Scott D. Marty, PhD

Tel 678.420.9408
Fax 678.420.9301

Scott D. Marty focuses on various aspects of biotechnology patent prosecution and patent litigation, including Post-Grant Proceedings under the AIA. He is the leader of the Patent Group's biotechnology practice team, and a member of the pharmaceutical practice team.

Scott 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.

Scott'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. Scott also prepares noninfringement, invalidity, and freedom-to-operate opinions, and negotiates and drafts license agreements for a variety of clients.

Representative Matters

Patent Prosecution and Counseling:

  • Serve as primary/lead patent prosecution counsel to two separate and distinct major international, nonprofit research institutions, supporting the biotechnological and biomaterials programs
  • Serve as patent prosecution and trademark counsel, conduct diligence and freedom to operate analysis, and serve as litigation counsel for a global provider of sample and assay technologies for molecular diagnostics, applied testing, and academic and pharmaceutical research
  • Support the technology transfer offices of several of the nation's top research universities and serve as preferred patent prosecution and corporate counsel for biotech, chemical, medical device, and pharmaceutical innovations and startup companies
  • Serve as patent prosecution and diligence counsel for a major biopharmaceutical company to help protect and develop an intellectual property strategy for the world's most comprehensive genetics database

Patent Litigation:

  • On Symphony Health Solutions Corp. v. IMS Health Inc., (Patent Trial and Appeal Board), serving as member of the post-grant review litigation team for Symphony Health Solutions Corp. in challenging the validity of multiple covered business methods patents related to data record software, asserted against Symphony
  • Member of the post-grant review litigation team for a web hosting company in software patent litigation matters involving issues concerning patentability and scope of protection for covered business methods
  • 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

IAM Patent 1000 – The World’s Leading Patent Professionals, patent prosecution, 2014-2015, 2019-2020

Named a Georgia Super Lawyer – Rising Star, 2013


Co-author, "Amended PTAB Rules Give Patent Owners a Boost," Ballard Spahr Alert, April 1, 2016 

Co-author, "How to Prove it to the PTAB," Managing Intellectual Property, January 26, 2016

Co-author, "Patent Trial & Appeal Board Finds Obscure Russian Doctoral Thesis Qualifies as Prior Art," Ballard Spahr Alert, August 20, 2015

Co-author, "Federal Circuit Sides with USPTO in First Review of AIA Final Decision," Ballard Spahr Alert, February 5, 2015

Co-author, "Federal Circuit Gives Little Guidance on Biosimilar Patent Validity Challenges," Ballard Spahr Alert, December 12, 2014

Co-author, "Inter Partes Review: It's No Party for University Patent Owners," BioTechnology Law Report, April 2014

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

Moderator, "Diagnostics," 2020 Translational Medicine Symposium, University of Utah, February 27, 2020

"It's the Real Deal! An Update of the Effects and Compliance with the May 2018 Amendments to Bayh-Dole," Ballard Spahr webinar, October 30, 2018

"Strategies for Approaching New Restrictions on Patentable Subject Matter in the U.S.," European Practice Committee Conference, May 18, 2017

"Oh, That's Why I Need a Lawyer," Utah Governor's Office of Economic Development and Utah Media Group, April 2017  

Panelist, "2017 Translational Medicine Symposium – Therapeutics Session," University of Utah, Salt Lake City, February 27, 2017

Georgia State University, instructor, patent law, since 2005

Moderator and Panelist, "Post-Grant Proceedings as the New Frontline: Impacts and Future Trends of Legislation and Case Law on Licensing and Innovation," Licensing Executive Society (LES) 2015 Annual Meeting, New York, October 27, 2015

"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 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

Scott 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)


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

U.S. Court of Appeals for the Federal Circuit

U.S. Patent and Trademark Office