Shawnna M. Yashar

Partner

Washington, D.C.
T +1.202.861.1518
F +1.202.861.1783

Overview

Shawnna Yashar performs patent litigation and counsels clients through intellectual property and patent-related matters. Having been a law clerk for Judge Plager of the United States Court of Appeals for the Federal Circuit and with a strong background in technology, including five years working as a software engineer and licensing patent portfolios for the United States Navy and Johns Hopkins University, Shawnna brings a unique understanding of the law, technologies and industries to her litigation practice. She is thoughtful of her clients' needs and develops thorough, creative solutions to intellectual property matters by utilizing federal district court proceedings, the Patent Trial and Appeal Board (PTAB) and the International Trade Commission (ITC) to strategically defend against and enforce patent infringement claims. Shawnna also regularly counsels clients on government contract and Court of International Trade appeals before the Federal Circuit. 

Select Experience

  • Counsel for major equipment manufacturer in engine products liability litigation based on diesel generator sets operated in Brazil. Companhia Energtica Potiguar v. Caterpillar Inc. et al. (S.D. Fla. 2015-present).
  • Defending major autodial visual equipment supplier in ITC investigation concerning semiconductors. Certain Semiconductor Devices and Consumer Audiovisual Products Containing the Same, 337-TA-1047.
  • Representing defendant in patent litigation concerning guards placed on motor final drives. Freeman Equip, Inc. v. Caterpillar Inc. (N.D. Ill. 2016-present).
  • Regularly advises commercial and nonprofit entities regarding technology transfer and licensing negotiations with universities and federal agencies.
More »

Experience

  • Counsel for major equipment manufacturer in engine products liability litigation based on diesel generator sets operated in Brazil. Companhia Energtica Potiguar v. Caterpillar Inc. et al. (S.D. Fla. 2015-present).
  • Defending major autodial visual equipment supplier in ITC investigation concerning semiconductors. Certain Semiconductor Devices and Consumer Audiovisual Products Containing the Same, 337-TA-1047.
  • Representing defendant in patent litigation concerning guards placed on motor final drives. Freeman Equip, Inc. v. Caterpillar Inc. (N.D. Ill. 2016-present).
  • Regularly advises commercial and nonprofit entities regarding technology transfer and licensing negotiations with universities and federal agencies.
  • Performs opinion work for a business method and software client, including design-around, invalidity and software opinions.
  • Represented a client in an e-commerce patent litigation. Petitioned the PTAB to institute two Covered Business Method trials. PTAB granted the petitions and oral argument was held in November 2014. Both patents were found invalid by the PTAB in February 2015. The district court granted a stay of the proceedings pending the outcome of the PTAB trials. TransUnion LLC, et al. v. Search America, Inc., et al. (D. Minn.; PTAB CBM2013-00037/00038).
  • Represented a defendant/counterclaim plaintiff in an eight-patent litigation related to heavy-construction and earth-moving vehicles. Case resulted in settlement after a favorable Markman ruling for client. ESCO Corp. v. Caterpillar Inc., et al. (D. Nev. 2012 to 2015).
  • Counsel for the patent owner in Abbreviated New Drug Application litigation relating to Solaraze, which is indicated for actinic keratosis. Fougera Pharms., Inc. and Jagotec AG v. Tolmar, Inc. (D. N.J. 2012).
  • Represented an appellee before the Federal Circuit in a reexamination appeal where the PTAB affirmed the patentability of the claims. The Federal Circuit affirmed the PTAB decision. Citrix Systems, Inc. v. 01 Communique Lab., Inc., Appeal No. 2014-1240 (Fed. Cir. 2014).
  • Defended an accused infringer through trial against patent claims related to DVD scene selection menus. Patent Harbor, LLC v. Audiovox Corp. (E.D. Tex. 2011-2012).
  • Defended an accused infringer against patent claims related to computer forensics technologies before the ITC and obtained a finding of no violation after a trial in August 2012. Certain Computer Forensic Devices and Products Containing the Same, 337-TA-799.
  • Represented a client in a large, complex patent litigation, including three lawsuits related to 39 patents in the data storage and networking arena. NetApp v. Sun Microsystems (N.D. Cal. 2008-2010).
  • Represented a technology corporation in an ITC hearing regarding matters related to digital image processing. Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof, 337-TA-703.
  • Represented a client in an ITC proceeding related to antivirus software. Systems for Detecting and Removing Viruses or Worms, Components Thereof, and Products Containing Same, 337-TA-624.

Recognitions and Memberships

Recognitions

  • Washington, D.C., Super Lawyers "Rising Star" (2014 to 2017)

Memberships

  • Giles S. Rich American Inn of Court
  • American Intellectual Property Law Association (AIPLA)
  • ChIPs
  • Federal Circuit Bar Association
  • Court of Federal Claims Bar Association
  • International Trade Commission Trial Lawyers Association (ITCTLA)

Community

  • Falls Church Community Service Council: Executive Board Member

Emerging Issues

Prior Positions

  • United States Naval Research Laboratory and Johns Hopkins University Technology Transfer Offices: Licensing Associate
  • Committee for Economic Development Digital Connections Council: Legal Research Consultant
  • Law Clerk for the Honorable S. Jay Plager of the United States Court of Appeals for the Federal Circuit

Admissions

  • U.S. Court of International Trade, 2014
  • U.S. Court of Appeals, Federal Circuit, 2011
  • U.S. Court of Federal Claims, 2012
  • U.S. District Court, Eastern District of Texas, 2012
  • U.S. District Court, Eastern District of Virginia, 2010
  • U.S. District Court, Central District of Illinois, 2013
  • U.S. Patent and Trademark Office, Registration No. 59,624
  • District of Columbia, 2008
  • Virginia, 2007

Education

  • J.D., The George Washington University Law School, 2007, with honors
  • B.S., Chemical Engineering, University of Illinois, 1999