Thomas Smegal

Education

J.D., George Washington University Law School, cum laude (1961)

Distinguished Alumnus 1995 B.S.Ch.E., Michigan College of Mining & Technology (1957)

Admitted

California (1963), Virginia (1961), District of Columbia (1962), United States Supreme Court (1965), Court of Appeals for the Federal Circuit (1982), Ninth Circuit Court of Appeals (1963), United States District Courts for the Northern, Eastern, Central and Southern Districts of California, and registered to practice before the U.S. Patent and Trademark Office (1962)

Professional Experience

Tomas Smegal specializes in providing expert witness testimony – and acting as an arbitrator, mediator or special master – in intellectual property disputes. Mr. Smegal has been a frequent lecturer on intellectual property law and litigation at the Center for American and International Law and the Tuck School of Business at Dartmouth, as well as in educational seminars sponsored by the state and national intellectual property law associations.

Mr. Smegal was a partner in the San Francisco office of Knobbe,Martens, Olson & Bear from 1998, when he opened that office, through 2005. Prior to joining Knobbe, Martens, Olson & Bear, Mr. Smegal was a senior partner in charge of the intellectual property department at the San Francisco law firm of Graham & James (1992-1998). From 1965-1992, Mr. Smegal was a San Francisco partner in Townsend and Townsend, serving as their first managing partner from 1974 until 1989. Prior to joining Townsend & Townsend, Mr. Smegal had been a patent attorney with Shell Development Company in Emeryville, California.

During the past 43 years, while engaged in the full-time practice of intellectual property law, Mr. Smegal has prepared and prosecuted over a thousand U.S. patent and trademark applications, rendered hundreds of infringement and validity opinions regarding U.S. patents, participated as lead trial counsel in United States District Court trials involving patent validity and infringement and has served as an arbitrator, mediator, special master and expert witness in many intellectual property disputes.

Public Service

Mr. Smegal has been nominated by two presidents to serve on the Board of Directors of the Legal Services Corporation. His 1984 nomination by President Reagan, unanimously confirmed by the United States Senate, resulted in Mr. Smegal's service on the eleven-member Board through 1989. His nomination by President Clinton in 1993, again following unanimous United States Senate confirmation, resulted in Mr. Smegal's second term of service on the Board through 2003. In recognition of his life-long dedication to delivering legal services to the indigent, the National Legal Aid and Defender Association honored him in 1987 as the recipient of its prestigious Arthur Von Breson Award.

Association Involvement

In national organizations relating to the practice of intellectual property law, Mr. Smegal was President of the American Intellectual Property Law Association (1986); Chair of the American Bar Association Section of Patent, Trademark and Copyright Law (1990-1992), President of the Board of Directors of the International Association of Intellectual Property Lawyers (1995-2001); on the Advisory Committee of the Court of Appeals for the Federal Circuit (1991-1997); Chair of the Board of Directors of the National Council of Intellectual Property Law (1988); and President of the National Inventors Hall of Fame Foundation (1987). In California, Mr. Smegal served as President of the Patent Law Association of San Francisco (1974); and Chairman of the Patent, Trademark and Copyright Section of the California State Bar (1979-1980)

Mr. Smegal served on the American Bar Association (ABA) Board of Governors, as its member representing the lawyers of California (1994-1997); in its House of Delegates (1987-2001); and as Chair of the ABA Section Officers Conference (1992-1994). Mr. Smegal was President of the Bar Association of San Francisco (1979); President, Board of Directors of the Legal Aid Society of San Francisco (1982-1984); President, San Francisco Bar Association Foundation (1976); and President, San Francisco Institute of Criminal Justice (OR Project). From 1985-1987, Mr. Smegal was one of fifteen elected lawyers members of the Board of Governors of the State Bar of California, serving as Vice President in his final year. He was also a member of the California State Bar Conference of Delegates Executive Committee (1981-1984).

Representative Publications

Mr. Smegal is the author of the following articles, "Management of an Intellectual Property Law Organization," American Patent Law Association Professional Development Program, January 1979; "Tax Considerations Relevant to Domestic and International Transfer of Industrial Property Rights," Practising Law Institute: Technology Licensing, Volume, 1982; "Industrial Property/La Propriete Industrielle," World Intellectual Property Organization magazine, Special Issue, October 1982; "Exporting Patent Litigation to China," The San Francisco Attorney, August/September 1987; "Proving Commercial Success - Is Nexus Still Required?" American Intellectual Property Law Association, Continuing Legal Education Institute, January 1989; "High Court Considers Trade Dress Issues," The National Law Journal, April 27, 1992; "Legality of 'Interim Copying' is Disputed," The National Law Journal, July 6, 1992; "Federal Circuit Clarifies Laches Defense," The National Law Journal, September 28, 1992; "Inequitable Conduct, Caches and Estoppel," Practising Law Institute, November 1992; "The Misuse Defense in Copyright Litigation," The National Law Journal, February 15, 1993; "Questions Persist on Security Interests," The National Law Journal, June 28, 1993; "Russian Software: New Laws, New Risks," The National law Journal, September 13, 1993; "The Current Re- Examination Process for Compton's NewMedia Patent May Redefine and Substantially Limit the Company's...," The National Law Journal, April 4, 1994; "By Taking Precautions Sellers of CD ROMS and Multimedia Products Can Minimize the Risks in Using Public Domain Works," The National Law Journal, June 1994; "Proposed Amendments to the Copyright Act Would Address Concerns Raised by the Emergence of the National Information Infrastructure", The National Law Journal, November 7, 1994; "A Licencee's Rights in an Original Work that Secures a Loan Will Hinge on Whether and When the Security Interest was Properly Perfected", The National Law Journal, March 6, 1995.; "Access to Justice - The Critical Issue for the ABA", George Washington Magazine, November 1996; “Trade Secrets in the United States”, Patent World, October 1998 Issue 106.