People

Michael H. Smith

Counsel

Smith, Michael H.

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

Mr. Smith represents clients in a wide variety of intellectual property matters. He has counseled clients on patent and other intellectual property issues and 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. Mr. Smith also helps clients license their intellectual property and advises them on intellectual property legislation and policy matters.

Mr. Smith has extensive experience with intellectual property litigation and post-grant proceedings. Mr. Smith has litigated patents, trade secrets, licensing agreements, and issues relating to unfair 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 also 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. 

Prior to joining the firm, Mr. Smith worked at the San Francisco Public Defender's Office, assisting with the representation of individuals charged with felony offenses.

During law school, Mr. Smith represented low-income clients in civil and criminal matters through the Stanford Community Law Clinic. Mr. Smith also completed internships at the Department of Defense Office of the General Counsel and at the International Atomic Energy Agency, where he worked on issues relating to national security, technology and international law.

Mr. Smith has also worked as an undergraduate researcher at UCLA, studying issues relating to image processing, sensor networking, and the intersection of film and technology.

Recent Highlights

Intellectual Property Litigation and Post-Grant Proceedings

  • 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 and Counseling

  • Currently managing team of attorneys prosecuting portfolio of more than 650 patent applications filed since 2013 for a high-tech client
  • Obtained strategic patent protection for clients in technology areas ranging from signal processing to alternative energy and medical devices

Intellectual Property Licensing

  • Advised prominent cultural institution on multiple licensing matters involving copyrights and other intellectual property for applications including web and mobile devices

Professional Activities

  • PTAB/TTAB and Parallel Proceedings Subcommittee, Federal Circuit Bar Association's PTAB and TTAB Committee 
  • Planning Committee, PTAB Bar Association Inaugural Conference 

Publications & News

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November 20, 2017

Jumping Into the Deep End: Amendment Practice Post-Aqua Products

In this article published by Bloomberg Law's Patent, Trademark & Copyright Journal, authors David Cavanaugh and Michael Smith provide context for issues discussed in the Aqua Products decision, identify potential implications for practitioners, and provide perspectives on next steps for the PTO on motion to amend practice.

August 25, 2016

PTAB's 1st Preliminary Reply And Surreply Under New Rules

In this article published by Law360, Monica Grewal and Michael H. Smith discuss the most recent Patent Trial and Appeals Board rule changes and outline cases that illustrate some of the factors petitioners should consider when requesting leave to file preliminary reply.

June 20, 2016

How the PTAB Treats Pre-Institution Factual Disputes

An article by Don Steinberg and Michael Smith, published in BNA's Patent, Trademark & Copyright Journal, explores how PTAB panels have addressed pre-institution factual disputes and the potential impact of the PTAB's recent rule changes.

April 28, 2016

Broadest Reasonable Interpretation and Claim Amendments in Post-Grant Patent Challenges

Monica Grewal and Michael Smith, in an article published in the American Constitution Society's blog, discuss the recent debate over whether the Patent Office should apply BRI or Phillips constructions in post-grant proceedings.

March 27, 2015

Challenging PTAB Determinations that Proposed Grounds are "Redundant"

An article by David Cavanaugh, James Dowd and Michael Smith, published in the March 25, 2015 edition of Intellectual Property Today

December 17, 2014

USPTO Issues Updated Guidance on Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) has issued updated guidance laying out the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101. 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014).

June 23, 2014

Four Important Strategic Consideration for Inter Partes Review Proceedings

An article by David Cavanaugh, Michael Twomey, Vic Souto, Christopher O'Brien, Heather Schafroth and Michael Smith, published in the May/June 2014 edition of IP Litigator, Vol. 20, No. 3.

March 7, 2014

An Eye on Post-Grant Patent Proceedings

WilmerHale’s Post-Grant Patent Proceedings Group actively shares insights on inter partes review, post-grant review, ex parte reexamination and covered business methods.

December 6, 2013

How To ID Real Parties-In-Interest In Inter Partes Review

An article written by Michael Smith and Michael Twomey, published by Law360 as part of a series of IPR-related articles authored by the firm.

August 13, 2013

WilmerHale Again Tops Contributions in Generous Associates Campaign

For the 11th consecutive year, WilmerHale has surpassed the donations of all participating law firms in the Legal Aid Society’s Generous Associates Campaign, a fundraising campaign run by associates at Washington DC law firms.

Practices

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Education

JD, Stanford Law School, 2009, Associate Managing Editor, Stanford Journal of International Law

BS, Electrical Engineering, summa cum laude, University of California, Los Angeles, 2005

Bar Admissions

California

District of Columbia

United States Patent and Trademark Office

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