Thomas H. Wintner

Trial/District Court/ITC (Patent/Trade Secrets/Commercial)

• Aviceda Therapeutics, Inc. v. Trial Runners, LLC, No. 23-cv-12468-IT (D. Mass. 2023): Lead counsel for plaintiff in breach of contract action between biotechnology company and CRO regarding clinical trial agreement.
• Chr. Hansen HMO GmbH v. Glycosyn LLC v. Abbott Lab’s, No, 22-11090-NMG (D. Mass. 2022): Co-lead counsel for patent owner in case involving methods of engineering bacteria to produce 2’-fucosyllactose used in infant formula.
• Sigma-Aldrich Co. v. Quantabio, LLC; QIAGEN Beverly, LLC; and QIAGEN GmbH, No. 22-cv-00090-JAR (D. Mo.): Counsel for defendant in license dispute involving detergents for stabilization of nucleic acids used in amplification reactions.
• In the Matter of Certain Graphics Systems, Components thereof, and Digital Televisions Containing the Same, Investigation No. 337-TA-1318 (International Trade Commission, March 2023): Trial counsel for complainants in case involving texture decompression in digital graphics applications; obtained Initial Determination of infringement and validity from ALJ.
• Palleon Pharmaceuticals Inc. v. Aviceda Therapeutics, LLC, No. 21-10755 (D. Mass.): Lead counsel in successfully defended Aviceda in biotechnology trade secrets action involving glycobiology; obtained dismissal of complaint against company and co-founders.
• SoClean, Inc. v. Sunset Healthcare Solutions, Inc., No. 21-10131 and 20-10351 (D. Mass.): Lead counsel in patent and trademark infringement actions involving devices for sanitizing CPAP machines; successfully obtained preliminary injunction on trademark claims (affirmed by Federal Circuit on appeal).
• Nanoco Technologies Ltd. v. Samsung Electronics Co., No. 20-00038 (E.D. Tx.): Trial counsel in patent infringement action involving nanoparticle quantum dot semiconductors and methods of producing same; obtained $150 million settlement prior to trial.
• In the Matter of Certain Human Milk Oligosaccharides and Methods of Producing the Same, Investigation No. 337-TA-1120 (International Trade Commission, May 2019): Co-lead trial counsel for patent owner in case involving methods of engineering bacteria to produce 2’-fucosyllactose; obtained Initial Determination of infringement and validity from ALJ; obtained affirmance and Limited Exclusion Order from Commission and from Federal Circuit Court of Appeals.
• Amgen, Inc. v. Tanvex BioPharma USA, Inc., No. 19-01374 (S.D. Cal.): Lead counsel in BPCIA (biologics/biosimilars) case involving methods for refolding proteins.
• CellInfo, LLC v. American Tower Corporation, et al., No. 18-11250 (D. Mass. 2018): Won motion to dismiss in favor of arbitration in trade secrets action, and defeated subsequent motion to reopen case following arbitration.
• Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, et al., Nos. 14-2758 and 14-7934 (S.D.N.Y., April 11, 2017 and September 19, 2017), affirmed, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Trial counsel for plaintiff in Hatch-Waxman action involving chemical compound and polymorph patents covering Livalo, an HMG-CoA reductase inhibitor; patents held valid and infringed over anticipation, obviousness, and double-patenting challenges; defendants’ ANDA approval enjoined.
• Takeda Pharmaceutical Co. v. Mylan, Inc., No. 12-00024 (S.D.N.Y.): Hatch-Waxman action involving multiple Orange Book–listed patents covering ActoplusMet XR, an extended-release combination product for treatment of type 2 diabetes.
• Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010), affirmed, No. 2010-1432, 2011 WL 3288394 (Fed. Cir. Aug. 2, 2011): Trial counsel for plaintiff in Hatch-Waxman action involving high concentration formulation of Argatroban Injection, an anticoagulant; patent held valid over anticipation and obviousness challenges; defendant’s ANDA approval enjoined.
• Hy-Ko Products Company v. The Hillman Group, Inc., No. 08-1961 (N.D. Ohio): Trial counsel in patent infringement action involving key cutting and duplication technology.
• Roquette Frères v. SPI Pharma, Inc., No. 06-540 (D. Del. Oct. 4, 2010): Trial counsel in successful defense of jury trial involving claims directed to pulverulent mannitol.

Appellate (Patent/Trade Secrets)

• Sydnexis, Inc. v. Eyenovia, Inc., Nos. 2023-2402, 2023-2403, 2023-2411 (Fed. Cir.): Counsel for appellee in review of consolidated PTAB Final Written Decisions involving patents directed to formulations of atropine to treat myopia and pre-myopia.
• Amphastar Pharmaceuticals, Inc. v. Aegis Therapeutics, LLC, No. 23-1783 (Fed. Cir.): Counsel for appellee in review of PTAB Final Written Decision involving patents directed to methods of treatment of type-1 hypersensitivity reactions with intranasal epinephrine formulations.
• Samsung Electronics Co., Ltd. v. Nanoco Technologies Ltd., Nos. 22-1847, -1848, -1849, -1850, -1852 (Fed. Cir.): Obtained dismissal of appeal of IPR decisions following settlement of related district court action.
• Jennewein Biotechnologie GmbH v. International Trade Commission, No. 2020-2220 (Fed. Cir.): Obtained affirmance of ITC claim construction and judgment as to infringement and Limited Exclusion Order in appeal involving methods of engineering bacteria to produce 2’-fucosyllactose.
• SoClean, Inc. v. Sunset Healthcare Solutions, Inc., No. 2021-2311 (Fed. Cir.): Obtained affirmance of district court preliminary injunction order.
• CellInfo, LLC v. American Tower Corporation et al., No. 20-2047 and 23-2034 (1st Cir.): Obtained dismissal of appeals.
• Quest Diagnostics Investments LLC v. Laboratory Corporation of America Holdings, No. 2021-1820 (Fed. Cir.): Lead appellate counsel in appeal of IPR decision involving tandem mass spectrometry for detection of vitamin D metabolites.
• Quest Diagnostics Investments LLC v. Laboratory Corporation of America Holdings, No. 2021-1115 (Fed. Cir. Dec 27, 2021): Lead appellate counsel in appeal of IPR decision involving tandem mass spectrometry for detection of low levels of testosterone.
• Kowa Company, Ltd., et al. v. Amneal Pharmaceuticals, LLC, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Obtained affirmance of district court judgment upholding client’s pharmaceutical patents over anticipation, obviousness, and obviousness-type double patenting challenges.
• Green Cross Corp. v. Shire Human Genetic Therapies, Inc., Appeal No. 2017-2071 (Fed. Cir.): Dismissed prior to decision.
• Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., No. 2010-1432, 2011 WL 3288394 (Fed. Cir. Aug. 2, 2011): Obtained affirmance of district court judgment upholding client’s patent over anticipation and obviousness challenges.

Patent Office Proceedings (IPRs/PGRs)

• Eyenovia, Inc. v. Sydnexis, Inc., IPR2022-00384, -00414, and -00415: On behalf of Petitioner in IPRs involving formulations of atropine to treat myopia and pre-myopia, obtained Final Written Decision invalidating all claims of all challenged patents.
• Amphastar Pharmaceuticals, Inc. v. Aegis Therapeutics, LLC, IPR2021-01324: Representing Patent Owner in IPR involving method of treatment of anaphylaxis with intranasal epinephrine formulation; obtained Final Written Decision of validity on key claims.
• Samsung Electronics Co. v. Nanoco Technologies Ltd., IPR2021-00182, -00183, -00184 -00185, and -00186: On behalf of Patent Owner, obtained Final Written Decision upholding all challenged claims of five patents directed to quantum dot compositions, methods of manufacture, and formulations.
• Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-00738, IPR2019-01425: Represented diagnostic company patent owner in defense of IPRs involving methods of using tandem mass spectrometry to detect biological metabolites.
• Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-01517: On behalf of diagnostic company patent owner, obtained decision denying institution of IPR involving methods of using tandem mass spectrometry to detect biological metabolites.
• Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-01618: On behalf of diagnostic company patent owner, obtained dismissal of IPR involving methods of using tandem mass spectrometry to detect biological metabolites.
• Jennewein Biotechnologie GmbH v. Glycosyn LLC, PGR2019-00023: On behalf of biotechnology patent owner, obtained decision denying institution of PGR involving methods of engineering bacteria to produce 2’-fucosyllactose.
• Indivior Inc. v. Rhodes Pharmaceuticals L.P., IPR2018-00795, Paper No. 23 (Oct. 4, 2018): Decision involving methods of opioid substitution therapy using buprenorphine sublingual film.
• Ethertronics, Inc. v. Nextivity, Inc., DER2016-00021, Paper No. 35 (PTAB Oct. 2, 2017): On behalf of respondent, obtained decision denying institution of derivation proceeding.
• Green Cross Corp. v. Shire Human Genetic Therapies, Inc., IPR2016-00258, Paper No. 89 (PTAB March 22, 2017): Decision involving actual reduction to practice of recombinant protein.
• Mylan Pharmaceuticals, Inc. v. Nissan Chemical Industries, Ltd., IPR2015-01069, Paper No. 24 (PTAB Oct. 20, 2015):  On behalf of pharmaceutical company patent owner, obtained decision denying institution of IPR.
• Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01647, Paper No. 9 (PTAB Feb. 4, 2016): On behalf of pharmaceutical company patent owner, obtained decision denying institution of IPR.
• Sawai USA, Inc., et al. v. Nissan Chemical Industries, Ltd., IPR2015-01648, Paper No. 9 (PTAB Feb. 4, 2016): On behalf of pharmaceutical company patent owner, obtained decision denying institution of IPR.
• Rhodes Pharmaceuticals L.P. v. Indivior Inc., No. 16-cv-01308-MSG (D. Del.): Obtained pre-institution stay of litigation in favor of IPR proceedings.

Arbitration 

• Co-lead counsel for synthetic biology company in fast-track JAMS arbitration involving contractual counterparty’s claim for over $40 million arising from alleged breach of collaboration agreement; following discovery, briefing and an evidentiary hearing, three-member panel issued a final award in June 2023 that found in favor of our client and denied all claims asserted by counterparty.
• Counsel for respondent in commercial arbitration involving contracts relating to biodefense vaccine development and manufacture; following discovery, briefing and an evidentiary hearing, three-member panel issued a final award in July 2022 that found in favor of our client and issued an award of $0 damages; award confirmed following denial of motion to vacate. See Soligenix, Inc. v. Emergent Product Development Gaithersburg, Inc. et al., No. 2022-0880-PAF (Del. Ch. July 19, 2023).
• Co-lead counsel in commercial arbitration involving trade secrets and the cell tower industry; following discovery, briefing and an evidentiary hearing, obtained final award in 2023 that found in favor of our client.
• Lead counsel in commercial arbitrations involving supply contracts in the glass recycling industry; following discovery, briefing, and an evidentiary hearing, obtained 7-figure judgment and award of attorney's fees (2019).
• CellInfo, LLC v. American Tower Corporation, et al., No. 18-11250 (D. Mass. 2018): Won motion to dismiss in favor of arbitration in trade secrets action, and defeated subsequent motion to reopen case following arbitration.
• Rota-McLarty v. Santander Consumer USA Inc., 700 F.3d 690 (4th Cir. 2012): Obtained reversal of district court judgment denying motion to compel arbitration in a putative class action.

Class Action Defense

• Pezzuto v. Essex Apartments Property Owner, LLC and Entrata, Inc., No. 2377-cv-00902 (Essex Super. Ct.): Lead counsel in landlord-tenant class action alleging improper assessment of fees.
• Peters v. Olympia Beacon Square, LLC, No. 2379-cv-00288 (Hampden Super. Ct.): Lead counsel in landlord-tenant class action involving electricity charges.
• Ubiera v. Greystar Management Services, L.P. et al., No. 2384-cv-01886 (Suffolk Super. Ct.): Lead counsel in landlord-tenant class action alleging violations of the MA Security Deposit Statute.
• Anderson v. JRK Property Holdings, Inc. et al, No. 23-cv-10746-FDS (D. Mass. 2023): Lead counsel in landlord-tenant class action involving water/sewer submetering.
• Peebles et al v. JRK Property Holdings, Inc. et al, No. 23-cv-10523-NMG (D. Mass. 2023): Lead counsel in landlord-tenant class action involving security deposits and cleaning/damage charges.
• Louis et al v. Saferent Solutions, LLC et al, No. 1:22-cv-10800-AK (D. Mass. 2022): Lead counsel in action involving housing vouchers and tenant screening.
• Conley v. Roseland Residential Trust, No. 18-10629-WGY (D. Mass. 2020): Lead counsel in class action involving novel questions of law regarding gas and water/sewer submetering in Massachusetts; obtained summary judgment in favor of defendant and denial of state-wide class certification; obtained voluntary dismissal of appeal by plaintiffs/appellants. See also Conley v. Roseland Residential Trust, No. 20-1399 (1st Cir.).
• Phillips v. Equity Residential Management, L.L.C., No. 13-12092 (D. Mass.): Successfully resolved class action filed by tenants alleging violations of the MA Security Deposit Statute; obtained favorable ruling from SJC on certified question regarding availability of treble damages in certain circumstances under the MA Security Deposit Statute, G.L. c. 186, § 15B, followed by favorable ruling from First Circuit Court of Appeals. 478 Mass. 251 (2017), 85 N.E.3d 12 (Mass. 2017); 844 F.3d 1 (1st Cir. 2016).
• Heien, et al. v. Archstone, et al., 837 F.3d 97 (1st Cir. 2016): Obtained affirmance of district court’s substantial limitation on fee award to class counsel (6.8% of amount sought) in a class action settlement over fees paid by prospective tenants.
• Baker v. Equity Residential Management, L.L.C., No. MICV2013-03630 (Mass. Super. Ct.): Obtained favorable settlement in putative class action involving alleged heat and hot water violations pursuant to G.L. c. 186, § 14.
• Perry v. Equity Residential Management, L.L.C., No. 12-10779 (D. Mass.): Successfully resolved seven class actions filed by Massachusetts tenants MA challenging various fees collected in advance of move-in; won summary judgment on certain challenged fees