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Scott Kamholz has scored major wins for clients in PTAB cases involving blockbuster life science technologies. He combines his experience as an Administrative Patent Judge and background in medicine, biophysics, and engineering to advise clients in the life sciences sector on a variety of complex patent litigation matters and PTAB proceedings. He has handled dozens of PTAB proceedings since returning to private practice.
As one of the first judges to preside over AIA trials, Dr. Kamholz wrote many widely cited opinions that established basic principles for PTAB proceedings, mentored numerous other judges, and spoke extensively on AIA trial procedures. His proceedings concerned a wide variety of technologies, including pharmaceuticals, biologics and biosimilars, medical devices, polymers, energy production, software, electronics, and business methods. Dr. Kamholz handled over 120 AIA proceedings and also over 120 appeals in patent applications and patent reexamination proceedings.
- Lead Counsel in 19 AIA proceedings since 2018.
- Lead Counsel for patent owner in multiple IPR proceedings on patents concerning medical devices used in radiation therapy.
- Lead Counsel for patent owner in multiple IPR procedings on patents concerning solar cells.
- Lead Counsel for patent owner in multiple IPR proceedings on patents concerning hybrid car technology.
- Lead Counsel for patent owner in a PGR proceeding on a patent concerning co-administration of an immune checkpoint inhibitor and a bacterial formulation including bifidobacteria.
- Counsel for biopharma company as patent owner in an IPR challenging a patent concerning immunoglobulin production.
- Lead Counsel for petitioner in an IPR proceeding on a patent concerning wireless communication technology.
- Represented biopharma company as patent owner in an IPR challenging a patent concerning AVASTIN® cancer therapy. The PTAB denied institution in August 2018.
- Advised Eli Lilly and Company as petitioner in an IPR filed against a patent owned by the Trustees of the University of Pennsylvania allegedly covering Lilly’s ERBITUX® cancer therapy. The PTAB found all challenged claims unpatentable, a decision summarily affirmed by the Federal Circuit on appeal in September 2018.
- Advised Bristol-Myers Squibb Company as patent owner in an IPR brought by Momenta Pharmaceuticals, Inc., challenging a patent concerning ORENCIA® rheumatoid arthritis therapy. The PTAB rejected petitioner’s challenge and confirmed the patentability of all challenged claims. The Federal Circuit dismissed Momenta’s appeal for lack of standing and mootness in February 2019.
- Represented AstraZeneca as patent owner in an IPR challenging a patent concerning SYMBICORT® asthma and COPD therapy. The PTAB denied institution in July 2017
- Counsel of Record for Pharmaceutical Research and Manufacturers of America (PhRMA) in numerous amicus briefs before the Supreme Court of the United States and the Court of Appeals for the Federal Circuit.
Previous Experience
- U. S. Patent Trial and Appeal Board (PTAB), Administrative Patent Judge
February 3, 2020, Bloomberg Law
Scott Kamholz is quoted in Bloomberg Law regarding the decreased acceptance of Patent Trial and Appeal Board (PTAB) petitioners’ requests to review a patent’s validity. Losing a PTAB challenge makes it more difficult for an alleged infringer to convince a jury that a patent is defective, says Mr. Kamholz. “That all makes petitions risky and a little less ...
April 9, 2019, Bloomberg Law
Scott Kamholz spoke with Bloomberg Law about upcoming PTAB trials. Mr. Kamholz says, “What we have is a whole lot of new evidence coming in at the very end of the proceeding.” He said the PTAB is “doing its best” to balance competing demands in setting up a motion to amend the system, but petitioners now have “a relevant complaint” because of the compressed ...
April 26, 2018, Intellectual Asset Management
Scott Kamholz is quoted in an Intellectual Asset Management article regarding the Supreme Court's decision in Oil States Energy Services v. Greene’s Energy Group. In this case, the Court decided that inter partes review does not violate Article III or the Seventh Amendment of the U.S. Constitution. “I have to say that Justice Thomas engaged in Supreme Court best ...
Lawyers Weigh In On PTAB Cases At The High Court
April 24, 2018, Law360
Scott Kamholz is quoted in a Law360 article providing opinions about the Supreme Court's recent decisions in two patent cases, Oil States Energy Services LLC v. Greene’s Energy Group LLC and SAS Institute Inc. v. Iancu. According to Kamholz, “The Oil States decision has no significance at all on practicing before the PTAB. It concerned a constitutionality ...
April 23, 2018, Law360
Scott Kamholz is quoted in a Law360 article regarding speculation that the Patent Trial and Appeal Board may switch to the claim construction standard used in district court. Kamholz says that by having courts and the PTAB work on the same standard, there is a stronger basis for judges in one forum to rely on claim constructions rulings in the other. "By ...
Depositions At PTAB Vs. District Court: What To Know
April 18, 2018, Law360
Scott Kamholz is quoted in a Law360 article regarding differences between depositions at the Patent Trial and Appeal Board and district court. According to Kamholz, the purpose and execution between the two are quite distinct. “About the only thing in common between the two is the court reporter,” he says. “Lawyers cannot come into a PTAB deposition expecting it ...
April 11, 2018, The Recorder
Scott Kamholz is quoted by The Recorder in an article regarding USPTO Director Andrei Iancu's ideas for reforming the patent system. “My sense is that [Iancu] is not focused on harmonizing outcomes at the PTAB and district court, but rather to give both the PTAB and district judges more basis to rely on each other’s claim constructions,” Kamholz says. “That will ...
What To Know Before Asking The PTAB To Exclude Evidence
March 14, 2018, Law360
Scott Kamholz is quoted in a Law360 article examining what to know before asking the PTAB to exclude evidence. According to Kamholz, "Their preference is to have it in and make of it what they will, rather than go through the formal process of deciding whether to exclude it from the record." Kamholz adds that establishing that a piece of evidence is a printed ...
4 Ideas For How The PTAB Could Provide More Guidance
February 2, 2018, Law360
Scott Kamholz is quoted in a Law360 article examining how the Patent Trial and Appeal Board [PTAB] can improve its guidance. Commenting on streamlining the process, Kamholz says it could assign much of the responsibility of designating precedential opinions to the board's lead judges, with the rest of the members having more of an advisory role. "The board ...
PTAB: no longer a death squad
May 15, 2017, World Intellectual Property Review
Scott Kamholz and Peter Chen are quoted in a World Intellectual Property Review article examining the current landscape of the U.S. Patent Trial and Appeal Board. According to Kamholz, the PTAB has never been “out to get” patents. Kamholz also believes that trial procedures have changed "remarkably little." He says, “I remember discussing all sorts of issues in ...
Laterals of note
April 10, 2017, Commercial Dispute Resolution
Andrea Reister is quoted in a Commercial Dispute Resolution article regarding the arrival of Peter Chen and Scott Kamholz to the firm’s Patent Office Trials Practice. According to Reister, “Virtually all significant patent litigation matters involve co-pending IPRs, so having a strong patent office trials practice with a deep bench of senior attorneys is ...
Lateral Report: The Few, the Proud, the March Movers
April 3, 2017, Litigation Daily
Andrea Reister is quoted in a Litigation Daily article regarding the arrival of Peter Chen and Scott Kamholz to Covington’s Patent Office Trials Practice. According to Reister, “We are thrilled to add Peter and Scott to our team as we expect the demand for patent office trials to continue to grow in the coming years.”
Pair of Ex-PTAB Judges Join Covington
March 31, 2017, The Recorder
Scott Kamholz, Peter Chen, and Andrea Reister are quoted by The Recorder in an article regarding the recent additions to the firm’s Patent Office Trials Practice Group. According to Kamholz, Covington’s team stood out for its sophistication. “I was very impressed with their level of skill and preparation, and I found through working that case with them that we ...
March 30, 2017
SILICON VALLEY—Former Patent Trial and Appeal Board (PTAB) judges Peter Chen and Scott Kamholz have joined Covington’s Patent Office Trials Practice. Mr. Chen and Dr. Kamholz are the only former PTAB judges to enter private practice who have overseen Leahy-Smith America Invents Act of 2011 (AIA) trial proceedings from institution through final decision. Peter ...
March 30, 2017, Daily Journal
Simon Frankel and Peter Chen are quoted in a Daily Journal article regarding the arrival of Chen and Scott Kamholz to the firm’s Patent Office Trials Practice. According to Frankel, while the firm’s patent litigation activity spans the coasts, most of its patent office practice has been based in Washington D.C. Chen’s addition will help expand the firm’s patent ...
Covington Adds Two Former PTAB Judges To Patent Group
March 30, 2017, Law360
Andrea Reister, Peter Chen, and Scott Kamholz are quoted in a Law360 article regarding the recent additions to the firm’s Patent Office Trials Practice Group. According to Reister, “We are thrilled to add Peter and Scott to our team as we expect the demand for Patent Office trials to continue to grow in the coming years. Their experience in the high-tech and ...
Expert Testimony Not Helping IP Owners Avoid AIA Review
March 8, 2017, Law360
Scott Kamholz is quoted in a Law360 article regarding the impact of allowing patent owners to present expert testimony in their responses to America Invents Act review petitions. According to Kamholz, “Generally speaking, if the patent owner's witness is just contradicting the petitioner’s witness ... then the [Patent Trial and Appeal Board] would tend to order ...
May 2016, IP Frontline
April 4, 2016, Intellectual Asset Management
April 2016, IP Frontline
October 2, 2015, Biopharm International
The Brainy Bunch
Fall 2015, Corporate Counsel
Peter Chen and Scott Kamholz were featured in Corporate Counsel’s Intellectual Property supplement highlighting judges on the Patent Trial and Appeal Board who are “shaking up patent law.”
September 18, 2015, New York Law Journal