STEFANI E. SHANBERG
Stefani Shanberg is a partner at Wilson Sonsini Goodrich & Rosati, where she specializes in patent litigation with a particular emphasis on defending technology companies against claims of patent infringement from competitors and non-practicing entities. Under the right circumstances, Stefani also represents clients asserting patents against competitors. She has extensive experience in all areas of intellectual property litigation and complex commercial litigation relating to intellectual property. Stefani has handled matters pending before the federal courts, the International Trade Commission, arbitral tribunals, and the Patent Trial and Appeal Board.
Stefani's patent litigation engagements have related to diverse technologies, including smartphone apps, email, network security, wireless communications, and other Internet, hardware, and software products, as well as consumer products. She is currently representing Google, LinkedIn, Netflix, Spotify, Square, and Symantec, among many other clients ranging from venture-backed start-ups to Fortune 100 public companies. Stefani has obtained successful outcomes, often based on creative and novel issues of law, including winning cases at trial, winning cases on summary judgment and on motions to dismiss, prevailing on advantageous claim constructions, winning motions to transfer and stay, and convincing the Ninth Circuit and Federal Circuit Courts of Appeal to affirm favorable lower-court rulings.
Stefani was an associate at Wilson Sonsini Goodrich & Rosati earlier in her career. Prior to rejoining the firm, she was a partner at Perkins Coie. Stefani has served on numerous firm committees. She is the lateral hiring partner for IP litigation and a member of the Compensation Committee. She previously co-chaired the firm’s Associate Career Development Committee and served on the firm’s Partner Nominating and Board Nominating Committees.SELECT REPRESENTATIONS:
- In the Matter of Certain Portable Electronic Devices and Components Thereof (U.S. International Trade Commission): Stefani represented Google, BlackBerry, Lenovo, and Motorola and served as lead trial counsel for all respondents in this ITC investigation involving Google's Play Music application. Stefani successfully petitioned the ITC to utilize its 100-day program to issue an early determination on patent-eligible subject matter. The 100-day program had only been used twice before, and never to test patentability. Following development of an evidentiary record and a hearing, the ALJ issued an early initial determination finding all claims of the asserted patent invalid for failure to recite patent-eligible subject matter. The commission declined to review, and Creative has filed an appeal with the Federal Circuit.
- In the Matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (U.S. International Trade Commission): Stefani represented Google as lead trial counsel in this ITC investigation involving Google Play Music, Google Maps, Google Latitude, YouTube, and DIAL. The investigation raised novel issues relating to the ITC's jurisdiction, the requirement of infringement at the time of importation, and the assertion of indirect infringement in the ITC. Following a week-long trial in February 2014, on September 12, 2014, the ITC issued a determination in favor of Google, including finding non-infringement by all accused products across all asserted patents, invalidity of certain patents, and that complainant Black Hills Media, LLC lacks the required domestic industry. The investigation, outcome, and implications for future ITC cases are further described in The National Law Journal article titled "Important Victory for Google Inc." from September 22, 2014.
- Fernando Morales v. Square, Inc. (W.D. Tex.): Stefani represented Square as lead counsel defending against claims of patent infringement. In December 2014, Stefani argued and won a motion to dismiss based upon invalidity resulting from the patent-in-suit failing to cover patent-eligible subject matter. Stefani also successfully represented Square in responding to Morales’s appeal to the Federal Circuit, with the Federal Circuit affirming the district court order.
- Protegrity v. Square, Inc. (N.D. Cal.): Stefani is lead counsel representing Square in this patent suit relating to data encryption. Protegrity filed a motion to transfer with the Multi-District Litigation panel seeking transfer to the District of Connecticut. In January 2015, Stefani successfully argued on behalf of nine defendants, convincing the panel to centralize the cases in the Northern District of California. Wilson Sonsini Goodrich & Rosati also filed petitions for Covered Business Method patent review, and a successful motion to stay.
- Digital Reg of Texas, LLC v. Adobe Sys. Inc., et al. (N.D. Cal.): Stefani was lead counsel defending Symantec in a patent case related to two patents purporting to cover a method of tracing users who access digital content. Defendants obtained transfer from the Eastern District of Texas to the Northern District of California. Symantec obtained a favorable ruling on summary judgment, after which the case settled.
- E-Contact Technologies, LLC v. Google, Inc. (E.D. Tex.): Stefani defended Google in a patent case brought by E-Contact in the Eastern District of Texas relating to an electronic computer diary patent and accusing Gmail's auto-complete functionality of infringement. Upon construing the claims, the court found the asserted patent invalid for indefiniteness.
- Check Point Software Techs., Inc. v. SRI Int'l, Inc. (N.D. Cal.): Stefani was lead counsel for Check Point in this declaratory judgment action seeking a declaration of non-infringement and invalidity of patents relating to intrusion-detection systems. The case presented unique issues relating to invalidity, non-infringement, and damages. Following a victory at claim construction, the parties agreed to resolve what remained of the case in binding arbitration. Stefani was lead counsel for Check Point at the arbitration, and the arbitrator found in favor of Check Point.
- In the Matter of Certain Ground Fault Circuit Interrupters and Products Containing Same (U.S. International Trade Commission): Stefani represented Leviton in an ITC investigation involving ground fault circuit interrupters. Leviton obtained a rare general exclusion order against GFCI products manufactured in Asia and imported into the United States through multiple channels. Stefani also worked with U.S. Customs and Border Protection to enforce the exclusion order.
- Government Technology Solutions v. Fortinet, Inc. (Judicial Arbitration and Mediation Services, Arbitration): Stefani defended Fortinet in this arbitration brought by a former partner alleging Fortinet improperly terminated the partnership and claiming damages. She successfully tried the case and obtained a judgment in Fortinet's favor on every issue, entitling Fortinet to its attorneys' fees.
- J.D., University of Texas School of Law
- B.A., University of Texas at Austin
With High Honors
- President, ITC Trial Lawyers Association
- Honored as one of the "40 Under 40 Class of 2015" leaders by the San Francisco Business Times
- Named to The Recorder's list of "Women Leaders in Tech Law," September 2014, September 2015, and September 2016
- Honored as one of the "Top 75 Intellectual Property Litigators" in California for 2011, 2012, 2013, 2014, 2015, and 2016 by the Daily Journal
- Recognized as one of the "Top 20 Under 40" attorneys in California for 2011 by the Daily Journal
- Recognized in the 2014, 2015, and 2016 editions of Northern California Super Lawyers
- Organizer and Moderator, "Current Issues in the International Trade Commission Impacting Technology Companies," Wilson Sonsini Goodrich & Rosati, September 17, 2015
- Panelist, "Reforms Targeting Trolls," Samsung-Stanford Patent Trolls and Patent Reform Conference, Stanford Law School, Stanford, California, March 21, 2014
- Speaker, "Non-Practicing Entity Patent Litigation 2013: Plaintiff and Defense Perspectives," Practising Law Institute, San Francisco, California, December 12, 2013
- Moderator, "In-House Counsel Perspectives on ITC Litigation," International Trade Commission Trial Lawyers Association, November 18, 2013
- Speaker, "The U.S. International Trade Commission and Silicon Valley: Forum for Feedback and Discussion," Wilson Sonsini Goodrich & Rosati, September 24, 2013
- Moderator, "In-House Roundtable Discussion: Making the Decision to Go to the ITC: A Discussion of Key Factors and Considerations for Corporate Counsel," The 337 Litigation Summit, June 28, 2013
- Panelist, "The ITC/District Court Interface," Stanford Patent Institutions Summit: Bringing Together the PTO, Federal Circuit, District Courts, and the ITC, Stanford Law School, Stanford, California, May 21, 2012
- Panelist, "ITC Enforcement," Samsung-Stanford Patent Remedies Conference, Stanford Law School, Stanford, California, February 24, 2012
- Panelist, "Jurisdiction Under Section 337," Fourth Annual ABA/ITCTLA Live at the ITC, Washington, D.C., February 15, 2012
- Panelist, "What In-House Counsel & Their Advisors Need to Know about Section 337 Litigation," American Conference Institute, San Francisco, October 18, 2011
- Presenter, "Contemporary Issues in Patent Royalty Damages," Practising Law Institute Conference on Patent Litigation, Washington, D.C., October 5, 2010
- Panelist, "Successfully Litigating Patent Disputes in District Court and in the ITC - 360 Degree View from the Bench, the Boardroom, and the Bar," Silicon Valley IP Law Association, Palo Alto, July 28, 2010
- Co-chair, moderator, and presenter, "Impact of Major Recent Court Cases on Prosecution and Litigation," Law Seminars International conference on Managing Patent Prosecution and Litigation, San Francisco, August 24, 2007
- Panelist, "Developing Effective Multinational Case Strategies," Law Seminars International Conference on Extraterritorial Enforcement of Private Intellectual Property Rights, San Francisco, California, June 26, 2007
- Panelist, "IP Litigation before the International Trade Commission: Navigating the Minefield of § 337 Actions," Strafford Publications teleconference, June 14, 2007
- State Bar of California
- State Bar of Texas
- U.S. District Court for the Central District of California
- U.S. District Court for the Eastern District of California
- U.S. District Court for the Northern District of California
- U.S. District Court for the Southern District of California
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Supreme Court