Overview
Brandon Smith is a partner in our Orange County office. His practice is focused on high-stakes litigation and dispute resolution matters. Mr. Smith has handled all types of contentious IP matters, including numerous patent and trademark cases, as well as copyright, trade secret, and data privacy matters. Mr. Smith has practiced in a wide range of jurisdictions, including numerous federal district courts, multiple U.S. Courts of Appeal, and the U.S. International Trade Commission.
Mr. Smith represents clients in a wide range of technical fields, and has particular experience in cases involving consumer products, such as footwear, apparel, watches, eyewear, and many others. Mr. Smith also leverages his biomedical engineering background to assist medical device clients in matters involving technologies such as bypass syringes, portable oxygen concentrators, prosthetics, CPAP machines, heart valves, and more.
Mr. Smith currently serves as the chair of Knobbe Martens’ Education Committee, and is the editor-in-chief for the Federal Bar Association of Orange County’s newsletter.
In addition to his litigation experience with Knobbe Martens, Mr. Smith has served as a Deputy District Attorney with the Orange County District Attorney’s Office through the Trial Attorney Partnership program where he successfully prosecuted criminal matters, including a jury trial, as a first chair trial attorney.
Mr. Smith received his J.D. from the University of San Diego School of Law where he was Editor-in-Chief of Volume 52 of the San Diego Law Review. Mr. Smith earned his Bachelor’s of Science in Biomedical Engineering at California Polytechnic University, San Luis Obispo.
Education
- University of San Diego School of Law (USD) (J.D., 2015), magna cum laude, Order of the Coif, Editor-in-Chief - San Diego Law Review Volume 52
- California Polytechnic State University - San Luis Obispo (CAL POLY) (B.S. Biomedical Engineering, 2012), Tau Beta Pi
Representative Matters
In the Matter of Certain Electronic Eyewear Products and Components Thereof (2024)
Defended Luxottica Respondents against allegations of infringement by their Ray-Ban Stories and Ray-Ban Meta electronic eyewear. Case resulted in a settlement.
lululemon v. Peloton (C.D. Cal. 2022)
Counsel for lululemon in patent and trade dress dispute. Case resulted in a successful settlement.
Aliign Activation Wear, LLC v. lululemon (C.D. Cal. and 9th Circuit)
Successfully defended lululemon in trademark infringement suit filed in connection with lululemon’s ALIGN yoga product collection. Obtained summary judgment for no infringement, including no forward confusion, reverse confusion or initial interest confusion between the parties’ products, which avoided the plaintiff’s damages claims exceeding several hundred million dollars. The Ninth Circuit affirmed the district court’s decision on appeal.
Breathe Technologies v. Inogen et al. (C.D. Cal., N.D. Cal., and Arbitration Proceedings)
Defended Inogen and its employees against allegations of patent infringement, incorrect inventorship, breach of contract, and unfair competition in connection with Inogen’s acquisition of New Aera Inc. After Inogen successfully compelled the bulk of the causes of action to arbitration, the parties resolved their disputes.
Vincent Systems v. Össur hf and Össur Americas, Inc. (C.D. Cal.)
Defended Össur against patent infringement claims by Vincent Systems. After Össur served invalidity contentions, the parties resolved the dispute.
In the Matter of Certain Child Carriers and Components Thereof, USITC Investigation No. 337-TA-1154 (ITC 2020)
Defended Infantino in a patent case involving two patents. After an evidentiary hearing, the ALJ issued a Final Determination of non-infringement and invalidity.
In re Certain Sleep Disordered Breathing Treatment Systems and Components Thereof, USITC Investigation No. 337-TA-1136 (ITC 2019):
Represented Fisher & Paykel Healthcare in an ITC action against a competitor. After a claim construction hearing, the competitor agreed to end its years’ long global litigation against the client as part of a global resolution without payment.
In re Certain Sleep Disordered Breathing Treatment Systems and Components Thereof, USITC Inv. No. 337-TA-1022 (ITC 2017).
Represented Fisher & Paykel Healthcare in action before the International Trade Commission relating to patient interfaces for sleep apnea therapy. After favorable evidentiary ruling for Fisher & Paykel Healthcare, patentee unilaterally withdrew its complaint and terminated the investigation. 82 Fed. Reg. 27724.
Recognition
Awards & Honors
- Recognized by The Legal 500 “United States” for Patents: Licensing (2024)
- Named to Benchmark Litigation “40 & Under” List (2023-2025)
- Recognized by The Legal 500 “United States” for Trademark Litigation (2022)
News & Insights
Articles
“Developments at the PTAB: What Practitioners Can Learn From Vidal’s 2023 Sua Sponte Director Reviews,” New York Law Journal (2024)
The Fed. Circ. In July: Reissue Claims And The Original Patent, Law360 (2023) (PDF)
“Further Developments in Patent Venue and How They May Affect Calif. Corporations,” The Recorder (2018)
“Shifting Venue for Patent Infringement Lawsuits,” Orange County Business Journal, Intellectual Property Supplement (2017)
The Patentability of Human Embryonic Stem Cells in Light of Myriad, 96 Journal of Patent and Trademark Office Society 113 (2014)
Author, KnobbeMedical.com Blog
- PREVAIL Act Proposes Significant Changes PTAB Proceedings
- J&J Acquires Abiomed for $16.6 Billion
- WTO Agrees to Partial Patent Waiver for COVID-19 Vaccines
- First-in-Human Porcine Heart Transplant Performed
- Baxter Acquires Hillrom in the Largest Medical Device Acquisition of the Year
- Medtronic Gains FDA and CE Mark Clearance for LINQ II
- MaxQ-AI Files for IPO
- First Thrombectomy Device Cleared for Pulmonary Embolisms
- MHRA Updates Guidance on Healthcare Apps as Medical Devices
- FDA Clears First Apple Watch Medical Device Accessory
- EU Reaches Deal on New Medical Device Regulations
- FDA Issues Draft Guidance for the Use of UHMWPE in Orthopedic Devices
- Allergan Acquires AqueSys for $300 Million
Author, Litigation Blog
- An Award of Attorneys’ Fees and Costs under 35 U.S.C. §285 Does Not Preclude Sanctions Pursuant to the Court’s Inherent Authority
- Deleted Definition “Highly Significant” for Claim Construction
- The Intersection of FRAND Obligations and Anti-Suit Injunctions
- Tying Claimed Technological Advancements to Specific Technological Methods Is a Winning POV on Patent Eligibility
- The On-Sale Bar Still Applies to the Products of Secret Processes
- Look Both Ways: A Two-Way Test to Determine Whether Pre- And Post-bar Date Claims Are Materially Different Applies in Interference Proceedings
- Minority Owners of a Trademark Registrant, Who neither Use nor Possess Ownership Rights in the Mark, Cannot Seek Cancellation of Third-Party Trademark Registrations Based on Likelihood of Confusion
- Claim Construction When Uniformly Referring to Aspects of an Invention
- Routine Optimization of Result-Effective Variable Can Bridge Gaps in Prior Art
- Weighty Considerations: Objective Indicia of Non-obviousness
- Objective Evidence in Determining Obviousness
- Not So Obvious: Substantial Evidence Review of Factual Issue in an Obviousness Claim
- It’s Not the Size of the Chamber That Matters, It’s How You Describe It in the Intrinsic Record
- Collateral Estoppel Is Applicable in IPRs When the Question of Patentability Is the Same
- A Skilled Artisan Cannot “At Once Envisage” Each Member of a Large Class
- “Army of Citation Footnotes Crouching in a Field of Jargon” Fails to Withstand Summary Judgment
- Controlling Your Own Destiny: Patent Owner Unilaterally Moots Appeal to Preserve Favorable PTAB Determination
- Federal Circuit Rejects Claim Construction That Contradicts Dependent Claims
- Litigants Face a High Hurdle When Seeking Fees for Unadjudicated Claims
- Ignoring Antecedent Basis in the Claim Results in Reversal of Patentability Determination
- Examiner Amendments Can Trigger Prosecution History Estoppel