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 hard patent cases. He has been privileged to work with a number of the world’s leading high-technology and biopharmaceutical companies, and has spent more than 200 days in high-stakes jury, bench, and arbitration trials. Working closely with such companies has yielded results such as:

  • Beating, in a month-long arbitration trial, a global biopharmaceutical company’s patent infringement and other claims directed to all of the rDNa organisms used to manufacture 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 a patent troll’s networking patents that were part of a larger portfolio by which it had previously extracted almost $2 billion in licensing fees.

First ranked in Chambers USA in 2008, subsequent editions have reported client feedback that he is “renowned for his sophisticated handling of patent litigation” and his “exceptional knowledge of the law,” and that he “impresses clients with his ‘charismatic and persuasive style in the courtroom - he can strike the right tone in pre-litigation too.” IAM Patent 1000 (2012) described him as a “phenomenally good litigator,” and ranked him among the top 35 patent litigators in California. LMG Life Sciences (2012) designated him a “Life Sciences Star” in both Hatch-Waxman Litigation and General Patent Litigation. The client comments section of Best Lawyers in America (2013) 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 2002-2013 he served on the National Editorial Board of The Federal Lawyer in Washington, D.C., and in 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.

His pro bono work includes service as civil rights counsel for a putative class of children in Rhode Island’s child welfare system, seeking to reform that system. Sam and Tony M. v. Carcieri, et al., 608 F.3d 77 (1st Cir. 2010) (reversing district court’s dismissal on standing grounds).

Mr. Winters clerked for the Honorable Robert C. Bonner, United States District Judge for the Central District of California, and was an extern law clerk for Justice Stanley Mosk of the California Supreme Court.

Awards & Recognition

  • Listed, Chambers & Partners USA Guide, America’s Leading Lawyers for Business, 2008-2013
  • Listed, The Best Lawyers in America, 2013-2015
  • Listed, LMG Life Sciences, Life Sciences Star: Patent Litigation, 2012 (inaugural issue), 2013, 2014 
  • Listed, Who’s Who Legal (2014): Patents
  • Listed, The Legal 500 USA, Intellectual Property: Patent Litigation, 2009-2010
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, “Right to be Patented,” The Recorder, July 17, 2013
  • Author, "Fee-Shifting: A Life Raft in a Perfect Litigation Storm," Managing Intellectual Property, July & August 2013
  • Co-Author, "What To Do Before, During And After IP Mediation," Law360, May 15, 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
  • Author, “Better Tools for Better Juries,” The Federal Lawyer, June 2002
Memberships & Activities
  • Neutrals Panel, United States District Court, N.D. Cal. (2011-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)
  • National Editorial Board, The Federal Lawyer, 2002-2013
  • Commission on Judicial Nominees Appointment Evaluation, State Bar of California (2007-08)
  • 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 for putative class of children in Rhode Island’s child welfare seeking to reform that 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,” Asia Pacific Bar Association, Palo Alto, CA, July 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
  • Speaker, “Echoes from EchoStar: Waiver Issues in the Election to Rely on an Opinion of Counsel,” 7th Annual Advanced Patent Law Institute, San Jose, CA, November 2006
  • Moderator, “Judges Panel: How to Manage a Complex Patent Case,” 6th Annual Advanced Patent Law Institute, San Jose, CA, December 2005
  • Speaker, “Of Claim Construction and Specifications: Phillips Signals a Return to the Invention,” 6th Annual Advanced Patent Law Institute, San Jose, CA, December 2005
  • Federal Judicial Center, “Claim Construction,” 6th Annual BCLT/Federal Judicial Center Intellectual Property 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
  • 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
  • “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