Jack R. Smith

Jack has more than 14 years of experience in patent law. Before joining Calfee, he litigated and prosecuted patents for some of the world's leading technology companies in a prominent international firm based in the Bay Area. During that period, he spent considerable time in the firm's Tokyo office. His patent experience relates to a wide variety of technologies, including solid state device technologies, artificial intelligence-based systems, autonomous vehicles, telecommunications equipment, optoelectronics, software for financial services and medical device technologies. He also examined patent applications relating to photovoltaic and other alternative energy technologies for the USPTO from 2006-2007.

Jack previously worked as a researcher at the National Institute of Standards and Technology and the European Synchrotron Radiation Facility. His research experience in applied science spanned semiconductor device physics, optical engineering and optical materials physics, surface science and biomedical materials engineering. He authored 18 scientific publications in peer-reviewed journals.

Jack earned a Ph.D. in materials science and engineering at the University of Pennsylvania, where he received the S. J. Stein Prize for a Ph.D. thesis “representing a superior achievement in the field of new or unique materials or applications for materials in electronics.” He was also awarded numerous fellowships, including a National Research Council Fellowship (National Academies of Science), the Kothe-Hildner Prize for writing in German (University of Michigan) and membership in the National Physics Honor Society ΣΠΣ. He earned his B.S. in physics cum laude from the University of Michigan.

Jack is registered to practice before the USPTO, and he is admitted in New York State and the District of Columbia. 

Honors & Recognitions

S. J. Stein Prize for Ph.D. Thesis

National Research Council Fellowship (National Academies of Science)

Kothe-Hildner Prize for writing in German (University of Michigan)

National Physics Honor Society ΣΠΣ

Education

J.D., Georgetown University Law Center, 2012

Ph.D. and M.S.E., material science and engineering, University of Pennsylvania, 2001

B.S., physics, cum laude, University of Michigan, 1995

Experience

• Part of a team that obtained summary judgment of noninfringement of patents relating to touch screen architecture and $900,000 fee award against patent troll for frivolous litigation in S.D. Cal.
• Represented Fortune 500 and major foreign electronics manufacturers in all stages of IPR before the USPTO.
• Represented clients in multiple international patent infringement suits in district courts (N.D. Cal., S.D. Cal., D. Del., W.D. Pa., N.D. Ga.) and at the International Trade Commission (ITC).
• Prosecuted patent applications in telecommunications, VLSI design, AI systems, computer vision, computer software, electronics, optical and medical device technologies.
• Drafted at least 40 applications in advanced materials, electronics, liquid crystal display (LCD) and medical device technologies and provided litigation support, including drafting arguments for Markman Hearings.
• Evaluated patents for energy cells based on solar technology (photovoltaic or solar cells) as a USPTO patent examiner.

Professional & Community

U.S. Patent and Trademark Office, member
Japan-America Society of Washington, D.C., member

Presentations & Publications

Selected Scientific Publications:

• J.R. Smith and D.A. Bonnell, "Identification of the TiO₂ (110) (2x3) Surface Structure Via a Parametric Approach to STM Image Simulation," Physical Review B. 62, (2000) 4720-5.
• J.R. Smith et al., "Using Surrogate Modeling in the Prediction of Fibrinogen Adsorption onto Polymer Surfaces," Journal of Chemical Information and Computer Sciences 44, (2004) 1088-1097.
• J.R. Smith, et al., "Tertiary Structure Changes in Albumin Upon Surface Adsorption Observed via Fourier Transform Infrared Spectroscopy," Langmuir 25(8), (2009) 4571-8.

Selected Presentations:

• "An Infrared Absorbance Assay for Determining the Conformation of Surface Adsorbed Proteins," American Chemical Society, Boulder, CO, 2006.
• "Molecular-Scale Properties of Biomaterials Relevant to Protein Adsorption and Cell Growth Using Data Mining," World Biomaterials Congress, Sydney, Australia, 2005.
• "Controlled, nm-Scale Oxidation on the Surface of an AlPdMn Quasicrystal" (Oral portion of presentation in French), Colloque Annuel du Groupement Quasicristaux (Annual Colloquium of the Quasicrystal Research Group), Marseilles, France, 2001.