Smalley, Laura W.

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.

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

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

Member of:

Appellate

Business and Commercial Litigation

Intellectual Property

Industry Teams

Member of:

Photonics

Admissions

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

1997

University of Florida

1994

August 2, 2023

Claims Specifying a “Therapeutically Effective” Dose Have No Additional Efficacy or Safety Limitations

The U.S. Court of Appeals claimed that effective treatment doses for pulmonary hypertension do not require additional safety limitations.

June 6, 2023

Amgen Inc. v. Sanofi: U.S. Supreme Court Addresses Enablement for Biotechnology Inventions

The U.S. Supreme Court addresses concern over scientists’ enablement of patent use regarding new biotechnology inventions.

March 21, 2023

Unitary Patent System Launching in Europe – Patent Holders May Need to Take Action

European patent owners may want to take action to opt certain patents out of the new Unitary Patent System.

November 22, 2022

U.S. Supreme Court to Decide on Enablement Standard for Biotech Antibody Patents in Amgen v. Sanofi

June 28, 2022

Federal Circuit Imposes Heightened Standard for Written Description Support of Negative Claim Limitations

In Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) held pat

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

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

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

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

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

February 25, 2021

Important 2020 Patent Law Decisions from the Court of Appeals for the Federal Circuit

November 17, 2020

Claiming a New Manufacturing Method Cannot Impart Novelty to Composition or Method of Treatment Claims

In Biogen MA, Inc. v. EMD Serono, Inc., the Court of Appeals for the Federal Circuit has reconfirmed, and to an extent clarified, that an ex

September 28, 2020

Federal Circuit Construes the Terms “Antibody” and “Antibody Fragment”

The Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc., ___ F.3d __, 2020 WL 5048435 (Fed. Cir. Aug. 27, 2020) construing

September 14, 2020

IBSA v. Teva: Indefinite Scope of Key Term in Patent Description Rendered a Thyroid Medication Patent Invalid Under Section 112

In a recent decision, the Federal Circuit affirmed Delaware District Court’s finding of invalidity based on failure to define the scope of t

August 13, 2020

Federal Circuit Issues Two Decisions Clarifying Patent-Eligible Subject Matter

One of the murkier areas of patent law is subject matter eligibility—when are patent claims directed to laws of nature, natural phenomenon o

July 23, 2020

Specification References to Publicly Available Databases or Deposits Can Satisfy the Written Description Requirement for a Biological Drug

In Immunex Corp. v. Sandoz, Inc. No. 20-1037 (July 1, 2020), the Federal Circuit Court of Appeals addressed whether references to publicly a

July 17, 2020

New Podcast: Verdict in Cancer Immunotherapy IP Case

One of the most interesting and promising areas of medical research today involves the use of T-Cell therapies, which offer hope and promise

May 21, 2020

Prevent Your Licensee From Instituting Inter Partes Review with a Forum Selection Clause

Courts have a general policy prohibiting licensees from challenging patent validity (even though the licensee may have voluntarily agreed to

April 30, 2020

USPTO Extends Certain Patent-Related Deadlines due to COVID-19 Crisis

The United States Patent and Trademark Office (“USPTO”) has further extended the time to file certain patent-related documents or pay fees d

April 16, 2020

Federal Circuit Ruling in Patent Case Expands ‘Obviousness’ Doctrine

The Federal Circuit held that a prima facie case of obviousness can be established by prior art ranges for solutions of structurally and fun

February 5, 2020

Patent Infringement: Successful Litigation Stays the Course

What happens when your competitors infringe your patent for golf equipment – then declare bankruptcy to avoid paying up? In this episode, Ha

June 7, 2019

Harris Beach Obtains Summary Judgment in Business Defamation Case

Harris Beach attorneys Pamela Goldsmith and Laura Smalley successfully obtained judgment as a matter of law in New York Supreme Court, Queen

May 6, 2019

Recent District Court Decisions Provide Guidance on Written Description Requirement for Antibodies

One of the most difficult aspects of patenting antibodies and other biologics is obtaining sufficiently broad patent protection. In order to

September 25, 2023

Partner Laura Smalley Quoted About Amgen v. Sanofi Case in Nature Biotechnology

Partner Laura Smalley was quoted about Supreme Court Case Amgen v. Sanofi in Nature Biotechnology.

September 12, 2023

Partner Laura Smalley to Present at the 3rd Annual IPWatchdog Live Meeting

Partner Laura Smalley of our Intellectual Property practice group will present on a panel at IPWatchdog Live 2023 on September 19, 2023.

January 18, 2023

Laura Smalley On Patent Eligibility and the Life Sciences Industry

Harris Beach attorney Laura W. Smalley recently moderated a panel at IPWatchdog.com’s Life Sciences Masters Series

October 18, 2022

In the News: Partner Laura Smalley Analyzes ‘American Axle’ Patent Case

Partner Laura Smalley Analyzes ‘American Axle’ Patent Case

October 17, 2022

In the News: Laura Smalley With the Latest on Life Sciences Patents

Intellectual Property Law Partner Laura W. Smalley discussed the American Axle decision in IPWatchdog news.

March 4, 2022

Partner Laura Smalley Discusses IP Trends

Partner Laura Smalley of our intellectual property law team recently chatted with Caurie Putnam of the Rochester Business Journal about tren

November 9, 2020

Laura Smalley Highlights Use of Forum Selection Clauses In The Licensing Journal

Laura Smalley, an attorney on the Harris Beach Intellectual Property team, contributed an article to The Licensing Journal focused on preven

August 7, 2020

Federal Appeals Court Upholds $27 Million Judgment after Jury Verdicts on Patents for Greatbatch, Medical Components Manufacturer

A $27 million judgment after three jury verdicts in favor of Greatbatch Ltd., a Buffalo-based medical device manufacturer and subsidiary of

November 12, 2019

June 1, 2017

Publication: The Supreme Court Interprets the Biologics Price Competition and Innovation Act in Favor of Biosimilar Applicants (American Intellectual Property Law Association Biotech Buzz)

Speaker: USPTO’s Subject Matter Eligibility: The Dos and Dont’s in 2017 and Beyond (The Knowledge Group, March 20, 2017)

December 8, 2021

Publication: Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges

Publications: Published numerous articles and written Harris Beach Legal Alerts on a wide range of patent and trademark topics in a number of technical fields

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Laura W. Smalley

Member

Cornell Law School

University of Florida

Publication: The Supreme Court Interprets the Biologics Price Competition and Innovation Act in Favor of Biosimilar Applicants (American Intellectual Property Law Association Biotech Buzz)

Speaker: USPTO’s Subject Matter Eligibility: The Dos and Dont’s in 2017 and Beyond (The Knowledge Group, March 20, 2017)

Publication: Examples in Specification Did Not Provide Written Description Support for Bounded or Closed Ranges

Publications: Published numerous articles and written Harris Beach Legal Alerts on a wide range of patent and trademark topics in a number of technical fields

Laura W. Smalley

■ Areas of Expertise

Legal Practices

Industry Teams

■ Profile

■ Representative Matters

■ Professional and Civic

■ Admissions

■ Education

Offices throughout New York:

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