R. Scott Feldmann

Partner

Costa Mesa
T +1.714.966.8862
F +1.714.754.6611

Overview

Scott Feldmann is a first chair trial attorney whose practice is devoted to intellectual property law involving patents, trade secrets and copyrights. The technology focus is on the Cloud, software, chips and the Internet. He has won multiple $100 million patent judgments collected for plaintiff and has many defense victories achieved before trial. His first Federal Circuit oral argument, scheduled as an exemplar for “PTO Academy Training Day,” resulted in a unanimous written affirmance. After his second, petitioner voluntarily dismissed before opinion issuance. His most recent twin trial victories before the Patent Trial and Appeal Board invalidated all of the dozens of claims on multiple grounds.

He leads the office’s intellectual property litigation practice, which has been ranked as Tier 1 by U.S. News – Best Lawyers’ “Best Law Firms” since 2014. His trial victory against a consortium of several law firms was the sole litigation reported in Baker Hostetler’s 100th Year Anniversary Annual Report highlighting notable firm matters to clients.

Scott’s essays have appeared in: MIT’s Technology Review, California Lawyer and The Wall Street Journal. He’s been quoted as an expert in Fortune Magazine, The New York Times and The Wall Street Journal. Using Star Trek, Matrix and Terminator 2 movie clips, Scott opened the IPO Annual Conference's first panel before 850 attorneys.

Select Experience

Patent
  • Obtained dismissal of affiliate, dismissal of two patents-in-suit and a stay After the stay was lifted, Judge Gilstrap granted dismissal with prejudice. RPost Holdings Solutions, Inc. v. Experian Marketing Solutions, Inc. (E.D. Texas 2012-2019, J. Gilstrap).
Trade Secrets
  • Took over representation for Kodak in a trade secrets case more than two years after filing of the complaint. The court had instructed plaintiff to file for summary judgment, which was defeated. The case then settled on confidential terms. Presstek, Inc., et al. v, Eastman Kodak Company (D. Co. 2010).

  • 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).
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Experience

Patent
  • Obtained dismissal of affiliate, dismissal of two patents-in-suit and a stay After the stay was lifted, Judge Gilstrap granted dismissal with prejudice. RPost Holdings Solutions, Inc. v. Experian Marketing Solutions, Inc. (E.D. Texas 2012-2019, J. Gilstrap).
  • 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 2014-5).
  • 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 defenses. 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 Secrets
  • Took over representation for Kodak in a trade secrets case more than two years after filing of the complaint. The court had instructed plaintiff to file for summary judgment, which was defeated. The case then settled on confidential terms. Presstek, Inc., et al. v, Eastman Kodak Company (D. Co. 2010).
  • 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 Present)
    • California: Litigation: Intellectual Property

Memberships

  • Intellectual Property Owners Association
  • Howard T. Markey Intellectual Property American Inn of Court

Blog Posts

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

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
For a Few Facts More
By R. Scott Feldmann
March 16, 2021
After TC Heartland tightened up patent venue, Judge Albright’s local patent rules drew plaintiffs wanting a quick courtroom shootout. According to Lex Machina and IP Law360, Judge Albright, by himself, picked up 793 patent litigations last...
Read More ->