Scott Rothenberger, Ph.D.

Scott focuses his practice on patent prosecution, licensing and intellectual property litigation, including inter partes reviews (IPR), District Court actions and International Trade Commission (ITC) actions. Scott also counsels clients on patentability issues, conducts due diligence assessments, and provides infringement and validity opinions.

He is a member of the team assisting the Special Compliance Coordinator appointed by the U.S. Department of Commerce to monitor, assess and report on the U.S. export control compliance of Zhongxing Telecommunications Equipment Corporation, of Shenzhen, China, and ZTE Kangxun Telecommunications Ltd. of Shenzhen, China (collectively, ZTE).

Scott consistently provides a thorough understanding of the technology that underlies cutting-edge inventions, which allows him to represent even the most sophisticated clients in protecting their pioneering innovations. With a doctoral degree in organic chemistry and an extensive background in science, Scott prepares and prosecutes patent applications in the pharmaceutical, chemical and biotechnology industries, specifically related to small molecules, nutraceuticals, various catalysts, fuel cells, nonwovens, films, surface modifications, business methods, software, mechanical devices, polymers and biomedical devices.

Scott views each client and representation as distinct. He is able to serve as a problem-solver who offers a nuanced point of view when evaluating scientific breakthroughs in ways his client did not previously consider. Creative in drafting patent applications and in devising the right argument with patent examiners, Scott is at his best explaining complex scientific issues in a way that a layman can understand, which results in favorable outcomes for those he serves.

In litigation, Scott is dedicated to out-of-the-box thinking and novel approaches to dispute resolution on both enforcement and defense. A formidable advocate and direct communicator, Scott identifies the strengths and weaknesses of his client’s position and delivers cogent arguments that yield the greatest possible influence on all involved constituents. Scott is appreciated for his calmness, particularly when guiding his clients toward a clear path to realizing the desired result. 

Notably, Scott holds the distinction of successfully handling a patent infringement action in Ecuador, where he was asked to educate the patent tribunal regarding the rules and regulations of patent law with regard to infringement. He also served as the client’s expert witness and advocate for and during the trial. 

Scott completed a postdoctoral fellowship at the University of South Carolina and a postdoctoral fellowship at the State University of New York at Stony Brook. Prior to joining Barnes & Thornburg, Scott practiced with Norton Rose Fulbright US LLP in Minneapolis.