Scott McBride’s practice focuses primarily on the litigation and trial of patent and complex technology cases in federal courts and before the Patent Trial and Appeal Board, and reexamination proceedings before the Patent Office. Scott has a proven ability to help clients procure or acquire valuable intellectual property to protect their business, reach advantageous arrangements for solving intellectual property disputes where appropriate, and aggressively litigate patents when necessary.
Scott has worked with a wide array of businesses and technologies, and has been particularly successful representing medical device and pharmaceutical companies, both with and without jury trials. Some of the specific technologies with which he has experience include drug-eluting stents, angioplasty, diagnostics, surgical tools, pharmaceuticals, imaging tools, hard and soft-tissue implants, welding, unmanned aerial vehicles, gaming, electronics, satellites, telecommunications, foods, semiconductor chips, hard drives, surgical irrigation devices, electronic automation tools, operating room automation, and surgical robotics.
He helps clients resolve disputes and adjust their patent strategies in order to better protect their investments. His approach is an exceptionally effective combination of diligence and personability that emphasizes providing practical solutions to real problems. While very able to be a bulldog in court when necessary, Scott can also connect with judges, juries, and clients and lessen or eliminate conflict when it is unnecessary. Regardless of the situation, he always emphasizes treating every person involved in a matter with the utmost respect, courtesy, and professionalism.
He first chairs complex patent, trademark, and copyright actions in U.S. District Courts and before administrative bodies, and both prosecutes and defends patent infringement cases involving billions of dollars in accused product. With his litigation background, he provides extensive counseling on arbitration and intellectual property due diligence work and oversees strategic patent prosecution. Scott has appeared as lead or backup counsel in over 100 inter partes reviews and has presented locally and nationally on the challenges faced in, and best practices for, IPRs.
His track record includes obtaining one of the largest patent damages awards in U.S. history on behalf of a leading provider of healthcare equipment and supplies. He has also secured numerous grants of summary judgment and been involved with several exceptional case findings that have resulted in either enhanced damages for a client, attorney’s fees, or both. Scott has also been involved in numerous major precedential Federal Circuit opinions.
Scott has written amicus curiae briefs on behalf of the Association of Patent Law Firms in the groundbreaking Phillips v. AWH Corporation case and as counsel of record on behalf of more than twenty universities and technology transfer organizations before the United States Supreme Court in Bowman v. Monsanto. His professional experience includes service examining patents for the U.S. Patent and Trademark Office between his first and second years of law school. He also completed a full year’s worth of multi-stage patent examiner training.
Above all, Scott excels at exceeding his client’s expectations. Although he has numerous accolades from clients, this one is typical, and sums up why he’s the attorney of choice for clients facing potential IP-related litigation: “I want to thank you for your hard work and unwavering support. This was a very, VERY difficult negotiation, and I truly believe that a settlement was achieved only because of your knowledge of the law, excellent negotiating skills, and your ability to work under incredible pressure and maintain your professionalism throughout it all. It was my pleasure working with you on this one, and should we ever find ourselves in a similar situation, I cannot think of anyone better to work with than you and your team. Again, thank you for all your work on this case.”
EDUCATION
University of Dayton, J.D., magna cum laude
University of Wisconsin-Madison, B.S., Astrophysics
BAR ADMISSIONS/REGISTRATIONS
Illinois
Northern District of Illinois
Southern District of Illinois
Eastern District of Michigan
U.S. Court of Appeals for the Federal Circuit
U.S. Supreme Court
U.S. Patent and Trademark Office
Education
University of Dayton, J.D., magna cum laude
University of Wisconsin-Madison, B.S., Astrophysics
Practices
Design Rights
IP Transactions
IP Litigation
Post-Grant Practice
Trademarks & Copyrights
Bar Admissions/Registrations
Illinois
Northern District of Illinois
Southern District of Illinois
Eastern District of Michigan
U.S. Court of Appeals for the Federal Circuit
U.S. Supreme Court
U.S. Patent and Trademark Office
Industries
Chemical
Computer & Electronics Technology
Industrial & Mechanical
Medical Devices
Life Sciences
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 handled by Mr. McBride. 558 F.3d 1368 (Fed. Cir. 2009).
Representing a patent infringement plaintiff in two arbitrations 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 attorney’s 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).
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.
Honors & Awards
Illinois “Rising Star” in intellectual property law and/or IP litigation, selected by peers and published in Chicago magazine and Super Lawyers magazine, 2008, 2009, 2010, 2011, 2012, 2013
Professional & Community Involvement
Board of Visitors, University of Wisconsin-Madison, Department of Astronomy
Board of Directors, Timbers Bachelor Gulch Homeowners Association, Avon, CO
Head Baseball Coach, Oz Park Baseball Association, Chicago, IL
Publications
Inter Partes Review, Developments and Procedures, Today’s General Counsel, Vol. 12/No. 1 (Feb/Mar. 2015)
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 Text.
The perfect storm that led to the rise of design patent, InsideCounsel.com (February 12, 2014). View File.
Can personalized medicine survive Prometheus?, InsideCounsel.com (January 29, 2014).
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).
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.
Patent office gets new face-lift over the weekend with new rules, prices, Chicago Daily Law Bulletin (September 18, 2012).
IP firm wins round in patent battle, Chicago Daily Law Bulletin (April 25, 2012).
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).
America Invents Act: Start Planning Now, Medical Design Technology (February 9, 2012).
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).
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).
The America Invents Act: A Three-Page Guide and Detailed Presentation, The Orange Book Blog (September 18, 2011).
IP Lawyers See New Patent Law as Major Shift, Chicago Daily Law Bulletin (September 2011).
Patent Reform a Reality: Costs and Opportunities Ahead, The Gray Sheet (September 2011).
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).
The two sides of ‘efficient patent infringement’, National Law Journal (December 2010).
Presentations
Presenter, Update on Estoppel in District Courts Based on PTAB Proceedings, FCBA Bench & Bar in Dialogue, Chicago, IL, October 3, 2018
Presenter, Patent Quality Review including 101 Rejections, USPTO Regional Seminar, Chicago, IL, April 18, 2019
Presenter, Anticipation & Obviousness, USPTO TC 3600 & 3700 Customer Partnership Meeting, Alexandria, VA, May 2, 2018
Presenter, Designing an Enforcement Strategy in the Wake of Samsung v. Apple, Program in Law & Technology 26th Annual Seminar, Dayton, OH, June 9, 2017
Co-Chair & Moderator, The Judges Speak: Ins and Outs of Medical Device Patent Litigation, ACI’s 7th Advance Summit on Medical Device Patents, New York, NY, March 1, 2017
Co-Chair & Moderator, View From the Bench: The Judicial Perspective on Medical Device Patent Litigation, ACI’s 6th Advance Summit on Medical Device Patents, New York, NY, February 25, 2016
Presenter, Subject Matter Eligibility: 101 & Its Effects in the Medical Technology Area, USPTO TC3700 Medical Tech Fair & Medical Device Partnership Meeting, June 2-3, 2015
Moderator, A View from the Benches – Insights from Multiple Judicial Venues on the Effects of Parallel Proceedings, Managing Discovery, Construing Claims, Assessing Damages, and More, ACI’s 5th Advance Summit on Medical Device Patents, Chicago, IL, March 4-5, 2015
Invited Speaker, University of Illinois College of Law, Patent Research and Strategy, Champaign, IL, November 11, 2014
Co-Chair, American Conference Institute’s Advanced Summit on Medical Device Patents, Chicago IL, March 24 – 26, 2014
Moderator, “View from the Bench: The Judicial Perspective on Medical Device Patent Litigation,” ACI’s Advanced Summit on Medical Device Patents, Chicago IL, March 24 – 26, 2014
Presenter, “Examining Pharmaceutical Patent Extensions: Patent Term Adjustment & Patent Term Restoration,” American Conference Institute’s Hatch-Waxman Boot Camp, June 9 – 10, 2014
Speaker, “Continuing Claim Construction Conundrums Impacting Markman Strategies, Paragraph IV Disputes – Master Symposium, October 3 – 4, 2013
Co-Chair, American Conference Institute’s Advanced Summit on Medical Device Patents, Chicago IL, March 5 – 6, 2013
Moderator, “View from the Bench: The Judicial Perspective on Medical Device Patent Litigation,” ACI’s Advanced Summit on Medical Device Patents, Chicago IL, March 5 – 6, 2013
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
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
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’s6th Tactical and Practical Guide to Freedom to Operate Conference, Philadelphia, Pa., July 30, 2012
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 handled by Mr. McBride. 558 F.3d 1368 (Fed. Cir. 2009).
Representing a patent infringement plaintiff in two arbitrations 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 attorney’s 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).
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.
Illinois “Rising Star” in intellectual property law and/or IP litigation, selected by peers and published in Chicago magazine and Super Lawyers magazine, 2008, 2009, 2010, 2011, 2012, 2013
Board of Visitors, University of Wisconsin-Madison, Department of Astronomy
Board of Directors, Timbers Bachelor Gulch Homeowners Association, Avon, CO
Head Baseball Coach, Oz Park Baseball Association, Chicago, IL
Inter Partes Review, Developments and Procedures, Today’s General Counsel, Vol. 12/No. 1 (Feb/Mar. 2015)
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 Text.
The perfect storm that led to the rise of design patent, InsideCounsel.com (February 12, 2014). View File.
Can personalized medicine survive Prometheus?, InsideCounsel.com (January 29, 2014).
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).
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.
Patent office gets new face-lift over the weekend with new rules, prices, Chicago Daily Law Bulletin (September 18, 2012).
IP firm wins round in patent battle, Chicago Daily Law Bulletin (April 25, 2012).
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).
America Invents Act: Start Planning Now, Medical Design Technology (February 9, 2012).
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).
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).
The America Invents Act: A Three-Page Guide and Detailed Presentation, The Orange Book Blog (September 18, 2011).
IP Lawyers See New Patent Law as Major Shift, Chicago Daily Law Bulletin (September 2011).
Patent Reform a Reality: Costs and Opportunities Ahead, The Gray Sheet (September 2011).
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).
The two sides of ‘efficient patent infringement’, National Law Journal (December 2010).
Presenter, Update on Estoppel in District Courts Based on PTAB Proceedings, FCBA Bench & Bar in Dialogue, Chicago, IL, October 3, 2018
Presenter, Patent Quality Review including 101 Rejections, USPTO Regional Seminar, Chicago, IL, April 18, 2019
Presenter, Anticipation & Obviousness, USPTO TC 3600 & 3700 Customer Partnership Meeting, Alexandria, VA, May 2, 2018
Presenter, Designing an Enforcement Strategy in the Wake of Samsung v. Apple, Program in Law & Technology 26th Annual Seminar, Dayton, OH, June 9, 2017
Co-Chair & Moderator, The Judges Speak: Ins and Outs of Medical Device Patent Litigation, ACI’s 7th Advance Summit on Medical Device Patents, New York, NY, March 1, 2017
Co-Chair & Moderator, View From the Bench: The Judicial Perspective on Medical Device Patent Litigation, ACI’s 6th Advance Summit on Medical Device Patents, New York, NY, February 25, 2016
Presenter, Subject Matter Eligibility: 101 & Its Effects in the Medical Technology Area, USPTO TC3700 Medical Tech Fair & Medical Device Partnership Meeting, June 2-3, 2015
Moderator, A View from the Benches – Insights from Multiple Judicial Venues on the Effects of Parallel Proceedings, Managing Discovery, Construing Claims, Assessing Damages, and More, ACI’s 5th Advance Summit on Medical Device Patents, Chicago, IL, March 4-5, 2015
Invited Speaker, University of Illinois College of Law, Patent Research and Strategy, Champaign, IL, November 11, 2014
Co-Chair, American Conference Institute’s Advanced Summit on Medical Device Patents, Chicago IL, March 24 – 26, 2014
Moderator, “View from the Bench: The Judicial Perspective on Medical Device Patent Litigation,” ACI’s Advanced Summit on Medical Device Patents, Chicago IL, March 24 – 26, 2014
Presenter, “Examining Pharmaceutical Patent Extensions: Patent Term Adjustment & Patent Term Restoration,” American Conference Institute’s Hatch-Waxman Boot Camp, June 9 – 10, 2014
Speaker, “Continuing Claim Construction Conundrums Impacting Markman Strategies, Paragraph IV Disputes – Master Symposium, October 3 – 4, 2013
Co-Chair, American Conference Institute’s Advanced Summit on Medical Device Patents, Chicago IL, March 5 – 6, 2013
Moderator, “View from the Bench: The Judicial Perspective on Medical Device Patent Litigation,” ACI’s Advanced Summit on Medical Device Patents, Chicago IL, March 5 – 6, 2013
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
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
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’s6th Tactical and Practical Guide to Freedom to Operate Conference, Philadelphia, Pa., July 30, 2012
