and an ...
News Alerts
11/10/16
Silicon Valley Update
Events
10/28/16
Mansi Shah Presents Session at AIPLA 2016 Annual Meeting
The American Intellectual Property Law Association 2016 Annual Meeting will take place October 27-29 at the Marriott Wardman Park Hotel in Washington, D.C.  Mansi Shah, a partner at Merchant & Gould's Silicon Valley office, will give a concurrent ...
Press Releases
10/5/16
Mansi Shah Selected as a NAPABA Best Lawyer Under 40 Award Recipient
Merchant & Gould is pleased to announce that Mansi Shah, a partner in the firm’s Silicon Valley office, has been named a Best Lawyer Under 40 (“BU40”) by the National Asian Pacific American Bar Association (“NAPABA”).The BU40 ...
Events
9/27/16
Inter Partes Review - Current Thinking on What, When, Why, and How Much
Tuesday, September 27, 2016 4:00 p.m. - Registration & Refreshments 4:30 p.m. - Presentations 5:00 p.m. - Panel Discussion 6:00 p.m. - Social HourNow approaching the fourth anniversary of the inter partes review process (which became effective September ...
Press Releases
8/3/16
Merchant & Gould Opens Silicon Valley Office with Two Seasoned IP Partners
Merchant & Gould, a national intellectual property law firm based in Minneapolis, is pleased to announce the opening of its new California office and the hiring of a pair of seasoned intellectual property attorneys.David C. Bohrer and Mansi H. Shah have ...