PARTNER
Mr. Smith joined McCormick Barstow from a global law firm in 2016. He focuses his practice on federal civil litigation, with special emphasis on intellectual property. Mr. Smith also handles intellectual property licensing, counseling, and due diligence matters.
Mr. Smith helps clients protect their intellectual property in the courtroom and in the board room. His extensive experience with federal intellectual property litigation in Silicon Valley now serves clients in multiple industries around the Central Valley.
Mr. Smith handles disputes involving copyrights and trademarks, including by representing companies in infringement cases in federal court, before the U.S. Trademark Trials & Appeals Board, and in cease and desist communications. He also enjoys working with his clients to register their trademarks and develop copyright portfolios.
In matters involving trade secret and patent protection, Mr. Smith draws on his Ph.D.-training as a scientist to craft case strategies around the strengths of his clients’ technologies. He has recent experience for Valley clients in the agricultural, biofuel, and irrigation industries. He has been involved with all aspects of a patent case from pre-filing diligence through post-trial motions, including an intensively-watched jury trial involving an antibody therapeutic.
Mr. Smith also serves as local counsel in the Fresno Division of the Eastern District of California.
Mr. Smith is admitted in California and before the United States District Courts for the Eastern, Northern, Central, and Southern Districts of California. While attending Berkeley Law, Mr. Smith externed in the chambers of Chief Justice Ronald George on the Supreme Court of California, and received the American Jurisprudence Award in California Constitutional Law in 2009.
Juris Doctor, 2010
University of California, Berkeley, School of Law
American Jurisprudence Award, California Constitutional Law
Law & Technology Certificate, Berkeley Center for Law & Technology
Ph.D., Cellular & Molecular Pathology, 2003
University of California, Los Angeles
Bachelors of Science, Biochemistry, 1997
University of California, Davis
Student Commencement Speaker
Complex litigation in federal court, emphasizing disputes involving trademarks, copyrights, trade secrets, and patents. Intellectual property counseling, licensing, and due diligence matters.
Mr. Smith is a Member of the Board of Directors of the Federal Bar Association, San Joaquin Valley Chapter; the American Intellectual Property Law Association; the Intellectual Property Law Section of the California Lawyers Association; and the Merced County Bar Association.
In November 2018, voters in northeast Merced and surrounding Merced County areas elected Mr. Smith to the Merced City School District Board of Education on which he now serves as a Trustee. During his campaign, Mr. Smith personally spoke with community and educational groups around Merced, and led a grassroots campaign built on returning a parent and community voice to Merced’s elementary school board. Mr. Smith also serves on the board of the Merced Symphony Association and helps organize age-appropriate concerts for 4th graders in Merced and Los Banos. He and his wife support education, arts, and health programs, including by recently endowing a scholarship fund at the College of Biological Sciences at UC Davis, his and his wife’s alma mater, and co-leading their daughter’s Camp Fire troop.
Speaking Engagements
Intellectual Property Tutorial, Mike and Renee Child Institute for Innovation and Entrepreneurship, UC Davis, and UC Merced Venture Lab in Modesto, October 2, 2018.
Intellectual Property for New Ventures, UC Merced Venture Lab, April 12, 2018.
How to Use Civil Procedure to Kill Copyright Trolls, McCormick Barstow internal MCLE presentation, September 13, 2017.
Publications and Articles
I Know Nothing! In the Ninth Circuit, Only Good Faith Users of a Registered Trademark Who Have No Knowledge of the Senior User’s Prior Use May Hang Onto Their Brand. Co-authored with Justin Donner. Published on mccormickbarstow.com on June 28, 2018.
There’s No Place Like Home: U.S. Supreme Court Tethers Patent Suits to the Defendant’s State of Incorporation. Co-authored with Tim Buchanan. Published on mccormickbarstow.com on May 24, 2017.
Pfizer, Inc. v. Lee: Time Between Original and Corrected Restriction Requirement Nets No Further Patent Term Adjustment NATIONAL LAW REVIEW (Feb. 25, 2016).
Akebia Therapeutics, Inc. v. FibroGen, Inc.: Statute Permits Domestic Discovery for Foreign Opposition Proceedings NATIONAL LAW REVIEW (Aug. 28, 2015).
When a Divisional Is Not a Divisional: No Section 121 Safe Harbor for Reissue Patentee Who Retroactively Omitted New Matter NATIONAL LAW REVIEW (July 31, 2015).
Generic Drug Product Liability: An Emerging SCOCA Issue? SCOCABLOG (Mar. 2, 2015).
No Declaratory Jurisdiction Without Biosimilarity Application on File with FDA LEXOLOGY (Jan. 29, 2015).
Patentee May Cancel but May Not Substitute Claims when Proposed Amended Claims Are Not Shown To Be Unobvious NATIONAL LAW REVIEW (Nov. 27, 2014).
Preliminary Injunction Ordered Based on Appellate Claim Construction NATIONAL LAW REVIEW (Sept. 30, 2013).
No Anti-Suit Injunction Where Foreign Arbitration Controls Resolution of Licensing Dispute NATIONAL LAW REVIEW (June 30, 2013).
Federal Circuit Holds Claim Construction Turns on Patentee Disclaimer NATIONAL LAW REVIEW (June 2, 2013).
Co-Author with David Carrillo, California Constitutional Law: The Religion Clauses 45 USF L.R. 689 (2011).
Mr. Smith has been selected for inclusion in the Super Lawyers Rising Stars list (2019-2020) and Northern California Super Lawyers list (2023).