THOMAS J. SCOTT , JR.

Thomas Scott, a partner in the firm’s Litigation Department, focuses on all aspects of intellectual property including patent prosecution, litigation and licensing, appellate practice (especially before the Federal Circuit) and technology licensing.

WORK FOR CLIENTS

Examples of Mr. Scott’s reported decisions include:

• In re Comiskey, 554 F.3d 967, 89 U.S.P.Q.2d 1641, 89 U.S.P.Q.2d 1655 (Fed. Cir. 2009), en banc order withdrawing, 499 F. 3d 1365, 84 U.S.P.Q. 2d 1670 (Fed. Cir. 2007)
• Bailey v. Dart Container Corp., 292 F.3d 1360, 63 U.S.P.Q.2d 1319 (Fed. Cir. 2002)
• Personalized Media Communications, L.L.C. v. US. Int'l Trade Comm’n, 161 F.3d 696, 48 U.S.P.Q.2d 1886 (Fed. Cir. 1998)
• Hazani v. US Int’l Trade Comm’n, 126 F.3d 696, 44 U.S.P.Q. 2d 1358 (Fed Cir. 1998)
• Wang Laboratories, Inc. v. Mitsubishi Electronics America, Inc., 103 F.3d 1571, 41 U.S.P.Q. 2d 1263 (Fed. Cir. 1997)
• In re Harvey, 12 F.3d 1061, 29 U.S.P.Q. 2d 1206 (Fed. Cir 1993)
• Wang Laboratories, Inc. v. Toshiba Corp., 993 F2d 858, 26 U.S.P.Q. 2d 1767 (Fed. Cir. 1993)
• Orthopedic Equipment Co. v. United States, 702 F.2d 1005, 217 U.S.P.Q. 193 (Fed. Cir. 1993)
• Enzo Therapeutics, Inc v. Yeda Research and Development Co., 477 F.Supp.2d 699, 467 F. Supp. 2d 579 (E.D. Va. 2007, 2006)
• Uniboard Aktiebolag v. Acer America Corp., 118 F. Supp. 2d 19 (D.D.C. 2000)
• Articulate Systems, Inc. v. Apple Computer, Inc., 66 F. Supp. 2d 105, 55 F. Supp. 2d. 78 (D. Mass. 1999)
• Wang Laboratories, Inc. v. Oki Elec. Indus. Ltd., 15 F. Supp. 2d 166 (D. Mass. 1998)
• Odetics, Inc. v. Storage Tech. Corp., 14 F. Supp. 2d 807, 47 U.S.P.Q. 1923; 14 F. Supp. 2d 800; 14 F. Supp. 2d 785; 47 U.S.P.Q. 2d 1573 (E.D. Va. 1998)
• Semiconductor Energy Laboratories Co. v. Samsung Elec. Corp., 24 F. Supp. 2d 537, 4 F.Supp. 2d 473 (E.D. Va. 1998)
• Bailey v. Dart Container Corp., 157 F. Supp. 2d 110 , 980 F. Supp. 560, 980 F. Supp. 584 (D. Mass. 2001, 1997)

Mr. Scott has developed significant patent portfolios for financial institutions and patent licensing organizations. He has negotiated numerous patent licenses which have collectively brought in more than $650 million in royalties. Mr. Scott has a continuing active practice before the U.S. Patent and Trademark Office in computer software technology and other complex electrical arts. He has tried numerous patent infringement cases to judgment, at least five before juries.

MEDIA

Mr. Scott is the co-author of “Proscribed Conduct for Patent Holders Participating in Standard-Setting Organizations,” IP Law & Technology Journal, Vol. 20, No. 10, October 2008, with Stephen T. Schreiner and Inge A. Osman. He is the co-author, with Eleanor M. Hynes, of “Reducing Your Risk as a Licensor or Licensee in Patent and Technology Licensing - The Important Terms,” which appeared in the June/July 2008 edition of The Licensing Journal.

In addition, Mr. Scott co-authored “Planning for the Brave New World: Are Business Method Patents Going to be Second Class Citizens?” (Intellectual Property & Technology Law, with Stephen T. Schreiner, June 2007); “Proving Patent Invalidity Based on Prior Use of a Back Office System” (IP Litigator, September/October 2006), “‘Intel’ Case Illustrates the Perils of Cross-licenses” (The National Law Journal, with Kevin T. Duncan, October 22, 2001), “Buyer Beware: A Cross-license May Still Be Lurking” (The National Law Journal, with Kevin T. Duncan, July 24, 2000), “Inventions Abroad Warrant Careful Contracting” (The National Law Journal, with Tyler S. Brown, May 18, 1998), and “Emerging Patent Infringement Problems for Government Contractors: Where Does the Buck Stop?” (Journal of Propriety Rights, with John R. Alison, vol. 16, 1991).

PROFESSIONAL EXPERIENCE

Prior to joining Goodwin Procter in 2007, Mr. Scott was a partner and head of the Intellectual Property Practice Group at Hunton & Williams LLP. Before that, he was a partner at Howrey & Simon.

BAR AND COURT ADMISSIONS

Mr. Scott is admitted to practice in the District of Columbia and Virginia, and before the U.S. Patent and Trademark Office, U.S. Tax Court, U.S. Court of Federal Claims, U.S. Court of Appeals for Federal Circuit, U.S. Supreme Court, U.S. District Court for the District of Columbia, U.S. District Court for the Eastern District of Virginia and the U.S. Court of Appeals for the Fourth Circuit.

RECOGNITION

Mr. Scott has been selected for inclusion in The Best Lawyers in America.