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Overview

Jack has more than 17 years of experience in patent law. He has litigated and prosecuted patents, and managed domestic and international portfolios, for some of the world's leading technology companies. Prior to joining Calfee, he was a senior patent attorney in a prominent international firm based in the Bay Area, spending considerable time in that 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

  • Washington, D.C. Super Lawyers, D.C. Rising Stars: Intellectual Property Litigation, Intellectual Property, Technology Transactions (2023)
  • S. J. Stein Prize for Ph.D. Thesis, University of Pennsylvania
  • National Research Council Fellowship, National Academies of Science
  • Kothe-Hildner Prize for writing in German, University of Michigan
  • National Physics Honor Society ΣΠΣ, University of Michigan

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

Experience

  • Representing a subsidiary of a publicly traded, Fortune 50 company since 2018, helping to develop the client’s domestic and foreign patent portfolio. We handle the preparation and prosecution of hundreds of the client’s domestic and foreign patent assets covering complex and fast-changing technologies. We have been entrusted to provide patent portfolio development, strategy, and management services for the client as they continue to build their portfolio in a new technology space.
  • Managing the entire patent portfolio directed to radiation oncology therapeutics and analytics technology for a publicly traded, multinational company headquartered on the West Coast. The portfolio encompasses dozens of seminal patents, particularly in the areas of combining imaging and therapeutic techniques in one integrated device. Calfee takes an active role in securing intellectual property rights on new and developing technologies emerging from the client's vigorous research group, including drafting and prosecuting its domestic and international patent applications. Calfee works with the company’s scientists and engineers as well as notable university researchers with whom the company collaborates. Calfee also manages the company’s numerous international applications.
  • Assisting in intellectual property development and serving as a surrogate to in-house IP counsel for a client that engineers semiconductor materials and device technologies. Calfee’s IP attorneys use their in-depth backgrounds in materials science techniques to help the client develop next-generation semiconductor device technologies from the crystal growth state and beyond. In particular, Calfee’s attorneys have helped develop several ideas in semiconductor devices and preparation through early disclosure to patent application preparation.
  • Providing patent infringement and non-infringement opinions and counseling to a publicly traded, American multinational manufacturing corporation with regard to patent-related matters, including potential patent infringement and invalidity as well as patent portfolio management.
  • Drafted and filed several patent applications for prosecution over the past year for an R&D laboratory of a governmental entity and a wholly owned subsidiary of a multi-billion-dollar, multinational manufacturing corporation. These applications relate to detection and defense technologies.
  • Drafting and prosecuting the client’s patent applications and assisting in patent portfolio development and research collaborations with academia for a multi-billion-dollar, international manufacturer. Calfee handles domestic and foreign patent litigation, patent prosecution, and IP strategy for the client, and we also provide management and strategy services for its patent and trademark portfolios and advise on IP strategy.
  • Managing the patent portfolio encompassing dozens of granted patents and pending applications, including jointly developed technology, for a global innovator and manufacturer of temperature sensors, controls, and measurement instrumentation and transport systems. Specifically, Calfee drafts and prosecutes the company’s patent applications. Calfee assisted the client in filing several patent applications for its new commercial system in the U.S. and Asia. Calfee regularly meets with the client to discuss patent and trade secret strategy with respect to innovations across the company’s earth-based and space-based applications.
  • Managing the entire IP portfolio for a natural resources company with facilities across North America, including their patent and trademark portfolios. This includes preparing and prosecuting patent and trademark applications both in the U.S. and internationally, counseling and advising on patent and trademark strategy, including patent and trademark clearance analyses, patentability, agreements, and licensing, as well as competitor portfolio analysis. In 2023, Calfee handled domestic and international patent portfolios in 11 countries, the PCT, and the Madrid Protocol.
  • Representing one of the largest industry associations in the U.S., facilitating data-sharing and drafting data-sharing agreements. We assist in licensing its software and databases, including its provision of forms and software assisting the completion of those forms. Calfee helped the client value the web-based services and information it provides and obtain more favorable terms for licensing.
  • Managing the patent portfolio, including drafting and prosecuting patent applications, for a start-up technology company based in California. The patent portfolio includes many seminal patents in the areas of graphene synthesis and application. We work closely with the client’s Chief Executive Officer and Chief Technology Officer to develop a strategic intellectual property plan. This includes leveraging their existing intellectual property, including several ongoing licensing ventures with companies in California and Asia.
  • Representing a privately held start-up company founded by medical doctors and researchers at top universities on the East Coast, our work includes licensing its data and software both domestically and abroad. Calfee has helped devise the company’s data-sharing strategies and data-sharing agreements, agreements which are often cross-border in nature and relate to both the sharing of the company’s data with other entities as well as other entities providing data to them. Calfee is essentially the client’s legal counsel on all IP matters, much of which involves the development of cutting-edge artificial intelligence-based solutions at the intersection of technology, data, and medical diagnostics and treatments.
  • Serving as litigation counsel for a global company serving the healthcare industry, most notably in its recent lawsuits in the Midwest. Calfee IP attorneys have handled significant portions of a multi-million-dollar lawsuit.
  • Drafted and filed several patent applications over the past year for an independent agency of the U.S. federal government. Most applications are related to satellite communications technology, which is presumed to be one of the most lucrative and licensable branches of the agency’s portfolio. The patents include satellite communications hardware, software, and new materials developed to increase antenna function. In addition, Calfee has drafted and filed applications for the client relating to its power and signal regulation technology in highly compromised environments.
  • Assisting an Asian manufacturing company with its U.S. patent and trademark filings while overseeing its entire global patent and trademark portfolios. Relatedly, Calfee represented the client in two separate International Trade Commission (ITC) investigations. At stake was whether the ITC would block the importation of several of the company’s products. Calfee obtained successful results for the client in both matters. Calfee also successfully defended the company on patent infringement allegations.
  • Serving as global Intellectual Property Lead Counsel for an Asia-based manufacturer, representing the client in district court litigation matters and prosecuting patent applications. The patent work for this client includes patent infringement matters filed in district courts in two states and the Federal Circuit as well as in six inter partes reviews before the Patent Trial and Appeal Board. Additionally, Calfee is the Lead Settlement Counsel for a global series of patent, trade secret, and antitrust cases against the client’s main competitor, and the Calfee team works closely with the client’s overseas counsel. These actions are being heard in a variety of forums in four countries.
  • Part of a team that obtained highly favorable outcomes for clients at the Int’l Trade Commission (ITC) (e.g., ITC Inv. Nos. 337-TA-1290 and 1294).
  • 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 hundreds of applications in advanced materials, autonomous vehicles, artificial intelligence, electronics, organic light emitting diode (OLED), and medical device technologies, among others.
  • Evaluated patents for energy cells based on solar technology (photovoltaic or solar cells) as a USPTO patent examiner.

Professional & Community

Professional & Community

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

Presentations & Publications

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)

News & Events

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Licensed In

  • District of Columbia
  • New York
  • U.S. Patent and Trademark Office

Languages

  • French
  • German
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