Scott A. McKeown
Partner
Tel (703) 412-6297

Scott A. McKeown

Partner

SCOTT A. McKEOWN is a partner in the firm's Post Grant Patent practice group focusing on post-grant counseling, litigation and related prosecution issues. He leads the Post Grant Patent 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 reissue applications, ex parte and inter partes reexamination proceedings and appeals to the Board of Patent Appeals and Interferences (BPAI). He offers his clients comprehensive post-grant patent counseling including advice regarding ex parte and inter partes patent reexaminations concurrent with complex International Trade Commission (ITC) and district court litigations.

Having protected numerous patent portfolios in reexamination valued at more than half a billion dollars, Mr. McKeown is particularly skilled at providing strategic advice on patent portfolio development and management. Mr. McKeown is lead reexamination counsel to some of the largest corporations in the world.

Mr. McKeown is an editor of the firm's Patents Post-Grant blog, regularly contributing insights and commentary on existing and proposed post-grant options, trends, practice tips and news relating to patent reexamination, reissue and patent reform legislation. He lectures and writes extensively on post-grant proceedings at the USPTO and is a member of the teaching faculty of the Practicing Law Institute (PLI).

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 many other related technologies.

Representative Matters

As lead patent reexamination counsel to Motorola Inc., successfully recovered significant patents of the company’s handheld device portfolio from patent reexamination. These patents are asserted against several competitors in concurrent litigation in the ITC and district courts.

As lead patent reexamination counsel to Eastman Kodak, responsible for recovering their electronic camera portfolio from patent reexamination. Concurrent litigation is pending in the ITC and district courts throughout the U.S.

As lead patent reexamination counsel to Good Technology, successfully recovered the patent portfolio from both ex parte & inter partes patent reexamination proceedings resulting in a favorable settlement of concurrent litigation with a competitor ($267.5 million).

Judge Newman Again Questions the Constitutionality of “Do Over” Patent Reexamination
Monday, May 21, 2012

CAFC Forced to Disturb Earlier Ruling Based on More Liberal Patent Reexamination Standards
Patent reexamination is often initiated in parallel with an ongoing infringement litigation.

Leading Software Patent Litigator Joins Oblon Post Grant Patent Trial Team
Thursday, May 17, 2012

Patent Litigator Joins Post Grant Team
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new partner, Mr. Michael Kiklis to the Oblon Post Grant Patent Practice Group.

Update From the Central Reexamination Unit
Wednesday, May 16, 2012

Improvements Speed Patent Reexamination Process
At last week’s AIPLA Spring Meeting, the Director of the Central Reexamination Unit (CRU), Ms.

America Invents Act Implementation Hearing
Tuesday, May 15, 2012

Senate Hearing Wednesday May 16th
Tomorrow, the Senate Judiciary Committee will hold a hearing on the Implementation of the America Invents Act at 10AM.

Real-Party-in-Interest & Privies Before the USPTO
Monday, May 14, 2012

Reach of Estoppel More of a Concern After AIA
The application of statutory estoppel to patent challengers was a concept first introduced in 1999 with the advent of inter partes patent reexamination (

BPAI Considers Expanding Per Curiam Decision Practice
Thursday, May 10, 2012

BPAI Considering Expanding Per Curiam Decision Practices to Combat Backlog
At this week’s AIPLA Spring Meeting, Chief Judge Smith of the Board of Patent Appeals & Interferences (BPAI) provided an update on the Boa

CAFC Again Recalibrates Recapture Doctrine
Wednesday, May 09, 2012

In re Youman Faults BPAI Recapture Analysis
Back in 2010,

Prometheus Based Patent Reexamination Requests?
Monday, May 07, 2012

Patentable Subject Matter Challenge Advanced in Patent Reexamination
This past March, as most in the patent community are well aware, the Supreme Court recalibrated 35 U.S.C.

USPTO After Final Pilot Program Ends Shortly
Thursday, May 03, 2012

USPTO Program Ends June 16th
Some pre-grant news today….as detailed previously, th

USPTO Justifies Supplemental Examination Guidelines
Wednesday, May 02, 2012

Item of Information Limit Accounts for Practical Realities
Supplemental Examination (SE) is a mechanism of the AIA that is designed to effectively

All Blogs