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
Practice Areas
Industries
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 1000In 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 and she is nationally recognized for her experience. 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 Top 50 Women in PTAB Trials in 2019, a 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 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.
J.D., Wayne State University
B.A., Chemistry and Economics, Kalamazoo College, cum laude
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 Intellectual Property Law Association (MIPLA)
Michigan Patent Law Association
State Bar of Michigan
Women Lawyers Association of Michigan
Federal Bar Association Eastern District of Michigan Chapter
The World’s Leading IP Strategists, IAM Strategy 300, 2021-2023
Foundation Fellow, Oakland County Bar Association (OCBA), 2021
“Top 50 Women in PTAB Trials,” PTAB Bar Association, 2019,2021
“2018 ChIPs Honor Roll,” ChIPs (“Chiefs in Intellectual Property”), October 2018
“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2014 – 2022
“IP Star”, Managing Intellectual Property, 2013 – 2022
Best Lawyers in America, 2018-2021
“Notable Women Lawyer in Michigan,” Crain’s Detroit Business, 2017,2021
“Top Lawyer,” DBusiness Magazine, 2013
“Women of the Law,” Michigan Lawyers Weekly, 2012
“Woman to Watch,” AIPLA Women in IP Law, 2016
Panelist, “The Interplay between Ex Parte Reexamination and Inter Partes Review,” PTAB Bar Association Annual Conference, March 2022
Panelist, “Re-engineering IP Law Firms to Adopt a Growth Mindset,” IPWatchdog Webinar, November 2021
Panelist, Women’s Law Caucus, Michigan State University, September 2021
Panelist, “Finding, Winning and Retaining the Right Clients: Business Development and Strategic Relationship Creation for Law Firms,” IPWatchdog Webinar, March 2021
Host, “Breaking Mindsets with Christine Pompa from Yeti on Succeeding as a Minority in the Workplace,” Breaking Mindsets Podcast, November 2020
Host, “Breaking Mindsets with Christine Pompa from Yeti on Making Career Moves,” Breaking Mindsets Podcast, November 2020
Host, “Breaking Mindsets with Dr. Tonya Matthews from Wayne State on Strengthening Intersectional Inclusion in STEM Careers,” Breaking Mindsets Podcast, October 2020
Host, “Breaking Mindsets with Dr. Tonya Matthews from Wayne State on Creating Equitable Access to STEM Careers, ” Breaking Mindsets Podcast, September 2020
Panelist, “Diversity in IP,” IPBC Connect hosted by Intellectual Asset Management, September 2020
Panelist, “Looking Ahead: Strategic Plans for Diversity and Inclusion for Your Work Environment,” DEI Discussion with the Oakland County Bar Association, July 2020
Host, “Breaking Mindsets with Gael Tisack from Olympus Co. on the Role of Flexibility as a Driver of Professional Success,” Breaking Mindsets Podcast, June 2020
Host, “Breaking Mindsets with Dr. Rose Moten on Staying Healthy and Connected During Social Distancing,” Breaking Mindsets Podcast, March 2020
Co-Presenter, “PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures,” BK Hosted Webinar, February 2020
Host, “Breaking Mindsets with Bradley Gayton from Ford on Evolving Tech in the Legal Industry,” Breaking Mindsets Podcast, February 2020
Host, “Breaking Mindsets with Bradley Gayton from Ford on Globally Promoting Diversity in the Workplace,” Breaking Mindsets Podcast, January 2020
Host, “Breaking Mindsets with Chris Clancy from Panduit on Nontraditional Career Paths,” Breaking Mindsets Podcast, January 2020
Co-Presenter, “Employing Analytics to Drive Results,” BK and ChIPs Hosted Webinar, May 2019
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
Interviewee, “Embracing and Championing Change to Build a Successful IP Law Firm,” Anaqua Client Spotlight and Case Study, August 2022
Interviewee, “Diversity and Differentiation in Law Firms,” Anaqua Client Spotlight and Case Study, August 2022
Author, “Boosting Law Firm Diversity, Equity, and Inclusion Efforts Internally and Across the Industry,” Institute for Continuing Legal Education’s (ICLE) Diversity Section, February 2021
Co-Author, “Federal Circuit Rules that PTAB May Not Cancel ‘Challenged’ Claims for Indefiniteness in an IPR Proceeding (but ‘New’ Substitute Claims are Fair Game),” Blog Post, February 2020
Co-Author, “PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference,” Blog Post, January 2020
Co-Author, “Supreme Court Rules That USPTO is Barred From Seeking Reimbursement of Legal Fees in Section 145 Appeal,” Blog Post, December 2019
Co-Author, “Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed ‘Principal’ Officers,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings,” Blog Post, November 2019
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
Press Releases
Brooks Kushman Recognized In The Top Tier Of IP Firms In The Country By Managing IP; Seven Shareholders Named “IP Stars”
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Brooks Kushman Recognized as Gold-Standard Firm By 2023 IAM Annual Patent 1000 For The Tenth Year In A Row; Eight Attorneys Recognized as Top Practitioners
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President Frank Angileri and CEO Sangeeta Shah Named in the IAM Strategy 300 Global Leaders 2023 as The World’s Leading IP Strategists
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CEO Sangeeta Shah Interviewed by Anaqua on Success in a Leading IP Law Firm
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CEO Sangeeta Shah Panelist at Michigan Diversity Counsel Legal Diversity Summit
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Brooks Kushman Recognized as Gold-Standard Firm By 2022 IAM Annual Patent 1000 For The Ninth year In A Row; Eight Attorneys Recognized as Top Practitioners
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Brooks Kushman Launches Rebrand with New Website and Dynamic Brand Identity
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CEO Sangeeta Shah Presenting at PTAB Bar Association Annual Conference in D.C.
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Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
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Brooks Kushman Hosts Intellectual Property Panel at Accelerate Michigan Innovation Competition
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Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings
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CEO Sangeeta Shah Presenting at PTAB Bar Association Annual Conference in D.C.
Read MorePress Releases
President Frank Angileri and CEO Sangeeta Shah Named in the IAM Strategy 300 as The World’s Leading IP Strategists
Read MoreMedia Coverage
Sangeeta Shah Comments on Tiffany Cunningham’s Historic Confirmation to the Federal Circuit
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Brooks Kushman CEO Sangeeta Shah and CDO Chanille Carswell Named in Crain’s Notable Women in the Law
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Brooks Kushman CEO Sangeeta Shah Panelist in IPWatchdog PTAB Virtual Event in a Session on Pre-Trail Strategies
Read MoreMedia Coverage
Brooks Kushman CEO Sangeeta Shah Featured in IPWatchdog Article on CAFC Appointee Impact to IP Community
Read MoreMedia Coverage
Brooks Kushman CEO Sangeeta Shah Featured in Law360 Pulse Article on The Rapid Changes Happening in the Legal Industry
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Brooks Kushman CEO Sangeeta Shah Panelist in IPWatchdog Webinar on Business Development for Law Firms
Read MorePress Releases
Brooks Kushman CEO Sangeeta Shah Contributor in a Law.com Mid-Market Report on Midsize Law Firms’ Expectations for 2021
Read MoreMedia Coverage
Brooks Kushman CEO Sangeeta Shah Featured in a Law360 Pulse Article on How MidLaw Firms Are Faring During the Pandemic
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Brooks Kushman Shareholder Sangeeta Shah Provides Insight on the Benefits of the Midsize Mansfield Rule and How It Has Impacted the Firm’s Diversity Efforts
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Brooks Kushman Named a 2020 Compass Award Winner by the Leadership Council on Legal Diversity
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Brooks Kushman CEO Sangeeta Shah Panelist for DEI Discussion in the Legal Industry Hosted By Michigan Lawyers Weekly
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Brooks Kushman CEO Sangeeta Shah Panelist For DEI Discussion at IAM’s IPBC Connect
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Brooks Kushman CEO Sangeeta Shah Panelist For DEI Discussion with Oakland County Bar Association
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Federal Circuit Rules that PTAB May Not Cancel “Challenged” Claims for Indefiniteness in an IPR Proceeding
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Brooks Kushman Leading the Legal Industry as a 2019 Inclusion Blueprint Champion
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PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference
Read MoreWebinar
PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures
Read MoreBlog
Supreme Court Rules That USPTO is Barred From Seeking Reimbursement of Legal Fees in Section 145 Appeal
Read MoreBlog
Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed “Principal” Officers
Read MorePress Releases
Brooks Kushman Recognized for the Second Consecutive Year by ChIPs and Diversity Lab for Dedication to Diversity and Inclusion
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Brooks Kushman Chief Executive Officer Sangeeta Shah Named in the Top 50 Women in PTAB Trials
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Nine Brooks Kushman Attorneys Ranked As 2020 Best Lawyer; Two Attorneys Recognized As 2020 Lawyer Of The Year
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PTAB Designates Two New Precedential Decisions and One Informative Decision Regarding Discretion to Institute Inter Partes Review
Read MoreMedia Coverage
Brooks Kushman Shareholder Discusses Federal Circuit Decision to Keep Standing Limits on PTAB Appeals Due to Auto Parts Co’s Bid to Review
Read MoreWebinar
PTAB Year in Review and Looking Forward – New Procedures Require Reassessment of AIA Trial Strategies
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Nine Brooks Kushman Attorneys Ranked As Best Lawyer; Two Attorneys Recognized as Lawyer of the Year
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Brooks Kushman Recognized as Gold-Standard Firm By IAM Annual Patent 1000; Six Attorneys Recognized as Top Practioners
Read MoreClient Alerts
Federal Circuit Tackles Post-SAS Procedural Tangles – Rules That Patent Owner May Request Remand, Did Not Waive Challenge to Partial Final Written Decision
Read MoreMedia Coverage
Sangeeta G. Shah Quoted in IAM Article on Potential Changes with the Patent Trail and Appeal Board
Read MoreClient Alerts
Supreme Court Upholds Constitutionality of IPR Proceedings, But Strikes Down Partial PTAB Final Written Decisions
Read MorePresentations
Brooks Kushman Shareholders to Speak at the Best Practices in Intellectual Property Sixth Annual Conference
Read MoreClient Alerts
Supreme Court to Consider Availability of Extraterritorial Patent Infringement Damages
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Brooks Kushman Chief Diversity Officer Helps Spearhead ChIPs Chicago Chapter
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Brooks Kushman’s Chief Diversity Officer Named a Notable Women Lawyer by Crain’s Detroit Business
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Brooks Kushman Ranked In The 2018 Best Law Firms List; Nine Attorneys Ranked As Best Lawyer
Read MoreClient Alerts
New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously
Read MoreClient Alerts
Federal Circuit Rejects Some USPTO Requirements for Amending Claims During IPR Proceedings
Read MoreClient Alerts
PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings
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Brooks Kushman Shareholder Discusses the Impact of the AIA and Post-Grant Proceedings in Law360
Read MoreClient Alerts
Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
Read MorePress Releases
Brooks Kushman partners with Girl Scouts to Promote Diversity in STEM Education
Read MoreClient Alerts
Supreme Court Affirms “Broadest Reasonable Interpretation” Claim Construction Standard and Limited Appeals For AIA Trials
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Brooks Kushman Recognized as Gold-Standard Firm in Patent 1000 Listing for Third Consecutive Year
Read MoreClient Alerts
Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of Dual Claim Construction Standards
Read MorePresentations
Brooks Kushman Shareholder to Discuss Post Issuance Proceedings at IP Enforcement Summit
Read MoreClient Alerts
Federal Circuit Okays PTAB Practice of Reviewing Fewer Than All Challenged Claims in IPR
Read MorePresentations
Brooks Kushman Hosts Intellectual Property Panel at Accelerate Michigan Innovation Competition
Read MoreClient Alerts
PTAB Panel Allows Joinder of Multiple IPR Proceedings Filed by Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(c)
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Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at IP Strategy Summit
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Brooks Kushman Hosts Intellectual Property Presentations at Accelerate Michigan Innovation Competition
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Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at International Women`s Leadership Forum
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Brooks Kushman Shareholder to Serve as Panelist at the Centerforce IP Strategy Summit
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Brooks Kushman Shareholder reviews the America Invents Act in Detroit Legal News
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Brooks Kushman Attorneys Discuss Ways to Minimize the Risk of Post-Grant Challenges in Law360 Article
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Brooks Kushman’s Shah to Present at Largest IP Conference in Asia-Pacific Region
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Brooks Kushman Shareholder Sangeeta Shah Featured Among Michigan Lawyers Weekly’s 2012 “Women in the Law”
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Intellectual Property Law Firm Brooks Kushman Appoints Sangeeta Gandhi Shah as Chief Diversity Officer
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Brooks Kushman’s Sangeeta Shah Named to Profiles in Diversity Journal’s “Women Worth Watching” Feature
Read More120 results
Press Releases
CEO Sangeeta Shah Panelist at World IP Forum
Press Releases
Brooks Kushman Takes Action to Increase Disability Inclusion
Press Releases
Brooks Kushman Receives Midsize Mansfield Certified Plus For Second Year
Press Releases
Sangeeta Shah Joins Michigan State Bar Foundation Fellows
Press Releases
Brooks Kushman Recognized In The Top Tier Of IP Firms In The Country By Managing IP; Seven Shareholders Named “IP Stars”
Press Releases
Brooks Kushman Recognized as Gold-Standard Firm By 2023 IAM Annual Patent 1000 For The Tenth Year In A Row; Eight Attorneys Recognized as Top Practitioners
Press Releases
Sangeeta Shah Nominated as a Fellow of the Michigan State Bar Foundation
Press Releases
President Frank Angileri and CEO Sangeeta Shah Named in the IAM Strategy 300 Global Leaders 2023 as The World’s Leading IP Strategists
Press Releases
CEO Sangeeta Shah Interviewed by Anaqua on Success in a Leading IP Law Firm
Press Releases
Brooks Kushman Receives Aspire Diversity Award
Press Releases
CEO Sangeeta Shah Panelist at Michigan Diversity Counsel Legal Diversity Summit
Press Releases
Brooks Kushman Recognized as Gold-Standard Firm By 2022 IAM Annual Patent 1000 For The Ninth year In A Row; Eight Attorneys Recognized as Top Practitioners
Press Releases
Brooks Kushman Launches Rebrand with New Website and Dynamic Brand Identity
Press Releases
Brooks Kushman Received Midsize Mansfield Certification Plus
Press Releases
CEO Sangeeta Shah Named In The 2021 Top 50 Women In PTAB Trials
Presentations
CEO Sangeeta Shah Presenting at PTAB Bar Association Annual Conference in D.C.
Client Alerts
Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
Presentations
Brooks Kushman Hosts Intellectual Property Panel at Accelerate Michigan Innovation Competition
Blog
Federal Circuit Rules that Tribal Sovereign Immunity Does Not Apply in IPR Proceedings
Presentations
CEO Sangeeta Shah Presenting at PTAB Bar Association Annual Conference in D.C.
Press Releases
CEO Sangeeta Shah Named In The 2021 Top 50 Women In PTAB Trials
Presentations
CEO Sangeeta Shah Panelist for Growth Mindset Panel with IPWatchdog
Presentations
CEO Sangeeta Shah Panelist at Upcoming Women’s Law Caucus of MSU
Press Releases
President Frank Angileri and CEO Sangeeta Shah Named in the IAM Strategy 300 as The World’s Leading IP Strategists
Media Coverage
Sangeeta Shah Comments on Tiffany Cunningham’s Historic Confirmation to the Federal Circuit
Press Releases
Brooks Kushman CEO Sangeeta Shah and CDO Chanille Carswell Named in Crain’s Notable Women in the Law
Press Releases
Brooks Kushman CEO Sangeeta Shah Panelist in IPWatchdog PTAB Virtual Event in a Session on Pre-Trail Strategies
Media Coverage
Brooks Kushman CEO Sangeeta Shah Featured in IPWatchdog Article on CAFC Appointee Impact to IP Community
Media Coverage
Brooks Kushman CEO Sangeeta Shah Featured in Law360 Pulse Article on The Rapid Changes Happening in the Legal Industry
Presentations
Brooks Kushman CEO Sangeeta Shah Panelist in IPWatchdog Webinar on Business Development for Law Firms
Press Releases
Brooks Kushman CEO Sangeeta Shah Contributor in a Law.com Mid-Market Report on Midsize Law Firms’ Expectations for 2021
Publications
Brooks Kushman CEO Sangeeta Shah Published in ICLE on Boosting Diversity
Media Coverage
Brooks Kushman CEO Sangeeta Shah Featured in a Law360 Pulse Article on How MidLaw Firms Are Faring During the Pandemic
Media Coverage
Brooks Kushman Shareholder Sangeeta Shah Provides Insight on the Benefits of the Midsize Mansfield Rule and How It Has Impacted the Firm’s Diversity Efforts
Press Releases
Brooks Kushman Named a 2020 Compass Award Winner by the Leadership Council on Legal Diversity
Presentations
Brooks Kushman CEO Sangeeta Shah Panelist for DEI Discussion in the Legal Industry Hosted By Michigan Lawyers Weekly
Blog
The Supreme Court to Weigh in on Whether PTAB Judges are Constitutional
Blog
Kanye’s Twitter Rant Flags Issues with Copyright Ownership in Music Deals
Press Releases
Brooks Kushman CEO Sangeeta Shah Panelist For DEI Discussion at IAM’s IPBC Connect
Presentations
Brooks Kushman CEO Sangeeta Shah Panelist For DEI Discussion with Oakland County Bar Association
Blog
Federal Circuit Rules that PTAB May Not Cancel “Challenged” Claims for Indefiniteness in an IPR Proceeding
Press Releases
Brooks Kushman Leading the Legal Industry as a 2019 Inclusion Blueprint Champion
Press Releases
A Heartfelt Tribute to Brooks Kushman Attorney George Mosher, Jr.
Blog
PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference
Webinar
PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures
Blog
Supreme Court Rules That USPTO is Barred From Seeking Reimbursement of Legal Fees in Section 145 Appeal
Blog
Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed “Principal” Officers
Blog
USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings
Client Alerts
USPTO Publishes Updated Guidance on its 2019 Patent Eligibility Guidelines
Press Releases
Brooks Kushman Recognized for the Second Consecutive Year by ChIPs and Diversity Lab for Dedication to Diversity and Inclusion
Press Releases
Brooks Kushman Chief Executive Officer Sangeeta Shah Named in the Top 50 Women in PTAB Trials
Press Releases
Nine Brooks Kushman Attorneys Ranked As 2020 Best Lawyer; Two Attorneys Recognized As 2020 Lawyer Of The Year
Client Alerts
PTAB Designates Two New Precedential Decisions and One Informative Decision Regarding Discretion to Institute Inter Partes Review
Client Alerts
PTAB Releases New Update to the AIA Trial Practice Guide
Blog
Return Mail Inc. v. U.S. Postal Service
Webinar
Employing Analytics to Drive Results
Media Coverage
Brooks Kushman Shareholder Discusses Federal Circuit Decision to Keep Standing Limits on PTAB Appeals Due to Auto Parts Co’s Bid to Review
Webinar
PTAB Year in Review and Looking Forward – New Procedures Require Reassessment of AIA Trial Strategies
Client Alerts
Federal Circuit Clarifies IPR Procedures In Trio Of Cases
Press Releases
Nine Brooks Kushman Attorneys Ranked As Best Lawyer; Two Attorneys Recognized as Lawyer of the Year
Press Releases
Federal Circuit Decision Upholds Validity of GKN Automotive Patent
Press Releases
Brooks Kushman Recognized as Gold-Standard Firm By IAM Annual Patent 1000; Six Attorneys Recognized as Top Practioners
Client Alerts
Federal Circuit Tackles Post-SAS Procedural Tangles – Rules That Patent Owner May Request Remand, Did Not Waive Challenge to Partial Final Written Decision
Media Coverage
Sangeeta G. Shah Quoted in IAM Article on Potential Changes with the Patent Trail and Appeal Board
Webinar
SAS And Oil States: How New Supreme Court Rulings Will Change Post-Grant Strategy
Client Alerts
Supreme Court Upholds Constitutionality of IPR Proceedings, But Strikes Down Partial PTAB Final Written Decisions
Presentations
Brooks Kushman Shareholders to Speak at the Best Practices in Intellectual Property Sixth Annual Conference
Client Alerts
Supreme Court to Consider Availability of Extraterritorial Patent Infringement Damages
Press Releases
Brooks Kushman Chief Diversity Officer Helps Spearhead ChIPs Chicago Chapter
Press Releases
Brooks Kushman’s Chief Diversity Officer Named a Notable Women Lawyer by Crain’s Detroit Business
Client Alerts
USPTO Announces Fee Increases Effective January 16, 2018
Press Releases
Brooks Kushman Ranked In The 2018 Best Law Firms List; Nine Attorneys Ranked As Best Lawyer
Client Alerts
New PTAB “Informative” Decisions Support Denial of Institution When Grounds Were Considered Previously
Client Alerts
Federal Circuit Rejects Some USPTO Requirements for Amending Claims During IPR Proceedings
Client Alerts
Federal Circuit Shoots Down Eastern District of Texas Patent Venue Test
Client Alerts
PTAB Establishes Criteria Governing Follow-On Petitions for AIA Post Grant Proceedings
Press Releases
Nine Brooks Kushman Attorneys Ranked as 2018 Best Lawyers
Client Alerts
AIA Inter Partes Review Proceedings Challenged
Press Releases
Gold in IAM Annual Patent 1000
Press Releases
Six Shareholders Named “IP Stars” By Managing IP
Press Releases
10th Anniversary AIPLA Women In IP Networking Event
Media Coverage
Sangeeta Shah Featured in Michigan Lawyers Weekly
Blog
Personal Jurisdiction In Unfavorable Forum
Media Coverage
Sangeeta Shah Discusses Adverse Judgement Request
Media Coverage
Brooks Kushman Shareholder Discusses the Impact of the AIA and Post-Grant Proceedings in Law360
Press Releases
Brooks Kushman Named a Diversity Focused Company by Corp! Magazine
Client Alerts
Federal Circuit Grants En Banc Review of PTAB Amendment Practice
Press Releases
Sangeeta Shah Named AIPLA’s 2016 Woman to Watch
Client Alerts
Supreme Court’s Cuozzo Decision Endorses AIA Trial Proceedings, But Preserves Key Roles for both the PTAB and Federal Courts in Patent Disputes
Press Releases
Brooks Kushman partners with Girl Scouts to Promote Diversity in STEM Education
Client Alerts
Supreme Court Affirms “Broadest Reasonable Interpretation” Claim Construction Standard and Limited Appeals For AIA Trials
Press Releases
Brooks Kushman Recognized as Gold-Standard Firm in Patent 1000 Listing for Third Consecutive Year
Press Releases
Brooks Kushman Attorneys Named “IP Stars” by Managing IP
Client Alerts
Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of Dual Claim Construction Standards
Presentations
Brooks Kushman Shareholder to Discuss Post Issuance Proceedings at IP Enforcement Summit
Client Alerts
Federal Circuit Okays PTAB Practice of Reviewing Fewer Than All Challenged Claims in IPR
Presentations
Brooks Kushman Hosts Intellectual Property Panel at Accelerate Michigan Innovation Competition
Client Alerts
PTAB Panel Allows Joinder of Multiple IPR Proceedings Filed by Same Petitioner, Sharpens Disparity Between Panels Interpreting 35 U.S.C. § 315(c)
Press Releases
Brooks Kushman Named One of Corp! Magazines Diversity Focused Companies
Client Alerts
USPTO Proposes New Rules For PTAB Trial Proceedings
Media Coverage
Brooks Kushman Shareholder Discusses AIA Appeals in Law360
Press Releases
Brooks Kushman Attorneys Named “IP Stars” by Managing IP
Presentations
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at IP Strategy Summit
Blog
USPTO Announces Immediate Changes to AIA PTAB Page Limits
Presentations
Brooks Kushman Hosts Intellectual Property Presentations at Accelerate Michigan Innovation Competition
Media Coverage
Brooks Kushman Earns Gold Honors in Patent 1000 Listing
Presentations
Brooks Kushman Shareholder to Discuss Post-Grant Proceedings at International Women`s Leadership Forum
Press Releases
Brooks Kushman to host AIPLA Women in IP Networking Event
Presentations
Brooks Kushman Shareholder to Serve as Panelist at the Centerforce IP Strategy Summit
Media Coverage
Brooks Kushman Shareholder reviews the America Invents Act in Detroit Legal News
Media Coverage
Brooks Kushman Attorneys Discuss Ways to Minimize the Risk of Post-Grant Challenges in Law360 Article
Publications
Outsourcing Manufacturing and the Pre-AIA On-Sale Bar
Presentations
Brooks Kushman`s Shah Discusses Inter Partes Review as a Strategic Tool
Presentations
Brooks Kushman’s Shah to Present at Largest IP Conference in Asia-Pacific Region
Media Coverage
Brooks Kushman Shareholder Sangeeta Shah Featured In Detroit Legal News
Press Releases
Brooks Kushman Shareholder Sangeeta Shah Featured Among Michigan Lawyers Weekly’s 2012 “Women in the Law”
Press Releases
Intellectual Property Law Firm Brooks Kushman Appoints Sangeeta Gandhi Shah as Chief Diversity Officer
Press Releases
Women Helping Women
Press Releases
Brooks Kushman’s Sangeeta Shah Named to Profiles in Diversity Journal’s “Women Worth Watching” Feature
Presentations
Intellectual Property Breakout Session
Practice Areas
Industries
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
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 1000In 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 and she is nationally recognized for her experience. 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 Top 50 Women in PTAB Trials in 2019, a 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.
J.D., Wayne State University
B.A., Chemistry and Economics, Kalamazoo College, cum laude
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 Intellectual Property Law Association (MIPLA)
Michigan Patent Law Association
State Bar of Michigan
Women Lawyers Association of Michigan
Federal Bar Association Eastern District of Michigan Chapter
The World’s Leading IP Strategists, IAM Strategy 300, 2021-2023
Foundation Fellow, Oakland County Bar Association (OCBA), 2021
“Top 50 Women in PTAB Trials,” PTAB Bar Association, 2019,2021
“2018 ChIPs Honor Roll,” ChIPs (“Chiefs in Intellectual Property”), October 2018
“IAM Patent 1000 Recommended Individual,” Intellectual Asset Management, 2014 – 2022
“IP Star”, Managing Intellectual Property, 2013 – 2022
Best Lawyers in America, 2018-2021
“Notable Women Lawyer in Michigan,” Crain’s Detroit Business, 2017,2021
“Top Lawyer,” DBusiness Magazine, 2013
“Women of the Law,” Michigan Lawyers Weekly, 2012
“Woman to Watch,” AIPLA Women in IP Law, 2016
Panelist, “The Interplay between Ex Parte Reexamination and Inter Partes Review,” PTAB Bar Association Annual Conference, March 2022
Panelist, “Re-engineering IP Law Firms to Adopt a Growth Mindset,” IPWatchdog Webinar, November 2021
Panelist, Women’s Law Caucus, Michigan State University, September 2021
Panelist, “Finding, Winning and Retaining the Right Clients: Business Development and Strategic Relationship Creation for Law Firms,” IPWatchdog Webinar, March 2021
Host, “Breaking Mindsets with Christine Pompa from Yeti on Succeeding as a Minority in the Workplace,” Breaking Mindsets Podcast, November 2020
Host, “Breaking Mindsets with Christine Pompa from Yeti on Making Career Moves,” Breaking Mindsets Podcast, November 2020
Host, “Breaking Mindsets with Dr. Tonya Matthews from Wayne State on Strengthening Intersectional Inclusion in STEM Careers,” Breaking Mindsets Podcast, October 2020
Host, “Breaking Mindsets with Dr. Tonya Matthews from Wayne State on Creating Equitable Access to STEM Careers, ” Breaking Mindsets Podcast, September 2020
Panelist, “Diversity in IP,” IPBC Connect hosted by Intellectual Asset Management, September 2020
Panelist, “Looking Ahead: Strategic Plans for Diversity and Inclusion for Your Work Environment,” DEI Discussion with the Oakland County Bar Association, July 2020
Host, “Breaking Mindsets with Gael Tisack from Olympus Co. on the Role of Flexibility as a Driver of Professional Success,” Breaking Mindsets Podcast, June 2020
Host, “Breaking Mindsets with Dr. Rose Moten on Staying Healthy and Connected During Social Distancing,” Breaking Mindsets Podcast, March 2020
Co-Presenter, “PTAB Year in Review – Designated Decisions, Constitutional Challenges, and AIA Procedures,” BK Hosted Webinar, February 2020
Host, “Breaking Mindsets with Bradley Gayton from Ford on Evolving Tech in the Legal Industry,” Breaking Mindsets Podcast, February 2020
Host, “Breaking Mindsets with Bradley Gayton from Ford on Globally Promoting Diversity in the Workplace,” Breaking Mindsets Podcast, January 2020
Host, “Breaking Mindsets with Chris Clancy from Panduit on Nontraditional Career Paths,” Breaking Mindsets Podcast, January 2020
Co-Presenter, “Employing Analytics to Drive Results,” BK and ChIPs Hosted Webinar, May 2019
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
Interviewee, “Embracing and Championing Change to Build a Successful IP Law Firm,” Anaqua Client Spotlight and Case Study, August 2022
Interviewee, “Diversity and Differentiation in Law Firms,” Anaqua Client Spotlight and Case Study, August 2022
Author, “Boosting Law Firm Diversity, Equity, and Inclusion Efforts Internally and Across the Industry,” Institute for Continuing Legal Education’s (ICLE) Diversity Section, February 2021
Co-Author, “Federal Circuit Rules that PTAB May Not Cancel ‘Challenged’ Claims for Indefiniteness in an IPR Proceeding (but ‘New’ Substitute Claims are Fair Game),” Blog Post, February 2020
Co-Author, “PTAB Precedential Opinion Clarifies Standard for Establishing Public Accessibility of a Reference,” Blog Post, January 2020
Co-Author, “Supreme Court Rules That USPTO is Barred From Seeking Reimbursement of Legal Fees in Section 145 Appeal,” Blog Post, December 2019
Co-Author, “Federal Circuit Finds PTAB Judges to be Unconstitutionally-Appointed ‘Principal’ Officers,” Blog Post, November 2019
Co-Author, “USPTO Proposes New Rules for Amending Claims During AIA Trial Proceedings,” Blog Post, November 2019
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
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.
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