Scott Penner helps clients with intellectual property issues they may be facing in the US and around the world and has extensive experience in patent infringement and defense, domestic and international intellectual property portfolio management, intellectual property licensing, trade secret protection, copyright infringement and defense, opinion letters and clearance studies, due diligence, and source code analysis. His primary focus is on patent litigation, and he works with clients to protect and enforce their various technologies, including medical devices, computer software, and hardware design.
Besides helping his clients protect and obtain intellectual property rights in IP-critical jurisdictions, Scott advises them on how to best position themselves to avoid disputes and reduce their exposure in the event a dispute arises. His clients span myriad sectors and range from large multi-national corporations to small technology start-ups. He has experience in federal and state courts, proceedings before the Patent and Trial Board, and in the infringement and nullity courts in Germany.
As part of his practice, Scott works closely with the engineers and inventors who are implementing the technologies as well as the corporate executives making the business and financial decisions on how best to proceed. Scott’s educational background in Computer Science coupled with his prior work experience in the tech industry allows him to “speak code” to the engineer and discuss high-level business goals with executives so he can offer thoughtful and sound legal advice.
As a seasoned litigator, Scott has successfully defended, mediated, and obtained favorable settlements for his clients on many occasions. The technologies Scott has litigated are varied and diverse and include parental controls for DVD, e-mail encryption, CPAP devices including masks and humidifiers, computer malware detection, dental implants, DSL, Wi-Fi, Internet backbone standards such as GFP-F and GFP-T, pulse oximeter hardware and associated software to calculate blood-oxygen levels, Internet marketing and advertising, operating system module loading, power supply circuitry, and golf-ball technology just to name a few.
Scott often assists clients in obtaining patent protections for their business critical technologies, with a particular emphasis on complex computer science related topics such as encryption. For example, Scott conducted an in-depth review of a startup company’s source code to compare the product against the company’s then existing patent portfolio to determine whether the patents covered the developed product. Based on that review, Scott helped revise the existing patent portfolio to better protect the mission critical developed business technologies. He also created a new international based strategy to protect the company’s new inventions.
When one of Scott’s clients is involved in a potential merger, acquisition, or other deal/service venture, Scott can add tremendous value by conducting a unique and comprehensive source code analysis stemming from his computer science education and work experience. Scott can review a potential acquisition target’s source code and provide high level feedback regarding the quality and state of the code to allow the acquiring company to better gauge the potential integration risks and costs associated with the source code. This service allows the acquiring company to reduce its exposure to potential trade secret information while still obtaining critical intelligence regarding the complexity of integrating the source code into existing systems.
Prior to joining Eversheds Sutherland, Scott worked as both defense and plaintiff’s counsel on behalf of start-ups to Fortune 100 companies. Before law school, Scott worked for several years in the high-tech industry, serving as a project manager at Tellme Networks and Microsoft Corporation as well as a lead systems engineer for mybesthealth.com.
Awards and Rankings
Selected for inclusion in the Southern California Super Lawyers - Rising Stars (2014-2018)
Experience
Mediated a settlement agreement for a software encryption company accused of patent infringement.
Obtained a favorable settlement in a patent litigation case for a large software company after drafting and filing a motion for sanctions against the patentee for excessive discovery abuses.
Obtained a favorable settlement for a patent owner and licensee in multi-patent litigation involving garage door openers.
Obtained summary judgment of lack of standing resulting in dismissal of a case and a complete victory for a client in the wireless space.
Obtained a favorable settlement for clients in the dental space after invalidating a patent asserted against them.
Nullified a German patent eliminating the potential for international liability in a multi-patent, multi-jurisdiction litigation involving malware detection.
Presentations
Remedies & Evolution of Damages Theory (May 7, 2019)
IP Counsel Cafe
Scott Penner moderates a panel with Rob Lytle of Microsoft and Leah Waterland of Cisco System discussing remedies and evolution of damages theory at IP Counsel Cafe’s 2019 Palo Alto meeting. Having ...
Special Interest Session: Academy for Radiology and Biomedical Imaging Research Imaging Shark Tank Session (November 26, 2018)
RSNA 2018
Scott Penner serves as a panelist to judge and provide feedback on investment pitches made by aspiring companies at a Special Interest Session of RSNA 2018 for the Academy for Radiology and ...
Special Interest Session: Preparing Imaging Investigators to Dive into the 'Shark Tank' (November 27, 2017)
RSNA 2017
Scott Penner serves as a panelist to judge and provide feedback on investment pitches made by aspiring companies at a Special Interest Session of RSNA 2017 on the topic of Preparing Imaging ...
Developing Your Medical Physics Innovations Into IP Assets (August 2, 2017)
AAPM 2017
Scott Penner presents Developing Your Medical Physics Innovations into IP Assets at the American Association for Physicians in Medicine’s 2017 annual conference. Topics include intellectual property ...
Developing and Protecting Your IP to Create Business Value (November 28, 2016)
RSNA 2016
Scott Penner presents Developing and Protecting Your IP to Create Business Value at a Special Interest Session of RSNA 2016 on the topic of Preparing Radiologist to Jump into the “Shark Tank.” ...
