Susan Smith handles all phases of patent and trademark litigation, including motions practice, discovery, claim construction, trial, and appeal. In the patent area, she has had particular success against non-practicing entities, achieving dismissal of complaints, orders of transfer to the client's jurisdiction, favorable claim construction rulings, stays of litigation pending reexamination, and early summary judgment. Ms. Smith was named an "IP Star" and one of the “Top 250 Women in IP” by Managing Intellectual Property.
For trademark clients, Susan conducts initial clearances, drafts opinions, prosecutes trademark applications, manages worldwide trademark portfolios, brings and defends enforcement matters, handles opposition proceedings before the Trademark Trial and Appeal board, and litigates in federal court. Susan has served as outside trademark counsel for some of the world's leading brands, including Walmart, Apple, Volkswagen, DISH, Bosch, and the United States Olympic Committee. She has been recognized as a leading lawyer by World Trademark Review 1000 in the areas of "enforcement & litigation" and "prosecution & strategy" (2015). She has also received recognition from The Legal 500 United States in the area of "Intellectual Property – Trademarks: litigation" (2013) and "Intellectual Property – Trademarks: non-contentious" (2014).
Representative Patent Litigation Experience
- After transferring the case from the District of New Jersey, argued early dispositive motion of claim construction and invalidity to Judge Hood of the Eastern District of Michigan, resulting in a grant of summary judgment and dismissal of case. Service Reminder LLC v. Volkswagen Group of America, Inc. (D. NJ, E.D. Mich.)
- Argued claim construction to Judge Love in the Eastern District of Texas, obtaining favorable constructions on several key terms. Norman IP Holdings, LLC v. Lexmark International, Inc. (E.D. Tex.)
- Obtained dismissal of two patents and a grant of summary judgment of non-infringement on the third in the Eastern District of Texas; drafted successful appellate briefs to the Federal Circuit. MHL Tek v. Nissan Motor Co. (E.D. Tex., Fed. Cir.)
- Represented Volkswagen at trial in the Eastern District of Texas and drafted associated appellate briefs, leading to favorable settlement. Affinity Labs of Texas, LLC v. BMW North America, LLC (E.D. Tex., Fed. Cir.)
- Defended Audi AG in an ITC action brought by a non-practicing entity, achieving dismissal of all claims; also handling the district court litigation, obtaining a transfer from D. Del and a stay pending reexamination. Beacon Navigation GmbH v. Audi AG (ITC, D. Del., E. D. Mich.)
- Obtained summary judgment of non-infringement for international cosmetics company. International Flora Technologies, Ltd. v. Clarins U.S.A., Inc. (D. Ariz.)
- Obtained summary judgment regarding ownership of a patent portfolio related to DNA molecular combing technology. Institut Pasteur v. Simon (E.D. Pa.)
- Obtained dismissal with prejudice on behalf of Agilent Technologies, which was affirmed by the Federal Circuit in a seminal decision on standing in patent cases. Sicom Systems v. Agilent Technologies (D. Del., Fed. Cir.)
- Represented Dole in a patent dispute with competitor Fresh Express over lettuce coring technology. Dole Fresh Vegetables, Inc. v. Elioco Produce, Inc. (Sup. Ct. Cal. Monterey.)
Representative Trademark Experience
- For Dish Networks, obtained summary judgment of non-infringement on plaintiff’s claims and obtained summary judgment of infringement on Dish’s counterclaims in a trademark infringement action in the District of Colorado, after a successful motion to transfer the case from the Middle District of Florida.
- Defended Home Shopping Network at trial in the District of Massachusetts against trademark infringement and false advertising claims, resulting in a finding of no damages, which was upheld on appeal to the First Circuit Court of Appeals. Fishman Transducers v. HSN (D. Mass.)
- Obtained summary judgment for engine manufacturer against trademark infringement claims brought by Honda in the Central District of California. American Honda v. Lifan Industries (C.D. Cal.)
- Defended Walmart in a trademark opposition brought by A&P grocery stores regarding Walmart's highly-valued slogan "Save Money. Live Better." Secured a dismissal with prejudice. The Great Atlantic & Pacific Tea Company v. Walmart Stores (T.T.A.B.)
- Handled major re-branding efforts, including the name change of CitiFinancial to OneMain Financial, the rebranding of Extended Stay Hotels, and the name change of AIG to Chartis, which involved a trademark clearance and application filing campaign in 180 countries.
- Managing the trademark portfolio of the U.S. Olympic Committee, including enforcement of trademark rights and opposition proceedings.
- Represented DISH Network in trademark opposition proceedings before the Trademark Trial and Appeal Board against DirecTV, Cox, Comcast, Hulu, and Time Warner. Time Warner, Inc. v. DISH Network, LLC (T.T.A.B.)
- Performing trade dress and trademark clearances for Walmart, including Walmart's repackaging of its Great Value and Equate lines.
- Secunded to Apple, Inc. to serve as in-house trademark counsel, working on U.S. and foreign trademark clearance and prosecution matters.
- Obtained temporary restraining orders in three jurisdictions to stop the importation of counterfeit Stolichnaya vodka; assisted federal authorities with the criminal prosecution and conviction of the importer. Allied Domecq Spirits & Wine USA, Inc. v. Beira Intl. (D. Nev., S.D. Fla., C.D. Cal., D. Mass.)
- Represented plaintiff Bosch in trademark litigation against Illinois Tool Works over the FUSION brand. Robert Bosch LLC v. Illinois Tool Works, Inc. (N.D. Ill.)
- Successfully represented Mattel/Fisher-Price in a trademark infringement action over the Magna Doodle toy. Pilot Corp. v. Fisher-Price (D. Conn.)
- Represented the World’s largest wine importer in a trademark infringement action and TTAB proceeding concerning the Arbor Mist brand. Constellation Brands v. Arbor Hill Associates (W.D.N.Y.)