John G. Smith

Patent Prosecution, Portfolio Management and Counseling

John plays a counseling role in connection with the patent portfolios he manages, providing advice and opinions that help clients understand how their products should be designed to avoid infringing on other patent-owner rights. He also assists clients with drafting claims in light of competitor products to help ensure strong protections for the full scope of their inventions. When client patents have been challenged by way of inter partes review (IPR) or reexamination proceedings, John has led response teams and has been successful to date in avoiding the cancellation of any claims; in certain cases, he was able to procure additional and even broader patent claims. John also has helped clients take full advantage of their patent rights by way of reissue proceedings.

Patent Defense and Enforcement Matters

John frequently responds to and defends against assertions of patent infringement and has applied successful strategies over the years that have resulted in highly favorable licensing arrangements and settlements for clients. When retained in such matters, John leverages his deep knowledge of post-grant proceedings, substantive fluencies in patent law, and master-level skills in negotiations and litigation practice to develop and implement a plan that is designed to yield the best-available resolution for clients that minimizes cost and avoids business disruption. When litigation is necessary, John is experienced in building and strategizing with teams that have successfully defended cases before the International Trade Commission (ITC), U.S. district courts and the U.S. Court of Appeals for the Federal Circuit. A growing area of John’s practice is the filing and execution of post-grant proceedings, in which his arguments on behalf of clients often result in expedient and cost-effective settlements of patent challenges, if not the outright cancellation of the underlying asserted patent claims.

Given the rapidly changing and competitive environments in which technology companies now operate, John remains focused on implementing processes and strategies designed to deliver high-quality patent services as cost-effectively as possible. Through these efforts, John has helped prosecute — and has overseen the issuance of — thousands of valuable patents for major international and domestic clients over the span of his career.

Japan Experience and Focus

In the late 1990s, John was the resident intellectual property attorney in the Tokyo office of his prior U.S. law firm. Today, he is a frequent presence in Japan for client meetings and negotiations. He also trains broadly on the implications of U.S. intellectual property law for Japanese and other companies. John regularly conducts seminars in Japan and in the U.S. for Japanese and other corporate representatives and law firms and has authored a guide to U.S. patent procedure for legal practitioners in Japan.

Prior Experience

John began his professional career as a student engineer with the 3M Company. He later became a patent examiner at the U.S. Patent and Trademark Office (USPTO) and then was a patent agent and patent attorney with law firms in the Washington, D.C., area. These experiences, as well as his electrical engineering training, have informed his patent prosecution and portfolio management practice, which includes overseeing patent programs for electrical, computer, telecommunications, optics and semiconductor clients based in the United States, Japan and elsewhere.

Personal Interests

John enjoys running, bicycling, skiing and scuba diving.