Shamita Etienne-Cummings

Partner, Washington, DC

Biography

Shamita Etienne-Cummings has consistently been recognized among the World’s Leading Patent Professionals by IAM Patent 1000: “Notching up win after win, Shamita is great - she is very aggressive and not shy about going after the best result for her client with all she’s got.”

Overview

With more than 20 years of experience in litigating patent disputes, Shamita Etienne-Cummings is a trusted advisor to many leading global technology companies. As a leader in the Firm's Intellectual Property practice group, Shamita combines a client-focused business practicality with substantial knowledge of law and technology.

Shamita's industry experience includes emphasis in mobile communication, semiconductor design and processing, media, aerospace, defense, consumer electronic devices and medical devices. Her clients benefit from her exceptionally deep technical knowledge, based on her previous work as an electrical engineer and program manager for GTE Corporation in the mobile telecommunications industry, where she designed and implemented wireless communication and satellite systems.

In addition to being a first chair patent litigator, Shamita represents clients in breach of contract and trade secret matters before district courts, the International Trade Commission (ITC) and the International Commercial Court (ICC), and routinely provides advice to clients on general patent diligence matters.

In 2017 Shamita joined the Firm's senior leadership team as the Office Executive for the Washington, DC office. In 2019 Shamita was elected to the Firm's eight member Global Management Team.

Shamita has held a number of roles at White & Case, leading on important Firm issues such as diversity and inclusion, partner development and advancement, as well as recruitment in the DC office. In addition to her contributions to the Firm and clients, Shamita is an adjunct professor of law at George Washington University School of Law where she teaches a patent trial course.

Bars and Courts
US Supreme Court
California State Bar
District of Columbia Bar
US District Court for the Eastern District of Texas
US Court of Appeals for the Federal Circuit
United States Patent and Trademark Office
US District Court for the Eastern District of Michigan
Education
JD
Southern Illinois University School of Law
BSEE
University of Pennsylvania
Languages
English
Marathi

Experience

ITC Investigations

Certain Smart Thermostats, Smart HVAC Systems, and Components Thereof, Investigation No. 337-TA-1185)
Lead counsel defending Google Inc. against EcoFactor's' patent infringement claims targeting Nest Smart Thermostats.

Certain Shaker Screens For Drilling Fluids, Components Thereof, And Related Marketing Materials (Investigation No. 337-TA-1184)
Lead counsel defending Xi'an Brightway Energy Equipment Co., Ltd. and Brightway Solids Control Co., Ltd. against M-I L.L.C. patent infringement claims targeting shaker screens for drilling fluids.

Certain Filament Light Emitting Diodes and Products Containing Same, Investigation No. 337-TA-1172)
Lead counsel defending Walmart Stores against Regents of the University of California's patent infringement claims relating to Filament LEDs.

Certain Robotic Vacuum Cleaning Devices And Components Thereof Such As Spare Parts (ITC Investigation No. 337-TA-1057)
Lead counsel defending Suzhou Real Power Electric Appliance Co., Ltd. against iRobot's patent infringement claims relating to robotic vacuum cleaners.

Communications of Computing Devices and Components Thereof (Inv. No. 337-TA- 925)
Lead counsel defending Google Inc. against Enterprise Systems Technologies' patent infringement claims against Google's customers, Samsung, HTC and LG. EST asserted three patents against mobile devices incorporating Google's products and services. The Investigation was settled favorably for Google shortly after the Judge granted summary determination on one of the three patents.

Certain Portable Electronic Communications Devices, Including Mobile Phones and Components Thereof (Inv. No. 337-TA-885)
Lead counsel defending Google Inc. against Nokia in a second ITC investigation in which Nokia asserted four patents against Google products and services. This investigation settled very favorably for Google in February 2014.

Certain Electronic Devices, Including Mobile Phones and Tablet Computers, and Components Thereof (Inv. No. 337-TA-847)
Lead counsel for Google, Inc. in an ITC investigation in which Nokia asserted patent infringement claims against Google's customer, HTC. After disposing of patent allegations for four patents before trial, Shamita tried this case in June of 2013 on one remaining patent. In September 2013, the ALJ issued his Determination, finding that none of HTC devices incorporating Google's products and services infringed the remaining asserted patent. The Commission did not issue any determination reversing or remanding the ALJ's determination

 

District Court Actions:

Anza v. TAEC, 5:17-cv-07289-LHK (N.D. Cal.)
Lead counsel for Toshiba and Kioxia relating to semiconductor chips.

MRED v. Panasonic Corporation et al. (ED. Tx.)
Lead counsel for Panasonic in a patent case relating to testing of semiconductor chips.

American GNC Corporation v. LG Electronics Inc., LG Electronics Mobilecomm U.S.A., Inc., And LG Electronics Mobile Research U.S.A., LLC (CD. Cal.)
Lead counsel for LG entities in a patent case relating to GPS technology and navigation applications.

Zond LLC v. GlobalFoundries U.S. Inc. et al. (D. Ma.)
Lead counsel for GlobalFoundries in a complex patent case in which her team invalidated all 275 claims across all seven asserted plasma processing patents.

Flamm v. GlobalFoundries U.S. Inc. et al. (ND. Cal.)
Lead counsel for GlobalFoundries in a complex patent case concerning three semiconductor machine patents.

Maxim Integrated Products, Inc. v. JPMorgan Chase & Co., et. al. (W.D. Pa.)
Lead counsel for JPMC as one of 29 opposing parties in a complex multidistrict litigation in the Western District of Pennsylvania against Maxim Integrated Products, Inc. The litigation involved five patents regarding secure data transmissions, four of which were asserted against JPMC's mobile banking applications.

Grecia v. JPMorgan Chase & Co., et al. (S.D. NY)
Lead counsel for JPMC in a district court action involving patents directed to encryption.

Maxim Integrated Products, Inc. v. American Express, et al. (W.D. Tex.
Lead counsel for American Express in concurrent district court and United States Patent and Trademark Office (USPTO) proceedings involving patents regarding secure financial transactions.

Vega v. American Express, et al. (W.D. Tex.)
Lead counsel for American Express in patent infringement suit directed as secure transactions. Court granted motion to dismiss early in the litigation.

Grecia v. American Express, et al. (S.D. NY)
Lead counsel for American Express in a district court action involving patents directed to encryption.

Dyncorp International LLC, V. AAR Airlift Group, Inc. (MD. Fl.)
Lead counsel for DynCorp before 11th Circuit Court of Appeals in a trade secret and corporate espionage case.

Salser et al v. Dyncorp International, Inc. et al (E.D. MI)
Lead counsel for DynCorp against allegations of intentional infliction of emotional distress related to a death in Erbil, Iraq.

Speaking Engagements

"Importing Inducement: Obtaining Exclusion Orders Based on Post-Importation Patent Infringement - Suprema, Inc. v. International Trade Commission," 17 March 2017, San Diego, CA: AIPLA's 2017 Spring Meeting

"The World Series Curveball: Are the New Rules a Game Changer at the ITC," 7 April 2016, San Francisco, CA: The 9th Annual Associate Corporate Counsel Seminar Series

"Domestic Industry – Litigating in the ITC," 2012 Symposium on International Legal Strategies for Taiwan Technology Companies: A Focus on Intellectual Property and Antitrust Issues, 13 June 2012, Hsinchu, Taiwan and 15 June 2012, Taipei, Taiwan

"ITC Litigation: Recent Trends, New Developments and Prospects for Appeal," 2011 Symposium on International IP Strategies for Taiwanese Technology Companies, 09 June 2011, Hsinchu, Taiwan and 10 June 2011, Taipei, Taiwan

"To Opine or Not to Opine: The Utility of Opinion of Counsel after In re Seagate," PLI, October 2009

"Using the ITC To Protect Your Investment In The US Industry," Tokyo, Japan, September 16, 2009

Awards and Recognition

Named as one of the Top 250 Women in IP

Managing Intellectual Property, 2019

IAM Patent 1000 2013-2019: The World's Leading Patent Practitioners— International Trade Commission

Legal 500, Intellectual Property, Patent Litigation, 2015

IP Stars, Managing Intellectual Property, 2014-2015

Top 250 Women in IP, Managing Intellectual Property, 2014