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Laura Smalley
D: (585) 419-8736  
lsmalley@harrisbeach.com
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Laura W. Smalley

  Member

(585) 419-8736  |
  lsmalley@harrisbeach.com
Linkedin
“Clients appreciate my thorough approach to finding the most effective solutions to their intellectual property issues. My passion for new technology and my analytical skills aid me in developing a creative strategy that helps my clients protect their most valuable assets.”
  • Intellectual Property Law: Year in Review 2021
Profile
Representative Matters
Professional and Civic
Areas of Experience
Admissions
Education
Location

Clients’ development of their technology and protecting and enforcing clients’ intellectual property rights are the focus of Laura’s practice. Laura has litigated numerous patent infringement suits involving medical devices, electronic components and imaging technology. She prosecutes patents in the chemical and biotechnology fields and has a technical background in chemistry, including organic and analytical chemistry. Prior to joining Harris Beach, Laura supported the in-house Patent Prosecution Department at Motorola.

RECENT PUBLICATIONS + SPEAKING ENGAGEMENTS

  • Presented patent CLE webinar "Update: Written Description and Enablement Requirements under 35 U.S.C. § 112", September 2020
  • Speaker at AIPLA Annual Meeting 2018:  Regulatory and IP Issues for Immunotherapies Including Car-T and Antibody Technologies (“Don’t Put The “Car-T” Before the Horse—IP And Regulatory Issues for Immunotherapies”), BIOTECHNOLOGY/FOOD AND DRUG/TRADE SECRET LAW (JOINT SESSION), presented talk on Resolving Patent Infringement Issues for Biosimilars/ Interchangeable Biologics
  • “The Supreme Court Interprets the Biologics Price Competition and Innovation Act in Favor of Biosimilar Applicants,” American Intellectual Property Law Association Biotech Buzz, June 2017
  • Speaker, “USPTO’s Subject Matter Eligibility: The Dos and Dont’s in 2017 and Beyond,”
    The Knowledge Group, March 20, 2017
  • Patent Damages Webinar: Discussed the current state of case law on patent damages, including cases on the entire market value rule and apportionment. The webinar also discussed strategies for motion practice prior to trial, including Daubert and summary judgment motions, and how to marshal the proof to support your client’s theory of damages, including the use of expert testimony. November 2016
  • ACI, Women Leaders in Technology Law, "Creating a Winning Pitch: Implementing Critical Negotiation, Leadership, and Presentation Skills to Make Your Case," May 15, 2015

Laura has published countless articles and written Harris Beach Legal Alerts on a wide range of patent and trademark topics in a number of technical fields, including:

  • “Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges,” December 2021.
  • "Patent Trial and Appeal Board Determination of "Reasonable Expectation of Success" Must Be Supported by Substantial Evidence," December 2021.
  • "Federal Circuit Court of Appeals Reverses $1.2 Billion Verdict in Juno v. Kite Pharma, Invalidating Genus Claims to a Three-Part Chimeric Antigen Receptor," September 2021.
  • "Federal Appeals Court Hears Arguments on CAR T-Cell Therapy Patent Dispute," Harris Beach Podcast, July 2021.
  • "IBSA v. Teva: Indefinite Scope of Key Term in Patent Description Rendered a Thyroid Medication Patent Invalid Under Section 112," Harris Beach Legal Alert, September 2020
  • Samsung v. Apple: Supreme Court’s Reversal of the Design Patent Damages Award, December 2016
  • "Will Nanotechnology Products be Impacted by the Federal Courts' 'Product of Nature' Exception to Subject-Matter Eligibility Under 35 U.S.C. 101?," The John Marshall Law School Review Of Intellectual Property Law, April 2014
  • “Using the Term ‘The Invention’ to Describe the Preferred Embodiments May Limit the Claims,” Intellectual Property Today, March 2014
  • “Extending the Terms of Patents,” Harris Beach Legal Alert, February 2010

Laura has also published numerous articles for American Intellectual Property Law Association’s Biotech Buzz newsletter, including:

  • AbbVie Files Suit Against Amgen Asserting Patent Infringement by Amgen's Biosimilar to AbbVie's HUMIRA® Biologic. October 2016
  • Amgen Inc. v. Apotex Inc.: United States District Court for the Southern District of Florida Finds that Apotex Pegfilgrastim and Filgrastim Biosimilars Do Not Infringe Amgen's Patent on Protein Refolding. September 2016
  • U.S. District Court for the District of Delaware Holds that Discovery under the Biologic Price Competition and Innovation Act is Limited to Information Relevant to the Patents Asserted in the Litigation.
    August 2016
  • Amgen Inc. v. Apotex Inc.: Federal Circuit Holds that 180-Day Notice Must be Given After Biosimilar is Licensed Even if the Biosimilar Applicant Complies with the Information-Exchange Procedures of the Biologics Price Competition and Innovation Act. July 2016
  • Amgen Sues Sandoz for Patent Infringement Over Pegfilgrastim Biosimilar. May 2016

Patent Litigation

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages. The judgment was affirmed by the Federal Circuit Court of Appeals.
  • MAX International Converters, Inc. v. Iconex, LLC (U.S. Dist. Court, D. Del.): Counsel in patent infringement action relating to repositionable linerless labels.
  • Arbitration proceeding (AAA 2014): Trial counsel in confidential arbitration over breach of settlement agreement and patent infringement.
  • NuClimate v. Airtex (U.S. Court of Appeals, Federal Circuit 2012): Successfully defended judgment of non-infringement on appeal.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (U.S. District Court, WDNY 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict of over $3 million and finding of willful infringement.
  • Eastman Kodak v. Apple, Inc. (U.S. District Court, WDNY; 2010): Co-counsel for Kodak in claims for infringement by Apple products of Kodak digital still camera and software architecture patents.
  • Redcom Laboratories, Inc. v. Cisco Systems, Inc. (U. S. District Court, WDNY; 2006): Counsel in patent infringement case involving telephone switching equipment; multimillion dollar settlement obtained after Markman ruling.
  • Honeywell vs. Eastman Kodak (U.S. District Court; 2005): Defense of Kodak in patent infringement dispute involving liquid crystal displays for digital still cameras.
  • Amesbury Products v. Caldwell Manufacturing: Defense counsel in a patent infringement suit involving patents for window hardware balances.
  • Neutrik AG v. Switchcraft (U.S. Court of Appeals, Federal Circuit): Appeal of a grant of summary judgment on non-infringement.

Additional Trial Experience

  • Trafalgar Power v. Stetson-Harza (U.S. District Court and U.S. Court of Appeals, Second Circuit): Part of team of Harris Beach attorneys who obtained and defended on appeal a plaintiff’s jury verdict of $11.1 million in an engineering malpractice action.
  • Jackson v. Guardsmark (Supreme Court Monroe County, 2011): Lead trial counsel where no-cause verdict was obtained in alleged toxic exposure case after two and a half week trial.
  • In the Matter of JPMorgan Chase (Monroe Co. Surrogate’s Court 2013): Two week trial representing JPMorgan in contested trust accounting matter regarding claim of negligent retention of securities. Judgment unanimously reversed on appeal in client’s favor.
  • In the Matter of JPMorgan Chase (Westchester Co. Surrogate’s Court 2009): Two and a half week trial representing JPMorgan in contested trust accounting matter regarding claim of negligent retention of securities.
  • In the Matter of JPMorgan Chase (Monroe County Surrogate’s Court; 2008): Obtained $300,000 award of fees for trust fiduciary resulting from successful defense of surcharge proceeding.

Patent Prosecution

  • Prepared and prosecuted patents for cancer immunotherapies, medical devices and catalysts, among other technologies.
  • Participated in post-issuance proceedings, including PTAB and ex parte reexamination proceedings.

Trademark Prosecution and Enforcement

  • Conduct trademark searches and product clearances.
  • File and prosecute trademark applications, both domestic and international.
  • Coordinate foreign associates’ prosecution of trademarks filed directly or under the Madrid protocol.
  • Advertising, marketing and copyright clearance and counseling.
  • IP due diligence/M&A support.
  • Trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
  • Trademark and trade dress litigation in state and federal court.

Professional and Civic

  • AIPLA (American Intellectual Property Law Association), member of the Biotechnology Committee and contributor to the Biotech Buzz. Previously served on the committee revising AIPLA’s Model Patent Jury Instructions and on the patentability subcommittee of the Patent Law Committee
  • RIPLA (Rochester Intellectual Property Law Association), former President and now officer of RIPLA, an organization composed mainly of attorneys actively engaged in the practice of patent, trademark, or copyright law in the Rochester area.
  • Volunteer Legal Services Project of Monroe County, Inc., former President and Board Member
  • Monroe County Bar Association, Board of Trustees

Recognition

  • Best Lawyers, Commercial Litigation, since 2013
  • Super Lawyers, Intellectual Property Litigation, 2016 – 2019
  • The Daily Record, Up & Coming Attorneys
  • Volunteer Legal Services Project, McKnight Award

Legal Practices

Appellate
Business and Commercial Litigation
Intellectual Property

Industry Teams

Photonics

New York

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals, Second Circuit

U.S. District Court, New York - Northern District

U.S. District Court, New York - Southern District

U.S. District Court, New York - Western District

U.S. Patent and Trademark Office

U.S. Supreme Court

Cornell Law School

JD
1997

University of Florida

BA
1994
Rochester, NY Office
All Insights |
 February 10, 2022
Intellectual Property Law: Year in Review 2021
Analyzing the major Federal Circuit decisions that have affected patent law over the past year can spark a change in your procedures or deci...read more
All Publications, Legal Alert |
 December 15, 2021
Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges
The Federal Circuit Court of Appeals affirmed the Patent Trial and Appeal Board's determination that a patent specification did not provide ...read more
All Publications, Legal Alert |
 December 15, 2021
Patent Trial and Appeal Board Determination of “Reasonable Expectation of Success” Must Be Supported by Substantial Evidence
The Federal Circuit Court of Appeals reversed a decision of the U.S. Patent Trial and Appeal Board (“Board”), finding a patent on a method o...read more
All Insights, All Publications, Legal Alert |
 December 7, 2021
Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges
The Federal Circuit Court of Appeals affirmed the Patent Trial and Appeal Board's determination that a patent specification did not provide ...read more
All Insights, Audio |
 July 13, 2021
Federal Appeals Court Hears Arguments on CAR T-Cell Therapy Patent Dispute
T-Cell Therapies offer enormous promise in the development of new approaches to treating cancer. A federal appeals court recently heard argu...read more
All Insights, All Publications, Legal Alert |
 June 29, 2021
Federal Circuit Denial of En Banc Rehearing in Amgen v. Sanofi Prompts New Considerations in Genus Claims
Based on the denial of rehearing and the Amgen v. Sanofi decision itself, inventors should: Claim as many separate species as possible. Att...read more
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(866) 999-0659

Laura W. Smalley

lsmalley@harrisbeach.com
D: (585) 419-8736
Rochester, NY Office
Laura Smalley
https://www.harrisbeach.com/people/smalley-laura-w/

■ Areas of Expertise

Appellate Legal Practice
Business and Commercial Litigation Legal Practice
Intellectual Property Legal Practice
Photonics Industry Team

■ Profile

Clients’ development of their technology and protecting and enforcing clients’ intellectual property rights are the focus of Laura’s practice. Laura has litigated numerous patent infringement suits involving medical devices, electronic components and imaging technology. She prosecutes patents in the chemical and biotechnology fields and has a technical background in chemistry, including organic and analytical chemistry. Prior to joining Harris Beach, Laura supported the in-house Patent Prosecution Department at Motorola.

RECENT PUBLICATIONS + SPEAKING ENGAGEMENTS

  • Presented patent CLE webinar "Update: Written Description and Enablement Requirements under 35 U.S.C. § 112", September 2020
  • Speaker at AIPLA Annual Meeting 2018:  Regulatory and IP Issues for Immunotherapies Including Car-T and Antibody Technologies (“Don’t Put The “Car-T” Before the Horse—IP And Regulatory Issues for Immunotherapies”), BIOTECHNOLOGY/FOOD AND DRUG/TRADE SECRET LAW (JOINT SESSION), presented talk on Resolving Patent Infringement Issues for Biosimilars/ Interchangeable Biologics
  • “The Supreme Court Interprets the Biologics Price Competition and Innovation Act in Favor of Biosimilar Applicants,” American Intellectual Property Law Association Biotech Buzz, June 2017
  • Speaker, “USPTO’s Subject Matter Eligibility: The Dos and Dont’s in 2017 and Beyond,”
    The Knowledge Group, March 20, 2017
  • Patent Damages Webinar: Discussed the current state of case law on patent damages, including cases on the entire market value rule and apportionment. The webinar also discussed strategies for motion practice prior to trial, including Daubert and summary judgment motions, and how to marshal the proof to support your client’s theory of damages, including the use of expert testimony. November 2016
  • ACI, Women Leaders in Technology Law, "Creating a Winning Pitch: Implementing Critical Negotiation, Leadership, and Presentation Skills to Make Your Case," May 15, 2015

Laura has published countless articles and written Harris Beach Legal Alerts on a wide range of patent and trademark topics in a number of technical fields, including:

  • “Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges,” December 2021.
  • "Patent Trial and Appeal Board Determination of "Reasonable Expectation of Success" Must Be Supported by Substantial Evidence," December 2021.
  • "Federal Circuit Court of Appeals Reverses $1.2 Billion Verdict in Juno v. Kite Pharma, Invalidating Genus Claims to a Three-Part Chimeric Antigen Receptor," September 2021.
  • "Federal Appeals Court Hears Arguments on CAR T-Cell Therapy Patent Dispute," Harris Beach Podcast, July 2021.
  • "IBSA v. Teva: Indefinite Scope of Key Term in Patent Description Rendered a Thyroid Medication Patent Invalid Under Section 112," Harris Beach Legal Alert, September 2020
  • Samsung v. Apple: Supreme Court’s Reversal of the Design Patent Damages Award, December 2016
  • "Will Nanotechnology Products be Impacted by the Federal Courts' 'Product of Nature' Exception to Subject-Matter Eligibility Under 35 U.S.C. 101?," The John Marshall Law School Review Of Intellectual Property Law, April 2014
  • “Using the Term ‘The Invention’ to Describe the Preferred Embodiments May Limit the Claims,” Intellectual Property Today, March 2014
  • “Extending the Terms of Patents,” Harris Beach Legal Alert, February 2010

Laura has also published numerous articles for American Intellectual Property Law Association’s Biotech Buzz newsletter, including:

  • AbbVie Files Suit Against Amgen Asserting Patent Infringement by Amgen's Biosimilar to AbbVie's HUMIRA® Biologic. October 2016
  • Amgen Inc. v. Apotex Inc.: United States District Court for the Southern District of Florida Finds that Apotex Pegfilgrastim and Filgrastim Biosimilars Do Not Infringe Amgen's Patent on Protein Refolding. September 2016
  • U.S. District Court for the District of Delaware Holds that Discovery under the Biologic Price Competition and Innovation Act is Limited to Information Relevant to the Patents Asserted in the Litigation.
    August 2016
  • Amgen Inc. v. Apotex Inc.: Federal Circuit Holds that 180-Day Notice Must be Given After Biosimilar is Licensed Even if the Biosimilar Applicant Complies with the Information-Exchange Procedures of the Biologics Price Competition and Innovation Act. July 2016
  • Amgen Sues Sandoz for Patent Infringement Over Pegfilgrastim Biosimilar. May 2016

■ Representative Matters

Patent Litigation

  • Greatbatch Ltd. v. AVX Corp. et al. (U.S. District Court, D. Del. 2019): Represented patent owner in patent infringement action over key components for pacemakers and implantable defibrillators. Jury verdicts found infringement of three U.S. Patents, and awarded lost profits and price erosion. Judgment on the jury verdict exceeded $27 million in damages. The judgment was affirmed by the Federal Circuit Court of Appeals.
  • MAX International Converters, Inc. v. Iconex, LLC (U.S. Dist. Court, D. Del.): Counsel in patent infringement action relating to repositionable linerless labels.
  • Arbitration proceeding (AAA 2014): Trial counsel in confidential arbitration over breach of settlement agreement and patent infringement.
  • NuClimate v. Airtex (U.S. Court of Appeals, Federal Circuit 2012): Successfully defended judgment of non-infringement on appeal.
  • Izzo Golf, Inc. v. King Par Golf, Inc. (U.S. District Court, WDNY 2010): Plaintiff’s counsel in a patent infringement action resulting in a jury verdict of over $3 million and finding of willful infringement.
  • Eastman Kodak v. Apple, Inc. (U.S. District Court, WDNY; 2010): Co-counsel for Kodak in claims for infringement by Apple products of Kodak digital still camera and software architecture patents.
  • Redcom Laboratories, Inc. v. Cisco Systems, Inc. (U. S. District Court, WDNY; 2006): Counsel in patent infringement case involving telephone switching equipment; multimillion dollar settlement obtained after Markman ruling.
  • Honeywell vs. Eastman Kodak (U.S. District Court; 2005): Defense of Kodak in patent infringement dispute involving liquid crystal displays for digital still cameras.
  • Amesbury Products v. Caldwell Manufacturing: Defense counsel in a patent infringement suit involving patents for window hardware balances.
  • Neutrik AG v. Switchcraft (U.S. Court of Appeals, Federal Circuit): Appeal of a grant of summary judgment on non-infringement.

Additional Trial Experience

  • Trafalgar Power v. Stetson-Harza (U.S. District Court and U.S. Court of Appeals, Second Circuit): Part of team of Harris Beach attorneys who obtained and defended on appeal a plaintiff’s jury verdict of $11.1 million in an engineering malpractice action.
  • Jackson v. Guardsmark (Supreme Court Monroe County, 2011): Lead trial counsel where no-cause verdict was obtained in alleged toxic exposure case after two and a half week trial.
  • In the Matter of JPMorgan Chase (Monroe Co. Surrogate’s Court 2013): Two week trial representing JPMorgan in contested trust accounting matter regarding claim of negligent retention of securities. Judgment unanimously reversed on appeal in client’s favor.
  • In the Matter of JPMorgan Chase (Westchester Co. Surrogate’s Court 2009): Two and a half week trial representing JPMorgan in contested trust accounting matter regarding claim of negligent retention of securities.
  • In the Matter of JPMorgan Chase (Monroe County Surrogate’s Court; 2008): Obtained $300,000 award of fees for trust fiduciary resulting from successful defense of surcharge proceeding.

Patent Prosecution

  • Prepared and prosecuted patents for cancer immunotherapies, medical devices and catalysts, among other technologies.
  • Participated in post-issuance proceedings, including PTAB and ex parte reexamination proceedings.

Trademark Prosecution and Enforcement

  • Conduct trademark searches and product clearances.
  • File and prosecute trademark applications, both domestic and international.
  • Coordinate foreign associates’ prosecution of trademarks filed directly or under the Madrid protocol.
  • Advertising, marketing and copyright clearance and counseling.
  • IP due diligence/M&A support.
  • Trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
  • Trademark and trade dress litigation in state and federal court.

■ Professional and Civic

  • AIPLA (American Intellectual Property Law Association), member of the Biotechnology Committee and contributor to the Biotech Buzz. Previously served on the committee revising AIPLA’s Model Patent Jury Instructions and on the patentability subcommittee of the Patent Law Committee
  • RIPLA (Rochester Intellectual Property Law Association), former President and now officer of RIPLA, an organization composed mainly of attorneys actively engaged in the practice of patent, trademark, or copyright law in the Rochester area.
  • Volunteer Legal Services Project of Monroe County, Inc., former President and Board Member
  • Monroe County Bar Association, Board of Trustees

■ Admissions

  • Best Lawyers, Commercial Litigation, since 2013
  • Super Lawyers, Intellectual Property Litigation, 2016 – 2019
  • The Daily Record, Up & Coming Attorneys
  • Volunteer Legal Services Project, McKnight Award

■ Education

Cornell Law School
 ,JD
 ,1997
University of Florida
 ,BA
 ,1994

Harris Beach and its subsidiaries provide a full range of legal and professional services for clients across New York state, as well as nationally and internationally. Harris Beach is among the country’s top law firms as ranked by The National Law Journal and is among the BTI Elite law firms based on in-depth interviews of more than 600 corporate counsel at the world’s largest and most influential companies. Our clients include Fortune 100 corporations, privately-held companies, emerging businesses, public sector entities, not-for-profit organizations and individuals. Principal industries we represent include education, energy, financial, food and beverage, health care, insurance, manufacturing, medical and life sciences, real estate developers, and state and local governments and authorities.

Industry Teams
Automotive and Vehicle Dealerships
Cannabis
Construction and Surety
Educational Institutions Higher Ed
Educational Institutions K-12
EMS and Fire Protection Providers
Energy
Financial Institutions and Capital Markets
Food and Beverage
Health Care
Industrial and Consumer Manufacturing
Medical and Life Sciences
Municipalities and Local Agencies
Nanotechnology
Photonics
Racing and Gaming
Real Estate Developers
Science and Technology
Telecommunications and Media
Unmanned Aircraft Systems
USA Collegiate Sports
Veterinary Medicine

Practices
Alternative Dispute Resolution
Appellate
Business and Commercial Litigation
Collection Law
Commercial Real Estate
Corporate
Cybersecurity Protection and Response
Diversity Compliance
E-Discovery (e-infoSM)
Employee Benefits
Employment Litigation
Environmental Law
Financial Restructuring, Bankruptcy and Creditors’ Rights
Government Compliance and Investigations
Health Law
Immigration Law
Insurance Coverage
Intellectual Property Law
International Trade Law
Internet Law
Labor and Employment Law
Mass Torts and Industry-Wide Litigation
New Markets Tax Credit
Patent, Trademark and Copyright Law
Product Liability and Comprehensive General Liability
Public Finance and Economic Development
Real Property Valuation Litigation
Residential Real Estate
Sports Law
Tax Law
White Collar Crime
Wills, Trusts and Estates

Consulting Services
HB Solutions LLC
Collegiate Sports Compliance
Data Privacy and Cybersecurity
Economic Development and Public Affairs
Educational Institution Assistance
EMRG® (E-Discovery Management Resources Group)
Energy
Health and Human Services
Human Resources
Information Technology
Marketing and Communication Services
Municipal and Local Agency Assistance

HB Cornerstone LLC
Owner Representation
Design Services
Facilities Consulting
Move Management

Caetra.io
CyMetric (Cybersecurity Regulation Compliance Software)

Offices throughout New York:

Albany
677 Broadway
Albany, NY 12207
518-427-9700

Buffalo
726 Exchange Street
Buffalo, NY 14210
716-200-5050

Ithaca
119 East Seneca Street
Ithaca, NY 14850
607-273-6444

Long Island
333 Earle Ovington Boulevard
Uniondale, NY 11553
516-880-8484

New York City
100 Wall Street
New York, NY 10005
212-687-0100

Rochester
99 Garnsey Road
Pittsford, NY 14534
585-419-8800

Saratoga Springs
513 Broadway
Saratoga Springs, NY 12866
518-587-0551

Syracuse
333 West Washington Street
Syracuse, NY 13202
315-423-7100

White Plains
445 Hamilton Avenue
White Plains, NY 10601
914-683-1200

Offices also in:

New Haven, CT
195 Church Street
New Haven, CT 06510
203-784-3159

Newark, NJ
One Gateway Center
Newark, NJ 07102
973-848-1244

Attorney Advertising. Prior results do not guarantee a similar outcome.
© 2022 Harris Beach PLLC

Content current as of May 20, 2022 1:17 am
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