Roy Wepner writes legal briefs - lots of them. Roy is one of the firm’s “go to” litigators when briefs are needed at trial and appellate courts in patent and trademark cases.
In addition to writing briefs for cases in which he has been involved since the beginning, he also serves as a “designated hitter” in cases requiring a simple and clear explanation of a complex topic. In that regard, the firm values the fresh perspective and often new approaches he can bring to difficult matters.
As one of the firm’s premier litigators, Roy also does pretty much everything else associated with IP litigation. Although Roy has Bachelor’s and Master’s degrees in mechanical engineering, he has tackled patent cases in areas ranging from basic laser technology to pharmaceuticals.
Roy’s experience in appellate practice is particularly extensive, having briefed and/or argued over 40 appeals at the U.S. Court of Appeals for the Federal Circuit alone since the court opened its doors in 1982. Roy’s successes as lead counsel include appellate victories in cases involving patents asserted against automatic teller machines, fragmentation catheters, and cellular window shades. Roy has been described as an “admired appellate specialist” in The World’s Leading Patent Practitioners by International Asset Management, which - in 2016 - said that Roy’s “appellate know‑how sets him apart from the pack and gives the firm an edge in tough disputes that are likely to go the distance.”
The Rest Of The Story
Roy’s writings have extended beyond his day‑to‑day practice. He has published four law review articles on IP topics. The first, which he wrote as a law student in 1974, presaged the creation of the Federal Circuit in 1982. The second, published in 1982, is cited in McCarthy on Trademarks and Unfair Competition, and the third (published in 1988) was cited in an en banc opinion of the Federal Circuit. The fourth, published in 2004, urged an end to the “presumption of irreparable harm” in patent‑based preliminary injunction motions, two years before the Supreme Court curtailed injunctions in patent cases in the eBay decision. He has also published over fifteen articles on IP law and practice in the New Jersey Law Journal.
Roy has taught patent law at Rutgers Law School‑Newark and trademark law at Seton Hall Law School. He also has served as an expert witness and has enjoyed success as a mediator.
Alternative Dispute Resolution
1975, New York
1976, New Jersey
1976, United States Patent & Trademark Office
J.D., University of Pennsylvania Law School, 1974
M.S., Mechanical Engineering, Rensselaer Polytechnic Institute, 1969
B.S., Mechanical Engineering, Rensselaer Polytechnic Institute, 1968; Tau Beta Pi, Pi Tau Sigma honorary societies
Lerner David successfully defended Rutgers University and one of its football coaches, Arin Blazek, against entry of a preliminary injunction. Following full briefing by the parties and oral argument, U.S. District Judge Michael A. Shipp denied the preliminary injunction, agreeing with the position argued by Lerner David.
On behalf of our client New York University (“NYU”) Lerner David won an appeal before the New York Supreme Court Appellate Division. The Appellate Division reversed a lower court decision that had dismissed a breach of contract action brought by NYU against Pfizer Inc. and reinstated the lawsuit. The suit involves an exclusive technology license from NYU to a small company named Sugen, which was ultimately acquired by Pfizer. The license concerned fundamental technology in the field of targeted cancer therapies. Pfizer launched a drug known as XALKORI® to treat non-small cell lung cancer. NYU filed suit alleging that it was entitled to royalties under a 1996 amendment of the license agreement. In late 2015, the New York Supreme Court, Commercial Division, construed the agreement favorably for Pfizer, which resulted in dismissal of NYU’s claim. As urged by Lerner David, the Appellate Division found ambiguity in the agreement and held that in the face of countervailing reasonable interpretations, which could not be resolved at an early procedural stage, the complaint should not have been dismissed. The majority rejected Pfizer’s contention that NYU’s reading of the 1996 amendment would lead to a “commercially unreasonable” result. Adopting Lerner David’s arguments, the Court based its decision on the fact that NYU had agreed to give up certain royalties in the short term in exchange for royalties on certain future products (such as XALKORI®), coupled with the fact that the products on which royalties were being sought were alleged to have been derived from NYU technology. NYU plans to continue seeking a 2.5% royalty on Pfizer’s sales of XALKORI®, which (cumulatively) are believed to have exceeded $1.5 billion. (The case is New York University v. Pfizer Inc., 2017 N.Y. App. Div. LEXIS 03464, 2017 N.Y. Slip Op. 03464 (Appellate Div., First Dep’t, May 2, 2017.))
In High Point SARL v. T-Mobile USA, Inc., 640 F. Appx 917 (Fed. Cir. 2016), a patent infringement suit brought against T-Mobile involving cellular telephone network infrastructure equipment, a Lerner David team represented Ericsson Inc., one of T-Mobile’s suppliers. After intervening at the district court, we established on summary judgment that the Ericsson components had been licensed by a previous owner of the patents, which provided support for T-Mobile to prevail on a defense of patent exhaustion. The judgment was affirmed in all respects by the Federal Circuit.
On November 4, 2015, Lerner David partner Roy Wepner successfully mediated a case involving utility patents, design patents and trade dress, The Eastern Company v. Phoenix USA, Inc., Case No. 1:15-cv-00327 in the U. S. District Court for the Northern District of Ohio.
On May 27, 2015, following a private settlement, U. S. District Judge Jose L. Linares entered a judgment in favor of Lerner David client Waddington North America, Inc., a manufacturer of patented metallized plastic cutlery. The judgment found that Waddington’s reexamined US Patent No. 6,983,542 was valid and enforceable and had been infringed by competitor Evriholder Products, LLC, and permanently enjoined Evriholder’s patent infringement. The judgment also finds that Waddington owns trade dress rights in the distinctive, nonfunctional and ornamental design of Waddington’s REFLECTIONS® metallized cutlery and serving pieces, and permanently enjoins Evriholder from infringing that trade dress.
On March 17, 2015, Lerner David partner Roy Wepner successfully mediated a trademark infringement action, Grey Matter Medical Products, LLC v. Schreiner Group Limited Partnership, Case No. 3:13-cv-05861, that was pending in the U.S. District Court for the Western District of Washington.
In Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F. 3d 1343 (Fed. Circ. 2014), representing ATM maker Diebold, Inc., Lerner David obtained an affirmance of a lower court ruling that 242 claims across four patents were invalid for lack of patent eligible subject matter.
WADDINGTON NORTH AMERICA, INC. v. SABERT CORPORATION. After assisting our client Waddington in obtaining a successful reexamination of its patent on metallized cutlery, we filed an infringement action in the District of New Jersey against its competitor, Sabert. In various pretrial rulings, we obtained dismissal of Sabert's inequitable conduct defenses (2010 WL 3907036); several favorable claim construction rulings (2010 WL 4363137); summary judgment of literal infringement as to one of Sabert's products (2011 WL 1098998); and summary judgment on one of Sabert's defenses alleging lack of written description support (2011 WL 1098996). After a trial in which a jury rendered a verdict adverse to our client, we obtained judgment as a matter of law on Sabert's remaining written description defense, and a new trial on all other issues based upon opposing counsel's trial misconduct (2011 WL 3444150). Prior to the scheduled retrial, the case was settled with the entry of a consent judgment acknowledging that our client's patent was valid and enforceable, and with Sabert taking a license under our client's patent.
In John Hopkins University v. Datascope Corp., 543 F. 3d 1342 (Fed. Cir. 2008), Lerner David successfully overturned on appeal a jury verdict of infringement in a case involving fragmentation catheters.
“Inventions: Here Today, Gone Yesterday?” by Wepner and Dickey published in New Jersey Law Journal on April 17, 2018
“Waive Goodbye: Developments in Patent Litigation” by Roy Wepner published in New Jersey Law Journal on August 21, 2017
“Goods or services? Why It Matters” by Roy Wepner published in New Jersey Law Journal on January 2, 2017
“Is Competition Required for A Patent Injunction” by Roy Wepner published in New Jersey Law Journal on November 10, 2014
“Joinder of Unrelated Defendants in Patent Cases” by Roy Wepner published in New Jersey Law Journal on June 20, 2011
“Patent Forum Shopping May Be Curtailed” by Roy Wepner published in New Jersey Law Journal on February 11, 2008
“Supreme Court Ends Automatic Injunctions” by Roy Wepner published in New Jersey Law Journal on June 5, 2006
“The Federal Circuits Presumptively Erroneous Presumption of Irreparable Harm”, 148 Tul. J. Tech. & Intell. Prop. (Vol. 6 2004), by Roy H. Wepner and Richard W. Harris
“Are Federal Appellate Practitioners Free At Last?” by Roy H. Wepner published in New Jersey Law Journal on January 26, 2004
“Well Miss You, Mr. Rogers” by Roy H. Wepner published in New Jersey Law Journal on July 21, 2003
“Court Places Limits On The Doctrine of Equivalents” by Roy H. Wepner published in New Jersey Law Journal on January 13, 2003
Lerner David Named Intellectual Property Litigation Department of the Year for the Third Time Running
Lerner David Named Top IP Litigation Firm in New Jersey
Lerner David Ranked by IAM Patent 1000 — The World's Leading Patent Professionals
Lerner David Receives Top Honors in New Jersey For Intellectual Property Litigation
IAM Patent 1000 — The World's Leading Patent Professionals — Ranks Lerner David
Super Lawyers Recognizes Lerner David
Lerner David's 2014 Super Lawyers
New Jersey State Bar Association
New York State Bar Association
American Bar Association
New Jersey Intellectual Property Law Association