Scott A. Herbst

Partner

Scott A. Herbst, recruiting/hiring partner for the firm’s Palo Alto office, primarily practices patent law. Focusing on litigation, he has significant experience in virtually all phases of complex district court litigation. He particularly enjoys the post-trial and appellate phases of litigation, and has gained extensive appellate experience from his practice before the U.S. Court of Appeals for the Federal Circuit.

Mr. Herbst draws on his litigation experience in supervising the preparation and prosecution of patent applications, and participating in appeals to the Patent Office’s Board of Patent Appeals and Interferences. He also counsels clients on obtaining patent protection and building and managing patent portfolios, and provides opinions on patentability, infringement, and validity.

With his formal technical education in the computer-related and electrical/electronic arts, Mr. Herbst has developed through his work a predominant technical expertise in telecommunications (wired and wireless) and data communications in DWDM optical networks as well as Internet technologies, such as SSL 3.0. His practice before the various patent tribunals has encompassed a much wider range of technologies, including automotive arts speech recognition, electrical motors, and medical devices.

Highlights

• Representative cases include: Nortel Networks Corp. v. Ciena Corp., (N.D. Cal.); NetMoneyIN v. VeriSign, Inc., et al. (D. Arizona). Storz Instr. Co. v. Alcon Labs., Inc., 135 F.3d 777 (Fed. Cir. 1998); Comark Communications v. Harris Corp., 156 F.3d 1182 (Fed. Cir. 1998); C.R. Bard, Inc. v. Boston Scientific Corp., 250 F.3d 761 (Fed. Cir. 2000); Gaus v. Conair Corp., 363 F.3d 1284 (Fed. Cir. 2004); and Harris Corp. v. Ericsson, Inc., 417 F.3d 1241 (Fed. Cir. 2005).
• Served as law clerk to the Honorable Helen Wilson Nies, chief judge emeritus of the U.S. Court of Appeals for the Federal Circuit.
• Worked as a product engineer for Eaton Corporation on projects relating to the automation of heavy-duty truck transmissions.

Professional Recognition

• AV® rated by Martindale-Hubbell.

Professional Activities

• American Intellectual Property Law Association
• 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. "On The Horizon: A New Federal Circuit—Part II," Law 360, Jan. 27, 2010.
• Coauthor. "On The Horizon: A New Federal Circuit—Part I," Law 360, Jan. 20, 2010.
• Coauthor. "Case Probes Disclosure Duty to Standards Committee," San Francisco Daily Journal, April 7, 2003.
• "The Patentability of Business Methods," Michigan Computer Lawyer, Winter 1993.
• Coauthor. "Intellectual Property Rights In Computer-Related Developments," Laches, Dec. 1992.