PROFESSIONALS

Scott R. Samay

Scott Samay is a litigation partner whose practice focuses on patent, other intellectual property, and commercial litigation matters. Scott has litigated complex patent infringement matters involving a range of computer, telecommunications, electronic, medical device, and manufacturing technologies. He has also litigated cases involving pharmaceutical products, including ANDA patent infringement cases. On behalf of his clients, Scott has conducted Markman hearings and has served as trial and appellate counsel in federal and state courts on a variety of matters. IAM’s edition of The World’s Leading Patent Professionals recognized Scott as “a real-deal, quick on his feet courtroom trial lawyer—a pleasure to work with and impressive to watch.” (IAM Patent 1000 2016).

Experience

Scott’s representative matters have included the following:

  • Conducted a 5-week bench trial resulting in a finding that patents alleged to cover purportedly abuse-proofed oxymorphone formulations were invalid. (Southern District of New York)
  • Conducted a private arbitration on behalf of an electronics company resulting in a finding that the company’s principal product was not subject to royalties under a licensing agreement. (Private Arbitration)
  • Conducted a 12-day bench trial resulting in a finding of noninfringement and rulings that several patents alleged to cover the multi-billion dollar “reformulated” Oxycontin® product  were invalid. (Southern District of New York)
  • Conducted a two-week jury trial adverse to a large patent pool obtaining a defense verdict based on estoppel. (New York Supreme Court)
  • Obtained favorable claim construction ruling regarding claims of a telecommunication patent that resulted in consent judgments of noninfringement for client and all members of defense group. (District of Delaware)
  • Argued Markman hearing regarding the asserted claims of a telecommunications patent that resulted in a prompt and favorable settlement before the claims construction decision issued. (District of Delaware)
  • Conducted an arbitration hearing resulting in a finding that confirmed our client's control over pharmaceutical development of a promising new drug and rejected all claims that the client breached any contractual obligations. (Private Arbitration)
  • Conducted a two-week arbitration hearing resulting in a finding of no liability for our pharmaceutical client on contract claims, which the plaintiff asserted were worth in excess of $1 billion. (Private Arbitration)
  • Obtained a grant of summary judgment that found a pharmaceutical patent invalid on behalf of a generic pharmaceutical company in ANDA litigation. (District of New Jersey)
  • Asserted telecommunications patent against five defendants obtaining three permanent injunctions and a royalty-bearing license agreement. Won claim construction on fourteen of fourteen terms and defeated remaining defendant’s motion for summary judgment for invalidity. (Southern District of New York)
  • Obtained summary judgment of invalidity on patent addressed to a method of using a blockbuster anti-cancer drug. (Eastern District of Michigan)
  • Represented patentee in patent infringement litigation against three defendants related to 13 patents in various computer technologies. Architect-of-damages case related to audio-coding technology that resulted in a jury verdict for $1.5 billion — then reported to be the largest patent-damages award in intellectual property history. (Southern District of California)
  • Defended a patent infringement suit related to four patents for modem technologies. Served as lead counsel on three Markman hearings and in private mediation leveraged successful Markman rulings to achieve a desirable settlement. (Northern District of California)
  • Defeated plaintiff's request for a preliminary injunction in a patent infringement action related to the use of endothermic agents to protect flight recorder boxes. The case settled shortly after the denial of injunctive relief. (Eastern District of New York)
  • Conducted a jury trial and achieved a defense verdict for our client in a breach-of-contract action related to a securities purchase agreement. (New York Supreme Court)

Scott Samay is a litigation partner whose practice focuses on patent, other intellectual property, and commercial litigation matters. Scott has litigated complex patent infringement matters involving a range of computer, telecommunications, electronic, medical device, and manufacturing technologies. He has also litigated cases involving pharmaceutical products, including ANDA patent infringement cases. On behalf of his clients, Scott has conducted Markman hearings and has served as trial and appellate counsel in federal and state courts on a variety of matters. IAM’s edition of The World’s Leading Patent Professionals recognized Scott as “a real-deal, quick on his feet courtroom trial lawyer—a pleasure to work with and impressive to watch.” (IAM Patent 1000 2016).

Experience

Scott’s representative matters have included the following:

  • Conducted a 5-week bench trial resulting in a finding that patents alleged to cover purportedly abuse-proofed oxymorphone formulations were invalid. (Southern District of New York)
  • Conducted a private arbitration on behalf of an electronics company resulting in a finding that the company’s principal product was not subject to royalties under a licensing agreement. (Private Arbitration)
  • Conducted a 12-day bench trial resulting in a finding of noninfringement and rulings that several patents alleged to cover the multi-billion dollar “reformulated” Oxycontin® product  were invalid. (Southern District of New York)
  • Conducted a two-week jury trial adverse to a large patent pool obtaining a defense verdict based on estoppel. (New York Supreme Court)
  • Obtained favorable claim construction ruling regarding claims of a telecommunication patent that resulted in consent judgments of noninfringement for client and all members of defense group. (District of Delaware)
  • Argued Markman hearing regarding the asserted claims of a telecommunications patent that resulted in a prompt and favorable settlement before the claims construction decision issued. (District of Delaware)
  • Conducted an arbitration hearing resulting in a finding that confirmed our client's control over pharmaceutical development of a promising new drug and rejected all claims that the client breached any contractual obligations. (Private Arbitration)
  • Conducted a two-week arbitration hearing resulting in a finding of no liability for our pharmaceutical client on contract claims, which the plaintiff asserted were worth in excess of $1 billion. (Private Arbitration)
  • Obtained a grant of summary judgment that found a pharmaceutical patent invalid on behalf of a generic pharmaceutical company in ANDA litigation. (District of New Jersey)
  • Asserted telecommunications patent against five defendants obtaining three permanent injunctions and a royalty-bearing license agreement. Won claim construction on fourteen of fourteen terms and defeated remaining defendant’s motion for summary judgment for invalidity. (Southern District of New York)
  • Obtained summary judgment of invalidity on patent addressed to a method of using a blockbuster anti-cancer drug. (Eastern District of Michigan)
  • Represented patentee in patent infringement litigation against three defendants related to 13 patents in various computer technologies. Architect-of-damages case related to audio-coding technology that resulted in a jury verdict for $1.5 billion — then reported to be the largest patent-damages award in intellectual property history. (Southern District of California)
  • Defended a patent infringement suit related to four patents for modem technologies. Served as lead counsel on three Markman hearings and in private mediation leveraged successful Markman rulings to achieve a desirable settlement. (Northern District of California)
  • Defeated plaintiff's request for a preliminary injunction in a patent infringement action related to the use of endothermic agents to protect flight recorder boxes. The case settled shortly after the denial of injunctive relief. (Eastern District of New York)
  • Conducted a jury trial and achieved a defense verdict for our client in a breach-of-contract action related to a securities purchase agreement. (New York Supreme Court)
  • Overview

    Scott Samay is a litigation partner whose practice focuses on patent, other intellectual property, and commercial litigation matters. Scott has litigated complex patent infringement matters involving a range of computer, telecommunications, electronic, medical device, and manufacturing technologies. He has also litigated cases involving pharmaceutical products, including ANDA patent infringement cases. On behalf of his clients, Scott has conducted Markman hearings and has served as trial and appellate counsel in federal and state courts on a variety of matters. IAM’s edition of The World’s Leading Patent Professionals recognized Scott as “a real-deal, quick on his feet courtroom trial lawyer—a pleasure to work with and impressive to watch.” (IAM Patent 1000 2016).

    Experience

    Scott’s representative matters have included the following:

    • Conducted a 5-week bench trial resulting in a finding that patents alleged to cover purportedly abuse-proofed oxymorphone formulations were invalid. (Southern District of New York)
    • Conducted a private arbitration on behalf of an electronics company resulting in a finding that the company’s principal product was not subject to royalties under a licensing agreement. (Private Arbitration)
    • Conducted a 12-day bench trial resulting in a finding of noninfringement and rulings that several patents alleged to cover the multi-billion dollar “reformulated” Oxycontin® product  were invalid. (Southern District of New York)
    • Conducted a two-week jury trial adverse to a large patent pool obtaining a defense verdict based on estoppel. (New York Supreme Court)
    • Obtained favorable claim construction ruling regarding claims of a telecommunication patent that resulted in consent judgments of noninfringement for client and all members of defense group. (District of Delaware)
    • Argued Markman hearing regarding the asserted claims of a telecommunications patent that resulted in a prompt and favorable settlement before the claims construction decision issued. (District of Delaware)
    • Conducted an arbitration hearing resulting in a finding that confirmed our client's control over pharmaceutical development of a promising new drug and rejected all claims that the client breached any contractual obligations. (Private Arbitration)
    • Conducted a two-week arbitration hearing resulting in a finding of no liability for our pharmaceutical client on contract claims, which the plaintiff asserted were worth in excess of $1 billion. (Private Arbitration)
    • Obtained a grant of summary judgment that found a pharmaceutical patent invalid on behalf of a generic pharmaceutical company in ANDA litigation. (District of New Jersey)
    • Asserted telecommunications patent against five defendants obtaining three permanent injunctions and a royalty-bearing license agreement. Won claim construction on fourteen of fourteen terms and defeated remaining defendant’s motion for summary judgment for invalidity. (Southern District of New York)
    • Obtained summary judgment of invalidity on patent addressed to a method of using a blockbuster anti-cancer drug. (Eastern District of Michigan)
    • Represented patentee in patent infringement litigation against three defendants related to 13 patents in various computer technologies. Architect-of-damages case related to audio-coding technology that resulted in a jury verdict for $1.5 billion — then reported to be the largest patent-damages award in intellectual property history. (Southern District of California)
    • Defended a patent infringement suit related to four patents for modem technologies. Served as lead counsel on three Markman hearings and in private mediation leveraged successful Markman rulings to achieve a desirable settlement. (Northern District of California)
    • Defeated plaintiff's request for a preliminary injunction in a patent infringement action related to the use of endothermic agents to protect flight recorder boxes. The case settled shortly after the denial of injunctive relief. (Eastern District of New York)
    • Conducted a jury trial and achieved a defense verdict for our client in a breach-of-contract action related to a securities purchase agreement. (New York Supreme Court)
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