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Dan Smith

Dan Smith

Counsel | Post-Grant Proceedings
617.646.8038 Dan.Smith@WolfGreenfield.com LinkedIn Profile

Education

  • BS, Computer Science, University of Texas at Austin
  • JD, Southern Methodist University, Dedman School of Law, cum laude

Key Technologies

  • Software
  • Wireless Communications
  • Mobile Devices
  • Medical Diagnostics
  • Streaming Media
  • Telemedicine
  • Semiconductor Fabrication

Practice Groups

Admitted to Practice

  • US Court of Appeals for the Federal Circuit
  • US Patent and Trademark Office
  • Texas

Location

  • Remote

Overview

Dan Smith focuses his practice on post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes review (IPR), post-grant review (PGR), and patent reexamination proceedings. He has extensive experience representing both petitioners and patent owners, and has successfully represented multiple Fortune 20 companies and leading technology companies in high-profile patent cases, including more than 130 PTAB trials. Dan’s PTAB experience involves patents spanning diverse technical areas, including pulse oximetry, mobile device video capture, touchscreen devices and user interfaces, wireless communications, telemedicine, semiconductor fabrication, hybrid vehicle drivetrains, and heated flooring systems. Dan was named as a Top 25 PTAB practitioner by Patexia in 2022 and 2023.

In addition to his PTAB practice, Dan regularly assists clients in other areas, including patent prosecution, portfolio development and management, and licensing.

Prior to becoming an attorney, Dan worked for over a decade as a lead software architect and engineer in the mobile/telecommunications industry. He is a named inventor on a US patent related to measuring quality of service in a telecommunications network.

Experience

Representative Cases

  • Apple Inc. V. Masimo Corporation (IPR2020-01524, -01526, -01536, -01537, -01521, -01538, -01539, -01523, -01713, -01714, -01715, -01716, -01733, -01737, -01722, -01723, IPR2021-00193, -00195, -00208, -00209) – Representing Apple as Petitioner, secured final written decisions invalidating all claims in 18 out of 20 cases challenging Masimo patents. Claim interpretations advanced and adopted in remaining 2 cases enabled Apple to prevail on non-infringement in co-pending litigation. Target patents were directed to various pulse oximetry techniques, and were asserted against the Apple Watch.
  • TikTok Inc. V. Triller, Inc. (IPR2021-00099) – Representing TikTok as Petitioner, invalidated a patent directed to capturing a video synchronized with an audio recording that was asserted by a competitor.
  • T-Mobile US, Inc. / Nokia Solutions V. Huawei Tech. Co. Ltd. (IPR2017-00673, -00698, -00592, -00593) – Representing Huawei as Patent Owner, obtained institution denials on 4 IPR petitions challenging a patent directed to techniques for metering data packet delivery in a wireless communications system.
  • One World Technologies, Inc. V. The Chamberlain Group, Inc. (IPR2016-01774, -01772, IPR2017-01546) – Representing Chamberlain as Patent Owner, obtained institution denials on 4 IPR petitions challenging a patent directed to techniques for operating automatic garage door openers.
  • Apple Inc. / Microsoft Corporation V. Evolved Wireless LLC (IPR2016-01228, -01229) – Representing Apple and Microsoft jointly as Petitioner, invalidated a patent related to random access channel (RACH) communications in wireless communications systems. Patent was asserted against RACH communication procedure utilized by the LTE standard.
  • Apple Inc. V. Chestnut Hill Sound Inc. (IPR2015-01465, IPR2016-00794) – Representing Apple as Petitioner, invalidated two patents related to music streaming on mobile devices. Patents were asserted against the iPhone and iPod in district court, where plaintiff sought half a billion dollars in damages.
  • American Honda Motor Co., Inc. V. SIGNAL IP, INC. (IPR2015-01002, -01004, -01005) – Representing Honda as Petitioner, invalidated one asserted patent leading to favorable settlement of corresponding litigation and two other IPR challenges. Target patents were related to aspects of hybrid vehicle drivetrain systems.

Recognition

  • Patexia: “Top 25 PTAB Practitioner” (2022, 2023)
  • Managing Intellectual Property: “Top 50 PTAB Practitioner” (2020)

Publications

  • Co-Author, “What is the PTAB and Who are the Judges?” IP Law Essentials (2020)
  • Co-Author, “Oral Hearings at the PTAB: What to Expect,” IP Law Essentials (2020)
  • Co-Author, “What Discovery is Available during Inter Partes Review?” IP Law Essentials (2020)
  • Co-Author, “When Should I File an IPR during Litigation?” IP Law Essentials (2020)
  • Co-Author, “Challenging Patents through Post-Grant Proceedings: What Are Your Options?” IP Law Essentials (2020)
  • Speaker, “The Two Sides of the Coin in Post-Grant Practice: Petitioner and Patent Owner Estoppel,” Webinar (2018)
  • Co-Author, 2016 Post-Grant Annual Report (2017)
  • Speaker, “Post-Grant for Practitioners | Post-Grant Review (PGR) Proceedings are Gaining Momentum,” Webinar (2017)
  • Author, “PTAB Issues Only Its Third Post-Grant Review Decision to Date, Invalidates Storage Container Tracking Claims Directed to Ineligible Subject Matter” (2016)
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