Susan A. Smith

Susan A. Smith

Susan A. Smith has successfully represented firm clients in intellectual property matters involving core technologies, innovations and brands. As counsel to Walmart, Apple Inc., Mercedes-Benz USA, Volkswagen Group, Audi AG, Home Shopping Network, and the Tampa Bay Rays, Ms. Smith regularly advises some of the world’s leading Fortune 500 companies on matters relating to intellectual property litigation and trademark prosecution. Her litigation practice focuses primarily on patent and trademark actions in federal courts. She also counsels clients in the availability and protection of trademarks, as well as the enforcement of trademark rights before the U.S. Trademark Trial and Appeal Board. Additionally, she manages clients’ worldwide trademark portfolios, working with foreign counsel to protect and enforce trademark rights abroad. Ms. Smith is recognized by World Trademark Review 1000 as a leader in trademark contentious and non-contentious matters.

Recently, Ms. Smith has implemented large-scale rebranding efforts on an expedited basis. High-profile projects that she has handled include the name change of AIG to Chartis Insurance, which involved a trademark filing campaign of clearance in 180 countries, and the name change of CitiFinancial, the largest consumer loan company in the United States, to OneMain Financial.

Representative cases include:

MHL Tek, LLC v. Nissan Motor Co., case no. 2:07-cv-289-TJW (2010). Achieved favorable rulings on behalf of Volkswagen AG, Audi AG, and Volkswagen Group of America, Inc. in a patent infringement action concerning three patents for tire-pressure monitoring systems. Obtained motion to dismiss on two patents, and a non-infringement ruling on the third patent.

The Great Atlantic & Pacific Tea Company, Inc. v Walmart Stores, Inc. opp. no. 91180897 (2008). Played a significant role in successfully defusing a trademark opposition challenge brought by A&P grocery stores regarding Walmart’s highly valued slogan “Save Money. Live Better.” Secured a dismissal with prejudice in this action.

Institut Pasteur v. Simon, case no. 2:98-cv-727 (2005). Secured a favorable summary judgment ruling on behalf of clients Institut Pasteur and the Centre National de la Recherche Scientifique regarding ownership of a portfolio of 13 patents related to DNA “molecular combing” technology. The ruling confirmed that the world-renowned French research institutions are the rightful owners of the entire portfolio of patents.

Sicom Systems, Ltd. v. Agilent Technologies, case no. 2005-1066 (2005). Obtained dismissal with prejudice on behalf of Agilent Technologies. Upon appeal of this matter, the U.S. Court of Appeals for the Federal Circuit affirmed the district court's decision to dismiss with prejudice holding that Sicom did not have standing to maintain the action because it did not have "all substantial rights" in the patent.