Scott A. Herbst

Partner

Scott Herbst has over 15 years of experience trying intellectual property cases, encompassing virtually all phases of district court litigation and Federal Circuit appeals. He has served as second chair in complex, multi-patent and trade secret cases, handling a host of case-critical tasks.

Mr. Herbst served a two-year clerkship with Helen W. Nies, Chief Judge Emeritus, U.S. Court of Appeals for the Federal Circuit. This foundation has enabled him to develop strong positions during district court proceedings that have withstood attack on appeal.

In addition to his litigation practice, Mr. Herbst supervises patent prosecution, participates in U.S. Patent and Trademark Office appeals, counsels clients on obtaining patent protection and building and managing patent portfolios, and provides legal opinions assessing patentability, infringement, and validity.

Mr. Herbst has experience with diverse technologies, including telecommunications (wired and wireless), data communications in DWDM optical networks, Internet security/encryption (e.g., SSL 3.0) and web-based user-activity trending; automotive arts (e.g., spark ignition timing, sheet metal stamping, and suspension control); as well as medical devices (e.g., blood glucose monitors, pacemakers, and phacoemulsification devices).

Highlights

• TREN Techs. v. Homestore, Inc. (N.D. Cal. 2006-09): Represented TREN as second chair, enforcing patent related to tracking user movement on websites to identify trends.
• UTStarcom v. Starent Networks (N.D. Ill. 2008-09): Defended Starent against allegations of patent infringement and trade secret misappropriation; briefed various summary judgment motions and a motion for sanctions (spoliation of evidence).
• Net MoneyIN v. VeriSign, Inc. (D. Az. 2001-09): Defended VeriSign as second chair in suit alleging infringement of multiple patents directed to online payment processing, successfully invalidating most of plaintiff’s asserted claims before district court, on appeal, and on remand. The parties eventually settled.
• Nortel Networks Corp. v. Ciena Corp. (N.D. Cal. 2000-2003): Represented Nortel Networks as second chair, enforcing patents related to DWDM optical rings and related trade secrets. Obtained favorable multimillion dollar settlement.
• WiAV Solutions v. Motorola (Fed. Cir. 2009): Drafted appeal briefs seeking reversal of dismissal of case for lack of standing to assert patents for WiAV Solutions. Appeal pending.
• Net MoneyIN v. VeriSign, Inc. (Fed. Cir. 2008): Represented VeriSign, drafted appeal brief seeking affirmance of the district court’s invalidity rulings. Affirmed-in-part, reversed-in-part.
• Avocent v. ATEN Int’l (Fed. Cir. 2008; U.S. Sup. Court 2009): Represented ATEN, defending dismissal of Avocent’s case (lack of personal jurisdiction); drafted ATEN’s brief opposing Avocent’s petition for rehearing en banc and ATEN’s opposition to Avocent’s petition for certiorari. Both petitions denied.
• UTStarcom v. Starent Networks (Fed. Cir. 2007): Represented Starent, drafted appeal brief defending the district court’s summary judgment rulings (noninfringement). Judgment affirmed.
• Stambler v. RSA Security and VeriSign, Inc. (Fed. Cir. 2005): Represented VeriSign, drafted appeal brief seeking affirmance of district court’s noninfringement rulings. Judgment affirmed.
• Other Appellate Cases: MStar Semiconductor, Inc. v. International Trade Com'n, 2006 WL 1476137 (Fed. Cir. May 25, 2006); Harris Corp. v. Ericsson, Inc., 417 F.3d 1241 (Fed. Cir. 2005); Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004); C.R. Bard, Inc. v. Boston Scientific Corp., 250 F.3d 761 (Fed. Cir. 2000); Comark Communications v. Harris Corp., 156 F.3d 1182 (Fed. Cir. 1998); and Storz Instr. Co. v. Alcon Labs., Inc., 135 F.3d 777 (Fed. Cir. 1998).

Professional Recognition

• AV^® rated by Martindale-Hubbell.

Professional Activities

• American Intellectual Property Law Association (Diversity Committee and LGBT Subcommittee)
• Intellectual Property Owners Association
• Federal Circuit Bar Association
• State Bar of California
• District of Columbia Bar
• State Bar of Michigan
• Bay Area Lawyers for Individual Freedom (BALIF)
• National LGBT Bar Association (affiliate of the American Bar Association)

Select Publications

• Coauthor. "Stopping Improper Patenting of Traditional Knowledge," Law360, Dec. 10, 2010.
• Coauthor. "On the Horizon: A New Federal Circuit," The Federal Circuit Bar Journal, June 2010.
• Coauthor. "Strategies for Litigating False Marking Cases," Daily Journal, March 30, 2010.
• Coauthor. "On The Horizon: A New Federal Circuit—Part II," Law360, Jan. 27, 2010; "On The Horizon: A New Federal Circuit—Part I," Law360, Jan. 20, 2010.