Scott Rothenberger, Ph.D.

Scott advises clients on patent matters including inter partes reviews (IPR), district court actions and International Trade Commission (ITC) actions. He also advises clients on patentability issues, conducts due diligence assessments and provides infringement and validity opinions. 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.

In litigation, Scott brings out-of-the-box thinking to dispute resolution on both enforcement and defense. A strong advocate and direct communicator, Scott assesses his client’s position and crafts persuasive arguments for maximum impact. Notably, Scott holds the distinction of successfully handling a patent infringement action in Ecuador, where he was asked to educate the patent tribunal regarding rules and regulations of patent law regarding infringement. He also served as the client’s expert witness and advocate for and during the trial.

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. He is a problem-solver who offers a nuanced point of view when evaluating scientific breakthroughs and is appreciated for his calm demeanor when guiding his clients toward realizing their goals.

For four years, he was 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). This work has resulted in Scott becoming well-versed in depositions and similar proceedings.