My focus is on acquiring, enforcing and analyzing intellectual property rights - inventions, trade secrets, trademarks, technology agreements, licensing, negotiations, compliance. I was recently principal outside intellectual property counsel in a $650 million acquisition of an Israeli medical device company. It was the largest deal of its type in the history of that country.
Avery Dennison, Abbott, Edwards Lifesciences, Greenberg Traurig, Hewlett Packard, Nike, actress Regina Hall, Royce Medical (subsequently acquired by Ossur) and Western Digital have entrusted me with legal matters (I was in-house at Western Digital).
As a partner in international and boutique law firms, I led patent litigation teams against 3M, Hunter Douglas, Dover and Whirlpool. Other duties have included:
* Managing large IP portfolios worth hundreds of millions of dollars
* Defending my written patent opinion in deposition, in litigation my client settled for $1 billion
* Testifying for a heart surgeon/inventor, who then deservedly won millions in patent royalties
Prior to my legal career, a startup run by a renowned professor hired me as a research engineer. NASA Ames and Cray Research funded my development of high-powered engineering algorithms and software.
Work has taken me to Korea, Japan, Europe, Singapore, Malaysia, Thailand, India, and Canada. The Los Angeles IP Law Association elected me President - a collaborative position in which communication, teamwork, budgeting and project management are key.
Thomson Reuters has listed me six times as a "Super Lawyer." Martindale-Hubbell® rates me as an AV-Preeminent attorney. My J.D. (w/honors) is from a Top 25 law school.
In the community, I serve on the Finance Committee of the Irvine Unified School District and work with Team Kids, Inc. to empower youth.
Practice areas
29 years
29 years
29 years
29 years
22 years
Languages spoken
English
State | Status | Acquired | Updated |
---|---|---|---|
CA | Active | 1993 | 06/18/2022 |
Legal answers | 2 |
Legal guides | 0 |
Award name | Grantor | Date Granted |
---|---|---|
Super Lawyer | Thomson Reuters | 2017 |
AV Preeminent Rated | Martindale-Hubbell | 2016 |
Super Lawyer | Thomson Reuters | 2016 |
Super Lawyer | Thomson Reuters | 2013 |
Super Lawyer | Thomson Reuters | 2012 |
Super Lawyer | Thomson Reuters | 2011 |
Super Lawyer | Law & Politics Magazine | 2009 |
Rising Star | Law & Politics Magazine | 2004 |
Volunteer of the Year | Hariett Buhai Center for Family Law | N/A |
Title | Company name | Duration |
---|---|---|
Founder/Technology Counsel | Viking Tech Law | 2015 - Present |
Director II/Assoc. General Counsel, Sr. IP Counsel | Western Digital | 2013 - 2015 |
Partner | Fulwider Patton, LLP | 2003 - 2013 |
Partner | Oppenheimer Wolff & Donnelly (now Fox Rothschild) | 1997 - 2003 |
Association name | Position name | Duration |
---|---|---|
Los Angeles Intellectual Property Law Association | Board of Directors/Past President | 2010 - Present |
International Trademark Association (INTA) | Anti-Counterfeiting and Enforcement Committee | 2005 - 2007 |
Intellectual Property Section, State Bar of California | Executive Committee | 2002 - 2004 |
New Matter, the IP Law Journal of the State Bar of California | Editor-in-Chief | 2001 - 2002 |
Publication name | Title | Date |
---|---|---|
California Causes of Action (James Publishing) | Chapters on Trademark Infringement, Trademark Dilution, Trade Dress Infringement, and Statutory and Common Law Unfair Competition | N/A |
School name | Degree | Graduated |
---|---|---|
University of California - San Diego | BS - Bachelor of Science | N/A |
University of California - San Diego | BS - Bachelor of Science | N/A |
Indiana University at Bloomington School of Law, Bloomington, Indiana | JD - Juris Doctor (with honors) | N/A |
University of California - Santa Barbara | M.S | N/A |
Conference name | Title | Date |
---|---|---|
Annual Meeting, National Docketing Assoc. | Big Data and Its Impact on Legal Operations | 2016 |
Annual Meeting, State Bar of California (Monterey) | From Batman to Paris Hilton: Design Patents for the Aesthetic Attorney | 2010 |
Whittier Law School Alumni Association (LA) | Hot Topics in Website Law: Privacy Policies, Terms of Use, and the DMCA Safe Harbor | 2010 |
Annual Meeting, State Bar of California (San Diego) | Pre-Filing Considerations in Intellectual Property Litigation | 2009 |
L.A. Gateway Chapter of the National Contract Management Association | Developments in Patent, Trademak & Copyright Law | 2009 |
Continuing Education of the Bar (CEB) Los Angeles | Trade Secret Protection - Pre-Litigation Aspects | 2008 |
Case name | Outcome |
---|---|
Edwards Lifesciences v. Medtronic (D. Minnesota) | Edwards settled the patent infringement litigation for $1 billion. |
Wilden Pump & Eng'g, LLC v. JDA Global LLC (C.D. California) | Trade secret, trademark and trade dress litigation settled favorably |
Patent Litigation: 3M v. Swift Green Filters (D. Minnesota) | Patent infringement case favorably settled |
US Patent No. 7,848,952: Method and System for Increasing Advance Orders | Excellent E-Commerce Patent Obtained for Inventor |
Patent License Litigation: Tillotson v. SAS Safety Corp. (N.D. Georgia 2010) | Victory (Court agreed it had no jurisdiction over patent license agreement) |
Posted by Ramesh
June 9, 2017
Karen Oster, Patent application Attorney on Aug 20, 2021
Relationship: Co-worker
Scott is one of my favorite attorneys that I recommend. He is experienced, knowledgeable, and able to communicate in terms clients can understand (not legalese). Not only is he an excellent attorney, but he truly cares about his clients. You can't go wrong with Scott.
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