Scott W. Burt

Partner
Chicago
Tel: 1.312.269.4266
Fax: 1.312.782.8585
Email:
swburt@jonesday.com
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Scott Burt has a diverse intellectual property and technology-related practice that includes litigation and transactions.
Scott's litigation practice concentrates on patent litigation regarding semiconductors and software. His recent patent infringement cases include defending IBM in an action brought by Amazon.com on a patent related to searching multiple, disparate semistructured data sources (such as different Web sites), defending Nokia in an action relating to spread-spectrum CDMA technology, defending Freescale Semiconductor in an action related to computer modeling the operation of a semiconductor fabrication plant, representing MOSAID in two actions related to semiconductor memory chips, defending Motorola and Freescale in three actions related to semiconductor manufacturing processes and chips, jointly defending 35 defendants in a single-action related to local/remote computer communication (in which the defendants were alleged to have infringed by their e-commerce Web sites), and representing Texas Instruments in four actions related to analog chips.
In trademark infringement litigation, Scott has defended Taiwan Hopax Chemicals and its affiliate Beautone Specialties in an action in which 3M asserts trademark rights in the color "canary yellow" for sticky notes, and he defended Bell Sports in an action related to model names for bicycle air pumps.
Scott's transactional practice covers a wide range of matters, where he advises clients on intellectual property issues in transactions, negotiates licenses, and counsels clients on patent, trademark, and copyright issues. His clients include Bridgestone, Ducchossois Industries, The Riverside Company (for which he also does patent and trademark litigation), Texas Instruments, and USG Corporation. One of his significant transactional matters was representing S.C. Johnson Commercial Markets, now named JohnsonDiversey, in its $1.6 billion acquisition of DiverseyLever, the worldwide institutional cleaning and hygiene business of Unilever plc.
Scott's most recent speaking engagements were "Advertising in the Internet Age" for The Chicago Bar Association Committee on Professional Responsibility, "Responding to Patent Infringement Claims on Essential Patents" at the 2006 Advanced Patent Law Institute, and "IP Issues in Mergers and Acquisitions" at the Chicago-Kent College of Law. He has written two Jones Day Technology Commentaries: "The Supreme Court's Decision in Festo Corp.: An Important New Development Regarding the Scope of Patent Protection" (coauthored with Gregory A. Castanias) and "Controversial New Rules for Computer Contracts" (discussing UCITA).
Scott was recognized in Illinois Super Lawyers in 2005 for intellectual property litigation.
Scott was in Jones Day's Dallas Office for 10 years before moving to the Chicago Office in 2001. He is also a member of the Firm's Lawyer Training Committee.
Admitted
Illinois
Education
University of Colorado at Boulder (B.A. in Math 1985); University of Denver (Symposium Editor, Law Review; Order of St. Ives; J.D. 1989)