Scott E. Kamholz, M.D., Ph.D.

Partner - Washington, D.C.

Scott Kamholz
Download Media Photo

Contact Information

202.261.7356

202.467.9656

skamholz@foleyhoag.com Download vCard

Scott Kamholz has just rejoined Foley Hoag LLP after several years of service as an Administrative Patent Judge on the Patent Trial and Appeal Board (PTAB). During his time at the PTAB, Dr. Kamholz handled well over 100 inter partes review (IPR) proceedings, the new trial proceedings established by the Leahy-Smith America Invents Act of 2011 (AIA). He now leverages his knowledge of the PTAB trial process to assist clients with AIA trial matters. Dr. Kamholz is the only former PTAB judge to enter private practice who has overseen AIA trial proceedings from start to finish.

More »

Education:

  • University of Miami, Ph.D. in Physiology and Biophysics, Academic Merit
  • University of Miami School of Medicine, M.D.
  • Boston College Law School, J.D.
  • University of Miami, B.S. in Biomedical Engineering, magna cum laude, Tau Beta Pi with General Honors

Selected Opinions

  • St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., IPR2013 00258, 2013 WL 5947710 (expanded panel decision denying institution under 35 U.S.C. § 315(b)) (appeal dismissed, St. Jude Med., Cardiology Div., Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014))
  • Clio USA, Inc. v. Procter and Gamble Co., IPR2013-00438, 2014 WL 2528606 (institution decision holding that 35 U.S.C. § 315(a) did not bar petition) (mandamus denied, In re Procter & Gamble Co., 749 F.3d 1376 (Fed. Cir. 2014))
  • Amneal Pharm., LLC v. Supernus Pharm., Inc., IPR2013-00368, 2014 WL 6998035 (final written decision on first Hatch-Waxman pharmaceutical patent to be challenged by inter partes review)

Other Publications

  • Quoted in Top Ten Things You Should Know About the New Patent Law, NATL. LAW J., 2012.
  • Scott E. Kamholz, Proposed Rule Changes to Practice Before the Board of Patent Appeals and Interferences, BOSTON PAT. LAW ASSOC. NEWSL., Apr. 2008, at 12.
  • Scott E. Kamholz, Maximizing patent term in the USA, 2 J. INTELL. PROP. L. & PRAC. 593 (2007).
  • Scott E. Kamholz, The Proscription Against Broadening Claims in Reissue and Reexamination: Conflict Between the Federal Circuit and the Board of Patent Appeals and Interferences, 88 J. PAT. & TRADEMARK OFF. SOC’Y 124 (2006).

Honors

  • Predoctoral fellowship, American Heart Association
  • Full scholarship, University of Miami MD/PhD Program
  • Tau Beta Pi National Engineering Honor Society

Involvement

  • American Intellectual Property Law Association, Member
  • Boston Patent Law Association
  • Panelist, “Setting Sail in Uncharted Waters: Life Science Companies Prepare for Post-Grant Review,” Federal Circuit Bar Association (September 2014)
  • “State of the Board,” Address to the Connecticut Intellectual Property Law Association, New Haven CT (September 2013)
  • Panelist, “Post-Grant Review,” American Conference Institute's Comprehensive Guide to Patent Reform for Life Science Companies, New York NY (February 2012)
  • Panelist, “Patent Reexamination: Past and Future,” Boston Patent Law Association (October 2011)
  • “Checking off the Box: IP Diligence from the Investor’s Perspective,” Address to the New England Healthcare Executives Network (March 2011)
  • “Strong Patents and High-Value Products,” Address at the Wyss Institute, Harvard University (June 2010)
  • “Intellectual Property for Technology Entrepreneurs,” Address to the Advanced Invention to Venture (AI2V) Workshop, Boston (August 2009)
  • Keynote speaker, “Robotics - One Leg Up on the Competition,” Northeastern University’s EntreTech Forum, Waltham MA (March 2008)
  • Speaker, American Conference Institute's 9th Advanced Forum on Biotech Patents: Maximizing Patent Term Extension and Adjustment (September 2007)
Add to Bio Folder

Download Bio

Bar Admissions

  • Admitted in Massachusetts only; practice limited to patent law.

Court Admissions

  • U.S. District Court for the District of Massachusetts
  • U.S. Court of Federal Claims
  • U.S. Court of Appeals First Circuit
  • U.S. Court of Appeals Federal Circuit
  • U.S. Patent Trademark Office (Agency)