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USPTO Post-Grant Patent Trials 2015

 
Author(s): Robert Greene Sterne, Scott A. McKeown
Practice Area: Intellectual Property
Published: Apr 2015
ISBN: 9781402424243
PLI Item #: 59520
CHB Spine #: G1222

Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 150 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators.

As a Professorial Lecturer in Law at The George Washington University Law School and a member of the teaching faculty of the Practising Law Institute, Scott lectures and writes extensively on PTAB proceedings. He is a former chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post-Grant USPTO Proceedings), and currently sits on the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott also maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. 

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.


Robert Greene Sterne is a founding director of Sterne, Kessler, Goldstein & Fox P.L.L.C., a premier intellectual property law firm based in Washington, D.C.  Mr. Sterne has extensive expertise in AIA post issuance proceedings and concurrent patent litigation, USITC 337 investigations, Federal Circuit appeals, EU enforcement, reexamination, patent monetization and licensing, and corporate intellectual property best practices (CIPO and Board of Directors).  He is a registered U.S. patent attorney, has spoken and written extensively on these topics, was named in 2015 by the Financial Times as one of the "Top Ten Legal Innovators in North America," was named in 2015 by Law360 as one of  “The Top 25 Icons of IP,” and was named in 2014 by The National Law Journal as an “Intellectual Property Trailblazer and Pioneer.” He is editor in chief of Patent Office Litigation (2012), and Patent Office Litigation 2nd Edition (2017)(Thomson Reuters).  In his practice, Mr. Sterne holds a BSEE and a MS and specializes in electronics, computers, software, communications, semiconductors, wireless, medical devices, nanotechnology, and business methods technologies. He is counsel in more than 196 PTAB contested proceedings at the USPTO and has played a key role in precedent-setting U.S. case law, including: In re Beauregard, (Fed. Cir. 1995), KSR (SCT. 2007), i4i (SCT. 2011), In re Jung (Fed. Cir. 2011), ETG (Fed Cir. 2012), and Hear Wear (Fed. Cir. 2014). Mr. Sterne is highly rated in peer-review rankings, including a consistent "Band 1" patent prosecution designation by Chambers & Partners. Among many honors, he is the recipient of the Sedona Conference Award for Excellence in Advanced Legal Education (2004), the Sedona Lifetime Achievement Award (2012),  and the 2012 Attorney of the Year “Good Scout” Award for his leadership in community service. He has been at the forefront of software patent protection, having represented IBM in the precedent setting In re Beauregard case that produced the 1996 USPTO software patent guidelines  and having delivered in 1985 the seminal AI and Expert System Legal Protection presentation before the AIPLA. Sterne Kessler is ranked in 2018 as the 5th largest US IP boutique and 337th largest US law firm.