Skip to main content

Aarti Shah

Member

[email protected]

+1.202.434.7408

Follow:
Share:

Aarti focuses her practice on patent litigation and has extensive experience as trial counsel. Leveraging her insider’s view gained during her time spent as a senior investigative attorney in the US International Trade Commission (ITC), Aarti helps her clients develop and implement effective ITC strategies. She is frequently invited to write and comment on ITC litigation matters.

Aarti focuses her practice on patent litigation and has extensive experience as trial counsel, having served in the US International Trade Commission (ITC) as a senior investigative attorney prior to joining Mintz. During her tenure at the ITC’s Office of Unfair Import Investigations, she served as lead counsel for the federal government in seven trials and in over 25 ITC investigations, covering trade secrets, trademarks, and electrical, computer, mechanical, and chemical patents. She particularly enjoys simplifying technology for judges and juries, devising creative and pragmatic strategies, and working closely with in-house counsel.

Prior to her work with the ITC, Aarti practiced as a patent litigator with an international law firm, where she handled district court litigations relating to computer, electrical, mechanical, and pharmaceutical technologies. She also handled appellate litigation before the Court of Appeals for the Federal Circuit, and provided counsel on patent portfolios and infringement opinions.

Education

  • Georgetown University (JD, with honors)
  • Harvard College (BA, Government, with honors)

Experience

  • Certain Memory Modules and Components Thereof, and Products Containing Same (337-TA-1089) Represent Complainant Netlist, Inc., a California memory module company, in the ITC asserting six patents against the Korean-based memory company, SK hynix. The technology claimed by the asserted patents is essential to the JEDEC DDR4 RDIMM and LRDIMM standards, which are implemented by the accused imported products. The respondents are asserting novel RAND defenses in the ITC, and in a co-pending case involving the same patents in the District Court for the Central District of California. The ITC evidentiary hearing is scheduled for July 2019.
  • Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) - Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
  • Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) - Represented owner of portfolio of graphics processing and microprocessor patents as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
  • Certain Communications or Computing Devices and Components Thereof (337-TA-925) - Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
  • Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.

Recognition & Awards

  • Executive Committee, ITC Trial Lawyers' Association
  • Member, Giles S. Rich American Inn of Court

Recent Insights

News & Press

Viewpoints

Viewpoint

ITC Domestic Industry Products Do Not Need to Be Commercially Available

September 3, 2019 | Blog | By Aarti Shah, Kara E. Grogan

In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) held that domestic industry products do not need to be commercially available to satisfy section 337’s domestic industry requirement. 
Viewpoint
In a recent initial determination, Administrative Law Judge (“ALJ”) Cheney of the U.S. International Trade Commission (“ITC”) provided useful guidance for patentees by reaffirming that there is no categorical rule that patent prosecution expenses cannot be included in the domestic industry analysis at the ITC, and also finding that complainants may rely upon expenses relating to FDA compliance to satisfy the domestic industry requirement.  
Viewpoint General
On July 1, 2019, Administrative Law Judge (“ALJ”) Elliot of the U.S. International Trade Commission (“ITC”) issued a ruling indicating that it may be possible for complainants to rely on respondents’ products to satisfy the ITC’s domestic industry requirement in certain circumstances.
Viewpoint General
The August 13, 2019 decision from the United States District Court for the District of New Jersey in WAG Acquisition, LLC v. Multi Media LLC, Civil Action No. 2-14-cv-02340, deals a blow to a common attack on litigation funding. The decision protects the ability of plaintiffs who lack resources to enforce their patent rights by affirming that seeking funding does not necessarily harm standing.
Viewpoint

One Size Does Not Fit All When It Comes to Economic Theories Used to Determine Royalty Rates

July 1, 2019 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Matthew Galica, Tiffany Knapp

Calculating royalty rates as part of a patent dispute often becomes a hotly-disputed issue, where opposing economic theories from expert witnesses are pinned against one another.  As a litigant, care must be taken when deciding which economic theory to advance—and what facts to rely on—in support of a particular royalty rate.  Given the varying and unique nature of disputes, a singular economic approach to determining a royalty rate is impractical and, oftentimes, inappropriate. 
Viewpoint

Score This One in Favor of Standard-Essential Patent Owners: Recent Decision Makes Satisfying FRAND Obligations Easier

June 5, 2019 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Matthew Galica

A recent decision in the Eastern District of Texas should provide standard-essential patent (“SEP”) owners with more clarity and optimism when negotiating SEP licenses.  Coming on the heels of Judge Koh’s decision in the FTC’s dispute with Qualcomm, Judge Gilstrap found Ericsson to have satisfied its fair, reasonable and non-discriminatory (“FRAND”) obligations when negotiating with HTC due in large part to a finding that it had negotiated in good faith. 
Viewpoint
On April 26, 2019, Administrative Law Judge (“ALJ”) Lord clearly stated in Certain Intraoral Scanner and Related Hardware and Software that the International Trade Commission’s (“ITC”) jurisdictional authority extends to accused infringers whose activities have “some nexus” to an element of section 337.  ALJ Lord found that involvement in training and supporting resellers, distributors and end users in the infringing goods in the United States was sufficient to put that respondent under the broad reach of section 337, even if they did not import or directly sell the products. 
Viewpoint
In Amarin Pharma, Inc. v. Int’l Trade Comm’n (18-1247), the Federal Circuit affirmed the International Trade Commission’s (“ITC”) finding that Amarin’s false advertising claim under § 43(a) of the Lanham Act was precluded by the Federal Food, Drug, and Cosmetic Act (“FDCA”) because these claims require the FDA’s guidance on whether possible non-compliance of the provision is a violation of the FDCA.  The court also found that the Commission may decline to institute an investigation where there is no cognizable claim under § 337.
Viewpoint
In her April 16, 2019 Public Interest Findings, Administrative Law Judge (“ALJ”) McNamara decisively stated that antitrust issues disguised as competitive conditions arguments are not a factor in the International Trade Commission (“ITC”) proceeding between Apple and Qualcomm.  See Mobile Electronic Devices II, Inv. No. 337-TA-1093, Analysis and Findings with Respect to the Public Interest, and Recommendation on Remedy and Bond, at 4 (April 16, 2019).
Viewpoint General

ITC to Review Controversial Apple-Qualcomm Decision

December 13, 2018 | Blog | By Michael Renaud, James Wodarski, Aarti Shah, Marguerite McConihe

As anticipated https://www.mintz.com/insights-center/viewpoints/2231/2018-10-alj-pender-apple-infringes-no-exclusion-order-qualcomm, on December 12, 2018, the International Trade Commission (“ITC”) issued a notice to review the Final Initial Determination and Recommended Determination (“FID”) issued by Administrative Law Judge (“ALJ”) Pender in In the Matter of Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof, 337-TA-1065 (“Certain Mobile Electronic Devices”), where ALJ Pender, despite finding that a valid patent was infringed and all jurisdictional requirements met, recommended that no Limited Exclusion Order be issued against Apple because it would be contrary to the public interest.

News & Press

Case filings at the U.S. International Trade Commission (ITC), a popular venue for resolving intellectual property disputes, reached record levels in 2018, and 2019 appears likely to be another busy year. Mintz Member Aarti Shah authored this article published by IPWatchdog that examines a number of important decisions at the ITC, including one in Qualcomm’s high-profile battle with Apple relating to the public interest, among others.

How Brand Owners Can Fight Fake Beauty Products

September 4, 2018 | https://www.gcimagazine.com/marketstrends/segments/cosmetics/How-Brand-Owners-Can-Fight-Fake-Beauty-Products-492395361.html Global Cosmetic Industry

Member Aarti Shah authored this column discussing what brand owners need to know to successfully combat threats regarding knockoff beauty products. Prior to joining the firm, Aarti served as a senior investigative attorney with the U.S. International Trade Commission (ITC).
Aarti Shah, a Member in the Mintz DC office, authored an article in Women’s Wear Daily on knockoffs, how their presence negatively impacts brand companies during the holiday season, and how acquiring a general exclusion order from the U.S. International Trade Commission could be the solution.
Mintz Members and intellectual property attorneys Mike Renaud, Aarti Shah and Jim Wodarski collaborated on an article published by Financier Worldwide Magazine discussing standard-essential patents.
Aarti Shah, an Intellectual Property Member in the Mintz D.C. office, was quoted in a Law360 article on the decision by the U.S. International Trade Commission that maintained an import ban on products found to infringe patents, even after the PTAB had declared the patents invalid.
Aarti Shah, a Member of the Mintz Washington, D.C. office, authored an article published in Financier Worldwide about the upswing in patent litigation related to the automobile industry.
The U.S. International Trade Commission (ITC) has announced it's launching an investigation into whether thermoplastic parts used in certain BMW, Honda, and Toyota vehicle models have infringed five patents owned by Intellectual Ventures LLC.
IP Division Head Michael Renaud, Member Aarti Shah, and Associate Adam Rizk authored this Financier Worldwide article discussing the ITC's statement that it will treat standard-essential patents the same way it treats all other patents asserted in a Section 337 investigation.
Mintz Boston Members Michael Renaud and James Wodarski, Washington, D.C. Member Aarti Shah, and Boston Associate Adam Rizk authored this Law360 article on the newly-issued ITC statement discounting the idea that an SEP patent owner cannot bring infringement cases before the commission.

ITC general exclusion orders are an increasingly popular tool to fight knockoffs

September 26, 2016 | http://www.financierworldwide.com/itc-general-exclusion-orders-are-an-increasingly-popular-tool-to-fight-knockoffs#.V-mGuSErKUl Financier Worldwide

A team of intellectual property attorneys – Members James Wodarski and Aarti Shah – authored this Financier Worldwide article discussing the rapid increase seen in general exclusion orders from the U.S. International Trade Commission over the past few years.
Mintz Members James Wodarski and Aarti Shah authored this Law360 article highlighting the option that brand, trademark, and design patent owners have when fighting counterfeits and knockoffs of obtaining general exclusion orders from the U.S. International Trade Commission.
This Law360 feature article notes Honda’s removal from the U.S. International Trade Commission’s investigation into several foreign automakers’ “importation of vehicles with infotainment systems that allegedly infringed several patents.”

Events

Speaker
Sep
17
2019

An Overview of Section 337 Investigations at the U.S. International Trade Commission

Kline School of Law, ITCTLA, and the Philadelphia Intellectual Property Law Association

Kline Institute of Trial Advocacy, 100-118 S 12th St, Philadelphia, PA

Panelist
Apr
13
2018

An Overview of Section 337 Investigations before the U.S. International Trade Commission

ITC Trial Lawyers Association, Boston Patent Law Association, and Suffolk University Law School

Suffolk University Law School Boston, MA

Speaker
Mar
6
2018
Panelist
Nov
12
2015

2015 ITC Trial Lawyers Association Annual Meeting

International Trade Commission Trial Lawyers Association

Ronald Reagan Building, International Trade Commission, Washington, D.C.

Speaker
Speaker
Feb
22
2015

7th Annual Advanced Forum on ITC Litigation and Enforcement

American Conference Institute

Mandarin Oriental, Washington, DC