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Matthew A. Smith
Partner
Phone: 650 265.6109

Matthew A. Smith represents clients in patent litigation, licensing and analysis matters, as well as complex USPTO matters in the electrical, semiconductor, software and chemical arts. Mr. Smith has particular familiarity with semiconductor fabrication, circuit design technology, wireless standards, location technologies, smart TV, next-generation manufacturing, enterprise-scale software development and large and small molecule chemical processing.

Mr. Smith received his law degree in 1999, graduating first in his class, magna cum laude, from the University of Wisconsin – Madison Law School. He also served as a Managing Editor of the Wisconsin Law Review, was a member of the Moot Court Board, and was elected to the Order of the Coif. He holds two undergraduate degrees: the first in Electrical Engineering from the Universitaet Hannover, in Hannover, Germany, and the second in Geological Engineering from the University of Wisconsin-Madison.

Mr. Smith is particularly known for his expertise in complex USPTO proceedings. The 2013 Intellectual Asset Management “Patent 1000” list selected him as a Nationally Recommended Practitioner in USPTO Post-Grant proceedings and as a Regionally Recommend (Washington, DC metro-area) practitioner for patent litigation, calling him a “client favorite”, “a rising superstar”. He was also selected as a 2013 IP Star by Managing Intellectual Property.

Mr. Smith is the author of the treatise ”Inter Partes Reexamination 2d,” published by West (a Thomson Reuters business), as well as the forthcoming “Inter Partes Review,” also published by West. He is also the author of the e-book “Design Patents” and the chapter “Foreign Discovery” for the BNA “Patent Litigation Strategies Handbook.”

Since 2009, Mr. Smith has served as an Adjunct Professor at the George Washington University Law School in Washington, DC, where he teaches International Comparative Patent Law. From 2003 to 2005, Mr. Smith served as an Adjunct Professor (Lehrbeauftragter) at the Law School of the Universitaet Hannover in Hannover, Germany, where he taught courses on International Patent Law, Commercial Arbitration, International Sales Contracts and U.S. Law.

Mr. Smith speaks fluent German and is familiar with Spanish, Farsi and Japanese.

AdmissionsMr. Smith is a member of the Washington D.C. bar, and is admitted to practice before the Court of Appeals for the Federal Circuit, the United States Patent and Trademark Office, and the Federal District Court for the Eastern District of Texas. He is practicing under supervision in the State of California.
Education

  • Universitaet Hannover, Electrical Engineering
  • University of Wisconsin-Madison, Geological Engineering
  • University of Wisconsin-Madison Law School, 1999 – Order of the Coif

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    Publications
    “Design Patents,” (e-book) Patently-O, Dec. 17, 2012.

    “Critical Analysis of the Inter Partes Review Statute,” Matthew A. Smith, www.grayonclaims.com, Nov. 11, 2011.

    “Overview of The U.S. Patent Law Amendment,” Matthew A. Smith, et al., Journal of the Japanese Group of the AIPPI, Sept. 30, 2011.

    “Patent Reexamination in the United States,” Matthew A. Smith, Journal of the Japanese Group of the AIPPI, April 25, 2011.

    Inter Partes Reexamination 2d,” West (a Thomson Reuters Business), March 26, 2010.

    “The Most Important Federal Circuit Decisions of 2010,” Matthew A. Smith, Intellectual Property Counselor, Feb. 2011.

    “Recent Performance of the CRU in Inter Partes Reexamination,” IP Law360, Jan. 26, 2010.

    “Stays Pending Reexamination,” Patently-O, Nov. 1, 2009.

    “Requester Success Rates In Inter Partes Reexamination,” Patently-O, July 28, 2009.

    “Administrative Patent Validity Determinations If The Proposed US Patent Reform Act Of 2009 Passes,” Matthew A. Smith, Steven B. Maebius, Jon W. Dudas, Intellectual Property Watch Inside Views, March 9, 2009.

    “Top Ten Mistakes Made In Inter Partes Reexamination,” Matthew A. Smith, Steven B. Maebius, BNA Patent, Trademark & Copyright Journal, 77 PTCJ 428, Feb. 27, 2009.

    Inter Partes Reexamination,” Matthew A. Smith, Edition 1E, Jan. 31, 2009.

    “Stay, Suspension and Merger: Considerations for Concurrent Proceedings Involving Inter Partes Reexamination,” Matthew A. Smith, Journal of the Patent & Trademark Office Society, v. 90, No. 9, Sept. 2008.

    “Arbitration of Patent Infringement and Validity Issues Worldwide,” Matthew A. Smith, et al., Harvard Journal of Law and Technology, Vol. 19, No. 2, Spring 2006.

    “Algorithms for Automatic Length Compensation of Busses in Analog Integrated Circuits,” Matthew A. Smith, et al., Proceedings of the 2007 International Symposium on Physical Design, March 2007.

    “Brothers At Arm’s Length: U.C.C. Article 2A, Captive Finance Companies, And The Close-Connection Doctrine,” Matthew A. Smith, 1999 Wis. L.Rev. 1051 (student comment), reprinted in D. Epstein and S. Nickles, “Debtor-Creditor: Creditor Remedies and Debtor Rights Under State and Non-Bankruptcy Federal Law”, West (2009).

    Presentations
    “Inter Partes Review”, Panel Discussion at the Giles Rich Inns of Court, United States Court of Appeals for the Federal Circuit.

    “Inter Partes Review: a 6-Month Checkup,” IPO Chat Channel, Intellectual Property Owners Association Webinar, April 4, 2013.

    “Patent Practice Under The AIA,” Presentation to the Michigan Bar Association IP Section, March 25, 2013.

    “Inter Partes Review,” ACI Paragraph IV Conference Workshop, San Francisco, Dec. 2012.

    “Patent Reform: New Options, New Challenges, New Strategies,” Webinar, Thompson Reuters, Oct. 2012.

    “Comparative Invalidity Procedures (United States and Germany),” Federal Circuit Bar Association Global Fellows Program at the USPTO, Sept. 2012.

    “Post- Grant Review,” Panel presentation to Working Group Session: Assessing The Impact of New PTO Procedures Under the AIA on Paragraph IV Litigation, Annual ACI Paragraph IV Conference, April 23, 2012.

    “Post-Grant Review and Inter Partes Review,” Panel presentation at the Practicing Law Institute, San Francisco, CA, March 20, 2012.

    “The New Patent Trial System in Actual Practice,” Presentation to members of the Japan Intellectual Property Association Japan Patent Attorneys Association, Tokyo and Osaka, Japan, March 5-6, 2012.

    “Post-Grant Proceedings under the America Invents Act,” Connecticut Intellectual Property Law Association, New Haven, CT, Dec. 1, 2011.

    “Inequitable Conduct after Therasense,” IP in the Reform Era, August, 2011, Tokyo, Japan.

    “Representative Rejections,” Presentation at the USPTO concerning proposed rule changes, Alexandria, VA, June 1, 2011.

    “America Invents Act, the New American Patent Law,” Presentation to members of the Japan AIPPI, Tokyo and Osaka, Japan, May 11-12, 2011.

    “Reexamination in the Kappos Era,” IP Counsel Cafe, Palo Alto, CA, April 15, 2010.

    “Parallel Litigation and Reexamination,” Practicing Law Institute, Atlanta, GA, Nov. 9, 2009.

    “Parallel Litigation and Reexamination,” Practicing Law Institute, Atlanta, GA, Nov. 9, 2009.

    “Reexam: The Next Two Years,” San Diego Intellectual Property Law Association, Oct. 8, 2009.

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