An Interview with Scott McKeown
“When you look at a lot of folks that have had bad experiences at the PTAB and I look at their prosecution or their claims, I think as a prosecutor, well, I’m not really surprised that that didn’t work out in your favor.” – Scott McKeown
Scott McKeown is one of the preeminent Patent Trial and Appeal Board (PTAB) practitioners in the country, founder and author of PatentsPostGrant.com, Co-Chair of the IPWatchdog PTAB Masters program, and a good friend. Recently, Scott decided to make a change, leaving Ropes & Gray and joining Wolf Greenfield & Sacks and becoming the first partner resident in Wolf’s new Washington, DC, offices. Given the news, I took the opportunity to invite Scott to IPWatchdog headquarters for an interview. We were joined by mutual longtime friend, John White, Special Counsel at Harness IP, but better known throughout the industry as the person who taught well over 50% of the patent bar how to pass the patent bar examination.
Our conversation lasts approximately 48 minutes.
Although we discuss many topics, here are some of the highlights:
Mullets and Kids
GQ: Let’s get right to the critical issue. What is with the mullet?
SM: Well, see that was the issue. You know, Ropes & Gray has a no hockey hair policy and so I had to move on.
GQ: Are you going to be announcing that you are going to fight for Dana White in the UFC?
SM: No, no; my son sort of started to talk to me about mullets as if he invented them and I told him I had done that back in the 80s and so I felt like I had to outdo him. We will see how long it lasts. It is getting a little ratty looking by now.
On Joining Wolf Greenfield & Sacks
GQ: Why did you decide to make the move? Was it an opportunity at Wolf that you just couldn’t pass up?
SM: Leaving Ropes & Gray was obviously very difficult. I worked with some amazing lawyers there and was able to partner with one of the best appellate practitioners in the country, so I had nothing but just stellar experience there and fantastic attorneys that I work with, but to me it was more of a chance to go home a little bit. Prior to joining Ropes, I spent 17 years at a boutique and what I consider to be one of the better, if not the best, boutiques in the country, opening up an office in D.C., growing out of Boston to New York and now into D.C.—having that in my backyard I think was just an opportunity that really resonated with me. Being able to go back to sort of that entrepreneurial environment, hopefully having less conflicts—there were some definite advantages there, and working with some of the folks at Wolf over the years, co-counseling and just seeing the quality of the work there and a little bit of what has been going on in the industry I think for a firm like that, there is just nothing but opportunity ahead.
Will You Be Sticking with the PTAB?
GQ: You are still going to be staying PTAB focused, right?
SM: Yeah, I will still be focusing on the PTAB. If anything, what this does is gives me an opportunity to work more for patent owners. I do get a fair amount of startups and other companies that would come to me and say, “can you build these portfolios out? You know how to take them apart, so help us build them,” and not having a prosecution capability made that difficult. So, part of the justification for the move is—believe it or not, [because] I know everybody views me as the anti-patent hater—but this gives me an opportunity to work a little bit more on the patent owner side and craft some portfolios.
GQ: Well, Darth Vader turned out to be good too, right?
JW: In the end.
GQ: In the end.
JW: Remember, Scott, Darth was good.
SM: But he was dying at that point.
The Commoditization of Patent Prosecution
GQ: I sort of had an epiphany this morning. I was just sitting there and looking at potential panels and topics for our event in September. And it just dawned on me that I was getting sick and tired of hearing from patent owners who complain about the litigation system being rigged, the PTAB system being rigged, they are taking our patents away. I’m sympathetic to that. But patents have become a commodity, and if you are going to treat patents like a commodity, you ought not to be shocked when the PTAB finds them invalid.
SM: I prosecuted for years, and it always reminded me of life insurance or car insurance. Nobody wants to pay for it, and then when you really need it you are thinking, oh, I really wish I didn’t agree to that high deductible, or I should have paid for more coverage. It has become commoditized to a certain extent. You have companies that say I only have X amount of money in my budget, but I want to get 100 [patents]—it’s all about numbers instead of quality. I think a fair number of companies have gotten away from that, but when you look at a lot of folks that have had bad experiences at the PTAB and I look attheir prosecution or their claims, I think as a prosecutor, well, I’m not really surprised that that didn’t work out in your favor. So, it is unfortunate, but, you get what you pay for, unfortunately.
The Best Prosecution Strategy to Avoid the PTAB
GQ: The number one thing to be on the lookout for during prosecution is—?
SM: I think it is trying to get the holy grail claim instead of building out a portfolio of…dependent claims that are just useless. You are not getting anything with those kinds of claims, and there are some companies that approach it as a numbers game.
