Smith_Michael

Michael H. Smith

Michael H. Smith focuses his practice on securing and enforcing intellectual property rights and providing strategic advice on intellectual property matters.

Mr. Smith has extensive experience with intellectual property litigation, investigations, and post-grant proceedings. He has litigated patents, trade secrets, licensing agreements, and issues relating to unfair methods of competition in a wide variety of technology areas, including computing, communications, lasers and plasma physics, medical devices, product design and mechanical systems. Mr. Smith has successfully challenged patents before the United States Patent and Trademark Office (USPTO) to drive favorable results in patent litigation. He has invalidated the challenged claims of multiple patents asserted in related litigation through inter partes review proceedings at the USPTO and has used such proceedings to obtain favorable settlements. 

Mr. Smith also counsels clients on patent and other intellectual property issues and has helped them obtain patent protection in technology areas including wireless communications and standards, alternative energy, medical devices, semiconductors and microprocessors, image processing, data storage and backup, and computer security. He also helps clients license their intellectual property and advises them on intellectual property legislation and policy matters.

Professional Activities

  • Adjunct Professor of Law, Georgetown University Law Center
  • PTAB/TTAB and Parallel Proceedings Subcommittee, Federal Circuit Bar Association's PTAB and TTAB Committee 
  • Planning Committee, PTAB Bar Association Annual Conference

Experience

  • Intellectual Property Litigation and Post-Grant Proceedings

    • Secured favorable settlement of patent claims relating to semiconductor manufacturing following successful IPR hearing before the PTAB 
    • Successfully argued before the PTAB in IPR challenging patent related to data storage
    • Obtained institution of 10 inter partes review proceedings before the USPTO on all challenged claims of six patents related to lasers and plasma light sources
    • Successfully invalidated challenged patent claims relating to web security through inter partes review proceeding before the USPTO
    • Successfully invalidated challenged patent claims relating to knee replacement surgery through inter partes review proceeding before the USPTO
    • Obtained favorable settlement of patent infringement allegations relating to semiconductor manufacturing after challenging more than 300 claims across 10 patents through inter partes review proceedings before the USPTO
    • Successfully represented client in ITC litigation relating to wireless communications patents from investigation institution through trial and presidential review
  • Intellectual Property Procurement, Counseling, and Licensing

    • Obtained strategic patent protection for clients in technology areas ranging from signal processing to alternative energy and medical devices
    • Advised prominent cultural institution on multiple licensing matters involving copyrights and other intellectual property for applications including web and mobile devices

Recognition

  • Named a Washington DC "Rising Star" in the 2019 edition of Super Lawyers

Insights & News

Credentials

  • Education

    • JD, Stanford Law School, 2009

      Associate Managing Editor, Stanford Journal of International Law
    • BS, Electrical Engineering, University of California, Los Angeles, 2005

      summa cum laude
  • Admissions

    • California

    • District of Columbia

    • United States Patent and Trademark Office

Credentials