Scott A. McKeown

Partner

scott-mckeown
  • JD, Temple University Beasley School of Law, 1999
  • BS (Electrical Engineering), with honors, Temple University, 1993

Qualifications

  • Pennsylvania, 1999
  • Virginia, 2004
  • Not admitted in the District of Columbia. Practice is limited to matters and proceedings before federal courts and agencies.
  • U.S. Patent and Trademark Office, 1998

Court Admissions

  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • Supreme Court of Pennsylvania
  • Supreme Court of Virginia
  • PTAB Bar Association, Board of Directors
  • American Bar Association
  • American Intellectual Property Law Association (AIPLA)
  • Institute of Electrical and Electronics Engineers (IEEE)
  • Chambers USA: America’s Leading Lawyers for Business
  • The Legal 500 US (2012, 2015)
  • Managing IP Magazine: Virginia “Litigator of the Year” (2017)
  • Managing IP Magazine: PTAB “Litigator of the Year” (2015)
  • Best Lawyers in America: Litigation–Intellectual Property (2015-2017)
  • IAM Patent 1000: The World’s Leading Patent Practitioners (2012-2017)
  • Managing IP Magazine: “IP Star” (2013-2017)
  • The National Law Journal: IP Trailblazers & Pioneers (2014)
  • Temple University: Gallery of Success (2013)

Scott A. McKeown

Partner

Scott McKeown is a partner in Ropes & Gray’s intellectual property litigation practice and chair of the firm’s Patent Trial and Appeal Board (PTAB) group. He focuses his practice on post-grant patent counseling and litigation matters at the U.S. Patent and Trademark Office (USPTO) and related appeals to the U.S. Court of Appeals for the Federal Circuit. Scott handles all aspects of post-issuance patent proceedings, specializing in administrative trials before the PTAB, such as inter partes review (IPR) and post-grant review (PGR). He also provides advice on USPTO post-grant proceedings concurrent with complex International Trade Commission (ITC) and district court litigations.

Named one of the world’s leading patent practitioners for post-grant proceedings by Intellectual Asset Management, Scott is the most active PTAB trial attorney in the U.S., having handled more than 150 PTAB matters since 2012, including those in which more than $500 million was at stake. He currently serves as lead post-grant counsel to some of the world’s best-known innovators.

As a Professorial Lecturer in Law at The George Washington University Law School and a member of the teaching faculty of the Practising Law Institute, Scott lectures and writes extensively on PTAB proceedings. He is a former chair of the American Bar Association, Intellectual Property Law Section Committee 104 (Post-Grant USPTO Proceedings), and currently sits on the Board of Directors of the PTAB Bar Association. He is also a contributing editor to the Sedona Conference Working Group 10: Patent Litigation Best Practices. Scott also maintains an award-winning blog, PatentsPostGrant.com, which examines developments in patent litigation, including issues related to USPTO post issuance proceedings. 

Prior to becoming an attorney, Scott worked as an electrical engineer for a government agency, troubleshooting embedded systems and circuit designs. He also has experience across a wide range of related technologies, including computer software, wireless telecommunication protocols, network architectures, e-commerce applications, analog and digital signal processing, and consumer electronics.

Experience

  • ClearCorrect Operating LLC v. Align Technology Inc. (IPR2016-00270): All challenged claims of a patent directed to Invisalign® dental appliances canceled. Appeal pending before the CAFC.*
  • Arris International et al. v. Sony Corp. (IPR2016-00827) & (IPR2016-00828): Represented patent owner. Defended patents directed to video processing technology. All challenges denied by the PTAB.*
  • Viasat v. Advanced Media Networks (IPR2016-00628) (IPR2016-00629) (IPR2016-00795) & (IPR2016-00796): Defended patents directed to mobile WiFi technology. All challenges denied by the PTAB.*
  • J-Squared Inc. d/b/a University Loft v. Sauder Woodworking (IPR2015-00774) & (IPR2015-00958): Successfully challenged claims to a modular chair design. Appeals pending before the CAFC.*
  • A leading multinational technology company v. Rockstar Consortium (IPR2015-00090; 91; 197; 200-202; 206-7; 210-12; 215; 235-36): Filed 14 IPRs against the former Nortel patent portfolio relating to telecommunication methodologies and interfaces. Settled on behalf of client.*
  • eBay Inc. v. MoneyCat Ltd. (CBM2014-00091, CBM2014-00093): Claims directed to electronic payment systems cancelled on behalf of client eBay.*
  • Eastman Kodak Company, AGFA Corp., Esko Software BVBA and Heidelberg USA v. CTP Innovations LLC (IPR2014-00788-91): Filed IPRs on behalf of the largest printing companies in the world. Successfully derailed a patent assertion campaign lodged against small to medium size pre-press printing companies across the country. Appeals pending before the CAFC.*
  • Square Inc. v. REM Holdings LLC(IPR2014-00312) & Reexamination 95/001618; and 95/001,620: Prevailed on behalf of the challenger in canceling all challenged claims of patents directed to mobile payment hardware.*
  • Time Warner Cable, Paramount Studios; et al v. Nissim Corp. (IPR2014-00961 and IPR2014-00962): Represented patent owner in defending patents directed to DVD technology. All challenges denied by PTAB.*
  • Sony Mobile v. Adaptix Inc. (IPR2014-01524; IPR 2014-01525): PTAB instituted trial in IPR2014-01524 as to all challenged claims of Adaptix patent 6,947,748. On May 19, 2015, all challenged claims of Adaptix patent 7,454,212 were canceled in IPR2014-01525.*
  • E.I. DuPont de Nemours & Co. v. Merck & Co. Inc. and Intervet International B.V. (Interference 106,016): Prevailed in a patent interference directed to veterinary medicine on behalf of DuPont (Senior Party 12/663,848).*
  • Cisco Systems Inc. v. RPX Clearinghouse (IPR2014-01220): Settled, post-institution on behalf of Cisco.*
  • Innolux Corp v. Semiconductor Energy Labs(IPR2013-00028, 00038, 00060, 00064, 00065, 00066, and 00068): Challenged the semiconductor patents of Semiconductor Energy Labs (SEL) directed to complex TFT semiconductors and manufacturing methodologies. Seven IPRs were filed attacking several hundred claims in total, all of which were instituted by the PTAB. As a result of these IPRs, the litigation between the companies was stayed, and the dispute settled.*
  • K40 Electronics LLC v. Escort Inc.(IPR2013-00203; IPR2013-00240): In the first and only IPR to date to include live testimony, the PTAB found in favor of client K40 Electronics, canceling all challenged claims.*
  • Unified Patents Inc. v. Clouding IP LLC(IPR2013-00586): The PTAB granted a total victory for Unified Patents, finding all challenged claims unpatentable and denying patent owner’s motion to amend.*
  • GSI Commerce Solutions v. Clear With Computers(CBM2013-00055): Settled on behalf of GSI.*
  • Ariosa Diagnostics v. Isis Innovation (IPR2012-00022, IPR2013-00250; 00276, 00277, 00308): Ariosa is the leading provider of noninvasive prenatal tests for genetic anomalies.*
*Experience prior to joining Ropes & Gray

Publications

  • Cited, “In Win for Patent Owners, PTAB Clamps Down on Repeat Attacks,” National Law Journal (September 11, 2017)
  • Quoted, “Leading U.S. Patent Attorney Heads to Ropes & Gray,” Commercial Dispute Resolution (August 25, 2017)
  • Quoted, “PTAB Trial Attorney Joins Ropes & Gray,” Intellectual Property Magazine (August 17, 2017)
  • Quoted, “Ropes & Gray Appoints Most Active PTAB Trial Attorney in US,” World Intellectual Property Review (August 16, 2017)
  • Quoted, “Ropes & Gray Adds D.C. Patent Litigator,” Reuters (August 16, 2017)
  • Quoted, “Ropes & Gray Bolsters DC Office with PTAB Litigator,” Law360 (August 16, 2017)
  • Cited, “Wake Up Call,” Bloomberg BNA’s Big Law Business (August 16, 2017)
  • Quoted, “Ropes & Gray Hires Leading PTAB Litigator,” IP Pro Patents (August 16, 2017)
  • Quoted, “Oblon’s Scott McKeown to Take Over PTAB Practice at Ropes & Gray,” The American Lawyer (August 15, 2017)
  • Author (Treatise), “Post-Grant Proceedings Before the Patent Trial and Appeal Board,” PLI Press
  • Author, “Federal Circuit Tea Leaves: The Expected Outcome in WiFi One,” The Current: The Journal of PLI Press, Vol. 1, No. 1 (Summer 2017) 
  • Author, “The Top 5 PTAB Trial Developments of 2016,” University of Texas School of Law: 12th Annual Advanced Patent Law Institute (March 9-10, 2017)
  • Author, ”Beyond Cuozzo,” AIPLA Quarterly Journal: Volume 44, Number 4 (December 14, 2016)
  • Author, “Alice Through the CBM Looking Glass,” IPLaw360 (June 21, 2016)
  • Author, “2015 PTAB Petitioner Trends and 2016 Predictions,” Managing IP (February 10, 2016)
  • Author, Post-Grant Proceedings Before the Patent Trial and Appeal Board,” Practicing Law Institute (July 1, 2013)
  • Co-Author, “Post-Grant Proceedings Before the Patent Trial and Appeal Board,” Practicing Law Institute (September 2012)
  • Author, “The Enactment of the America Invents Act Brings a Variety of Post Grant Options to U.S. Patent Law,” European Patent Law Blog (October 2011)
  • Co-Author, “Patent Reexamination & Litigation in the Northern District of Illinois – Avoiding Malpractice Claims,” Chicago IP Litigation Blog (December 18, 2009)
  • Author, “NTP v. RIM: The Ghost of Christmas Past,” BNA Patent, Trademark & Copyright Journal (November 27, 2009)

Presentations

  • Speaker, “Evolving PTAB Trial Practice: Navigating Complex Procedural Rules,” Strafford Webinars (May 25, 2017)
  • Moderator, “Identifying the Best Strategies for you to Deal with the Administrative Changes,” Managing IP PTAB Forum 2017 (May 16, 2017)
  • Co-Panelist, “Parallel Proceedings: The Good, The Bad, and The Ugly,” ACI’s 3rd Annual Post-Grant PTO Proceedings (May 11, 2017)
  • Speaker, “Adapting to PTAB Rule Changes & Complying with the Administrative Procedure ACT (APA),” MIP US Patent Forum 2017 (March 21, 2017)
  • Speaker, “The Evolution of PTAB Trial Practice – Just Because You Can, Doesn’t Mean You Should!,” 22nd Annual Intellectual Property Institute (March 10, 2017)
  • Speaker, “Impact of Recent Federal Circuit Decisions,” 12th Annual Advanced Patent Law Institute (March 9-10, 2017)
  • Speaker, “Mind Your Manners! Or, Ethics and Inequitable Conduct Before the PTAB,” PTAB Bar Association Inaugural Conference (March 3, 2017)
  • Speaker, “Top 3 Things You Need To Know: PTAB,” AIPLA Mid-Winter Meeting (February 3, 2017)
  • Speaker, Naples Patent Law Experts Conference (January 17, 2017)
  • Speaker, “After-Final Practice: Navigating Expanding PTO Options to Compact Patent Prosecution,” Strafford Webinar (November 22, 2016)
  • Speaker, “Four Years of the PTAB” and “A General Overview of the Patent Litigation Landscape,” IAM’s Patent Law & Policy: Courts, Congress, and the Monetisation Landscape (November 15, 2016)
  • Moderator, “Advanced Practice Before the PTAB; Institution, the New Battle Ground,” Institute for Law & Technology of the Center for American & International Law: Doubleheader PTAB Bench-Bar Program (October 18, 2016)
  •  Speaker, IPR-CBM Roundtable Discussion, The George Washington University Law School (October 7, 2016)
  • Speaker, “Leveraging PTAB Trial Records in Concurrent Litigation,” PatentsPostGrant.com Webinar Series (September 21, 2016)
  • Speaker, “After-Final Practice: Navigating Expanding PTO Options to Compact Patent Prosecution,” Strafford Webinars (September 8, 2016)
  • Speaker, “The Tail That Wags the Dog: Leveraging the Administrative Procedure Act at the PTAB,” PatentsPostGrant.com Webinar Series (July 27, 2016)
  • Speaker, “After Cuozzo from the U.S. Supreme Court,” Intellectual Property Owners’ Association Webinar Series (July 6, 2016)
  • Speaker, “PTAB & the Federal Circuit,” MIP PTAB Forum 2016 (May 12, 2016)
  • Speaker, “New PTAB Rules: Strategy, Insights and Outlook of Things to Come,” PatentsPostGrant.com Webinar Series (April 13, 2016)
  • Speaker, PLI’s USPTO Post-Grant Patent Trials 2016 (March 31, 2016)
  • Speaker, “Claim Construction During Post-Grant Review,” AIPLA Quarterly Journal First Annual Symposium (March 18, 2016)
  • Co-Panelist, “Parallel Proceedings: Tight Rope Balancing Act At The District Courts and PTAB,” ACI’s 2nd Annual Post-Grant PTO Proceedings (March 15, 2016)
  • Co-Chair and Panelist, USPTO Post-Grant Patent Trials 2016 (March 14, 2016)
  • Speaker, “The Administrative Procedure Act (APA) & the PTAB,” PatentsPostGrant.com Webinar Series (March 2, 2016)
  • Speaker, “Evolving PTAB Trial Practice: Navigating Complex Procedural Rules,” Strafford Legal Webinars (February 4, 2016)
  • Speaker, “Proactive Patent Procurement and Prosecution Strategies: Minimizing the Thread of Post-Grant Challenges,” Indianapolis Bar Association’s Lunch Lecture Series (January 27, 2016)
  • Speaker, PTAB Panel Discussion, McKinney Law School’s Distinguished Lecturer Series at Indianapolis University (January 26, 2016)
  • Speaker, “PTAB Year in Review,” PatentsPostGrant.com Webinar Series (January 7, 2016)
  • Speaker, IAM’s Patent Law & Policy: Courts, Congress, and the Monetisation Landscape (November 17, 2015)
  • Speaker, “Is the IPR Process Too Restrictive – Can the Parties Really Litigate All the Necessary Issues?” 15th Annual Sedona Conference on Patent Litigation: Improving the Efficiency of Handling Patent Litigation (October 19-20, 2015)
  • Speaker, “Proactive Patent Procurement and Prosecution Strategies; Minimizing the Threat of Post-grant Challenges,” Strafford Webinar Series (October 8, 2015)
  • Speaker, “Leveraging Post-Grant Patent Proceedings Before the PTAB,” Strafford Webinar Series (July 9, 2015)
  • Speaker, “The PTAB’s Post-Grant Review Proceedings: A Review of the Evidence,” Duke Law Center for Innovation Policy (June 3, 2015)
  • Speaker, “Discovery in AIA Trials,” USPTO PTAB Boardside Chat (June 2, 2015)
  • Speaker, “Evolving PTAB Trial Practices: Navigating Complex Procedural Rules – Strategically Using Routine and Additional Discovery, Requests for Joinder, and Motions to Amend,” Strafford Webinars (December 15, 2014)
  • Speaker, “Business Method Patent Challenges after CLS Bank,” PatentsPostGrant.com Webinar Series (November 19, 2014)
  • Speaker, “Preparing for War: PTAB Impact on Bio/Pharma Disputes,” PatentsPostGrant.com Webinar Series (October 23, 2014)
  • Speaker, “Privies, Real-Parties-in-Interest & Joint Defense Scenarios at the PTAB,” PatentsPostGrant.com Webinar Series (September 24, 2014)
  • Speaker, “PTAB Past, Present, and Future: Post Grant Proceedings at the PTO,” Webinar (September 23, 2014)
  • Speaker, “Post-Grant Proofing Your Patent Portfolio: Prosecuting for the New Patent Assertion Landscape,” PatentsPostGrant.com (July 23, 2014)
  • Speaker, “Alice Corp v. CLS Bank International: Implications for Patent Practitioners and a Look at How The Supreme Court is Changing the Patent Law Landscape,” Oblon Spivak Webinar (July 14, 2014)
  • Speaker, PLI’s USPTO Post-Grant Patent Trials 2014 (April 28, 2014)
  • Speaker, “Game Over: The Game Changing Impact of the Patent Trial Appeal Board on Non-Practicing Entities,” American Bar Association’s 29th Annual Intellectual Property Law Conference (April 3, 2014)
  • Speaker, PLI Seminar: USPTO Post-Grant Patent Trials 2014 (March 27, 2014)
  • Speaker, AIA and Bloomberg BNA Post-Grant Patent Practice Conference (February 19, 2014)
  • Speaker, “Proactive Patent Procurement & Prosecution Strategies: Minimizing the Threat of Post-Grant Challenges,” Strafford Webinars (February 13, 2014)
  • Speaker, “PTAB Roadblock to Patent Monetization,” PLI’s Patent Briefing Series (February 12, 2014)
  • Co-panelist, “Appeals from the PTAB: Laying the Groundwork for the Federal Circuit,” Intellectual Property Owner’s Association and IP Chat Channel (February 6, 2014)
  • Speaker, “Patent Trolls Under Fire; Strategies, Tactics & Legislation Impacting University Patents & Licensing,” Tech Transfer Central Webinar (October 22, 2013)
  • Speaker, “Post-Grant Proceedings & Pending Litigation: Fresenius v. Baxter,” Strafford Webinars (September 11, 2013)
  • Speaker, “Battling Patent Trolls: Leveraging New Executive Orders, AIA and Other Tools,” Strafford Webinars (July 31, 2013)
  • Speaker, “Post-Grant Patent Proceedings Before the PTAB,” Strafford Publications  (June 12, 2013)
  • Co-chair and Speaker, “Post-Grant Strategies & Tactics,” PLI’s USPTO Post-Grant Patent Trials 2013 (April 15, 2013)
  • Speaker, “Covered Business Methods Post-Grant Review: The First Six Months,” Patent Administrative Law Symposium: Patent Subject-Matter Eligibility Today: Software Genomics and Business Methods  (April 12, 2013)
  • Speaker, “Patentability Trials of the AIA – The First 120 Days,” 28th Annual Intellectual Property Law Conference (April 3, 2013)
  • Speaker, “Post-Grant Strategies and Tactics” PLI’s USPTO Post-Grant Trials 2012 in New York (March 27, 2013)
  • Speaker, “Post-Grant Strategies and Tactics,” PLI’s USPTO Post-Grant Patent Trials 2013 in Chicago (March 4, 2013)
  • Speaker, “Claim Construction Standards,” Advanced Patent Law Institute (January 24, 2013)
  • Speaker, “Benchmarking AIA and New Rulings,” CenterForce Conferences (November 13, 2012)
  • Speaker, 2012 Japan Intellectual Property Associate Conference (October 26, 2012)
  • Speaker, “New Post-Grant Patent Review & Patent Trolls: How Quicker Patent Reexamination Will Impact Infringement Litigation,” Washington Legal Foundation (August 2012)
  • Speaker, “American Invents Act,” Strafford Webinars (August 2, 2012)
  • Speaker, “Trial & Discovery Practice Before the New USPTO Patent & Appeal Board,” American Bar Association (August 2, 2012)
  • Speaker, “Intervening Rights in patent Litigation after the Federal Circuit’s Decision in Marine Polymer and Aspex Eyewear,” Intellectual Property Owner’s Association (April 18, 2012)
  • Speaker, “Inter Partes Review and Post-Grant Review: New Regime and New Strategies,” Latham & Watkins LLP (April 5, 2012)
  • Co-speaker, “Contested Proceedings Before the New Patent Trial and Appeal Board: Navigating PTO Practice Under the New Procedures,” Strafford Webinars (April 3, 2012)
  • Speaker, “Parallel Proceedings: Strategies for Preserving Causes of Action and Your Case in Chief in Multiple and Simultaneous Forums,” American Conference Institute (ACI) (March 26, 2012)
  • Speaker, “New Supplemental Examination: USPTO Outlines New Rules,” Strafford Webinars (February 14, 2012)
  • Speaker, “Post-Issuance Activities and Enforcement of Patents Under the America Invents Act,” American Intellectual Property Law Association (AIPLA) (January 12, 2012)
  • Speaker, “USPTO New Rules of Practice for Ex Parte Appeals: Change & Simplification for 2012,” Practising Law Institute (PLI) Live Webinar (January 9, 2012)
  • Speaker, “Patent Reexamination as a Litigation Tool,” 2011 Japan Intellectual Property Seminar (November 4, 2011)
  • Speaker, “USPTO Post-Grant Proceedings After New Patent Reform Law,” Strafford Webinars (September 28, 2011)
  • Speaker, “Patent Reissue: Benefits, limitations and Strategies,” Strafford Webinars (July 12, 2011)
  • Speaker, “Law Firm Media Professionals in DC – The Best in Blogs,” Crowell & Moring (June 20, 2011)
  • Speaker, “Streamlined Patent Reexamination Proceedings: Petition Practice Management,” USPTO Roundtable on Streamlining Patent Reexamination (June 1, 2011)
  • Speaker, “Choosing Between Ex Parte & Inter Partes Patent Reexamination,” USPTO (March 2011)
  • Speaker, “Strategic PTO Reexamination: A Defense Perspective (Part 1),” BNA IP Law Resource Center (February 18, 2011)
  • Speaker, “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011,” Practising Law Institute Seminar in New York (February 4, 2011)
  • Speaker, “Reissue and Reexamination Strategies and Tactics with Concurrent Litigation 2011,” Practising Law Institute Seminar in San Francisco (January 10, 2011)
  • Speaker, “Induced/Joint Patent Infringement in Global-Tech & Golden Hour,” Managing Intellectual Property (MIP) Webcast (December 20, 2010)
  • Speaker, “2010 Patent Reexamination/Reissue Year in Review,” LexisNexis Podcast (December 15, 2010)
  • Speaker, “US Patent Litigation,” Japanese Intellectual Property Association (October 27, 2010)
  • Speaker, “Inter Partes Reexamination – A Highly Effective Tool in the Litigator’s Toolbox,” 4th Annual Patent Law Institute (March 1, 2010)
  • Speaker, “Strategic Use of Merger in Post-Grant Proceedings (Reissue, Ex Parte, and Inter Partes Reexamination),” PLI’s Reissue and Reexamination Strategies & Tactics with Concurrent Litigation 2010 in New York (February 11, 2010)
  • Speaker, “Strategic Use of Merger in Post-Grant Proceedings (Reissue, Ex Parte, and Inter Partes Reexamination),” PLI’s Reissue and Reexamination Strategies & Tactics with Concurrent Litigation 2010 in San Francisco (January 11, 2010)
  • Speaker, “In re Bilskin and 35 U.S.C. § 101,” Los Angeles Intellectual Property Law Association (LAIPLA) and Pepperdine University (January 29, 2009)
  • Speaker, “Software Claims, A USPTO Perspective,” American Bar Association’s 2006 Summer IPL Conference (June 21, 2006)
  • Speaker, “Intellectual Property: What Engineers Need to Know About Patents,” Engineering Seminar at Temple University (November 18, 2005)