Scott J. Menghini

Scott J. MenghiniPartner

San Diego
9330 Scranton Road
Suite 350
San Diego, CA 92121VCard
858.552.1311 
858.552.0095 fax
LinkedInDownload PDF

Education

J.D., University of San Diego, 1998
B.S., Electrical Engineering, Montana State University, 1991

Services

Technical Areas

Bar & Court Admissions

CaliforniaU.S. Patent and Trademark OfficeU.S. District Court for the Southern District of California

Recognition

Named a San Diego County 2014 Top Attorney in Intellectual Property (Transactional) by The Daily Transcript
University of San Diego School of Law
- Co-recipient, International Academy of Trial Lawyers Award for Excellence in Advocacy and Trial Coursework, 1998
- President, Science and Technology Law Society, 1996–1998

Scott J. Menghini serves as the Managing Partner of Fitch Even’s San Diego office. His practice focuses on patent portfolio development, patent prosecution, freedom-to-operate analysis, infringement and validity analysis and opinions, and intellectual property due diligence.

Scott’s clients comprise small, midsized, and large private companies and public corporations. He is actively involved in the development and implementation of intellectual property strategies for several high-tech companies.

Scott has extensive experience in the preparation and prosecution of U.S. and foreign patent applications. He is widely regarded for his ability to understand his clients’ businesses and the strategic purpose of any given patent portfolio, thereby developing IP assets with business and enforcement value. Scott has worked with clients involved in a variety of technologies, including these:

  • Analog and digital electronics
  • Communication systems, including cellular telephony, satellite communications, wireless networking systems, and ultra wideband communications
  • Digital signal processing
  • Semiconductor technologies
  • Computer software technologies, including Internet technologies and protocols
  • Solid-state laser technologies
  • Business methods, including software and business processes
  • Control systems
  • Television/computer display technologies
  • Irradiation systems controls
  • Materials and contraband detection and imagery
  • Weaponry, including non-lethal weaponry
  • Electro-mechanical arts


In addition, clients rely on Scott for counsel on intellectual property and business strategies, patent interference proceedings, patentability opinions, and litigation support.

Scott is a member of Fitch Even's Executive Committee.
 



Represented inventor by researching and analyzing current social networking industry, developing patent portfolio for potential industry-wide assertion, supporting litigation and licensing program, and successfully assisting in brokering patent portfolio sale to leading social networking company; portfolio used by acquirer in litigation.

Assisted private company in developing patent portfolio essential to business of company and securing large private financing.

Represented start-up company to develop and license patent portfolio to large corporation.

Negotiated and obtained patent license agreement in which client licensed patented technology to large company customer to strengthen business relationship and increase sales of core products to customer.

Negotiated and obtained various settlements regarding the use of company trademarks relative to competitor brands.

Represented client in developing and implementing freedom-to-operate procedure for new product development and product release in patent-dense industry with aggressive competitors.

Represented charitable organization on a pro bono basis, assisting in branding strategies and obtaining several trademark registrations.

Represented client in the development of continuation patent family to cover competitor products; patent family planned for use in enforcement against competitor.

Represented several start-up companies in creating internal procedures to encourage invention disclosures, including forming intellectual property review committee with guidelines for filtering and approving inventions having sufficient business value to patent.

Represented client in developing strategy to provoke interference to attempt to remove threat of competitor patent.

Assisted client in successful outcome in an interference before the U.S. Patent and Trademark Office. Client was awarded claims at the end of the interference.

Obtained stay of litigation for client defending patent infringement lawsuit pending the outcome of reexamination before the U.S. Patent and Trademark Office.

show / hide More Representative Matters

Assisted client in patent portfolio while navigating contractual restrictions between independently funded client inventions and contractual anti-patenting restrictions involving jointly developed inventions with large organization funding development.

Assisted private equity fund in intellectual property diligence with potential investment in technology company.

  • American Intellectual Property Law Association
  • California Bar Association
  • San Diego County Bar Association
  • San Diego Intellectual Property Law Association

Hosted on the FirmWisesm Platform | Designed by Charette Design