Foley & Lardner LLP

Matthew A. Smith

Partner

Matthew A. Smith is a partner with Foley & Lardner LLP in the firm’s IP Litigation Group and serves as chair of the firm’s Patent Office Trials Group. He counsels clients on patent litigation and pre-dispute matters involving the electrical, software and chemical arts. Mr. Smith has particular familiarity with semiconductor fabrication and design technology, wireless standards, location technologies, smart TV, enterprise-scale software development and chemical processing.

Mr. Smith is an adjunct professor at the George Washington University Law School, where he teaches international patent law. Prior to joining Foley, Mr. Smith served for three years as an adjunct professor (Lehrbeauftragter) at the law school (juristische Fakultaet) of the Universitaet Hannover in Hannover, Germany, where he taught courses relating to intellectual property, international contracts, commercial arbitration and United States law. He has been chosen as a 2013 IP Star by Managing Intellectual Property.

Mr. Smith is well-known for his work in administrative litigation to challenge patents before the United States Patent and Trademark Office and its interaction with patent litigation before the courts. He has advised clients on approximately 100 reexamination proceedings, and is lead counsel in a number of early inter partes review proceedings with all claims accepted for trial.

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 (a Thomson Reuters business). He is also the author of the e-book “Design Patents” and the chapter “Foreign Discovery” for the BNA “Patent Litigation Strategies Handbook.”

Mr. Smith graduated first in his class, magna cum laude, from the University of Wisconsin – Madison Law School in December 1999. 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.

Mr. Smith holds two undergraduate degrees; one in electrical engineering from the Universitaet Hannover; and one in geological engineering from the University of Wisconsin – Madison. He also has significant technical training in organic and inorganic chemistry.

Mr. 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.

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

Some of his public presentations and publications include:

  • “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.
  • "Design Patents," (e-book) Patently-O, Dec. 17, 2012.
  • "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.
  • “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.
  • “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.
  • “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.
  • “America Invents Act, the New American Patent Law,” Presentation to members of the Japan AIPPI, Tokyo and Osaka, Japan, May 11-12, 2011.
  • “The Most Important Federal Circuit Decisions of 2010,” Matthew A. Smith, Intellectual Property Counselor, Feb. 2011.
  • "Reexamination in the Kappos Era," IP Counsel Cafe, Palo Alto, CA, April 15, 2010.
  • "Recent Performance of the CRU in Inter Partes Reexamination," IP Law360, Jan. 26, 2010.
  • "Parallel Litigation and Reexamination," Practicing Law Institute, Atlanta, GA, Nov. 9, 2009.
  • "Stays Pending Reexamination," Patently-O, Nov. 1, 2009.
  • "Reexam: The Next Two Years," San Diego Intellectual Property Law Association, Oct. 8, 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).

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