Greg's practice focuses in litigation and trial of intellectual property matters. Greg has first-chaired numerous trials before judges and juries, in federal and state courts, covering a wide range of subject matters and legal areas. He has tried cases involving patents, trademarks, copyrights, unfair competition, breach of contract, professional negligence, civil rights, criminal defense, and personal injury. All commercial cases Greg has tried have resulted in a verdict or judgment for his client, and when appealed, have been affirmed.
Greg has also played a key role in patent licensing negotiations which have resulted in tens of millions of dollars in patent license royalties for CLG's clients.
In patent matters, Greg's work has covered a diverse range of technologies, including medical devices, software, hardware, chemical compositions, optics, machine vision, bar coding, fax machines, satellite attitude control systems, automobile navigation, plastics, mechanical systems, artificial intelligence, wireless communication, distributed electronic systems, chemical processes, and athletic gear.
Education
George Washington University Law School (J.D., with High Honors, 1989)
Kettering University (formerly General Motors Institute) (B.S. Electrical and Computer Engineering, 1986)
Bar Admissions
Supreme Courts of Illinois and Virginia
Trial Bar, United States District Court for the Northern Districts of Illinois
United States Courts of Appeals for the Seventh Circuit
United States Patent and Trademark Office
Notable Trials and Other Work
$4 Million Jury Verdict
Alexander Binzel Co. v. Nu-Tecsys, Inc. (N.D. Ill.). Represented Nu-Tecsys in trademark infringement case brought by ABC. Nu-Tecsys asserted counterclaims for violation of Lanham Act, unfair competition, and tortious interference with prospective economic advantage. Case won. Jury verdict of non-infringement of trademark and award of $4 million on Nu-Tecsys' counterclaims.
Jury Verdict Including Punitive Damages
Court Award of Attorney Fees
JCW Investments., Inc. v. Novelty, Inc., (N.D. Ill.). Represented plaintiff JCW (d/b/a Tekky Toys) in action for copyright infringement, trademark mark infringement and unfair competition involving plaintiff's PULL MY FINGER® line of farting plush dolls. Case won. Jury verdict on all counts, and awarding punitive damages on state law claims. Court awarded attorney fees. On appeal, affirmed in all respects.
Patent Enforcement and Licensing
DataQuill Limited. Following successful enforcement litigation, client's patent portfolio concerning mobile Internet access from handheld devices has been licensed to most of the relevant industry.
Domain Name Litigation
Weber-Stephens Products, Co. v. Armitage Hardware (N.D. Ill.), with parallel case before the World Intellectual Property Organization (D-00-1087). Represented Armitage Hardware. In WIPO case, defeated Weber-Stephens’ action to transfer domain “webergrills.com” to trademark holder. In federal court action, all of plaintiff’s claims were dismissed with prejudice.
Summary Judgment of Invalidity and Non- Infringement
Maesers v. UPS, Inc. (D. Ariz.). Represented UPS in patent infringement action brought by alleged inventors of a portable terminal device. Plaintiffs sought more than $250 million in damages. Claim dismissed on summary judgment in favor of UPS.
Summary
Judgment Of
Invalidity: Best Mode
Etak v. Navigation Technologies (N.D. Cal.).
Represented Navigation Technologies in a patent infringement action regarding vehicle navigation systems. On summary judgment, court determined the accused device did not infringe most of the asserted claims and held other claims invalid.
Lemelson Defense
Lemelson "Machine Vision" Litigation (D. Nev.). Represented General Motors in patent infringement action involving seventeen patents alleged to cover machine vision systems, bar code scanning systems, high-energy beam processing systems and semiconductor manufacturing processes.
Trial Victory
American Optical Corp. v. Pittway Corp., (E.D. N.Y.). Represented Pittway in patent infringement case alleging infringement of snap-action hinges in bench trial. Complete verdict for defense on infringement, validity, laches and estoppel.
Summary Judgment of Invalidity
Finnsugar Bioproducts, Inc. v. Amalgamated Sugar Co., LLC (N.D. Ill.). Represented Amalgamated in patent infringement case alleging infringement of three patents on chromatographic separation of beet molasses.
The Federal Circuit's Modern Doctrine of Equivalents in Patent Infringement, 29 Santa Clara L. Rev. 901, 921 (1989) (cited in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 573 (Fed. Cir. 2000).
Greg Smith
