W Scott Petty (Scott)

Representative examples of Mr. Petty’s recent intellectual property experiences include:

• Conducted pre-litigation counseling, prepared formal opinions on patent invalidity and non-infringement and developed product roadmaps to “design-around” patent infringement claims.
  
  
• Developed license compliance strategies governing a client’s development and commercial distribution of software products featuring a combination of open source- licensed software and proprietary software.
  
  
• Drafted and negotiated a variety of intellectual property-related agreements, including license agreements, joint product development agreements, consulting agreements and non-disclosure agreements.
  
  
• Assisted clients in obtaining U.S. and foreign patents in the technical fields of cellular and Internet telephony, medical devices, energy, data and voice communications, and data communication and fiber optic cables and in connection with a variety of information technology architectures and computer software programs.
  
  
• Developed and managed a successful patent portfolio program on behalf of a nationally recognized financial services institution.
  
  
• Defended clients in connection with patent infringement assertions made by patent holding companies.
  
  

• Updated a patent policy governing the disclosure of essential patent claims to a technology standards organization in connection with the creation and approval of technology standards by industry members.

Representative Clients and Matters

Mr. Petty is intellectual property counsel for such clients as Credit Suisse Securities (USA) LLC, Towers Perrin, American Greetings Corporation, Federal Reserve Bank of Atlanta, Delta Air Lines, IBM Internet Security Systems, Superior Essex Inc., and EMS Technologies, among many others.

A representative sample of matters supported by Mr. Petty includes:

• Building a patent portfolio covering Check 21 and Automated Clearing House (ACH) transaction processing services and check image processing systems on behalf of a national financial services institution.
  
  
• Pursuing U.S. and international patent protection for a global investment banking and financial services firm in connection with its innovative financial products and services and information technology inventions.
  
  
• Directed a patent prosecution program for a leading creator, manufacturer and distributor of social expression products in its pursuit of innovative methodologies for marketing and displaying greeting cards.
  
  
• Conducted investment-related due diligence assessments on behalf of a major investment bank to evaluate intellectual property portfolios and technologies held by various technology companies.
  
  
• Obtained patent protection for technological and business process advances made by an international airline.
  
  
• Managed the strategic growth of a patent portfolio held by a leading manufacturer of fiber optic and cabling products for a variety of innovative data communication cable products and manufacturing processes.
  
  
• Pursued accelerated examination of U.S. utility patent applications before the U.S. Patent & Trademark Office under newly implemented examination guidelines governing the Patent Office’s expedited examination procedures.
  
  
• Assisted an internet security company in seeking patent protection for software programs and technologies that assess vulnerabilities of computer networks to unauthorized intrusions and protect host computers and computer networks from unauthorized intrusions and rogue software programs.
  
  
• Prepared and prosecuted U.S. and international patent applications on behalf of university research foundations for a variety of technologies developed in academic research laboratories.
  
  
• Obtained patent protection for an electronic defense company in connection with its technological advances in the fields of satellite communications and microwave and radio frequency subsystems and devices.
  
  
• Served as intellectual property counsel for a textiles manufacturer by assisting strategic patent and brand name protection initatives and managing the company’s extensive U.S. and international patent and trademark portfolios.
  
  
• Conducted “freedom to operate” product clearance evaluations to assist an international product manufacturer with its commercial introduction of new consumer product designs.
  
  
• Drafted and negotiated a license agreement on behalf of an international provider of vehicle navigation products and services for a patent portfolio covering personal navigation device technology.
  
  
• Developed a patent policy governing the disclosure of essential patent claims to a technology standards organization in connection with the creation by industry members of new technology standards.
  
  
• Protected an early-stage technology company’s foundation technology platform for evaluating highway traffic patterns based on active monitoring of cellular telephony activity for cell sites located proximate to heavy vehicle traffic areas.

• Achieved the strategic development of an entrepreneur’s comprehensive patent portfolio covering innovative processes for encouraging consumers to view broadcast television advertisements by providing consumers with an incentive to submit responses to the advertisements.