Roger H. Lee

Roger H. Lee focuses his practice on intellectual property law, with an emphasis on inter partes matters before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. He has extensive experience before the PTAB and has successfully represented petitioners and patent owners in inter partes review (IPR) proceedings.

Roger provides strategic counseling and opinions concerning validity, infringement, and freedom to operate. He helps clients navigate complex disputes involving multiple patents and parallel proceedings. He has conducted appeals before the Court of Appeals for the Federal Circuit.

Roger has extensive experience preparing and prosecuting patent applications and managing patent portfolios. He is experienced in all phases of patent prosecution, from drafting applications to conducting appeals. He has obtained numerous patents for clients in the chemical, pharmaceutical, biotechnology, mechanical, and electrical fields.

Recently, Roger has:

• Defended six pharmaceutical patents challenged in parallel IPR proceedings.  Roger was successful in persuading the PTAB to not institute trial with respect to all of the challenged claims.
• Filed IPR petitions challenging two patents asserted against a firm client in district court.  The filing of the IPRs enabled the client to obtain favorable settlement terms.
• Defended two medical device patents in IPR proceedings.  Roger prevailed in pre-trial briefing, convincing the PTAB to not institute trial with respect to all of the claims challenged in the IPRs.
• Successfully presented oral argument before the PTAB, persuading the panel to reverse all of the rejections of a firm client’s pending patent application.
• Successfully challenged several patents in parallel IPR proceedings before the PTAB.  The patents were asserted against a firm client in district court.
• Obtained favorable post-institution, pre-trial judgment in an IPR on behalf of a firm client accused of infringement in district court.  The IPR concluded with the patent owner requesting adverse judgment with respect to all of the challenged claims.
• Represented a firm client in an inter partes reexamination proceeding challenging a patent asserted against the client in district court. 
• Successfully defended a firm client’s patent against an ex parte reexamination request filed by an accused infringer.
• Counseled clients in the pharmaceutical and specialty chemicals industries concerning patentability, infringement, and freedom to operate issues and prepared opinions.
• Prepared and prosecuted patent applications in chemical, pharmaceutical, biotechnology, mechanical, and electrical fields for universities and businesses ranging in size from startups to Fortune 500 companies.

Roger regularly writes and speaks on developments and emerging trends in patent litigation practice in the PTAB and federal courts.  Roger has recently written on a variety of PTAB topics including claim construction, prior art qualification, estoppel, discovery, secondary considerations, surreplies, scope of appeal, and reform to PTAB trial practice.  He is co-editor of the Buchanan PTAB Report, an information center that provides insights into post-grant practice and articles concerning recent developments in Patent Office litigation.  Roger is active in bar associations including the AIPLA PTAB Trial Committee.