Steven D. SmitOf Counsel
Steve is a licensed patent attorney and experienced trial lawyer. He is also a trained mediator and arbitrator. He currently serves as an arbitrator for the Financial Industry Regulatory Authority (FINRA), and has been appointed by the World Intellectual Property Organization (WIPO) to serve on its international list of neutrals.
Steve has over 25 years of experience in handling lawsuits involving intellectual property disputes in Federal and State courts for both Plaintiffs and Defendants, including issues involving patent infringement, trademark and trade dress infringement, copyright infringement, trade secret misappropriation, domain name disputes, cyber-squatting, internet piracy, and unfair competition.
Steve also routinely assists clients in a wide variety of other arbitration and litigation matters, ranging from commercial disputes between companies to helping domestic and foreign whistleblowers investigate and report illegal activity in violation of the False Claims Act (FCA) and the Foreign Corrupt Practices Act (FCPA).
In addition to his active litigation and arbitration practice, Steve routinely counsels clients regarding Intellectual Property matters and represents clients before the United States Patent and Trademark Office (USPTO) in proceedings involving trademark registration, opposition and cancellation proceedings.
- Admitted to bar, 1988, Texas.
- Licensed to practice before the United States Patent & Trademark Office.
- Appointed to International List of Neutrals for resolution of disputes before the World Intellectual Property Organization (WIPO).
- Appointed to List of Arbitrators for the Financial Industry Regulatory Authority (FINRA).
- Educations: Dordt College (B.A., 1979, concentration in Biology and Chemistry); University of Texas (J.D., with high honors, 1988). Order of the Coif, Grand Chancellor, Teaching Quizmaster, Texas Law Review.
Intellectual Property Enforcement and Litigation
- Representation of inventor of multiple patents in the fields of interactive media and user interfaces. This representation includes prosecuting federal lawsuits for patent infringement against various publicly-held companies.
- Representation of an inventor in his fraud claims against his former employer and its lawyers over the rights to a patent on acoustic devices.
- Representation of Oil Field Equipment Manufacturer in patent infringement suit by competitor.
- Defense of clients sued for patent infringement by Non-Practicing Entities (NPEs).
- Representation of clients in arbitration proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP).
- Representation of a cargo monitoring business in obtaining a permanent injunction in its lawsuit against a competitor for misappropriation of trade secrets and unfair competition.
- Representation of a provider of benefit plans in obtaining a permanent injunction in its lawsuit against a competitor for deceptive advertising and copyright infringement.
- Representation of a textile treatment business in its patent infringement and trade secret litigation against several large clothing manufacturers.
- Representation of a Mexican pharmaceutical firm in a lawsuit against a large international pharmaceutical company for damages incurred as result of defendant’s wrongful injunction in Mexico. The suit, which involved issues of Mexican intellectual property law, was litigated in federal court in Pennsylvania.
- Representation of a Mexican consulting company in a federal lawsuit in Arizona against a U.S. competitor that hired away employees and misappropriated trade secrets.
- Representation of several software companies in their lawsuits against competitors for misappropriation of trade secrets and unfair competition.
- Representation of various companies in their investigation and litigation against former employees for trade secret misappropriation and violations of non-compete agreements.
- Representation of designer of ornamental doors in multiple lawsuits against various infringers of the client’s designs.
commercial litigation and arbitration proceedings
- Representation of foreign whistleblowers in reporting violations of the Foreign Corrupt Practices Act (FCPA) by a large public company to the Securities and Exchange Commission and the Department of Justice.
- Representation of whistleblowers in filing Qui Tam litigation against companies violating the False Claims Act.
- Representation of numerous Mexican nationals in filing claims in federal court in Georgia for violations of federal anti-racketeering statutes (RICO), arising from a complex land fraud scheme. See Maiz v. Virani, 253 F.3d 641 (11th Cir. 2001) (affirming $24 Million RICO judgment). Steve then assisted the clients in their efforts to set aside fraudulent transfers and collect the Judgment through various proceedings in the United States, Switzerland and Mexico.
- Representation of a Clinical Research Organization (CRO) in its arbitration with a pharmaceutical company over the failure of a Phase 3 Clinical Trial for pain medication.
- Representation of a Diagnostics Company in its arbitration over royalties owing under a Joint Development Agreement for patented RNA controls for molecular diagnostic assays.
- Representation of an international broker of food products in a lawsuit for fraud and breach of contract against a nationally-known supplier that failed to provide 60,000 tons of chicken parts for shipment to Russia.
- Representation of a client in litigation against various foreign and domestic parties over a fraud scheme involving exotic animals.
- Representation of a land developer in a lawsuit for fraud and breach of fiduciary duty against a real estate broker who secretly participated in buying a large commercial tract of property that the client had intended to purchase.
- Represented a shareholder in a lawsuit against fellow shareholders about control of the family business. After a two-week trial, the jury awarded actual and punitive damages against other shareholders.
LITIGATION FOR TRUSTEES AND RECEIVERS
- Assisted government-appointed receivers including FSLIC, RTC and FDIC in collection actions, in the investigation of claims against bank directors and officers, and in lender liability litigation.
- Represented a bankruptcy trustee as special counsel in its litigation to set aside preferential and fraudulent transfers made by the debtor after the entry of a multi-million dollar judgment.
- Represented a court-appointed receiver in efforts to collect a judgment in excess of $100 million against a perpetrator of a massive fraud scheme involving foreign currency exchange.
- American Bar Association (Dispute Resolution; Litigation; Patent, Copyright and Trademark Sections)
- State Bar of Texas (Dispute Resolution; Litigation; Intellectual Property Law Sections)
- Austin Intellectual Property Association
- International List of Neutrals for the World Intellectual Property Organization (WIPO)
- List of Arbitrators for the Financial Industry Regulatory Authority (FINRA)
AWARDS AND HONORS
PUBLICATIONS AND PRESENTATIONS
- “Make a Copy for the File” – Copyright Infringement by Attorneys, Baylor Law Review, Vol. 46, 1994.