1ST SILICON VALLEY-BASED ADMINISTRATIVE PATENT JUDGE FOR THE USPTO JOINS RIMON

Continuing to grow its intellectual property practice, Rimon, P.C. has added Neil A. Smith as a partner in its San Francisco and Palo Alto offices.

Prior to joining Rimon, Mr. Smith was a partner at several prominent firms, including IP boutique firm Limbach & Limbach. He most recently served as the first Administrative Patent Judge on the Patent Trial and Appeal Board for the US Patent & Trademark Office’s Silicon Valley Satellite Office. The PTAB handles appeals within the Patent Office and a host of post-grant patent proceedings, Post Grant Reviews, and Business Method Patent challenges, which are increasingly important in patent enforcement and defense strategy. Under the American Invents Act, defendants or those accused of infringing patents have the opportunity to go before the PTAB and challenge the validity of the patents.

Mr. Smith is joining a strong IP team at Rimon. Over the last three years, the firm has greatly enhanced its Intellectual Property practice, bringing aboard patent litigator Paul Beattie in Seattle, John Hintz in New York, technology lawyers Frank Vargas and Fred Tsien in Silicon Valley, technology transaction lawyers Paul Economon in Northern Virginia, Mark Mirkin in South Florida, Carl Sherer in Tel Aviv, and Sandy Sterret in Washington, DC. The firm also added Stanford Fellow in Law, Science & Technology Robert H. Lee as a Technologist-in-Residence in Palo Alto.

Neil Smith
Neil Smith

Since its inception six years ago, Rimon has been widely recognized as an innovator in the legal field, offering full service teams of highly-experienced attorneys with the ability to shift and adapt to client needs. Rimon’s corporate, litigation, intellectual property, tax and private client attorneys work as a close-knit team throughout its 14 offices internationally. The Financial Times recognized Rimon on its list of most innovative law firms and the firm’s managing partners were both named ‘Legal Rebels’ by the American Bar Association Journal and have been speakers at Harvard and Stanford Law Schools on innovations in the practice of law.

In addition to his high-level IP practice for clients, Mr. Smith uses his judicial experience and decades of IP litigation expertise to serve as a special master, mediator, and arbitrator to help resolve legal and discovery disputes. He is available, with conference and caucus rooms, to help with alternative dispute resolution of patent and IP disputes. He serves on several ADR panels, including the US District Court for the Northern District of California and the Federal Circuit Court of Appeals Mediation Panel. He also does dispute resolution arbitration for the World Intellectual Property Organization.

Over many years of practice in Northern California, Mr. Smith has represented many well-known companies, such as Levi Strauss, Visa, Sega, The Sharper Image, Toys R Us, Playboy, Adidas, Reebok, Louis Vuitton, Gucci, Westinghouse Solar, and Memorex, as well as many other large and small technology and consumer product companies. He has successfully litigated many cutting-edge IP and new-technology cases. He litigated the first case dealing with metatags as trademark infringement for client Playboy. He litigated all the way up to the Ninth Circuit, the first case dealing with the Internet technique of “framing” and inline linking. He brought, for client Sega, the first case involving indirect copyright infringement/contributory copyright infringement, long before the famous Napster case in the California courts. He also filed one of the earliest cases involving the Google advertising AdWords program.

Mr. Smith has been particularly involved in issues involving counterfeiting and the liability of foreign companies for intellectual property claims made for the acts of foreign companies that take place outside the United States, including the International Trade Commission, U.S. Customs, and injunctions and damages. His landmark case for Reebok in the Ninth Circuit set the stage for extraterritorial enforcement of the Lanham Trademark Act, and ex-parte seizures and the attachment of assets. He filed an amicus brief for the American Intellectual Property Law Association in the U.S. Supreme Court dealing with enforcement of U.S. IP rights against importations infringing intellectual property rights.

He has received several honours, having been named a Best Lawyer for over twenty-five years. Other accomplishments include being featured in one of the highest band ratings in the Chambers Lawyers Directory for Intellectual Property and being named amongst the World’s Leading Experts in Patent Law and World’s Leading Experts in Trademark Law. He was the first recipient of the Patent and Trademark Office Rossman Award and has been named a Super Lawyer in intellectual property.

Mr. Smith began as patent attorney at the U.S. Atomic Energy Commission, and served as a law clerk to Judge Giles Rich on the predecessor to the Federal Circuit. He is a graduate of Columbia College, Columbia Engineering, and Columbia Law School, and holds a Masters of Law from George Washington Law School.

“We are thrilled to have Neil as a member of our team,” said Michael Moradzadeh, Rimon, P.C.’s CEO. “His expertise in intellectual property law, including his involvement in early, seminal cases in the field, is invaluable to our growing IP practice and touches upon all the sectors we serve including finance and technology.”

“I am extremely impressed with Rimon, as a new technology law firm,” said Mr. Smith. “Named by the ABA as a “Legal Rebel,” they provide the high quality legal representation that today’s clients expect. Rimon includes a nationwide community of excellent attorneys who have the legal competence and understanding of their clients’ business to provide efficient and effective representation. I look forward to being a part of the Rimon team.”