Scott D. Paul

partner

Scott D. Paul is an experienced patent attorney whose career spans more than twenty-five years of guiding clients through every stage of the patent process. He has built a reputation for delivering results in complex and high-volume matters, prosecuting over two thousand U.S. patent applications, drafting more than six hundred applications, and filing over one thousand appeal briefs before the Patent Trial and Appeal Board (PTAB). His work has directly contributed to the growth and protection of patent portfolios that define global corporations, while also helping individual inventors secure critical rights for breakthrough technologies.

Scott’s practice bridges the technical and legal worlds with ease. Drawing on his degree in materials and mechanical engineering and his early career as an engineer with Pratt & Whitney, Scott is able to engage with inventors at a granular technical level. This foundation has allowed him to work seamlessly across industries such as semiconductors, computer technology, artificial intelligence, medical devices, robotics, extended and augmented reality systems, and advanced manufacturing. Clients appreciate his ability to distill highly complex concepts into persuasive legal arguments that withstand the scrutiny of patent examiners, the PTAB, and the Federal Circuit.

A hallmark of Scott’s practice is his tenacity. Colleagues describe his approach as bulldog-like, marked by persistence and an unwavering focus on achieving the best outcome possible. He thrives on the challenge of overcoming obstacles in prosecution and appeals, whether it means reversing examiner rejections, preserving high-value claims, or advancing strategies that align legal protection with a client’s broader business objectives.

Scott has successfully argued before the U.S. Court of Appeals for the Federal Circuit, including the influential case In re Distefano, where he obtained a decision vacating the Board’s rejection of claims under the Printed Matter Doctrine. He has also represented major technology companies in PTAB proceedings, including defending LinkedIn’s patent rights in LinkedIn v. Distefano Patent Trust III. These victories underscore his ability to advocate effectively at the highest levels of patent adjudication.

While most of his career has been devoted to representing large multinational corporations, Scott also counsels startups and individual inventors. Regardless of client size, he brings the same focus, rigor, and commitment to ensuring that innovative ideas are protected and positioned for long-term value.

outside the office

Outside of his legal practice, Scott enjoys skiing with his son and daughter, playing tennis, and spending time outdoors. He is also an avid gardener and finds balance in cultivating and maintaining his own landscapes.

representative matters

  • Prosecuted more than 2,000 patent applications across industries including semiconductor processing, artificial intelligence, medical devices, fiber optics, turbine engines, and robotics. His ability to manage both volume and technical sophistication has made him a trusted advisor for some of the world’s largest technology companies.
  • Drafted over 600 U.S. patent applications involving groundbreaking technologies such as large language models, generative AI, user interface design, cloud computing infrastructure, and extended reality systems.
  • Filed and argued more than 1,000 appeal briefs before the PTAB, achieving numerous reversals of examiner rejections and securing favorable outcomes that preserved and strengthened client patent portfolios.
  • Successfully argued at the Federal Circuit in In re Distefano, 808 F.3d 845 (Fed. Cir. 2015), where the court vacated a Board decision that had rejected claims under the Printed Matter Doctrine, creating an important precedent in patent law.
  • Defended LinkedIn’s patent rights in LinkedIn v. Distefano Patent Trust III, IP2019-00419, where the PTAB denied institution of an Inter Partes Review petition for failure to establish lack of written description support.
  • Managed portfolios exceeding 350 active prosecution matters at once, balancing efficiency with technical precision to maximize client value while reducing risk.
  • Guided multinational corporations through large-scale disclosure harvesting and portfolio audits, ensuring alignment between patent strategy, product development, and corporate growth objectives.
  • Advised on international patent filings and developed global strategies that coordinated protection across the United States, Europe, and Asia to help clients secure competitive advantages in worldwide markets.

representative cases

  • In re Distefano, 808 F.3d 845 (Fed. Cir. 2015)
  • LinkedIn v. Distefano Patent Trust III, IP2019-00419 (PTAB, June 5, 2019)

 

  • J.D., magna cum laude, Florida State University, 1998
  • M.B.A., Florida State University, 1998
  • B.S., Materials and Mechanical Engineering, University of Connecticut, 1988
  • Florida (Inactive)
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • USPTO Registered Patent Attorney