Sangeeta G. Shah

Chief Executive Officer

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Sangeeta serves as the firm’s Chief Executive Officer and has over 20 years of experience. Her practice includes all aspects of intellectual property litigation, prosecution and counseling, with a special focus on post-grant challenges and patent opinions. She represents several Fortune 500 clients for whom she provides strategic counseling and guidance on their global intellectual property portfolios.

Sangeeta has handled numerous patent, trade secret, trademark and unfair competition cases involving parties in the chemical, software, automotive and metallurgical industries on such matters as injection molded polyethylene terephthalate bottles, polymer reinforcements, magnetic storage devices, emission testing equipment, touch controlled switching circuits, compression molded doors, chemical vapor deposition processes and cutting tools. She has also litigated design patent and copyright infringement cases in such diverse areas as architectural building designs, automotive parts and consumer products.

Sangeeta does an immaculate job of breaking down complex patent law and technology concepts and relates well with other people. She is highly proficient, responsive and committed. – IAM Patent 1000

In view of the breadth of her experience in both prosecution and litigation matters, Sangeeta is the Co-Chair of Brooks Kushman`s Post Grant practice group. She leads teams to challenge and defend patents using the post-grant challenges available in the wake of the America Invents Act. She is at the forefront of this changing landscape and its implications and works closely with clients to take proactive steps to obtain competitive advantage from an adversarial and patent procurement standpoint. Sangeeta has been instrumental in building the Post Grant practice group at Brooks Kushman.

She is frequently called upon to counsel clients in developing best practices and strategic planning of their patent portfolios, including writing successful patent applications in complex and novel situations, in anticipation of possible future litigation. She works closely with clients from the earliest stages of their technical development, offering valuable advice about how to protect their inventions and new ideas in view of their business strategies. She advises clients on multi-faceted patent clearance, and adversarial matters and works with technical and legal teams to develop invalidity arguments and design around solutions to bolster her clients` positions.

Through her opinion and prosecution practice, Sangeeta has extensive experience with chemical and mechanical technologies, in the areas of catalysts, food science, packaging, analytical instrumentation, dietary supplements, diagnostic kits, adhesives, plastics, therapeutics and metallurgy.

A growing component of her  work revolves around India. She has represented U.S. companies going into India, and Indian companies doing business in the U.S. to help obtain and protect global intellectual property assets.

Prior to becoming CEO,  Sangeeta served as the firm’s Chief Diversity Officer.  Through her efforts, she created a culture of diversity and inclusiveness within the firm and extend the firm`s reach through pipeline initiatives and outreach efforts. Prior to this position, she also managed human resources for Brooks Kushman for over 10 years.

She has been recognized as one of the 2009 “Women Worth Watching,” a “Top Lawyer” by DBusiness and is a 2012 “Women in the Law” awardee. She has spoken at several business and legal conferences on a variety of intellectual property topics at the IP Leadership Forum, Global IP Convention, the Women Lawyer`s Association of Michigan, State of Bar Michigan, Intellectual Property Division, the Association of Press Photographers, the American Society of Engineers of Indian Origin, and TiE.

Sangeeta's spare time is dedicated to community outreach. In 2012, she founded an early literacy initiative, Retooling Detroit, that assists hundreds of Detroit public school children each year—ensuring that their reading skills improve so that the cycle of illiteracy and poverty can be broken one child at a time.  She is also actively involved in the Isha Foundation and its global environmental, education and health initiatives which focus on the use of meditation as a transformative tool for change.

Representative Matters

Representative District Court/ITC Matters:

In the matter of Certain Automotive Parts (ITC): Trial counsel for Ford Motor Company in a design patent lawsuit directed to vehicle replacement parts. Obtained infringement finding and upheld validity of seven design patents and obtained a General Exclusion Order preventing any infringing parts from entering the United States. Investigation No. 337-TA-557                                  

North American Container v. Plastipak Packaging Inc. et al. (Summary Judgment – N.D. Texas and Federal Circuit):  Represented Plastipak Packaging in a suit involving blow molded plastic containers and 37 defendants, spanning the full supply chain from manufacturers to retailers.  Successfully led the multi-party defense team, resulting in a summary judgment of non-infringement and invalidity ruling in district court, which was affirmed by the Federal Circuit. Case No. 2:00-cv-01738

Kennametal v. Cerametal s.a.r.l. and International WaterJet Parts, Inc. (Settlement – E.D. Michigan): Represented Kennametal in patent infringement matter involving cutting tool technology, resulting in successful settlement. Case No. 2:09-cv-00857

Horiba, Inc. v. AVL North America. (Settlement – C.D. California): Represented Horiba in patent infringement matter involving analytical equipment for emissions testing, resulting in successful settlement following Markman claim construction and summary judgment ruling. Case No. 8:03-cv-00592

Quantum Corp v. Storage Technology Corp. (Settlement – N.D. California): Represented Storage Technology in patent infringement matter involving computer data storage, resulting in successful settlement following Markman claim construction ruling. Case No. 3:03-cv-01588  

Representative Post-Grant Matters:

Ford Motor Company v. Paice, LLC & Abell Foundation, Inc. (PTAB): Successfully represented Ford Motor Company as lead counsel before the Patent Trial and Appeal Board (PTAB) in a set of IPR petitions that were part of 25 inter partes review (IPR) proceedings related to hybrid technology.  In total, the Brooks Kushman team challenged 325 claims across five patents; 274 of those claims were instituted. In decisions spanning from 2015-2017, the PTAB found 273 of the 274 instituted claims unpatentable.  Brooks Kushman also represented Ford in follow-on litigation before the International Trade Commission, resulting in a favorable settlement.

 JTEKT Corp. v. GKN Automotive Ltd (PTAB): Successfully defended patent owner GKN Automotive Ltd as lead counsel in an inter partes review proceeding filed by JTEKT, challenging claims in a patent related to drivelines switchable between a four-wheel mode and a two-wheel mode. The Patent Trial and Appeal Board found JTEKT failed to prove the obviousness of the claims and ruled the claims patentable. The Federal Circuit agreed and dismissed the appeal in a precedential opinion on standing. Case No. IPR2016-00046

Google LLC et al v. Seven Networks, LLC (PTAB): Successfully defended patent owner Seven Networks as lead counsel in three inter partes review proceedings related to a telecom patent for optimizing battery life, resulting in 100% of the inter partes review challenges being denied at the institution stage and leading to a favorable settlement on the heels of the institution decision. Case No. IPR2018-01102, IPR2018-01113, IPR2018-01114

Ex parte reexamination of Reexamination Control (CRU): Following the final written decision in IPR2015-01444 (affirmed by the Federal Circuit) holding all claims unpatentable, Sangeeta was retained to revive IXI’s enforcement strategy by filing a patent owner-initiated reexamination.  Ultimately Brooks Kushman was able to secure 67 new, IPR-proof claims through the reexamination process.   After the success of the first reexamination, two additional reexaminations were filed, securing over 100+ new claims for three different, asserted patents. No. 90013925, Ex. 1032,3 of U.S. Patent No. 7,039,033 (the ‘033 patent)

Apple, Inc v. IXI, LLC (PTAB): Successfully thwarted Apple’s attempt to seek trial on six IPR petitions that were time barred under 35 U.S.C. § 315(b), establishing that there was no basis for joinder and/or consolidation and further that a reexamination certificate does not create a new “patent” or affect the § 315(b)-time bar. Case No. IPR2019-00124, IPR2019-00125, IPR2019-00139, IPR2019-00140, IPR2019-00141, IPR2019-00181.

Organizations and Affiliations

American Bar Association

American Chemical Society

American Intellectual Property Law Association

ChIPs (“Chiefs in Intellectual Property”) –  Chicago Regional Chapter Founding Organizer

Intellectual Property Owner’s (IPO) Association – U.S. Post-Grant Patent Office Practice Committee

Leadership Council on Legal Diversity (LCLD)

Michigan Patent Law Association

State Bar of Michigan

Women Lawyers Association of Michigan

Recognitions

“2018 ChIPs Honor Roll,” ChIPs (“Chiefs in Intellectual Property”), October 2018

“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2014 – 2018

“IP Star”, Managing Intellectual Property, 2013 – 2018

Best Lawyers in America, 2018-2019

“Notable Women Lawyer in Michigan,” Crain’s Detroit Business, 2017

“Top Lawyer,” DBusiness Magazine, 2013

“Women of the Law,” Michigan Lawyers Weekly, 2012

“Woman to Watch,” AIPLA Women in IP Law, 2016

Press Releases

    Client Alerts

      Media Coverage

      Featured, “IP Cases To Watch At The Supreme Court,” Law360, September 2017

      Featured, “Addressing ‘the classic pipeline issue,” Michigan Lawyers Weekly, March 2017

      Featured, “4 Times Patent Owners May Want Adverse Judgment At PTAB,” Law360, November 2016

      Featured, “How To Prepare Patents That Can Survive AIA Reviews,” Law360, November 2016

      Featured, “Eyes On High Court As Fed. Circ. Again Limits AIA Appeals,” Law360, February 2016

      Featured, “Ford wins PTAB challenge over hybrid vehicle tech,” Law360, November 2015

      Featured, “5 AIA appeals to watch at the Federal Circuit,” Law360, July 2015

      Featured, “2014 Patent 1000,” Intellectual Asset Management, June 2014

      Featured, “Asked & Answered: Sangeeta Shah on America Invents Act,” Detroit Legal News, April 2014

      Featured, “Ways to Minimize the Risk of Post-Grant Challenges,” Law360, January 2014

      Featured, “ELEMENT-ary: Chemist finds just the right legal balance,” Detroit Legal News, December 2012

      Publications

      Co-Author, “Ways to Minimize the Risk of Post-Grant Challenges,” Law360, January 2014

      Co-Author, “Outsourcing Manufacturing and the Pre-AIA On-Sale Bar,” January 2014

      Presentations

      Panelist, “Tips to Advancing Diversity & Inclusion Within Your Organization,” ChIPs (“Chiefs in Intellectual Property”), September 2018

      Panelist, “IAM Boardroom: PTAB,” Intellectual Asset Management, Chicago, IL, May 2018

      Master Class Panelist, “Tackling The Changing Patent Landscape in The U.S.– A  Proactive Guide to Enforcement/Defensive Measures To Succeed,” Best Practices in Intellectual Property, March 2018

      Panelist, “Precedential and informative decisions designated by PTAB,” Managing Intellectual Property, March 2017

      Panelist, “PTAB/IPR Strategies 2017” ICLE Intellectual Property Law Spring Seminar 2017, March 2017

      Panel Speaker, “Post-Issuance Proceedings: The Role in your IP,” Centerforce Chicago IP Strategy Summit, May 2014, 2015 & 2016

      Panel Speaker, “Innovative Michigan Investment Panel,” Accelerate Michigan Innovation Competition, November 2014 & 2015

      Speaker, “Post-grant Proceedings in the US,” Managing Intellectual Property Women’s Leadership Forum, June 2014

      Speaker, “Inter Partes Review: Offensive and Defensive Strategies,” IP Leadership Forum, January 2014

      Speaker, “Emerging Strategies for Protecting Global IP rights – from a client counseling/litigation perspective,” Global IP Convention, January 2013

      Speaker, “Patent Basics in the context of a product life cycle,” ASEI National Convention, October 2012

      Education

      J.D., Wayne State University

      B.A., Chemistry and Economics, Kalamazoo College, cum laude

      Admissions

      U.S. District Court, Eastern District of Michigan

      U.S. District Court, Western District of Michigan

      Michigan Supreme Court        

      U.S. Court of Appeals, Sixth Circuit 

      United State Patent and Trademark Office