Vernon M. Winters

Partner


Contact

555 California Street
Suite 2000
San Francisco, California 94104
+1.415.772.7441

1001 Page Mill Road
Building 1
Palo Alto, California 94304
+1.650.565.7541

vwinters@sidley.com

Admissions & Certifications
Education
Clerkships

Vernon M. Winters

Partner


VERN WINTERS is known for finding ways to win challenging patent cases. He has been privileged to work closely with a number of the country’s leading high-technology and biopharmaceutical companies, and has spent more than 200 days in high-stakes jury, bench, and arbitration trials. Among his trial and summary judgment wins in patent and patent licensing disputes are:

  • Beating, in a month-long arbitration trial, a global biopharmaceutical company’s patent infringement, trade secret misappropriation, and breach of contract claims directed to all of the recombinant organisms and materials used to manufacture several billion-dollar biologics; 
  • Defeating, in a week-long trial, an infringer’s claims, which relied on the expert testimony of the former chair of a state Bar’s ethics committee, that the chief legal officer at a leading biotech company had committed fraud in a patent-based joint venture; and
  • Securing a series of summary judgment orders on non-infringement and invalidity against Ronald Katz’s networking patents that were part of a larger portfolio by which Katz had previously extracted almost $2 billion in licensing fees. 

First ranked in Chambers USA in 2008, that and subsequent editions have reported client feedback that he “impresses clients with his ‘charismatic and persuasive style in the courtroom - he can strike the right tone in pre-litigation too,’” that he is “renowned for his sophisticated handling of patent litigation,” and has “exceptional knowledge of the law.” Chambers USA (2015) reported that he “is praised by clients for being ‘able to take a very complex legal or technical subject matter and make it accessible and compelling to a lay audience.’” IAM Patent 1000 (2014) reported client feedback that he “is another big name here, feted for his ability to hammer out a result in the most taxing disputes. A trial lawyer first and foremost, he can readily turn his hand towards any technical discipline,” and its 2013 edition reported that “‘[h]e is a next-generation star who is on the rising tide. Careful, thoughtful, and experienced, you can rely on him to do a great job.’” Its 2012 edition reported that he is a “phenomenally good litigator.” The client comments section of Best Lawyers in America (2013-15) described him as having “a deep expertise and knowledge in patent litigation” and as “a deep thinker on issues presented in the litigation.”

Regarded as a thought leader in the fields of patent and federal court litigation, Mr. Winters has addressed District Judges at Federal Judicial Center programs regarding claim construction issues, written amicus briefs in patent cases in the Supreme Court of the United States, the United States Court of Appeals for the Federal Circuit (en banc), and, for Intel Corporation, in the United States International Trade Commission. From 2002-2010, Mr. Winters taught and co-taught Patent Litigation at the University of California, Berkeley School of Law. He has spoken and published widely on patent litigation issues, and is co-author of the treatise Modern Patent Litigation. He currently serves, at the Court’s invitation, on the patent litigation Neutrals Panel for the United States District Court for the Northern District of California; on the Board of Editors of the Intellectual Property & Technology Law Journal; and on the Advisory Board of the Center for the Advanced Study and Research on Intellectual Property at the University of Washington School of Law in Seattle, Washington. From 2007-2008, he served on the Commission on Judicial Nominees Evaluation of the State Bar of California, which assesses the Governor of California’s potential nominations to the California state bench.

AWARDS & RECOGNITION 

  • Listed, Chambers & Partners USA Guide, America’s Leading Lawyers for Business, 2008 – 2013, 2015 
  • Listed, The Best Lawyers in America, 2013 – 2015 
  • Listed, IAM Patent 1000, 2012 – 2015 
  • Listed, LMG Life Sciences, Life Sciences Star: Patent Litigation, 2012 (inaugural issue) – 2014 
  • Listed, Who’s Who in the World, 2008 – current 
  • Listed, Who’s Who in America, 2009 – current 
  • Listed, Who’s Who in American Law, 2009 – current 
Experience
  • In Intellectual Ventures’ first lawsuits against the insurance industry, lead trial counsel in defense of a group of international insurance companies against allegations of infringing patents purporting to claim database, computer networking, and mobile applications technologies. (Western District of Pennsylvania.)
  • In lawsuits by Intellectual Ventures against the insurance industry, lead trial counsel in defense of national insurance companies against allegations of infringing patents purporting to claim certain computer networking technologies. (Eastern District of Texas.)
  • Trial counsel for the world’s largest freestanding biologics company in defense of its innovator’s rights under the Biologics Price Competition and Innovation Act in a high-profile patent dispute involving the first-ever FDA-approved biosimilar. (Northern District of California and United States Court of Appeals for the Federal Circuit.)
  • Trial and appellate counsel in the country’s first adjudicated biosimilars dispute; wrote the briefs that successfully defended against declaratory judgment attacks, both in the district court and on appeal, 773 F.3d 1274 (Fed. Cir. 2014), on patents that protect the world’s best-selling biologic. (Northern District of California and United States Court of Appeals for the Federal Circuit.) 
  • As lead trial counsel, lead trial counsel for a Fortune 50 semiconductor company and its network security subsidiary in defense against allegations of infringing patent claims directed to certain intrusion detection technologies; settlement with no payment of money by either. (District of Delaware.) 
  • In the first lawsuits that Intellectual Ventures ever filed, lead trial counsel for network security subsidiary of a Fortune 50 semiconductor company in its defense against allegations of infringement of four patents directed to purported inventions of network security systems and methods. Case settled after Mr. Winters argued the Markman hearing and deposed the first two named inventors. (District of Delaware.)
  • As lead trial counsel in Paragraph IV ANDA litigation, defended the country’s best-selling combined oral contraceptive from preliminary injunction attacks by generics manufacturer. (District of Nevada.)
  • Lead trial and appellate counsel for one of the world’s largest biotechnology companies in a §146 action involving patent rights for potential cancer therapeutics (death domain receptors). Obtained dismissal of action for failure to exhaust administrative remedies, 589 F.Supp.2d 512 (D. Del. 2008); opponent withdrew its Federal Circuit appeal after biotechnology company filed its red appeal brief. (District of Delaware & United States Court of Appeals for the Federal Circuit.)
  • As lead counsel, defended international airline company in the largest patent MDL litigation in history against allegations of infringement of interactive voice application patents; defeated asserted patent claims in a series of summary judgment motions. (Central District of California.)
  • Lead trial counsel for leading biotechnology company in an action for infringement of fundamental antibody humanization patents used in the production of some of the world’s most successful rDNA biologics. Obtained successful claim construction on all disputed issues, 568 F.Supp.2d 445 (D. Del. 2008), after which case settled for $25 million and an above-market royalty on designated future products. (District of Delaware.)
  • Lead trial counsel for privately held internet and mobile solutions provider in its defense against allegations that it was infringing four patents directed to certain facsimile telecommunications systems and methods. Obtained successful settlement after filing claim construction briefs. (Central District of California.)
  • Lead trial counsel for privately held internet and mobile solutions provider in its defense against allegations that it was infringing patents directed to certain network routing technologies. Obtained successful settlement after filing claim construction briefs. (Central District of California.)
  • Trial counsel for one of the world’s largest biotechnology companies in its defense against allegations of infringement of three patents that purport to claim certain capillary electrophoresis and polymerase chain reaction technologies; obtained successful settlement two days before trial. (Central District of California.)
  • Lead trial counsel for one of the world’s largest biotechnology companies in its defense against patent infringement, trademark infringement, and unfair competition claims arising out of the use of certain polymers in electrophoresis technologies and certain chromatography technologies. Obtained summary adjudication that removed 99% of the asserted patent damages exposure, 2005 WL 2008020 (N.D. Cal. 2005), after which the case settled on favorable terms. (Northern District of California.)
  • Trial counsel for one of the world’s largest semiconductor companies in disputes in two different jurisdictions regarding thirteen patents that claim certain semiconductor processing technologies. Obtained dismissal of actions with no payment of money or cross-license after filing claim construction brief. (Northern District of California and District of Arizona.)
  • Lead trial counsel in § 337 proceeding; successfully defended privately held disc drive manufacturer against allegations of infringing seven patents purporting to claim certain disc drive technologies. After filing and arguing a Motion for Partial Termination, matter successfully settled on confidential terms. (U.S. International Trade Commission.)
  • Lead trial counsel for one of the world’s largest biotechnology companies in dispute with global biopharmaceutical company; defended against a nine-figure royalty refund claim based on asserted infringement of rDNA patents under the laws of four different countries. The panel’s 215-page order following a month-long arbitration ruled unanimously for the biotechnology company. (International Court of Arbitration.)
  • Lead trial counsel for one of the world’s largest biotechnology companies in §146 dispute with global biopharmaceutical company; obtained cancellation of the opposing US patent and the issuance, to the biotechnology company, of the “Cabilly II” patent, which claims rDNA technology for making monoclonal antibodies or fragments. (Northern District of California.)
  • Lead trial counsel for one of the world’s leading biotechnology companies in this multi-venued patent and patent licensing dispute (co-pending federal patent infringement, state court unfair competition, and arbitration) involving technology for high-throughput DNA sequence detection. Successfully settled all disputes after completely defeating, at trial, opponent’s fraud claims. 282 F.Supp.2d 1120 (N.D. Cal. 2003). (Northern District of California, Superior Court of San Diego, and American Arbitration Association.)
  • Lead trial counsel for one of the world’s leading biotechnology companies in binding arbitration proceedings; successfully defended claims for tens of millions of dollars in damages and royalties based on, as well as co-marketing rights to, the polymer used in the leading capillary electrophoresis instruments used in the Human Genome Project. (American Arbitration Association.)

*Some of the above matters were handled by Mr. Winters prior to his joining Sidley Austin LLP.

Publications

Selected Publications Include:

  • Author, “Searching for Higher Ground to Understand Patent Eligibility,” Los Angeles Daily Journal, 2013 In Review Edition, December 18, 2013
  • Author, “Fee-Shifting: A Life Raft in a Perfect Litigation Storm,” Managing Intellectual Property, July & August 2013
  • Author, “Let's Fix The Patent-Specific Preliminary Injunction Test,” Law360, April 5, 2013
  • Author, “Lessons From The Changing Patent Damages Landscape,” Law360, November 29, 2012
  • Author, “Judicial Profile, The Honorable Andrew J. Guilford, United States District Judge, United States District Court, Central District of California,” The Federal Lawyer, January 2012
  • Co-Author, “Emerging Lessons From the Patentability Wars,” The Federal Lawyer, October 2011
  • Author, “An Open Letter to President Obama Regarding Your Next Federal Circuit Appointment,” The Federal Lawyer, August 2009
  • Author, “Judicial Profile, The Honorable Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit,” The Federal Lawyer, February 2008
  • Co-author, “Modern Patent Litigation: Strategies for Turning Losing Cases into Winning Ones,” Aspatore, 2007 (treatise)
Memberships & Activities
  • ADR Neutrals Panel, Intellectual Property Litigation, United States District Court, N.D. Cal. (2011-present) (serve, at the Court’s request, pro bono as a mediator in patent and other IP cases) 
  • Early Neutral Evaluations Panel, Intellectual Property Litigation, United States District Court, N.D. Cal. (2015-present) (serve, at the Court’s request, pro bono as an early neutral evaluator of patent and other IP cases)
  • Editorial Board, American Intellectual Property Law Association Journal (2015-present)
  • Advisory Board, Center for the Advanced Study and Research in Intellectual Property, University of Washington School of Law, Seattle, Washington (2001 - present) 
  • Adjunct Professor, University of California, Berkeley, School of Law (2002 - 2010) (taught and co-taught the Patent Litigation course) 
  • National Editorial Board, The Federal Lawyer, 2002-2013 
  • Commission on Judicial Nominees Appointment Evaluation, State Bar of California (2007-08) (served on the commission that assessed the Governor of California’s potential judicial nominations)
  • Special Deputy District Attorney, City and County of San Francisco, California (1994-1995)
Pro Bono
  • Kappos v. Hyatt, No. 10-1219, 566 U.S. ___ (2012) (amicus counsel for the American Intellectual Property Law Association in this patent case)
  • Hyatt v. Kappos, 635 F. 3d 1320 (Fed. Cir. 2011) (en banc) (amicus counsel for the American Intellectual Property Law Association)
  • Sam and Tony M. v. Carcieri, et al., 608 F.3d 77 (1st Cir. 2010) (pro bono civil rights counsel seeking to reform Rhode Island’s child welfare system; obtained reversal of district court’s dismissal on standing grounds)
News & Achievements
Events

Selected Events Include:

  • Moderator; “Judges Panel: Efficiently Managing Patent Litigation in a Time of Flux,” 14th Annual Advanced Patent Law Institute, Palo Alto, CA, December 2013
  • Speaker, “Crossing the Bridge Safely: Strategies to Minimize the Troll Toll,” Association of Corporate Counsel, Palo Alto, CA, and San Ramon, CA, June 2013 
  • Moderator, “Judges Panel: Patent Litigation on the Bleeding Edge,” 10th Annual Advanced Patent Law Institute, Palo Alto, CA, December 2010
  • Moderator, “Judges Panel: Claim Construction Post-Cybor and Obviousness post-KSR – Navigating in the Gaps,” 9th Annual Advanced Patent Law Institute, Palo Alto, CA, December 2009
  • Moderator, “Judges Panel: Managing Patent Litigation,” 8th Annual Advanced Patent Law Institute, Palo Alto, CA, December 2008
  • Moderator, “Judges Panel: How to Manage a Complex Patent Case,” 6th Annual Advanced Patent Law Institute, San Jose, CA, December 2005
  • Federal Judicial Center, “Claim Construction,” 6th Annual BCLT/Federal Judicial Center IP Conference for Federal Judges, University of California, Berkeley, School of Law, May 2005
  • Federal Circuit Bar Association, “Perspectives on Patent Law and Innovation: Corporate Counsel Panel,” Berkeley Center for Law and Technology University of California, February 2005
  • “The Written Description Requirements and the Patentability of Biotechnology Inventions: The Current Standard[s],” 4th Advanced Forum on Biotech Patents: The Tactical and Practical Guide to Today’s Most Complex Issues, San Francisco, CA, December 2004 
  • Moderator, “Judges Panel: What Judges Dislike About Patent Cases - And What You Can Do to Help,” 5th Annual Advanced Patent Law Institute, San Jose, CA, December 2004
  • “Current Trends in Claim Construction,” Washington State Bar, Annual Intellectual Property Institute, Seattle, WA, April 2004 
  • “Section 112 and the ‘Written Description Requirement’: The Effects of Interpretive Necromancy,” 4th Annual Advanced Patent Law Institute, San Jose, CA, December 2003
  • “Patentability and the Law of Unintended Consequences,” at “Ideas Without Boundaries: International Challenges for the Pharmaceutical & Biotech Industries in the 21st Century,” Stanford Law School, March 2003
  • Moderator, “Judges Panel: A View from the Bench,” 3rd Annual Advanced Patent Law Institute, San Jose, CA, December 2002