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Scott P. McBride
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Scott McBride’s practice focuses primarily on the litigation and trial of patent, trademark, copyright, and complex technology cases in federal courts, the International Trade Commission and the Trademark Trial and Appeal Board.  Mr. McBride has first-chaired patent, copyright and trademark actions in federal courts and before government agencies.  Mr. McBride also has extensive experience on appeals before the U.S. Court of Appeals for the Federal Circuit.  His practice also includes counseling regarding patents, trademarks, copyrights and trade secrets.  

Mr. McBride’s professional experience includes service as a Patent Examiner for the U.S. Patent and Trademark Office.  

Mr. McBride received his Bachelor of Science degree in Astrophysics from the University of Wisconsin-Madison.  His professional experience includes work with a wide array of technologies, including in the fields of medical devices and complex electronic devices.   
In a survey of his peers published in Chicago magazine and Super Lawyers magazine, Scott was named as one of Illinois' "Rising Stars" in intellectual property law and intellectual property litigation in 2008 and 2009.

Representative Matters

  • Defending against alleged infringement of four patents by accused products with total sales over $1.5B. Avoided a temporary restraining order, avoided a preliminary injunction, won summary judgment on all four patents, won motions for Rule 11 sanctions and an exceptional case finding under 35 U.S.C. § 285, and won an award of over $5 million in attorney’s fees and costs for the McAndrews client.  2007 U.S. Dist. LEXIS 49094; 2007 U.S. Dist. LEXIS 34467; 2007 U.S. Dist. LEXIS 13156; 2007 U.S. Dist. LEXIS 13157; 2006 U.S. Dist. LEXIS 96019; 2004 U.S. Dist. LEXIS 19949 (C.D. Cal.).  The district court was affirmed on all grounds, in an appeal on which Mr. McBride was extensively involved.  558 F.3d 1368 (Fed. Cir. 2009).
  • Representing a patent infringement plaintiff in two arbitrations in 2001 and 2002 in which the McAndrews client was awarded $166 million, in Advanced Cardiovascular Systems, Inc. v. Medtronic, Inc. & Medtronic AVE, Inc., which at the time was one of the ten largest patent infringement judgments ever awarded.
  • Representing a patent infringement plaintiff in a trial before a jury, in which the McAndrews client’s patent was held to be willfully infringed and not invalid.  The client was awarded $4 million in damages and attorneys fees after the Court declared the case exceptional and held the opponent in contempt.  Mr. McBride was also involved in opposing appeal to the Federal Circuit, which affirmed the victory in all aspects.  Stryker Corp. v. Davol, Inc., 234 F.3d 1252 (Fed. Cir. 2000).
  • Pretrial work for a plaintiff in a patent infringement case in which the McAndrews client was awarded summary judgment on the issues of infringement, validity, and enforceability.  At a jury trial, the client was awarded a finding of willful infringement and $9 million in damages, inAdvanced Cardiovascular Sys., Inc. v. Medtronic, Inc., 81 F. Supp. 2d 978 (N.D. Cal. 2000), aff’d, 265 F.3d 1294 (Fed. Cir. 2001).
  • Pretrial and appellate work for a patent infringement defendant in a case in which the McAndrews client was awarded summary judgment of non-infringement in Rexnord Corp. v. Laitram Corp. (W.D. Wis. 2000).  Prior to an appeal, the Court dismissed a misappropriation of trade secret claim against the McAndrews client.  The case was ultimately settled after the Federal Circuit ruled that there were triable issues of fact on infringement.  Rexnord Corp. v. Laitram Corp., 274 F.3d 1336 (Fed. Cir. 2001).

Publications

  • An alternative litigation strategy: ADR + IPR (March 26, 2014). View File.
  • Should the Supreme Court address claim construction in patent cases?, Insidecounsel.com (March 12, 2014). View File.
  • Sufficiency of disclosure and the great divide between the U.S. and Europe, Insidecounsel.com (February 26, 2014). View File.
  • The perfect storm that led to the rise of design patents, Insidecounsel.com (February 12, 2014). View File.
  • Can personalized medicine survive Prometheus?, Insidecounsel.com (January 29, 2014). View File.
  • Is Patent Reform, Round II a bad idea?, Insidecounsel.com (January 15, 2014). View File.
  • How "Exceptional" is Your Patent Case? Intellectual Property Today (November 2013) View File.
  • Counsel of record for over twenty universities and university-related associations in the patent infringement case Bowman v. Monsanto.  Scott authored an amicus brief on behalf of those entities in support of the Supreme Court affirming the Federal Circuit's decision.
  • Universities Back Monsanto In High Court Seed Patent Case, IP Law360 (January 24, 2013).  View File.
  • On Election Day eve, Federal Circuit finds voting machine patent claim invalid, The National Law Journal (Nov. 6, 2012).  View File.
  • Fed. Circ. Upholds E-Voting Cos.' Victory Over IP Claims, Law360 (November 5, 2012). View File.

Presentations

  • Speaker, “Learning the Sweet Science: Win the New Boxing Match Known as Inter Partes Review,” American Conference Institute’s Second Comprehensive Guide to Patent Reform, New York City, January 23 – 24, 2013
  • Co-Chair and Speaker, American Conference Institute’s Advanced Summit on Medical Device Patents, Chicago IL, March 5-6, 2013
  • Moderator, “Post Grant Perspectives of the Judiciary,” Practising Law Institute’s Post-Grant USPTO Proceedings 2013 – The New Patent Litigation, San Francisco, CA, April 15, 2013
  • Moderator, “Post Grant Perspectives of the Judiciary,” Practising Law Institute’s Post-Grant USPTO Proceedings 2013 – The New Patent Litigation, Austin, TX, April 29, 2013
  • Speaker, “Strengthen the Value of your Future IP: Reinventing FTO Procedures in Light of the Game-Changing Provisions in the America Invents Act,” American Conference Institute’s 6th Tactical and Practical Guide to Freedom to Operate Conference, Philadelphia, Pa., July 30, 2012

Areas of Practice

Industries

Bar Admissions / Registrations

  • Illinois
  • Northern District of Illinois
  • U.S. Court of Appeals for the Federal Circuit
  • United States Supreme Court
  • U.S. Patent and Trademark Office

Education

  • University of Dayton, J.D., magna cum laude
  • University of Wisconsin-Madison, B.S., Astrophysics