Nicole Smith is an accomplished trial lawyer who has successfully tried and litigated high-stakes intellectual property cases for more than 20 years. Her trial practice focuses on patent litigation in a broad range of industries, including medical devices, media and entertainment (video compression, video editing, and DVD/Blu-ray technologies), consumer electronics, and software. She also has experience litigating trademark, copyright, trade secret, and related intellectual property matters. In addition, she has tried multiple criminal cases to favorable verdicts with the Los Angeles City Attorneys' Office.
Nicole has represented such clients as C. R. Bard, Mitsubishi, and Motion Picture Association (MPA) member movie studios, as well as individual inventors. Prior to joining Jones Day in 2019, Nicole spearheaded the damages portion of a case in a trial against Microsoft (Amado v. Microsoft Corporation) on behalf of inventor Armando Amado, who alleged that the software giant had infringed his patents on spreadsheet software he designed. Mr. Amado was ultimately awarded $16 million. Nicole also was a key member of the trial team representing Anaheim-based Odetics in a patent infringement lawsuit against StorageTek Corporation. The trial team won a $70 million verdict, and after prevailing on appeal, settled the case for $100 million.
Nicole is a member of the Los Angeles Intellectual Property Law Association and the American Bar Association.
The following represents experience acquired prior to joining Jones Day.
FastVDO (District of Delaware). Successfully represented nine media and entertainment companies in patent infringement lawsuits involving video compression. An early summary judgment motion brought the case to a close.
Multimedia Patent Trust v. Disney, et al. (Southern District of California). Represented several large media and entertainment companies in patent infringement lawsuit involving video compression. Obtained favorable settlements.
Bard Peripheral Vascular v. AngioDynamics, Inc. (District of Delaware). Represented Bard Peripheral Vascular in a patent litigation lawsuit concerning three patents relating to implantable power-injectable port products.
Mahurkar v. C. R. Bard, Inc. (Northern District of Illinois). Represented defendant in a patent litigation lawsuit concerning hemodialysis catheters. The case settled favorably for client on the eve of trial.
Palomar Medical Techs. & The General Hospital Corp. v. Syneron Corp. (District of Massachusetts). Represented defendant in a patent infringement lawsuit involving laser hair removal devices (both before and after defendant's acquisition by Candela). The case settled on terms favorable to the client.
TracBeam v. Verizon Wireless, et al. (Eastern District of Texas). Represented Verizon Wireless in defending patent infringement action related to cellular location-based platforms.
MONKEYMedia v. Buena Vista Home Entertainment, Inc. (Western District of Texas). Represented numerous entertainment companies in patent infringement case involving DVD and Blu-ray technology. After invalidating more than 300 patent claims at the PTO, the case settled on favorable terms.
Patent Harbor v. Fox, et al. (Eastern District of Texas). Represented seven media and entertainment companies in patent infringement lawsuit involving DVD and Blu-ray authoring technologies. 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 lawsuit involving web-based product design software. Prevailed on summary judgment of noninfringement 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 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. 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 the lawsuit, 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.
- The University of Chicago (J.D. 1994); University of Illinois (B.A. summa cum laude 1991; Phi Beta Kappa)
- California and Illinois