R. Scott Feldmann

Partner

Costa Mesa
T +1.714.966.8862
F +1.714.754.6611

Overview

Scott Feldmann's practice is devoted to intellectual property, with a focus on software, computers and the Internet. He leads the office’s intellectual property litigation practice, which has been ranked in Tier 1 by U.S. News – Best Lawyers' “Best Law Firms” since 2014. Scott regularly comments on technology and intellectual property law. He has written for MIT's Technology Review, California Lawyer and The Wall Street Journal, and has been interviewed and quoted in periodicals such as Fortune, The New York Times and The Wall Street Journal. Scott also speaks by invitation at national conferences, such as his speech opening the IPO's Annual Conference.

Select Experience

Patent
  • Lead trial counsel in twin victories before the Patent Trial and Appeal Board, invalidating all claims on two to four grounds each. After arguing before the Federal Circuit, the opponent requested dismissal of the appeal before opinion issuance. Obtained dismissal of a co-defendant upon sovereign immunity grounds. Forced dismissal of a second co-defendant through motion to dismiss. Obtained transfer of the case out of the Eastern District of Texas to the defendant's home forum.  TransUnion LLC, et al. v. Experian Information Solutions, Inc., et al.(E.D. Tex. 2011-2012, Judge Ward; D. Minn 2012-2014; PTAB 2014-).
Trade Secret
  • Successfully moved to dismiss the counterclaim defendant's trade secrets claim on grounds that the claim was not "facially plausible" under Twombly v. Bell AtlanticBendix Commercial Vehicle Systems LLC, et al. v. WABCO Automotive Control Systems, Inc. (E.D. Oh. 2009).
Copyright
  • Represented the plaintiff in an action for copyright infringement, misappropriation of trade secrets, unfair competition and fraud arising out of software piracy and kickbacks. Obtained a temporary restraining order, preliminary injunction, summary judgment and permanent injunction. Experian Information Solutions, Inc. v. Logic Quest Solutions, Inc., et al. (C.D. Cal. 2003).
More »

Experience

Patent
  • Lead trial counsel in twin victories before the Patent Trial and Appeal Board, invalidating all claims on two to four grounds each. After arguing before the Federal Circuit, the opponent requested dismissal of the appeal before opinion issuance. Obtained dismissal of a co-defendant upon sovereign immunity grounds. Forced dismissal of a second co-defendant through motion to dismiss. Obtained transfer of the case out of the Eastern District of Texas to the defendant's home forum.  TransUnion LLC, et al. v. Experian Information Solutions, Inc., et al.(E.D. Tex. 2011-2012, Judge Ward; D. Minn 2012-2014; PTAB 2014-).
  • Obtained dismissal of affiliate, and dismissal of two patents-in-suit. Eastern District of Texas District Court then granted a stay pending determination of ownership of remaining patents in California. RPost Holdings Solutions, Inc. v. Experian Marketing Solutions, Inc. (E.D. Texas 2012-present, J. Gilstrap).
  • The district court severed three co-defendants from pending patent action, stayed the case against five other customer co-defendants and transferred action to Kodak's home forum in Rochester, New York. Argued and won affirmance from the Federal Circuit in a 3-0 precedential opinion. Spread Spectrum LLC v. Eastman Kodak Company, et al. (Fed. Cir. 2011).
  • Represented the plaintiff at trial as special counsel, resulting in a $74 million jury award for willful infringement of a "multi-media time-warping system" patent. Responsible for conducting "blind" cross-examination of a chip company witnesses. For the subsequent bench trial regarding alleged contempt, elicited testimony negating design-around claims. The trial court then found contempt in 2009, and the Federal Circuit, en banc, affirmed. Obtained public settlement of $500 million. TiVo Inc. v. EchoStar Communications Corp. (E.D. Tex. 2006, 2011).
Trade Secret
  • Successfully moved to dismiss the counterclaim defendant's trade secrets claim on grounds that the claim was not "facially plausible" under Twombly v. Bell Atlantic. Bendix Commercial Vehicle Systems LLC, et al. v. WABCO Automotive Control Systems, Inc. (E.D. Oh. 2009).
  • Obtained summary judgment of patent noninfringement plus dismissal of 11 other trade secret-based torts and a breach of contract claim through successful motions to dismiss.  Digital Spectrum Solutions, Inc. v. Eastman Kodak Corp., et al. (C.D. Cal. 2007).
  • Represented the plaintiff, obtained a temporary restraining order without bond and subsequent permanent injunction for copyright infringement and misappropriation of trade secrets relating to video compression and decompression software. PCI Video Products, Inc. v. Video Conferencing Communications, Inc. (D. Or. 1997).
Copyright
  • Represented the plaintiff in an action for copyright infringement, misappropriation of trade secrets, unfair competition and fraud arising out of software piracy and kickbacks. Obtained a temporary restraining order, preliminary injunction, summary judgment and permanent injunction. Experian Information Solutions, Inc. v. Logic Quest Solutions, Inc., et al. (C.D. Cal. 2003).
  • Represented the defendant, obtaining dismissal of action on grounds that the 1976 Copyright Act preempted state law claims and Lanham Act "reverse passing off," "credit deprivation" claim. Filmtown Entertainment, Inc. v. Image Comics, Inc. (Cal. Sup. 2002).
  • Moved to dismiss most claims. Motion was granted. Obtained ex parte terminating sanction six days prior to trial in a dispute over technology rights. Obtained monetary sanctions in a parallel federal court action. Virtual Ambiance, Inc. v. Smith Micro Software, Inc. (Cal. Sup. 2001).
  • Represented the defendant as co-counsel. Won motion to transfer and compel arbitration in a case regarding online trading of virtual items in the first litigation involving virtual worlds. Blacksnow Interactive, et al. v. Mythic Entertainment, Inc. (C.D. Cal. 2002).
Commercial Litigation
  • Represented the defendant in a commercial dispute. Obtained summary judgment against co-plaintiff and nonsuit against the lead plaintiff. Court awarded Yamaha more than 99 percent of attorneys' fees requested, finding that the fees were "reasonable." Argued and won appeal. Newhope Corporation, et al. v. Yamaha Electronics Corporation USA (Cal. Sup. 2006).

Recognitions and Memberships

Recognitions

  • The Best Lawyers in America© (2007 to 2018)
    • Costa Mesa: Litigation – Intellectual Property
  • Southern California "Super Lawyer" (2009 to 2016)

Memberships

  • Federalist Society (1990 to 2016)
    • UC-Berkeley School of Law: Chair and Co-Chair

Prior Positions

  • A.T. Kearney, Inc.: Management Consultant

Military Service

  • U.S. Air Force (1982 to 1988)
    • Test Director, Top Secret "Eyes Only" electronic warfare program
    • Commendation Medal
    • Achievement Medal with Oak Leaf Cluster
    • Squadron Office School, Distinguished Graduate
    • Defense Language Institute, Brazilian Portuguese, Distinguished Graduate

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Ninth Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. District Court, Northern District of California
  • U.S. District Court, Eastern District of California
  • U.S. District Court, Central District of California
  • U.S. District Court, Eastern District of Texas
  • U.S. District Court, District of Arizona
  • U.S. District Court, District of Colorado
  • California

Education

  • J.D., University of California, Berkeley School of Law, 1993
  • M.S.S.M., University of Southern California, 1988
  • M.S.E.E., Air Force Institute of Technology, 1984
  • B.E., Vanderbilt University, 1982, cum laude