Roy H. Wepner Image

Roy H. Wepner

Of Counsel

Kaplan, Breyer Schwarz

Roy H. Wepner is Of Counsel to Kaplan, Breyer Schwarz, LLP. He is an Adjunct Professor at Rutgers Law School in Newark, New Jersey, where he has taught patent law and patent litigation. He also has taught trademark law at Seton Hall Law School.

Roy attended Rensselaer Polytechnic Institute, where he received bachelor’s and master’s degrees in mechanical engineering. He received his Juris Doctor degree from the University Of Pennsylvania School Of Law.

Roy has practiced patent and trademark litigation for almost five decades. Most of his career was spent at Lerner, David, Littenberg, Krumholz & Mentlik, where he retired after more than three decades as a partner.

Roy is the author of several law review articles; dozens of “In Practice” articles published in the New Jersey Law Journal; and online articles on patent and trademark litigation. He is a Certified Mediator for the U.S. District Court for the District of New Jersey, and has served as an expert witness in patent and trademark cases.



Recent Articles by Roy H. Wepner

The Devil Made Me Do It: When are USPTO Filings ‘Involuntary’?

In Dragon Intellectual Property LLC v. Dish Network LLC, – (Fed. Cir., May 20, 2024), a divided panel of the U. S. Court of Appeals for the Federal Circuit held that a prevailing defendant in an otherwise “exceptional” patent infringement case could not recover attorney fees expended in a parallel inter partes review (IPR) proceeding because the defendant’s initiation of the IPR was “voluntary.” The court ostensibly drew a bright line between Dish’s “voluntary” U.S. Patent and Trademark Office (USPTO) filing and the purportedly “involuntary” filing at issue in a 1988 Federal Circuit case. I respectfully suggest that the earlier case was wrongly decided and that there is no meaningful difference between the fact patterns in the two cases.

Outsourcing Patent Enforcement: You May Get What You Pay For

Intellectual property litigation in the 21st century has brought to the fore systems for asserting infringement in which IP owners may be spared some of the huge expense of litigation by “routing” extra-judicial enforcement activities through a third party. They may do so by availing themselves of programs operated by middlemen such as Amazon, which can potentially cripple a competitor with the threat of removal from, while the patentee can claim to be immune from a declaratory judgment suit on the accused infringer’s home turf.