Burt, Scott W.

Current Employment Position(s)

Partner

Lawyer Overview

Scott Burt has a diverse intellectual property and technology practice emphasizing patent litigation for clients in the semiconductor, telecommunications, and software industries. He also advises clients on transactional matters regarding intellectual property, including licenses, patents, trademarks, and copyrights.

In recent patent infringement cases, Scott represented SanDisk in a proceeding regarding semiconductor flash memory before the International Trade Commission and defended IBM in a case related to internet searches. He represented Nokia in cases relating to spread-spectrum CDMA and camera cell phones, Freescale Semiconductor in a case related to computer modeling of a manufacturing plant, and MOSAID in cases related to semiconductor memory chips. He also has represented Motorola and Texas Instruments.

In trademark infringement litigation, Scott defended Taiwan Hopax Chemicals in a case alleging trademark rights for the color "canary yellow" for sticky notes and Bell Sports in an action related to bicycle pump names.

Scott recently represented Johnson Diversey in a $1.6 billion acquisition from Unilever PLC. Scott's other transactional clients include Bridgestone, The Chamberlain Group, The Duchossois Group, The Riverside Company, Texas Instruments, and USG Corporation.

Scott's recent speaking engagements include "Advertising in the Internet Age" for The Chicago Bar Association Committee on Professional Responsibility, "Responding to Patent Infringement Claims on Essential Patents" at the Advanced Patent Law Institute, and "IP Issues in Mergers and Acquisitions" at the Chicago-Kent College of Law. He has written two Jones Day Technology Commentaries, one on computer contracts and another on an important development regarding the scope of patent protection.

Areas of Practice

• Intellectual Property
• Copyrights & Trademarks
• Patent Litigation
• Licensing & Technology Transactions

Representative Cases

• After School Matters retains Jones Day for pro bono services in labor & employment, intellectual property, and for transactions , (2009)
• AMX LLC acquires XN Technologies, Inc.
• Bell Sports successfully defends against claims of trademark infringement over bicycle air pumps
• Bridgestone acquires Bandag for $1 billion
• Canadian Nat'l Railway defends against patent infringement action involving its vehicle arrival notification technology
• Christian Palestinian client advocating on behalf of children wins U.S. asylum , (2006)
• Credit Management Services pursues trademark infringement case over credit card reporting services
• Duchossois Industries acquires AMX for $288
• Duchossois Industries acquires Heath-Zenith business
• Duchossois Industries acquires Milestone AV Technologies
• Fed. Cir. affirms ITC noninfringement ruling for DIRECTV et al.
• General Motors et al. defeat patent infringement claim involving internet operations , (2009)
• IBM defends against patent infringement charges relating to soliciting and receiving Internet donations
• IBM settles favorably in patent infringement case against Amazon.com involving data storage and presentation , (2009)
• IFS Industries seeks patent advice for adhesives portfolio
• JohnsonDiversey Holdings sells 46% interest to Clayton Dubilier & Rice as part of a $2.6 billion recapitalization , (2009)
• Kaiser Aluminum and twenty of its subsidiaries emerge successfully from chapter 11 protection , (2009)
• Lakeside Energy and InEnTec create new company to help build a sustainable future for the chemical industry , (2009)
• MOSAID Technologies settles favorably in patent infringement case involving computer memory , (2009)
• Motorola and Freescale defend against patent infringement allegations related to the operation of semiconductor fabrication plants
• Motorola and Freescale resolve patent infringement suit brought by Analog Devices involving microchip fabrication , (2009)
• Motorola and Freescale resolve patent suit with STMicroelectronics over 12 semiconductor patents
• Motorola defends against patent infringement allegations over semiconductor manufacturing processes , (2009)
• Nippon Carbide defends against patent infringement claims over 3M retroreflective road sign sheeting
• Nokia defends against patent infringement charges over personal security systems and mobile phones
• Nokia pursues patent infringement charges over GPS technology in mobile phones
• Nokia successfully defends against claims of patent infringement relating to 3G wireless technology
• NTT Data sells subsidiary to Quality Technology Services
• Overhead Door acquires North American and European overhead door businesses of Wayne-Dalton , (2009)
• Patriarch Partners recapitalizes Dura Automotive , (2010)
• Resurgence Asset Management involved in litigation to determine patent inventorship of basic laser eye surgery
• Riverside enforces trademarks relating to Sport Court and the backyard game court industry
• S.C. Johnson Commercial Markets acquires DiverseyLever for $1.6 billion , (2009)
• Sourdough Corporation defends against copyright infringement action involving Renaissance festival characters
• Stylin' Concepts defends against patent infringement charges over car door hinges
• Taiwan Hopax Chemicals defends against trademark infringement charges brought by 3M involving sticky notes color
• Texas Instruments intervenes in patent infringement action over inventorship issue
• Texas Instruments pursues patent infringement action against defendants over semiconductors
• Texas Instruments resolves patent dispute with Samsung and settles for $1.1 billion in royalties
• Texas Instruments resolves series of disputes with Hyundai Electronics over semiconductor patents , (2009)
• The Chamberlain Group acquires Digitech International
• The Chamberlain Group acquires International Electronics
• The Chamberlain Group acquires Preferred Technology
• USG Corp acquires California Wholesale Material Supply for $280 million , (2009)
• Van Remortel settles prior to trial in misappropriation, wrongful procurement of patents suit
• Viking Group sells shares to Minimax in a complex multi-country stock sale, a transaction that will create a combined company with over $1.5 billion in sales and 6,000 employees , (2009)
• Woodward Governor acquires MotoTron
• Woodward Governor acquires MPC Products for $383 million , (2009)

West Practice Categories

Copyrights, Intellectual Property Law, International Intellectual Property, Patent Litigation, Patents, Technology Licensing, Trade Dress, Trade Secrets, Trademarks

Bar Admissions

• Illinois

Education

• U of Colorado - Boulder (Main)
• U of Denver

Published Works

• The Supreme Court's Decision in Festo Corp.: An Important New Development Regarding the Scope of Patent Protection, 2002
• Controversial New Rules for Computer Contracts, 2000

Address

77 West Wacker
Chicago, IL 60601-1692

Phones

1.312.269.4266 (Business Phone)

Faxes

1.312.782.8585 (Business Fax)

Emails

Contact Us (Business Email)

Websites

http://www.jonesday.com