Mr. Smith’s primary areas of practice are patent law and intellectual property law.

Bar Admissions

Admissions

• Pennsylvania State Bar
• United States Patent and Trademark Office
• United States District Courts for the Western and Middle Districts of Pennsylvania
• United States Court of Appeals for the Federal Circuit

Education

• University of Pittsburgh, B.S.E.E., 1977
• Duquesne University School of Law, J.D., 1987

Significant Accomplishments

Prosecution and enforcement of patents, trademarks and copyrights in the United States and internationally

Representing a national technology lab in government interest patent procurement

Representing a variety of technology companies in securing patent protection for inventions in the electrical, mechanical, and computer hardware and software fields

Representing clients in patent infringement litigation, including:

Defending online grocer against a claim of infringement of a patent for electronic transmission of order and delivery information

Representing multiple defendants against non-practicing entities for infringement of a portfolio of delivery notification methods and systems

Representing a generic pharmaceutical company in Hatch Waxman litigation pursuant to Abbreviated New Drug Applications [ANDA] filed with the FDA

Representing clients in various matters involving so-called “patent trolls” asserting internet and business method patents against e-commerce clients

Representing clients in patent and trademark litigation before federal administrative tribunals and the United States Patent and Trademark Office Board of Patent Appeals and Interferences, Patent Trial and Appeals Board, Trademark Trial and Appeals Board, and International Trade Commission

Licensing of patented technology and software

Drafting patent infringement, noninfringement, invalidity and freedom-to-operate opinions

As an electrical engineer, designing electrical power and control systems for large data operations center, coal mine, nuclear power plant, ceramic and metallurgical furnaces, and manufacturing facilities

Mr. Smith has obtained many patents for technology clients, for a partial listing of patents that he successfully prosecuted, click here.

• Drafting Patent Acquisition Agreements

  By William Smith |April 2022