Kokka & Backus, PC - Scott S Kokka

Scott S. Kokka

Mr. Kokka specializes in counseling clients on various matters involving intellectual property including prosecution/enforcement/litigation strategy, patent and trademark preparation/prosecution, licensing, portfolio development, and general intellectual property counseling. His practice focuses on software, electrical, electronic, networking, semiconductor, communications, clean/green, energy, mechanical, medical device, and defense technologies. He also advises on intellectual property portfolio development, domestic and international technology transactions and transfer, licensing, and IP strategy, assisting clients with establishing and implementing intellectual property protection and enforcement programs that are tailored to industry or technology-specific requirements.

Mr. Kokka spent several years practicing at other prominent regional and national law firms as a patent attorney practicing in the fields of intellectual property procurement and patent litigation. Prior to his legal career, he co-founded Tresidder Networks, a venture-backed software development company that developed an enterprise application for deployment in wireless carriers. He has also assisted with the formation and venture-financing of several other companies in Silicon Valley and other technology-driven regions. He was a technical and financial strategy analyst with Knight Ridder Digital (acquired by the McClatchy Company), Hill Holliday Interactive (a holding of the InterPublic Group), and Community Newspaper Company (a holding of Fidelity Capital).

Mr. Kokka is a member of the State Bar of California, the District of Columbia Bar, and the Supreme Court of the United States. He is also a registered patent attorney with the U.S. Patent and Trademark Office. He is licensed to practice before the state courts of California and Texas, the U.S. District Courts for the Northern District of California and the District of Columbia, the U.S. Courts of Appeal for the Ninth Circuit, the District of Columbia, and the Federal Circuit, and the Supreme Court of the United States. He received his J.D. and M.B.A. from Boston College, a B.S. from the United States Naval Academy in Annapolis, Maryland, and is an alumni of the Leadership in Law Firms program at Harvard Law School.

Mr. Kokka served as a Lieutenant Commander in the U.S. Navy and deployed in support of Operations Desert Storm, Restore Hope (Somalia), and Enduring Freedom. He is a member of the American Intellectual Property Law Association, the American Bar Association, and the Intellectual Property Section of the State Bar of California and the District of Columbia Bar.

Representative Matters

Publications

Counsel of Record and Co-Author, Amicus Curiae Brief in Support of Petitioners on Behalf of Borland Software Corporation (Merits Stage), Bernard L. Bilski and Rand A. Warsaw v. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (U.S. Supreme Court 2010)

Counsel of Record and Co-Author, Amicus Curiae Brief in Support of Petitioners on Behalf of Borland Software Corporation (Petitions Stage), Bernard L. Bilski and Rand A. Warsaw v. John J. Doll, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office (U.S. Supreme Court 2009)

Developed intellectual property strategy for online gaming company, coordinating all intellectual property efforts resulting in over $100 million in private equity investments from venture capital and institutional investment firms

Provided comprehensive intellectual property services in patent, trademark, and copyright procurement, strategy, and acquisition matters for numerous startup companies raising venture capital investment ranging from $100 thousand to $100 million in private equity investments in industries ranging from semiconductor fabrication, fabless semiconductor design, software (enterprise and consumer), telecommunications, entertainment/media, and gaming

Selected as lead intellectual property outside counsel to several large publicly-traded, multi-national software corporations, providing substantial cost reductions and asset/portfolio management while building robust intellectual property portfolios

Sole intellectual property counsel for various semiconductor technology companies engaging in third-party research and development, design, and technology transfer agreements, domestically and internationally

Developed key patent assets for privately-held research firm adapting military technology for civilian applications in US and foreign markets, assisting with domestic and offshore manufacturing agreements, intellectual property enforcement with the U.S. Department of Homeland Security/Customs and Border Protection and international agencies

Assisted several clients with intellectual property matters related to raising startup, seed, debt-based, and institutional venture capital financing, providing introductions to venture capital funds, preparing founders and management with venture pitch training, term sheet review, and closing, including negotiating company and intellectual property valuation

Proprietary Rights on an Intranet, University of Florida, Journal of Technology Law & Policy, Volume 3, Issue 2 (1998)

Pending Copyright Legislation, with Neil A. Smith, Practising Law Institute, Advanced Issues in Copyright Law (1998)