Nicole M. Smith

Nicole M. Smith

Partner

Los Angeles, (213) 892-5582

Education

University of Illinois (B.A., 1991)
University of Chicago Law School (J.D., 1994)

Bar Admissions

Illinois
California

Nicole Smith is an accomplished trial lawyer in the firm’s Intellectual Property Group, and co-chair of Morrison & Foerster’s E-Discovery Task Force. When faced with high-stakes intellectual property disputes, clients appreciate Ms. Smith’s ability to master their technologies and products quickly, as well as her particular talent in explaining those technologies in clear and compelling oral arguments to judges and juries. Ms. Smith’s significant trial and litigation experience encompasses patent, trademark, copyright, trade secret, and related intellectual property matters. She has also tried multiple criminal cases to favorable verdicts with the Los Angeles City Attorneys’ Office.

Ms. Smith’s clients come from a broad range of industries, including semiconductors, software, media and entertainment (video editing and DVD/Blu-ray technologies), video games, consumer electronics, and medical devices. Her court victories have included representation of large corporations, as well as single inventors. She has been successfully trying and litigating cases for almost 20 years for clients such as C. R. Bard, Verizon Wireless, Mitsubishi, and MPAA member movie studios.

In a 2005 trial against Microsoft, Amado v. Microsoft Corporation (C.D. Cal.), Ms. Smith spearheaded the damages portion of the case on behalf of Armando Amado, an inventor from Guatemala who alleged that the software giant had infringed his patents on spreadsheet software he designed. Following a jury verdict of infringement, Mr. Amado was awarded $6.1 million, which was affirmed on appeal. After a second appeal relating to post-verdict sales, Mr. Amado’s total award increased to $16 million. Ms. Smith also was a key member of the trial team representing Anaheim-based Odetics, Inc. in a patent infringement suit against StorageTek Corporation. The trial team won a $70 million verdict, and after prevailing on appeal, settled the case in 1999 for $100 million.

Medline Industries, Inc. v. C. R. Bard, Inc.
(Northern District of Illinois). Representing C. R. Bard in patent litigation suit concerning three patents related to urinary catheters.
C. R. Bard, Inc. v. AngioDynamics, Inc.
(District of Delaware). Representing C. R. Bard and Bard Peripheral Vascular in patent litigation suit concerning three patents relating to implantable power-injectable port products.
Mahurkar v. C. R. Bard, Inc.
(Northern District of Illinois). Represented defendant in patent litigation suit concerning hemodialysis catheters; the case settled favorably for our client on the eve of trial.
Palomar Medical Techs. & The General Hospital Corp. v. Syneron Corp.
(District of Massachusetts). Represented defendant in patent infringement suit involving laser hair removal devices (both before and after defendant’s acquisition by Candela). The case settled on terms favorable to the client.
FastVDO
(District of Delaware). Currently representing nine media and entertainment companies in patent infringement suits involving video compression.
TracBeam v. Verizon Wireless, et al.
(Eastern District of Texas) Currently represent Verizon Wireless in defending patent infringement action related to cellular location-based platforms.
MONKEYMedia v. Buena Vista Home Entertainment, Inc
(Western District of Texas). Currently representing numerous entertainment companies in patent infringement case involving DVD and Blu-ray technology. Filed reexamination requests as to three of six patents; all claims stand rejected. The court granted defendants’ motion to stay pending reexamination.
Patent Harbor v. Fox et al.
(Eastern District of Texas). Represented seven media and entertainment companies in patent infringement suit involving DVD and Blu-ray authoring technologies, and obtained favorable settlements.
Multimedia Patent Trust v. Disney et al.
(Southern District of California). Represented several large media and entertainment companies in patent infringement suit involving video compression, and obtained favorable settlements.
Thomson Licensing (Technicolor)
(Central District of California and International Trade Commission Inv. No. 337-TA-617). Represented third party Thomson Licensing as lead attorney through trial in ITC action brought by Funai Electric Corp. against numerous digital television makers to enforce patents purchased from Thomson. After a two-week trial, the judge issued a ruling in favor of an exclusion order, which the Commission affirmed.
eTool Development v. National Semiconductor
(Eastern District of Texas). Represented National Semiconductor (purchased by Texas Instruments during the case) in a patent infringement suit involving web-based product design software. Prevailed on summary judgment of non-infringement on December 27, 2011, on the eve of trial, and the case settled shortly thereafter.
Cheetah-Omni v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi Digital Electronics Inc. in a patent infringement case involving DLP® televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction; judgment was upheld on appeal.
ICHL v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi in a patent infringement case involving heat sink assemblies in televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction, and plaintiff withdrew its appeal.
Genoa Color Technologies v. Mitsubishi Electric Corp., et al.
(Southern District of New York). Represented several Mitsubishi entities in a patent infringement action involving color display technology in rear-projection DLP® televisions and projectors. The court granted Mitsubishi’s motion to stay pending reexamination of Genoa’s patent at the PTO, and the case settled thereafter on very favorable terms for Mitsubishi.
Printless Previews v. Twentieth Century Fox et al.
(Central District of California). Represented seven media and entertainment companies in patent infringement action relating to post-production and editing methods, including high-definition previews of movies. Case stayed pending reexamination prepared by our firm. Final rejection of all claims affirmed by the Board of Patent Appeals and then the Federal Circuit.
Guardian v. Mitsubishi Digital Electronics America, Inc.
(Southern District of California). Represented Mitsubishi in a patent infringement action involving V-chip technology. After successful reexamination requests resulted in the invalidation of most of the claims of the patents in suit, obtained a very favorable settlement for Mitsubishi.
Amado v. Microsoft Corporation
(Central District of California). Represented individual software inventor in patent infringement trial against Microsoft Corp., resulting in a jury verdict for the inventor and an award of $6.9 million, which was affirmed by the Federal Circuit on appeal. After a second appeal relating to post-verdict sales, Mr. Amado’s total award increased to $16 million.
Odetics, Inc. v Storage Technology Corp.
(Eastern District of Virginia). Represented plaintiff Odetics in patent infringement trial, resulting in a jury verdict of willful infringement and an award of $70.6 million. The case ultimately settled for $100 million.
Medline Industries, Inc. v. C. R. Bard, Inc.
(Northern District of Illinois). Representing C. R. Bard in patent litigation suit concerning three patents related to urinary catheters.
C. R. Bard, Inc. v. AngioDynamics, Inc.
(District of Delaware). Representing C. R. Bard and Bard Peripheral Vascular in patent litigation suit concerning three patents relating to implantable power-injectable port products.
Mahurkar v. C. R. Bard, Inc.
(Northern District of Illinois). Represented defendant in patent litigation suit concerning hemodialysis catheters; the case settled favorably for our client on the eve of trial.
Palomar Medical Techs. & The General Hospital Corp. v. Syneron Corp.
(District of Massachusetts). Represented defendant in patent infringement suit involving laser hair removal devices (both before and after defendant’s acquisition by Candela). The case settled on terms favorable to the client.
FastVDO
(District of Delaware). Currently representing nine media and entertainment companies in patent infringement suits involving video compression.
TracBeam v. Verizon Wireless, et al.
(Eastern District of Texas) Currently represent Verizon Wireless in defending patent infringement action related to cellular location-based platforms.
MONKEYMedia v. Buena Vista Home Entertainment, Inc
(Western District of Texas). Currently representing numerous entertainment companies in patent infringement case involving DVD and Blu-ray technology. Filed reexamination requests as to three of six patents; all claims stand rejected. The court granted defendants’ motion to stay pending reexamination.
Patent Harbor v. Fox et al.
(Eastern District of Texas). Represented seven media and entertainment companies in patent infringement suit involving DVD and Blu-ray authoring technologies, and obtained favorable settlements.
Multimedia Patent Trust v. Disney et al.
(Southern District of California). Represented several large media and entertainment companies in patent infringement suit involving video compression, and obtained favorable settlements.
Thomson Licensing (Technicolor)
(Central District of California and International Trade Commission Inv. No. 337-TA-617). Represented third party Thomson Licensing as lead attorney through trial in ITC action brought by Funai Electric Corp. against numerous digital television makers to enforce patents purchased from Thomson. After a two-week trial, the judge issued a ruling in favor of an exclusion order, which the Commission affirmed.
eTool Development v. National Semiconductor
(Eastern District of Texas). Represented National Semiconductor (purchased by Texas Instruments during the case) in a patent infringement suit involving web-based product design software. Prevailed on summary judgment of non-infringement on December 27, 2011, on the eve of trial, and the case settled shortly thereafter.
Cheetah-Omni v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi Digital Electronics Inc. in a patent infringement case involving DLP® televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction; judgment was upheld on appeal.
ICHL v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi in a patent infringement case involving heat sink assemblies in televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction, and plaintiff withdrew its appeal.
Genoa Color Technologies v. Mitsubishi Electric Corp., et al.
(Southern District of New York). Represented several Mitsubishi entities in a patent infringement action involving color display technology in rear-projection DLP® televisions and projectors. The court granted Mitsubishi’s motion to stay pending reexamination of Genoa’s patent at the PTO, and the case settled thereafter on very favorable terms for Mitsubishi.
Printless Previews v. Twentieth Century Fox et al.
(Central District of California). Represented seven media and entertainment companies in patent infringement action relating to post-production and editing methods, including high-definition previews of movies. Case stayed pending reexamination prepared by our firm. Final rejection of all claims affirmed by the Board of Patent Appeals and then the Federal Circuit.
Guardian v. Mitsubishi Digital Electronics America, Inc.
(Southern District of California). Represented Mitsubishi in a patent infringement action involving V-chip technology. After successful reexamination requests resulted in the invalidation of most of the claims of the patents in suit, obtained a very favorable settlement for Mitsubishi.
Amado v. Microsoft Corporation
(Central District of California). Represented individual software inventor in patent infringement trial against Microsoft Corp., resulting in a jury verdict for the inventor and an award of $6.9 million, which was affirmed by the Federal Circuit on appeal. After a second appeal relating to post-verdict sales, Mr. Amado’s total award increased to $16 million.
Odetics, Inc. v Storage Technology Corp.
(Eastern District of Virginia). Represented plaintiff Odetics in patent infringement trial, resulting in a jury verdict of willful infringement and an award of $70.6 million. The case ultimately settled for $100 million.

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