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Scott P. McBride
Tel. (312) 775-8131
Intellectual Property; Patent Litigation; Procurement and Litigation of Patents, Copyrights, Trademarks and Trade Secrets.
University of Wisconsin-Madison, B.S., Astrophysics, 1995
University of Dayton, J.D., magna cum laude, 1998
Admitted to practice in Illinois. Member of the bars of the Northern District of Illinois and the U.S. Court of Appeals for the Federal Circuit. Admitted to practice before the United States Supreme Court. Registered to practice before the U.S. Patent and Trademark Office.
Mr. 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 case examples
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, in Advanced 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).
Mr. McBride was extensively involved in the settlement of a patent infringement dispute settled after trial on terms favorable to the McAndrews client. Pacesetter, Inc. v. Cardiac Pacemakers, Inc. (D. Minn.). At trial, the jury had awarded of over $9 million in patent infringement damages.
Extensive patent litigation and arbitration work on behalf of Fortune 500 clients.
Extensive patent litigation on behalf of a global leader in semiconductors. Case Nos. 05-1392 (S.D. Cal.), 05-1958 (S.D. Cal.), 04-0066 (W.D. Wis.), and 04-2416 (E.D. Pa.).
Representing patent infringement plaintiffs and defendants in claim construction (Markman) hearings.
Mr. McBride has been quoted in the New York Times for work performed on behalf of a publishing company based in New York City.
Publications and Press
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. View File.
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).
Patent office gets new face-lift over the weekend with new rules, prices, Chicago Daily Law Bulletin (September 18, 2012). View File.
Subject Matter Ineligibility—The End of an Era? BNA’s Patent, Trademark & Copyright Journal (May 25, 2012). View File.
IP firm wins round in patent battle, Chicago Daily Law Bulletin (April 25, 2012). View File.
Supreme Court’s Caraco Ruling Signals Need for FDA Fix, Managing IP (April 18, 2012).
Proposed Rules to Implement the ‘Goldilocks’ Review Proceedings – Should We Care? Intellectual Property Today (April 2012).
How AIA’s Review Proceedings Will Affect Litigation, IP Law360 (March 7, 2012).
How US Contested Cases Will Now Work, Managing IP (February 27, 2012).
America Invents Act: Start Planning Now, Medical Design Technology (February 9, 2012). View File.
Federal Circuit declines to revisit standard for appellate review of claim construction, National Law Journal (November 2, 2011).
8 Supreme Court Cases to Watch, InsideCounsel (November 2011).
6 More Supreme Court Cases that Matter to Businesses, InsideCounsel Online (November 2011).
Patent reform: A double-edged sword for entrepreneurs, Crain's Chicago Business (October 5, 2011). View File.
Patent Law Sizzles as Law Firms Cash in on Intellectual Property Boom, Crain's Chicago Business (October 2011).
U.S. Patent Reform Bill Passes, Representing New Costs and Opportunities, The Rose Sheet (September 26, 2011). View File.
The America Invents Act: A Three-Page Guide and Detailed Presentation, The Orange Book Blog (September 18, 2011). View File.
IP Lawyers See New Patent Law as Major Shift, Chicago Daily Law Bulletin (September 2011). View File.
Patent Reform a Reality: Costs and Opportunities Ahead, The Gray Sheet (September 2011). View File.
Federal Circuit Upholds Sanctions Over Patent Suits Brought in 'Bad Faith', National Law Journal (www.nlj.com) (August 2011).
Therasense on Track for Supreme Court, Managing Intellectual Property (May 2011).
IP Lawyers Weigh in on Inequitable Conduct Ruling, IP Law360 (May 2011).
Three Lawyers Offer Three Outcomes for Giant Microsoft Patent Litigation, Chicago Daily Law Bulletin (April 2011). View File.
The two sides of 'efficient patent infringement', National Law Journal (December 2010). View File.
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