Overview

Scott Barnett is a partner and intellectual property attorney who focuses his practice on strategic counseling and guidance regarding intellectual property matters. Scott has extensive experience litigating complex intellectual property cases before Federal Courts, the Patent and Trademark Office, and the International Trade Commission. In addition to his litigation practice, Scott counsels clients on domestic and international patent procurement strategies, and prosecutes patents in the software, electrical, and mechanical arts.

  • Represents Petitioners and Patent Owners in post-grant review proceedings before the U.S. Patent and Trademark Office, including extensive experience in Inter Partes Review proceedings
  • Possesses significant appellate experience, particularly in the U.S. Court of Appeals for the Federal Circuit
  • Thought-leader in the emerging field of digital therapeutics, driving IP strategy for world’s leading prescription digital therapeutic (PDT) provider
  • Procures trademark registrations, litigates trademark disputes, and assists clients with marketing and branding strategies
  • Conducts IP due diligence as part of corporate transactions
  • Prepares and prosecutes patent applications across a wide span of technologies including software, automotive, life sciences, and mechanical

Services

Experience

Representative Matters

Federal Court Proceedings

  • Communication Interface Technologies, LLC. v. Regions Financial Corporation (E.D. Tex. 2021). Represented Defendant Regions in connection with patent infringement suit involving client-server communication protocols.  
  • Gerrity v. McLaren Health Care Corporation (E.D. Mi. 2021). Represented Defendant McLaren in connection with copyright infringement suit related to medical illustrations.
  • Estech Systems, Inc. v. Regions Financial Corporation (W.D. Tex. 2020).  Represented Defendant Regions in connection with patent infringement suit involving Voice over Internet Protocol (VoIP) technology. 
  • Milestone IP LLC v. Regions Bank (W.D. Tex. 2020). Represented Defendant Regions in connection with patent infringement suit involving database management and analysis technology. 
  • Route Guidance Systems LLC v. OnStar LLC (D. Del. 2020).  Represented Defendant OnStar in connection with patent infringement suit involving route calculation and guidance technology.  
  • FenF, LLC v. Groupon, Inc. (E.D. Mi. 2019). Represented Defendant Groupon in trademark and copyright suit related to toe stretcher products.
  • Arthrodesis Technology LLC v. Vilex in Tennessee, Inc. (E.D. Tenn. 2019).  Represented Defendant Vilex in patent infringement suit involving arthrodesis compression nail technology.
  • DirkThomas Solutions, LLC v. In-Situ Treatment Technologies (W.D. Pa. 2018).  Represented declaratory judgment plaintiff DirkThomas in patent infringement suit involving hydraulic fracturing technology.
  • Cellspin Soft, Inc. v. Under Armour, Inc. (N.D. Cal. 2017). Successfully defended Under Armour in patent infringement suit involving wearable technology.  The district court found the asserted patent to be invalid as directed to a patent-ineligible abstract idea.
  • Stern v. Globus Medical, Inc., 1-16-cv-00091 (D. Del. 2016).  Successfully represented defendant Globus Medical in a patent infringement suit involving spinal implant technology. Court disposed of Plaintiff’s primary theory of infringement on a motion for summary judgment.
  • Reckitt Benckiser Pharms., Inc. v. Watson Labs. (D. Del. 2016). Secured favorable bench trial ruling against generic manufacturers in ANDA litigations relating to Indivior’s leading opioid dependence treatment product, Suboxone® Film.
  • Wundaformer, LLC v. Flex Studios, Inc. (Fed. Cir. 2016). Argued patent appeal at the Federal Circuit on claim construction issue.
  • Innovative Automation LLC v. Baker & Taylor, LLC (E.D. Tex. 2015). Represented defendant Baker & Taylor in a patent infringement suit involving e-reader technology. 
  • Media Rights Techs., Inc. v. Capital One Financial Corporation (Fed. Cir. 2015). Represented defendant Capital One in successful appeal before Federal Circuit in a patent infringement suit involving digital rights management technology.
  • Wundaformer, LLC v. Flex Studios, Inc. (S.D.N.Y. 2015). Represented Defendant in patent infringement suit involving Pilates exercise equipment. Plaintiff stipulated to non-infringement following claim construction ruling in client’s favor.
  • Kingspan Insulated Panels, Inc. v. Centria, Inc. (W.D. Mich. 2015). Successfully represented declaratory judgment plaintiff / accused infringer in patent infringement suit involving insulated wall panel systems. 
  • LA-CO Indus., Inc. v. Techniweld USA, LLC (N.D. Ill. 2014). Represented Defendant in trade dress infringement suit involving design for handheld temperature indicator crayons. 
  • VideoShare LLC v Viddler Inc. (D. Del. 2013). Represented Defendant in patent infringement suit involving streaming video. 
  • Addiction and Detoxification Institute, LLC v. Coleman Institute LLC (N.D. Ill. 2013). Represented defendant opioid detoxification clinics in patent infringement suit involving Ultra-Rapid Opioid Detoxification (UROD) method. 
  • Media Rights Techs., Inc. v. Capital One Financial Corporation (E.D. VA 2013). Represented Defendant in patent infringement suit involving digital rights management technology. Case was dismissed via motion for judgment on the pleadings based on the Court’s finding that all asserted claims were invalid as indefinite.
  • AIA Eng’g Ltd. v. Magotteaux Int’l S/A (Fed. Cir. 2011). Represented declaratory judgment defendant Magotteaux in successful appeal involving ceramic wear components used for grinding, crushing, and conveying abrasive materials. Obtained a decision reversing the district court’s summary judgment of invalidity of Magotteaux’s reissue patent based on recapture.
  • Meyer Intellectual Props. Ltd. v. Bodum, Inc. (Fed. Cir. 2012). Represented Defendant in successful appeal before U.S. Court of Appeals for the Federal Circuit involving manual milk frothers. Obtained favorable decision reversing or vacating each of the seven issues on appeal, including summary judgments of infringement, a finding of willful infringement, and an award of attorney fees.
  • AIA Eng’g Ltd. v. Magotteaux Int’l S/A (M.D. Tenn. 2012). Represented patentee Magotteaux in jury trial involving ceramic wear component technology. Jury upheld validity of the patent, found that patent was willfully infringed and awarded client enhanced damages, attorneys’ fees, and costs.
  • AIA Eng’g Ltd. v. Magotteaux Int’l S/A (Fed. Cir. 2013). Successfully represented appellee Magotteaux in appeal contesting trial court’s determinations that (i) asserted patent was willfully infringed warranting enhanced damages, (ii) asserted patent was not invalid based upon alleged prior public use, and (iii) asserted patent was not invalid as obvious. Trial court’s verdict was affirmed in its entirety. 

Patent and Trademark Office Proceedings

  • Lead counsel for Petitioner in IPR No. 19-00625 challenging patent directed to electronic brake controller for controlling brakes of towed vehicle.  Trial instituted on all grounds presented in Petition; Final Written Decision found all challenged claims unpatentable on obviousness grounds; Final Written Decision affirmed in its entirety on appeal, Horizon Global v. Curt Manufacturing, No. 20-2203 (Fed. Cir.).   
  • Successfully represented trademark applicant in appeal before the Trademark Trial and Appeal Board overturning Examiner’s descriptiveness refusal with regard to trademark application serial no. 85552395 for the mark LASGANA CUPCAKE.
  • Principal drafter of Petitions of Inter Partes Review in IPR Nos. 16-1615, 16-1616, 16-1617, and 16-1783 involving artificial Christmas tree technology (decisions pending on appeal).
  • Principal drafter of Petition for Covered Business Method Review in CBM No. 16-14 involving digital exit-intent technology (case settled on favorable terms for our client after filing the Petition for CBM).
  • Successfully represented patent owner in Ex Parte Reexam No. 90/012,717 involving ceramic wear component technology (validity of all challenged claims upheld).

International Trade Commission (ITC) Proceedings

  • Successfully represented patent owner / complainant in ITC investigation No. 337-TA-644, In the Matter of Certain Composite Wear Components and Products Containing Same, resulting in the issuance of an exclusion order, cease and desist order, and attorneys’ fees.

Prior Experience

  • Harness, Dickey & Pierce
  • Troutman Sanders
  • Vedder Price

Credentials

Education

Admissions

Court Admissions

Recognition

Awards

  • Michigan Super Lawyers, Rising Star, 2019-2021
  • Illinois Super Lawyers, Rising Star, 2015-2017
  • Leading Lawyers "Emerging Lawyer," 2015-2017

Professional & Community Involvement

Easterseals of Michigan, Board of Directors

The Children's Research Fund, Junior Board Member

1871 - Chicago's Entrepreneurial Hub for Digital Startups, Legal Mentor

News & Insights

Press Releases

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