Scott A. McKeown
| Partner –Post Grant Patent Practice Group Tel (703) 412-6297 Fax (703) 413-2220 smckeown@oblon.com [send email] |
SCOTT A. McKEOWN is a partner in the firm’s Post Grant Patent Practice Group focusing on post-grant counseling and USPTO procedures, litigation and related prosecution issues. He leads the Post Grant team responsible for electronics, wireless communications, software and computer-related inventions and business methods.
Mr. McKeown handles all aspects of post-issuance proceedings at the United States Patent and Trademark Office (USPTO) including patent reissue applications, supplemental examination, ex parte and inter partes patent reexamination proceedings, Inter Partes Review, Post Grant Review, appeals to the Patent Trial & Appeal Board (PTAB) and Court of Appeals for the Federal Circuit (CAFC). He offers his clients comprehensive post-grant patent counseling including guidance regarding post grant USPTO proceedings concurrent with complex ITC and district court litigations. As the lead post grant counsel to some of the largest corporations in the world, Mr. McKeown has successfully recovered numerous patent portfolios from adversarial post grant proceedings valued in the hundreds of millions of dollars.
Mr. McKeown is editor of www.PatentsPostGrant.com, regularly contributing insights and commentary on existing and proposed USPTO post-grant mechanisms, trends, practice tips and news and CLE events relating to USPTO post grant proceedings. He lectures and writes extensively on these topics and is a member of the teaching faculty of the Practicing Law Institute (PLI). Currently, Mr. McKeown serves as Vice-chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post Grant USPTO Proceedings)
A former electrical engineer, he has worked with a wide range of technologies, including computer software, wireless telecommunication protocols and network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics. In the telecommunication arts, Mr. McKeown has worked extensively with IP routing and signaling protocols, ATM and wireless communication protocols. He also has a broad breadth of experience with OFDM systems, CDMA, TDMA, FSK, QAM and the 802.11 family of protocols.
In the consumer electronic arts, Mr. McKeown’s practice has a strong focus in audio and video processing and display technologies, discs, signal compression and encoding schemes, recording medium formatting and construction, and related technologies.
Mr. McKeown received his Law degree from Temple University School of Law. He received his Bachelor of Science degree in Electrical Engineering from Temple University with honors.
Mr. McKeown is admitted to the Pennsylvania and Virginia State Bars and is registered to practice before the U. S. Patent and Trademark Office. He is a member of the Institute of Electrical and Electronics Engineers (IEEE) and the American Intellectual Property Law Association (AIPLA). Mr. McKeown is also a board member of the Temple University College of Engineering Board of Visitors.
Related News, Articles & Presentations
- The Enactment of the American Invents Act Brings a Variety of Post Grant Options to U.S. Patent Law (Articles) European Patent Case Law Blog, October 6, 2011
- USPTO Issues Mixed Ruling in NTP Wireless Email Patents (Articles, McKeown quoted) Wall Street Journal, August 1, 2011
- Patent Bill with First-to-File Standard Passes Committee (Articles, McKeown quoted) FDANEWS, Devices & Diagnostics Letter, Vol., 38 No. 16
- U.S. Appeals Court to Consider NTP’s Wireless-Email Patents (Articles, McKeown Quoted) Wall Street Journal, February 9, 2011
- Board of Patent Appeals & Interferences Reverses All Rejections of QPSX Patent Reexamination (News) Oct 22, 2010
- Motorola Corporation Settles All Litigation with Research in Motion (RIM) (News) Jun 2010
- Nortel May Raise as Much as $1.1 Billion From Patents (Articles) Bloomberg Business Week, May 26, 2010
- BPAI Emphasizes Obviousness Test in Reversing Inter Partes Design Patent Reexamination (Articles) Patents Post-Grant Blog (www.patentspostgrant.com), April 28, 2010
- Patent Reexamination & Litigation in the Northern District of Illinois — Avoiding Malpractice Claims (Articles)
Chicago IP Litigation Blog, Posted December 18, 2009 by R. David Donoghue, Guest Post by Scott A. McKeown Dec 18, 2009 - NTP v. RIM: The Ghost of Christmas Past (Articles) Patent, Trademark & Copyright Journal, 79 PTCJ 115 Dec 2009
- Oblon, Spivak Launches Patents Post Grant Law Blog (News) Nov 9, 2009
- Reexamination of Financial Systems Technology (FST) Database Patent Favorably Concluded (News) Oct 23, 2009
- Visto Corporation Settles Global Patent Litigation with Research in Motion (RIM) for $267.5 Million (News)
Jul 16, 2009 - Oblon, Spivak Forms Two New Practice Groups (News) Mar 2009
- PTO Reexamination Finds Convolve Patent Valid (News) Aug 28, 2008
- U.S. Patent & Trademark Office Confirms Validity of Visto Corporation Patents (News) Aug 27, 2008
Speaking Events
2012
2011
- 2011 Japan Intellectual Property Association (JIPA) Seminar (Alexandria Virginia, November 4, 2011)
- 2011 Japan Intellectual Property Association (JIPA) Seminar (Osaka Japan, October 26, 2011)
- USPTO Post-Grant Proceedings After New Patent Reform Law, Meeting the New Requirements for Post Grant Review, Inter Partes Review & Supplemental Examinaiton (Web Seminar, September 28, 2011– Stafford)
- Patent Reissue: Benefits, Limitations and Strategies (Web Seminar, July 12, 2011 –Strafford)
- Law Firm Media Professionals in DC – Best in Blogs (Washington DC, June 20, 2011)
- Choosing Between Ex Parte & Inter Partes Patent Reexamination (BNA Podcast March 10, 2011)
- Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011
Practicing Law Institute (PLI). New York, NY. Feb 4, 2011 (Co-Chair) - Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011
Practicing Law Institute (PLI). San Francisco, CA. Jan 10, 2011 (Co-Chair)
2010
- Inducement/Joint Patent Infringement in View of Global-Tech and Golden Hour
(Web Seminar–Managing Intellectual Property Magazine) December 20, 2010 - Patent Reexamination as a Cost Effective Litigation Tool
Japanese Intellectual Property Association (JIPA). Osaka, Japan. Oct 27, 2010 - Patent Law Institute (4th Annual)
Practicing Law Institute (PLI). PLI New York Center-New York, NY. Mar 1-2, 2010 - Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010
Practicing Law Institute (PLI). PLI New York Center-New York, NY. Feb 11-12, 2010 - Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2010
Practicing Law Institute (PLI). PLI California Center- San Francisco, CA. Jan 11-12, 2010
2009
- The Twelfth Annual Washington in the West Conference
Los Angeles Intellectual Property Law Association (LAIPLA) and Pepperdine University. Skirball Cultural Center, Los Angeles, CA. Jan 29, 2009 - 2006 Summer IPL Conference
American Bar Association (ABA). Boston, Massachusetts. Jun 21-24, 2006
English




