Scott Marty
Scott Marty

Scott D. Marty, PhD

Partner

martys@ballardspahr.com
Tel 678.420.9408
Fax 678.420.9301
Atlanta

Scott D. Marty focuses on various aspects of biotechnology patent prosecution and patent litigation, including Post-Grant Proceedings under the AIA. He is a member of the biotechnology and pharmaceutical practice teams in the Patents Group.

Dr. Marty has experience in all aspects of domestic and international patent prosecution, client counseling, prelitigation analysis, and litigation relating to the biotechnical, chemical, and pharmaceutical fields. He also has experience working with clients in reviewing, analyzing, and evaluating intellectual property-based issues as well as performing and providing detailed financial analysis to provide a well-rounded picture of opportunities for evaluating the overall portfolio.

Dr. Marty's clients benefit from his consultative approach, which focuses on educating clients on various aspects of patent law. He has taught several patent law classes and presented numerous seminars to both local and national audiences.

Representative technologies include DNA and protein therapeutics, biomarkers, genetic engineering, transgenic animals, gene therapy, molecular and cellular biological screening assays, vaccines, peptide/protein therapy and diagnostics, cloning fermentation, methods of nucleic acid amplification, and various biotechnical research tools. Dr. Marty also prepares noninfringement, invalidity, and freedom-to-operate opinions, and negotiates and drafts license agreements for a variety of clients.

Representative Matters

  • Counsel for a DNA sequencing company in litigation in the District of Delaware relating to next-generation "sequencing by synthesis" DNA sequencing technology, and in various inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, in which we are challenging the validity of various patents asserted against our client in the Delaware litigation

  • On The University of Iowa and The University of Iowa Research Foundation v. Amgen et al. (S.D. Iowa 2008), counseled The University of Iowa and The University of Iowa Research Foundation in a patent infringement claim involving various pharmaceutical products

  • On The University of Iowa and The University of Iowa Research Foundation v. Abbott Laboratories (S.D. Iowa 2009), counseled The University of Iowa and The University of Iowa Research Foundation in a patent infringement claim involving various pharmaceutical products

  • On The University of Utah Research Foundation v. BIOSPACE et al. (D. Utah 2008), counseled The University of Utah Research Foundation in a patent infringement claim involving a device for measuring body composition

Professional Activities

State Bar of Georgia

American Intellectual Property Law Association

Association of University Technology Managers

Licensing Executive Society

Ballard Spahr's Intellectual Property Department Recruiting Committee, Co-Chair

Recognition & Accomplishments

Named a Georgia Super Lawyer – Rising Star, 2013

Publications

Co-author, "Biopatent Law: European vs. U.S. Patent Law," SpringerBriefs in Biotech Patents (2014)

Co-author, "The Interplay of Limelight Networks Inc. v. Akamai Technologies, Inc. et al. 571 U.S.____ (2014) (Limelight) and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __ (2012) (Prometheus)," West Services Inc.'s Inside the Minds (In Press)

Co-author, "Zebrafish yolk-specific not really started (nrs) gene is a vertebrate homolog of the Dosophila spinster gene and is essential for embryogenesis," Dev. Dyn. 223, 298, 2002

Co-author, "Zebrafish: A developmental and genetic model for hematopoiesis and hematopoietic disorders," Genetic Models in Cardiorespiratory Biology, J Haddad and R. Xu, eds. (New York, NY Marcel Dekker, Inc.), pp. 255-280, 2002

Co-author, "A high-throughput method to identify and characterize novel hematopoietic genes," Development 222, 252, 2000

Co-author, "A zebrafish model for hepatoerythropoietic porphyria," Nature Genetics 20, 239-243, 1998  

Speaking Engagements

Georgia State University, instructor, patent law, since 2005

"Commercialization of University Technology from a Law Firm & Funding Perspective," Commercialization Interchange, October 15, 2014

"A New Battlefield in Patent Litigation: Post-Grant Review Procedures before the Patent Trial and Appeal Board," Ballard Spahr CLE program, Philadelphia, May 7, 2014

"All You Really Need To Know about Intellectual Property – An IP Primer," UNLV Faculty Meeting, March 26, 2014

"Post-Grant Proceedings Under the AIA: How Do They Affect My University?" AUTM Professional Development Program, March 4, 2014

"Introduction to Patents and Patent Law," presentation to the Center for Microbial Interface Biology at The Ohio State University, September 17, 2013

"Demystifying Patents: An Overview of the Basics and Current Issues Facing Medical Technologies," The Ohio State University College of Medicine, May 9, 2013

Interviewed by Forbes.com for article titled "Is Your Idea Patentable? Are Patents a Waste of Money and Time?" July 22, 2012

"Is it Time for Your Office To Gut its Commercialization Model?" AUTM 2012 Annual Meeting, Anaheim, California, March 2012

"Reap the Benefits of a Strong Post-License Monitoring System," Technology Transfer Tactics webinar, November 29, 2011

"To Deal or Not to Deal? The Ongoing Changes and Issues Facing University and Corporate Licensing," AUTM 2011 Annual Meeting, Las Vegas, April 2011

Panelist, "Reap the Benefits of a Strong Post-License Monitoring System," webinar, November 2011

"Is Technology Transfer Doomed?" AUTM Eastern Region Meeting: Recovery Through Innovation, Atlanta, June 2010

"Whose IP Is It Anyway?" AUTM Eastern Region Meeting: Recovery Through Innovation, Atlanta, June 2010

"Myriad: Its Effect on Gene Patenting," 3rd Annual Rhineland Biopatent Forum, Dusseldorf, Germany, June 2010

"Venture Commercialization: Needs and Challenges Facing Universities and Regional Economies," 2010 BIO International Convention, Chicago, May 2010

"Fundamentals of Patents," Entrepreneurial Engineering Seminar, University of Utah, April 2009

"Building a Licensing Team: Optimization of the Deal Process by Assembling Crossdisciplinary Expertise," LES Winter Meeting, San Antonio, February 2009

"Due Diligence," Kauffman Angel Training Course, Logan, Utah, August 2008

Community Activities

Dr. Marty serves as a student mentor for the Georgia State University College of Law Mentor Program and participates in coaching the Georgia State University Moot Court teams.

Georgia State University College of Law (J.D. 2004)

Medical College of Georgia (Ph.D., biochemistry and molecular biology, 2001)

State University of West Georgia (B.A., biology, 1996)

Georgia

U.S. District Court for the Northern District of Georgia

U.S. Patent and Trademark Office