Scott A. Skiles

He | Him | His

Associate

Chicago
T +1.312.416.6237
F +1.312.416.6201

Overview

Scott Skiles is an intellectual property litigation attorney in BakerHostetler’s Chicago office and a member of the firm’s Patent Litigation Team. Scott concentrates on patent litigation, but his practice covers the range of intellectual property matters including trademarks, false advertising, unfair competition and trade secrets. Scott leverages his strong technical background in cases comprising a wide variety of technologies, such as computer software, consumer electronics, household appliances, retail display systems, medical devices, golf clubs and agricultural products. Prior to joining BakerHostetler, Scott worked in the Intellectual Property Litigation group of a top-10 Vault 100 international law firm.

As a trial lawyer, Scott is well versed in all phases of litigation, from pre-filing investigations, pleadings, and fact and expert discovery, to summary judgment, trial and post-trial work. In patent cases, Scott also performs portfolio analysis, drafts contentions, conducts claim construction and evaluates remedies. Beyond litigation, Scott has expertise in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) at the Patent and Trademark Office and, on the advertising side, in challenges before the National Advertising Division (NAD) at the Council of Better Business Bureaus.

Further, Scott maintains an active pro bono practice, with notable experience litigating claims under 42 U.S.C. § 1983, advancing public records requests under state and federal law, and serving as a court-appointed guardian ad litem.

Select Experience

  • Represented an international manufacturer of vacuum cleaner products in two separate false advertising litigations against a competitor. In the first, after a two-week trial where the client challenged the competitor’s carpet-cleaning superiority advertising claims, obtained a jury verdict in the client’s favor on all grounds, including willful false advertising, and further obtained a damages award of $16.4 million. In the second, where the competitor challenged the client’s suction performance and carpet-cleaning superiority claims, obtained dismissal of the case and a favorable settlement for the client on the eve of trial.
  • Represented an international manufacturer of agricultural products in a patent litigation against an importer of a particular fungicide. After a seven-day trial, obtained a jury verdict in the client’s favor, including a permanent injunction against the importer and a damages award of nearly $1 million.
  • Represented a nationwide golf club fitting business in an Inter Partes Review proceeding before the Patent Trial and Appeal Board (PTAB) challenging certain claims of a patent asserted against the client in a related district court litigation. Obtained a favorable final written decision finding claims unpatentable and denying the patent owner’s request to amend the patent with new, substitute claims.
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Experience

  • Represented an international manufacturer of vacuum cleaner products in two separate false advertising litigations against a competitor. In the first, after a two-week trial where the client challenged the competitor’s carpet-cleaning superiority advertising claims, obtained a jury verdict in the client’s favor on all grounds, including willful false advertising, and further obtained a damages award of $16.4 million. In the second, where the competitor challenged the client’s suction performance and carpet-cleaning superiority claims, obtained dismissal of the case and a favorable settlement for the client on the eve of trial.
  • Represented an international manufacturer of agricultural products in a patent litigation against an importer of a particular fungicide. After a seven-day trial, obtained a jury verdict in the client’s favor, including a permanent injunction against the importer and a damages award of nearly $1 million.
  • Represented a nationwide golf club fitting business in an Inter Partes Review proceeding before the Patent Trial and Appeal Board (PTAB) challenging certain claims of a patent asserted against the client in a related district court litigation. Obtained a favorable final written decision finding claims unpatentable and denying the patent owner’s request to amend the patent with new, substitute claims.
  • Represented a manufacturer of retail display systems in three separate litigations brought by another company relating to such systems.
  • Represented a Fortune 500 medical device company in a patent infringement litigation brought by a non-practicing entity relating to artificial heart valve technology.
  • Represented multiple clients in confidential proceedings before the National Advertising Division (NAD) of the Council of Better Business Bureaus.

Recognitions and Memberships

Recognitions

  • The Best Lawyers in America®: Intellectual Property Law Ones To Watch (2021 to 2022)
  • Pro Bono Service Award (2015 to 2018)

Pro Bono

  • Represented incarcerated person in lawsuit brought under 42 U.S.C. § 1983 against the prison’s private healthcare provider, the Illinois Department of Corrections (IDOC) and various individual defendants.
  • Represented legal aid organization assisting academic research team in advancing public records requests submitted to various state universities.
  • Represented 501(c)(3) organization providing manufacturing innovation services in dispute with another organization relating to ventilator technology.
  • Served as a 711-licensed guardian ad litem appointed by the Circuit Court of Cook County.

Prior Positions

  • Loyola University Community Law Center: Public Interest Law Initiative (PILI) Fellow (2015)
  • Indiana University-Bloomington Maurer School of Law, Center for Intellectual Property Research (CIPR): Research Assistant (2013 to 2015)

Admissions

  • U.S. District Court, Northern District of Illinois
  • Illinois

Education

  • J.D., Indiana University-Bloomington Maurer School of Law, 2015; IP Theory, Editor
  • B.S., Computer Engineering, Rose-Hulman Institute of Technology, 2011

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
No Wrong Notes: Federal Circuit's Piano Factory Decision Holds TTAB in Tune with Arthrex
By Scott A. Skiles
September 21, 2021
This blog previously reported[1] that on June 21, 2021, the Supreme Court issued its landmark decision in United States v. Arthrex, Inc., holding – in Chief Justice Roberts’ 5-4 opinion – that “the unreviewable authority wielded by...
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