Scott Forman is based out of the New York office, and focuses his practice on patent and trademark litigation, as well as post-grant proceedings. He has significant experience in all stages of litigation including drafting pleadings, motions, working on fact and expert discovery, and preparing pretrial filings. Scott’s post-grant practice includes drafting briefs and working with expert witnesses in inter partes review proceedings.

Scott’s litigation and post-grant experience includes a wide array of subject matters, including pharmaceuticals, semiconductors, microfluidics, chemical additives and Hatch-Waxman litigation. He also counsels clients on intellectual property and licensing matters.

Scott previously worked as a patent law intern at both Alzcor Pharmaceuticals and OSI Pharmaceuticals, where he performed freedom to operate searches for potential Alzheimer’s treatments and analyzed patentability of drugs for licensing potential. At OSI Pharmaceuticals, he also worked as a chemistry intern, synthesizing small molecule organic compounds for potential use in cancer therapeutics. As an undergraduate, Scott performed synthetic inorganic chemistry research on heterobimetallic compounds for use in alternative energy applications. This research was published in the journal Inorganic Chemistry.

Prior to joining Wolf Greenfield, Scott was an associate at Kenyon & Kenyon LLP.
  • Represented Sony in patent litigation involving more than 20 patents covering microfluidics and image processing technology that resulted in a favorable settlement
  • Represented patent owner in inter partes reviews involving semiconductor patents, including a case in which all challenged claims were upheld
  • Represents sportswear company in trademark litigation involving logos used on athletic shoes
  • Represents university patent owner in patent litigation involving small molecule pharmaceutical product
  • Represented automobile manufacturer in the Eastern District of Texas in patent litigation involving more than 20 patents covering automobile safety technology. Led a large team of associates in review of electronic discovery, drafted privilege logs, and drafted invalidity contentions
  • Represented manufacturer of nutritional supplements in patent investigation before the International Trade Commission
  • Represented multinational pharmaceutical company in Hatch-Waxman litigation over patents directed to ophthalmic pharmaceutical formulations. Drafted pleadings, worked on fact and expert discovery, prepared for and second-chaired fact and expert depositions
  • Served as lead associate in patent litigation on behalf of a supplier of chemical additives for asphalt production. Evaluated prior art, drafted invalidity contentions, drafted discovery requests and responses, prepared for and second-chaired fact and expert depositions, and prepared pretrial submissions
  • Drafted pharmaceutical patent clearance opinions and executed freedom to operate searches on behalf of a multinational pharmaceutical company
  • Drafted filings for post-grant proceedings, including inter partes reviews and reexaminations
  • Conducted worldwide patent infringement risk analysis on behalf of a global telecommunications and mobile handset provider
  • Performed pre-complaint investigations into potential infringement of patents covering GPS mapping technology, and drafted complaint against global computer software and consumer electronics company
  • Prosecuted patents directed to medical devices, steel fabrication, and chemical compounds
  • Evaluated patents related to nutritional supplements for potential licensing

Pro Bono

  • Represented unemployment insurance claimants seeking wrongfully denied benefits
  • Counseled pro bono clients on contract issues involving intellectual property

  • New York Intellectual Property Law Association: Co-Chair of Young Lawyers Committee
  • “The Mechanics of Enforcing IP Rights for Early-Stage Biotech Startups” – Alexandria LaunchLabs NYC, May 2019 
  • “IP & Tech Transfer” – Panelist, GRO Biotech GRO Your Career Conference at Columbia University, April 2019
  • “IP Strategies for Life Science Startups” – Alexandria LaunchLabs NYC, January 2019
  • “Navigating Patent Strategies in View of Recent Developments in Section 101” – Panelist, NYIPLA One-Day Patent CLE Seminar, November 2018
  • “Who Owns My BioPharma Patent?” – New York Bio Pharma Networking Group, July 2018
  • “Diverse Careers in IP Law and Strategies for Achieving Success” – Moderator, NYIPLA and Hofstra Law School Joint Program, October 2017

  • “Framework for Understanding Patent Claim Construction in the Context of Evaluating FTO of New Technologies” – Mount Sinai Innovation Partners, October 2019



Articles

July 19, 2019

Patent Coverage of Impossible Embodiments: A Cautionary Tale for Patent Owners, and Lingering Questions

April 17, 2018

Patent eligibility under US scrutiny

Blogs

August 5, 2019

Federal Circuit Declines to Take Up Winning-Petitioner Estoppel

July 10, 2018

For Indefiniteness Challenges in District Court, Don’t Forget What You Said in IPR

March 30, 2017

PTAB to Petitioners:  Don’t Hold Back



Scientific Publications

Bennett P. Greenwood, Scott I. Forman, Gerard T. Rowe, Chun-Hsing Chen, Bruce M. Foxman & Christine M. Thomas, Multielectron Redox Activity Facilitated by Metal-Metal Interactions in Early/Late Heterobimetallics: Co/Zr Complexes Supported by Phosphinoamide Ligands, 48 INORGANIC CHEMISTRY 6251 (2009).


John R. Kenny & Scott I. Forman, The Broadest Reasonable Construction Standard and the Consideration of Claim Construction by a District Court at the Patent Trial and Appeal Board, 88 PTCJ 1084 (2014).

John R. Kenny & Scott Forman, An Update on Stays Pending PTAB Trial Proceedings, Law360, Aug. 15, 2013.


Skiing, scuba diving, soccer, NY Jets, jazz
Expand All

Scott Forman is based out of the New York office, and focuses his practice on patent and trademark litigation, as well as post-grant proceedings. He has significant experience in all stages of litigation including drafting pleadings, motions, working on fact and expert discovery, and preparing pretrial filings. Scott’s post-grant practice includes drafting briefs and working with expert witnesses in inter partes review proceedings.

Scott’s litigation and post-grant experience includes a wide array of subject matters, including pharmaceuticals, semiconductors, microfluidics, chemical additives and Hatch-Waxman litigation. He also counsels clients on intellectual property and licensing matters.

Scott previously worked as a patent law intern at both Alzcor Pharmaceuticals and OSI Pharmaceuticals, where he performed freedom to operate searches for potential Alzheimer’s treatments and analyzed patentability of drugs for licensing potential. At OSI Pharmaceuticals, he also worked as a chemistry intern, synthesizing small molecule organic compounds for potential use in cancer therapeutics. As an undergraduate, Scott performed synthetic inorganic chemistry research on heterobimetallic compounds for use in alternative energy applications. This research was published in the journal Inorganic Chemistry.

Prior to joining Wolf Greenfield, Scott was an associate at Kenyon & Kenyon LLP.
  • Represented Sony in patent litigation involving more than 20 patents covering microfluidics and image processing technology that resulted in a favorable settlement
  • Represented patent owner in inter partes reviews involving semiconductor patents, including a case in which all challenged claims were upheld
  • Represents sportswear company in trademark litigation involving logos used on athletic shoes
  • Represents university patent owner in patent litigation involving small molecule pharmaceutical product
  • Represented automobile manufacturer in the Eastern District of Texas in patent litigation involving more than 20 patents covering automobile safety technology. Led a large team of associates in review of electronic discovery, drafted privilege logs, and drafted invalidity contentions
  • Represented manufacturer of nutritional supplements in patent investigation before the International Trade Commission
  • Represented multinational pharmaceutical company in Hatch-Waxman litigation over patents directed to ophthalmic pharmaceutical formulations. Drafted pleadings, worked on fact and expert discovery, prepared for and second-chaired fact and expert depositions
  • Served as lead associate in patent litigation on behalf of a supplier of chemical additives for asphalt production. Evaluated prior art, drafted invalidity contentions, drafted discovery requests and responses, prepared for and second-chaired fact and expert depositions, and prepared pretrial submissions
  • Drafted pharmaceutical patent clearance opinions and executed freedom to operate searches on behalf of a multinational pharmaceutical company
  • Drafted filings for post-grant proceedings, including inter partes reviews and reexaminations
  • Conducted worldwide patent infringement risk analysis on behalf of a global telecommunications and mobile handset provider
  • Performed pre-complaint investigations into potential infringement of patents covering GPS mapping technology, and drafted complaint against global computer software and consumer electronics company
  • Prosecuted patents directed to medical devices, steel fabrication, and chemical compounds
  • Evaluated patents related to nutritional supplements for potential licensing

Pro Bono

  • Represented unemployment insurance claimants seeking wrongfully denied benefits
  • Counseled pro bono clients on contract issues involving intellectual property

  • New York Intellectual Property Law Association: Co-Chair of Young Lawyers Committee
  • “The Mechanics of Enforcing IP Rights for Early-Stage Biotech Startups” – Alexandria LaunchLabs NYC, May 2019 
  • “IP & Tech Transfer” – Panelist, GRO Biotech GRO Your Career Conference at Columbia University, April 2019
  • “IP Strategies for Life Science Startups” – Alexandria LaunchLabs NYC, January 2019
  • “Navigating Patent Strategies in View of Recent Developments in Section 101” – Panelist, NYIPLA One-Day Patent CLE Seminar, November 2018
  • “Who Owns My BioPharma Patent?” – New York Bio Pharma Networking Group, July 2018
  • “Diverse Careers in IP Law and Strategies for Achieving Success” – Moderator, NYIPLA and Hofstra Law School Joint Program, October 2017

  • “Framework for Understanding Patent Claim Construction in the Context of Evaluating FTO of New Technologies” – Mount Sinai Innovation Partners, October 2019



Scientific Publications

Bennett P. Greenwood, Scott I. Forman, Gerard T. Rowe, Chun-Hsing Chen, Bruce M. Foxman & Christine M. Thomas, Multielectron Redox Activity Facilitated by Metal-Metal Interactions in Early/Late Heterobimetallics: Co/Zr Complexes Supported by Phosphinoamide Ligands, 48 INORGANIC CHEMISTRY 6251 (2009).


John R. Kenny & Scott I. Forman, The Broadest Reasonable Construction Standard and the Consideration of Claim Construction by a District Court at the Patent Trial and Appeal Board, 88 PTCJ 1084 (2014).

John R. Kenny & Scott Forman, An Update on Stays Pending PTAB Trial Proceedings, Law360, Aug. 15, 2013.

Articles

July 19, 2019

Patent Coverage of Impossible Embodiments: A Cautionary Tale for Patent Owners, and Lingering Questions

April 17, 2018

Patent eligibility under US scrutiny

Blogs

August 5, 2019

Federal Circuit Declines to Take Up Winning-Petitioner Estoppel

July 10, 2018

For Indefiniteness Challenges in District Court, Don’t Forget What You Said in IPR

March 30, 2017

PTAB to Petitioners:  Don’t Hold Back



Skiing, scuba diving, soccer, NY Jets, jazz