Shamita Etienne-Cummings | White & Case LLP International Law Firm, Global Law Practice
Shamita Etienne-Cummings
Shamita Etienne-Cummings

Shamita Etienne-Cummings

Partner, Washington, DC, Silicon Valley

T +1 202 626 3695

T +1 650 213 0345

E setienne@whitecase.com

in LinkedIn profile

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

Shamita is the Executive Partner of the Firm’s D.C. office and also leads the 337 International Trade Practice. Her focus is technology, particularly telecommunications networks, semiconductor devices, and mobile computing for both technology companies and financial institutions.

Her clients benefit from her exceptionally deep knowledge of this field, which is based on her previous work as an electrical engineer and program manager for GTE Corporation in the mobile telecommunications industry. Shamita designed and implemented wireless communication and satellite systems, and was responsible for the development, deployment and financial viability of various new communications products and services.

Shamita understands how to balance the business needs and the legal responsibilities of her clients in order to achieve positive results, whether negotiating licenses or litigating in the ITC or federal courts across the US. She is an accomplished trial lawyer, and has served as lead counsel for many successful trials. Shamita has also co-authored an amicus brief on behalf of the Patent and Trademark Section of the Bar Association of the District of Columbia in 'Festo v. SMC'.

In addition to her patent practice, Shamita is an adjunct professor of law at George Washington University School of Law in Washington, DC where she teaches a patent litigation practice course and has been recognized for her long service to the legal community.

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

Google, Inc.

Shamita defends Google in various patent litigations throughout the U.S., including the following ITC investigations:

Certain 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 favourably 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 favourably for Google, in February 2014. 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 favourably 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.

 

Walmart eCommerce

Shamita defends Walmart's global eCommerce division in various patent litigation matters throughout the U.S., including courts in the Eastern District of Texas, Central and Northern Districts of California and Delaware.

 

Panasonic Corporation

Shamita defends Panasonic in various patent litigation matters involving consumer electronic technology throughout the U.S., including courts in the Eastern District of Texas, Central and Northern Districts of California, Western District of Pennsylvania, Eastern District of Virginia and the ITC.

 

GlobalFoundries
Zond LLC v. GlobalFoundries U.S. Inc. et al. (D. Ma.)

Defended GlobalFoundries in a complex patent case in which her team invalidated all 275 claims across all seven asserted patents.

Flamm v. GlobalFoundries U.S. Inc. et al. (ND. Cal.)

Defending GlobalFoundries in a complex patent case concerning three semiconductor machine patents.

 

JP Morgan Chase
Maxim Integrated Products, Inc. v. JPMorgan Chase & Co. et. al. (W.D. Pa.)

Defended JPMorgan Chase 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 JPM Chase's mobile banking applications. The case settled favourably for JPM Chase after Maxim was forced to withdraw certain infringement allegations.

 

American Express
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. Resolved the case favourably for American Express as a result of aggressive positions to invalidate the asserted patents.

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. (SDNY)

Lead counsel for American Express in a district court action involving patents directed to encryption. Resolved the case favourably for American Express after filing IPRs on all asserted patents.

 

DynCorp International LLC
Dyncorp International LLC, V. AAR Airlift Group, Inc.

Representing DynCorp in a trade secret and corporate espionage case litigation after prevailing before 11th Circuit Court of Appeals.

Salser et al v. Dyncorp International, Inc. et al (E.D. MI)

Defended DynCorp against allegation of intentional infliction of emotional distress related to the 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: CA: AIPLA’s 2017 Spring meeting,
San Diego

"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", 13 June 2012, Hsinchu, Taiwan and 15 June 2012, Taipei, Taiwan: 2012 Symposium on International Legal Strategies for Taiwan Technology Companies: A Focus on Intellectual Property and Antitrust Issues

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

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

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

Awards & Recognition

The World's Leading Patent Practitioners, IAM Patent 1000: 2013 - 2015

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