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

Scott A. McKeown

Partner

SCOTT A. McKEOWN is a member of the firm's Management Committee, and co-chairs the 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 patent reissue and reexamination proceedings, post grant patent trials, and appeals to the Court Of Appeals for the Federal Circuit. He offers his clients comprehensive post-grant patent counseling including advice on USPTO post grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Having successfully navigated USPTO post grant patent proceedings in which more than half a billion dollars was at stake, Mr. McKeown is one of the preeminent post grant practitioners in the United States. He is lead post grant counsel to some of the largest corporations in the world.

Mr. McKeown has been identified by Intellectual Asset Management as a “thought leader” and one of the world’s leading patent practitioners for adversarial post-grant USPTO patent proceedings. In addition, the Legal 500 has identified Mr. McKeown as a recommended patent attorney.

Mr. McKeown is the editor of the firm's Patents Post-Grant blog, regularly contributing insights and commentary on USPTO post-grant patent proceedings, trends, practice tips and news. 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). Currently, Mr. McKeown is the Chair of the American Bar Association (ABA), 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 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).

Friday, June 15, 2012

SPE Moves on From Central Reexamination Unit
I take a break from the normal discussions on patentspostgrant.com to briefly announce the addition of my new colleague, Ms.

Thursday, June 14, 2012

Egregious Misconduct Claim Shot Down by District Court
As most patent reexaminations are conducted in parallel to a related litigation, it is important that the USPTO be informed of the progress of a parallel litigation.

Tuesday, June 12, 2012

Software/E-commerce Patent Issues
This Thursday, June 14th,  my partner Michael Kiklis, a noted software patent specialist, will present...

Monday, June 11, 2012

BPAI Hiring & Rule Efforts
The USPTO is now heading into the home stretch of the America Invents Act (AIA) rule making efforts. The USPTO has committed to publishing the final rules relating to the new post grant mechanisms of the AIA by August 16th, at...

Thursday, June 07, 2012

Congress Mandates Speed, Extends Stautory Estoppel to ITC
The new post grant patent trials of the America Invents Act (AIA) are designed to provide a true alternative to patent litigation. That is to say, current patent reexamination proceedings are...

Wednesday, June 06, 2012

A successful reexamination from a defendant perspective does not always result in an overt claim change or cancellation.

Monday, June 04, 2012

CAFC Standard of Review Driven by Appeal Posture
The appeal of a rejection from the Board of Patent Appeals & Interferences (BPAI) to the Court of Appeals for the Federal Circuit (CAFC) is a relatively uncommon event in the prosecution...

Friday, June 01, 2012

Earlier this week, the USPTO issued a Notice of Proposed Rulemaking to implement the micro entity provision of the Leahy-Smith America Invents Act (AIA).  If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent...

Wednesday, May 30, 2012

Inability to Properly Examine Means-Plus-Function Claims in Patent Reexamination Creates Perplexing Result
Unlike most claims in patent reexamination, means-plus-function claims may not be properly accorded a broadest reasonable claim interpretation...

Wednesday, May 23, 2012

House Hearing Discusses Possible Technical Amendments
During last week’s hearing before the H