Judge Scott Kamholz Joins Foley Hoag from PTAB

Firm expands PTAB post grant practice and IP presence in Washington D.C.

May 6, 2015

Former Administrative Patent Judge of the U.S. Patent Trial and Appeal Board (PTAB) Scott Kamholz will rejoin Foley Hoag LLP as a partner and co-chair of the firm’s Patent Post Grant Proceedings Practice, the firm announced today. He will practice in the firm’s Washington, D.C. office.

During his time at the PTAB, Judge Kamholz handled more than 120 inter partes review (IPR) proceedings, the new trial proceedings established by the Leahy-Smith America Invents Act of 2011 (AIA). Judge Kamholz handled trial proceedings in a wide variety of technologies, including pharmaceuticals, biologics and biosimilars, medical devices, polymers, energy production, software, electronics, and business methods. He also wrote more than 80 opinions deciding appeals in patent applications and patent reexamination proceedings. He is the only judge to leave the PTAB and enter private practice who has overseen AIA trial proceedings from start to finish. 

“We are excited that Scott has returned to Foley Hoag from his position at the PTAB to help lead our post-grant practice,” said Foley Hoag Co-Managing Partner Adam Kahn. “His knowledge of patent law and deep expertise both in life sciences and on the high-tech side will be a huge asset to present and future clients.”

Judge Kamholz commented, “My time at the Board was very rewarding and gave me a first-hand perspective on what works and what doesn’t. I look forward to utilizing my experience and knowledge of the PTAB trial process to assist clients with AIA trial matters.”

“Scott brings us a unique combination of legal and technical knowledge coupled with unparalleled experience in AIA trial proceedings in the PTAB,” said Foley Hoag Partner Don Ware, chair of the firm’s Intellectual Property Department. “He will be a pivotal figure in the burgeoning field of Patent Office litigation and will work closely with our litigators and prosecutors to guide our clients through the new procedures.”

In addition to his legal training, Scott has deep scientific expertise. He holds a bachelor’s degree in biomedical engineering, a Ph.D. in physiology and biophysics, and an M.D. degree.

Scott worked at Foley Hoag for more than a decade before he was appointed to the PTAB in 2012. During that time he served as chair of Foley Hoag’s Patent Reexamination and Post Grant Review Practice.  He represented patent owners and third-party challengers in patent reexamination proceedings and maintained a large patent prosecution docket. He also represented clients in licensing transactions, provided patent due diligence in mergers and acquisitions, and consulted in patent litigation.

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