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Engineer Software

Location:
Reston, VA, 20191
Posted:
January 05, 2013

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Resume:

Robert Lawrence Scott 703-***-****

U.S. Patent Attorney and Executive

abhb7d@r.postjobfree.com

Summary

Seasoned U.S. Patent Attorney and Management Executive with over 7 years in strategic patent practice including litigation, preparation, prosecution, partnering, acquisition, diligence, licensing, and related activities and over 15 years in advanced technology including complex wireless telecommunications.

Highlights

Litigation

Reviewed and revised infringement complaints, tutorials, infringement and invalidity contentions Conducted pre-litigation review of television and display related patents, prepared claim charts and presented and discussed cases with outside litigation counsel

Conducted pre-litigation review of potential infringement of maritime system patent in Asia, prepared claim charts and presented results and discussed case with client

Professional Staff Management

Direct management of up to 6 patent professionals including staff with advanced engineering and legal degrees in both domestic and international environments including Asia and North America Implemented enhanced internal and external performance standards

Increased productivity measured as a reduction of outside costs per patent by insourcing critical prosecution functions. Decreased overall outside costs by negotiating more favorable arrangements with service providers

Patent Portfolio Management

Maintained a global patent docket of nearly 3000 assets including many complex, standards relevant patents Reduced prosecution and maintenance costs and doubled allowance rate

Performed pre and post acquisition diligence on high-quality standards and non-standards based patents Performed rapid intake of large patent portfolios

Patent Process Management

Managed Inter Partes and Ex Parte Re-examination of key patents resulting in allowance of all contested claims and addition of new claims Prepared responsive arguments, selected experts, and prepared exhibits for oral proceeding at EPO Board of Appeals Reviewed and prepared responsive arguments to appealed claims in the JPO. Resolved complex patent prosecution related issues by encouraging collaboration and focus on high quality claims

Client/Business Development

Extensive domestic and international business development. Meet with prospects to successfully develop business producing relationships in patent legal services, partnering, licensing, acquisition, and sales

Experience

VP Patent Administration at Wi-LAN Inc.

September 2011 -Present

Report directly to CEO and COO at Wi-LAN, recently named in the top ten in IEEE Spectrum’s

“Patent Power 2012” in the Communication/Internet Services category. Successfully manage professional staff of lawyers and non-lawyers conducting patent preparation and prosecution associated with growing telecommunications and advanced technology patent portfolio to reduce costs and increase allowance rates. Perform acquisition, due diligence, licensing, litigation support, re-examination, Develop key relationships in

Business Development, Technology & Licensing, Litigation and senior management to advance Wi-LAN’s strategy for global assertions. Travel extensively for acquisition, licensing and litigation meetings with key team members. Appear before governmental competition regulatory compliance board.

U.S. Patent Counsel, on behalf of Denso Corporation, et al. August 2003 to

September 2011

ATMD Bird & Bird, Singapore

As sole U.S. Patent Counsel in IP group of a large international firm dealing with contentious and non-contentious patent and related matters, managed matters in preparation, prosecution, litigation. Extensive international docket of over 300 active matters. Regular contributing author to Asia Legal Business.

IPICS Corporation – a wholly owned subsidiary of Denso, Nagoya Japan

As sole U.S. Patent Counsel in Foreign Patents Group, reporting to the President and Managing Director, managed outside counsel to advance DENSO Corp.’ s global automotive portfolio - DENSO, was rated "Most Innovative" company for 2008 by IP Today.

Reviewed U.S., European, and non-Japanese Asian substantive matters including new application preparation and complex prosecution including appeals, interference matters and other complex prosecution issues.

Conduct training and seminars related to U.S. Patent Practice including specification drafting, claims drafting, Supreme Court, Federal Circuit Appellate Court and Federal District Court case law.

Teach English language courses for native Japanese speakers.

Intensive Japanese language study at IPE Language Academy including evolving speaking, reading, and writing proficiency.

Partner at Posz Law Group

Prepare and prosecute complex automotive patent applications for DENSO and other Toyota

Group companies and IPICS Corp. of Nagoya Japan and other foreign and domestic client companies with advanced technologies including mobile handset and base station technology, carbon nanotube, superconductor, avionics, software radio, and satellite imaging, Ultra Wideband wireless technology, 802.xx(x), et al.

Prepare due diligence investigation, portfolio analysis and opinion for pre-joint

venture/merger/acquisition involving OLED/ILED display technology.

Prepare opinion for Section 337 Action (under 19 USC 1337)

Presenter at Tech Transfer seminar for Japan's Nara Institute of Science and Technology (NAIST).

Patent Associate, August 1995 to December 2002

Birch, Stewart, Kolasch & Birch

Prepare and prosecute complex patent applications for wireless and wired communications, vehicle navigation systems, semiconductor, and other technologies for large domestic, European, Japanese and Korean clients. Highlights include complex multipath processing technology for wireless communications, MPEG standards coverage, innovative input technology.

Lecturer at BSKB's globally renowned Summer Training Program geared toward foreign practitioners. Welcomed Japanese entourage, personally assisted with living, acclimatization, and entertainment arrangements during program.

Burns, Doane, Swecker & Mathis (now Buchanan Ingersoll)

Prepare and prosecute complex patent applications related to wireless communication, GUI,

superluminal ground penetrating radar and other technology.

Jenkens & Gilchrist

Prepare and prosecute patent applications in wireless technology areas including base station technology coding channel management technology (CDMA, TDMA, FDMA, OFDM, DSSS) frequency re-use, power management, diversity; mobile station technology -display technology, controls technology, call progress management, multipath processing, antenna diversity, power management, multi-user technology.

Prepare and prosecute patent applications in computer technology areas including semiconductor, Internet search engine, and computer packaging technology for large domestic computer manufacturers.

Prepare and prosecute patent applications in Kalina cycle (ammonia) power plant technology including nitriding metal treatment and advanced materials and ceramics

Law Offices of Robert Platt Bell

Prepare and prosecute patent applications in semiconductor technology including graphics processors Telecommunications Technical Experience, 1986 to 1995

Senior Software Engineer/Consultant at HDS

Software, system and product development for soldier mounted digital video recording and image capture, compression and transmission system with critical emphasis on usability. Wavelet compression for image collection and transmission over 900MHz SINCGARS radio network system for ARMY Communication and Electronics Command (CECOM).

Senior Software Engineer/Patent Engineer at Pulsecom -a division of Hubbell

Embedded SW and system developer for Digital Loop Carrier subscriber line units and systems. Developed embedded software for TR-303 compatible Digital Subscriber Line Access Controller including configurable signal processing section for dynamic equalization. Developed real time interprocessor messaging operating system for networked subscriber line units. Acted as technical liaison for preparation of patent application for SONET VT Mapper that was later patented (see e.g. 7,079,555).

Software Engineer at Raytheon E-Systems

Cost Account/Program Manager and Software Engineer for SIGINT data collection, analysis, and transcription workstation. Responsible for interface design, coding and maintenance including timeline and voice signature display and playback portions. Program cost reporting and control responsibility and other management responsibility.

Security Clearance

Engineering Technician/Intern at Linus Technologies, Inc.

Engineering/Product Development team completed several working production prototypes of early portable computer with LCD touch sensitive screen for offshore manufacture in Taiwan. Solved high performance low power LCD panel driver and control module issues. Solved packaging issues related to FCC compliance with RFI emissions. Solved battery life and charging profile issues. Solved problems such as linearity and stylus input section sensitivity on touch sensitive screen with Indium Tin Oxide (ITO) coating. Integrated hardware with proprietary handwriting recognition module with learning capability and forms entry software.

Education

George Mason University School of Law 1994

J.D., Patent Law Specialty Track, 1991-1994

Activities and Societies: Moot Court

George Mason University

Significant Master's Program coursework in Signal Processing, Network Architecture and Protocols,

1989 -1990

George Mason University 1989

B.S.E.E, Signal Processing, Network Architecture and Protocols, 1985 -1989 Activities and Societies: IEEE MicroMouse Robotic Competition, IEEE Computer Society Chapter President, AFCEA Chapter President, Hemlock Overlook Outdoor Education Officer, Intramural Basketball

James Madison High School

Activities and Societies: Sports -Football; Music -Concert Choir, Madrigals under the Grammy Award winning directorship of Robert Shafer renowned professor and artist in residence at Shenandoah Conservatory; Science

-Advanced placement in math, science, physics, chemistry and computer science.

Honors and Awards

U.S. NAVY Expeditionary Medal USS TARAWA (LHA-1) PERSIAN GULF / INDIAN OCEAN

Advanced Electronics – Engineering Division including motor rewind and controls



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