Mansi H. Shah
She | Her | Hers
Retired Partner

1302 El Camino Real Suite 175, Menlo Park, CA USA 94025

500 West Madison Street Suite 3700, Chicago, IL USA 60661

Overview

Mansi H. Shah retired from the partnership in January 2025. Prior to her retirement, Mansi was a partner in the Silicon Valley office, where she focused on intellectual property strategy and complex technology litigation for both start-ups and large enterprises. With a background in software engineering and computer science, Mansi served as an invaluable outside yet trusted “in-house” counsel for companies, providing strategic analysis and advice on a spectrum of IP issues to facilitate growth. Among her notable contributions was a secondment, during which she led a Fortune 500 technology client’s litigation and IP matters while the Vice President was on sabbatical.

Mansi was adept at managing high-stakes litigation related to patents (utility and design), trade secrets, copyrights, trademarks, and trade dress, consistently achieving favorable results for her clients. Her expertise extended to reviewing and negotiating IP license agreements and managing corporate IP portfolios. She was at the forefront of advising clients on the legal and business challenges posed by emerging technologies, such as Generative AI. Additionally, Mansi counseled clients on government technology investigations, particularly those intersecting with antitrust and patent law.

Early successes in jury trials shaped Mansi’s strategic approach to litigation and her overall career. Her nuanced understanding of intellectual property law and trial practice enabled her to provide highly targeted counsel to clients—whether building patent portfolios, drafting licensing agreements, or resolving litigation disputes. Even during discovery, she approached challenges with a focus on positioning clients for optimal outcomes. One longtime client aptly described her as “tenacious, creative, and business-oriented in finding solutions to complex legal challenges.”

Before embarking on her legal career, Mansi worked as a software developer for a defense contractor, contributing to the development of satellite and missile systems.

Mansi’s exceptional contributions to the legal profession earned her numerous accolades. She was recognized in the 2023 and 2024 editions of Chambers USA in the “Up and Coming” category for Intellectual Property: Patent Litigation. She was also named to the Silicon Valley Business Journal’s “40 Under 40” Class of 2021 and received the Silicon Valley Women of Influence Award in 2018. Other prestigious honors included the 2019 Legal Momentum Women of Achievement Award, the 2017 Cornerstone Award from the South Asian Bar Association of North America, and the National Asian Pacific American Bar Association’s “Best Lawyer Under 40” designation in 2016. Mansi was consistently recognized as a Northern California “Super Lawyer” from 2016 to 2021 and again in 2023 to 2024, as well as an Illinois “Rising Star” in 2013 and an Illinois “Super Lawyer” in 2014 to 2015 for Intellectual Property Litigation by Super Lawyers magazine. In 2015, she was named to the Lawyers of Color Power List.

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Experience

Obtained a favorable settlement for a large technology company against an individual in a nine patent litigation after it was transferred to the Northern District of California from the Western District of Texas, and the overwhelming majority of IPRs filed by the team were instituted.

Obtained a favorable settlement for a large technology company after expert discovery was completed in a patent litigation in the Western District of Texas.

Successfully defended a large technology company and obtained early dismissals against plaintiffs in patent infringement cases filed in the Western District of Texas.

Obtained a favorable settlement for a publicly traded fintech company against an early former employee in California State Court.

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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Insights
Education

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

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

Admissions

California (2006)

Illinois (2009)

Court Admissions

U.S. Court of Appeals for the Federal Circuit (2022)

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

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

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

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

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

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

U.S. Patent and Trademark Office (2007)

Professional & Community Activities

American Bar Foundation, Fellow

Community Legal Services of East Palo Alto (CLSEPA) – Board Member

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

International Senior Lawyers Project, 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

South Asian Bar Association of North America, National Advisory Council, Chair (2017-2022), Past President (2014-2015), Past President-Elect, Past Treasurer

Ecumenical Hunger Program (East Palo Alto), Former Board Member

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