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Thomas H. Wintner

Trial/District Court/ITC

  • Palleon Pharmaceuticals Inc. v. Aviceda Therapeutics, LLC, No. 21-10755 (D. Mass.): Lead counsel in defense of biotechnology trade secrets action.
  • 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 (appeal pending).
  • Nanoco Technologies Ltd. v. Samsung Electronics Co., No. 20-00038 (E.D. Tx.): Counsel in patent infringement action involving nanoparticle quantum dot semiconductors and methods of producing same.
  • Conley v. Roseland Residential Trust, No. 18-10629-WGY (D. Mass. 2020): Lead counsel; obtained summary judgment in favor of defendant and denial of state-wide class certification on novel questions of law regarding gas and water/sewer submetering in Massachusetts.
  • 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; obtained settlement in BPCIA (biologics/biosimilars) case involving methods for refolding proteins.
  • CellInfo, LLC v. American Tower Corporation, et al., No. 18-11250 (D. Mass. 2018): Co-lead counsel; won motion to dismiss in favor of arbitration in trade secrets action.
  • 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.
  • 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 – see 478 Mass. 251 (2017), 85 N.E.3d 12 (Mass. 2017).
  • 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.
  • 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.
  • Daley/Taylor v. Avellino, Nos. NACV2009-09/10 (Mass Super. Ct. May 9, 2011): Trial counsel; successfully obtained reversal of jury verdict on appeal, based on statute of limitations grounds.
  • Roquette Frères v. SPI Pharma, Inc., No. 06-540 (D. Del. Oct. 4, 2010): Trial counsel; successfully defended jury trial patent infringement action involving pulverulent mannitol.

Appellate

  • 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.): Pending.
  • CellInfo, LLC v. American Tower Corporation et al., No. 20-2047 (1st Cir.): Pending.
  • Conley v. Roseland Residential Trust, No. 20-1399 (1st Cir.): Pending.
  • 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.
  • Phillips v. Equity Residential Management, L.L.C., 478 Mass. 251 (2017), 85 N.E.3d 12 (Mass. 2017): Obtained answer to certified question in favor of client regarding availability of treble damages in certain circumstances under the MA Security Deposit Statute, G.L. c. 186, § 15B. 
  • Green Cross Corp. v. Shire Human Genetic Therapies, Inc., Appeal No. 2017-2071 (Fed. Cir.): Dismissed prior to decision.
  • Phillips v. Equity Residential Management, L.L.C., 844 F.3d 1 (1st Cir. 2016): Obtained favorable ruling and settlement in landlord-tenant class action, following certification of question to Supreme Judicial Court.
  • 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.
  • Daley/Taylor v. Avellino, No. 2012-P-0736 (Mass. App. Ct. April 18, 2013): Obtained complete reversal of judgment on jury verdict, based on statute of limitations grounds.
  • 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.
  • DeLia v. Verizon Communications Inc., 656 F.3d 1 (1st Cir. 2011): Obtained affirmance of district court summary judgment in favor of client on various employment law claims.
  • 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.
  • Boston Telecommunications Group, Inc. v. Wood, 588 F.3d 1201 (9th Cir. 2009): Obtained reversal of district court’s dismissal on forum non conveniens grounds, overcoming abuse of discretion review.
  • Simmons v. Galvin, 575 F.3d 24 (1st Cir. 2009): Application of the Voting Rights Act of 1965 to felon disenfranchisement laws. Appealed to US Supreme Court (No. 09-920) and referred to Solicitor General (May 3, 2010), but certiorari ultimately denied (Oct. 18, 2010).

Patent Office Proceedings

  • Eyenovia, Inc. v. Sydnexis, Inc., IPR2022-00384, -00415, and -00415: representing Petitioner in IPRs involving formulations of atropine to treat myopia and pre-myopia.
  • Amphastar Pharmaceuticals, Inc. v. Aegis Therapeutics, LLC, IPR2021-01324: representing Patent Owner in IPR involving method of treatment of anaphylaxis with intranasal epinephrine formulation.
  • 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.

Arbitration and Other Litigation 

  • Lead counsel in commercial arbitrations involving the glass recycling industry: obtained 7-figure judgment and award of attorney's fees following hearing (2019).
  • Counsel in commercial arbitration involving contracts relating to vaccine development and manufacture: (Pending).
  • Co-lead counsel in commercial arbitrations involving trade secrets and the cell tower industry: (Pending).
  • Rutgers v. BioArray Solutions, Dkt. No. L-4747-14 (N.J. Super. Ct.): Licensing contract dispute regarding molecular bead chip/array technology.
  • 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.
  • Hy-Ko Products Company v. The Hillman Group, Inc., No. 08-1961 (N.D. Ohio): Patent infringement action involving key duplication technology.
Case Study
Mintz helped patent prosecution client Glycosyn defend its exclusive patent rights against the company's largest competitor, a global company selling infringing ingredients used in baby formula.
Case Study
For Kowa Pharmaceuticals and Nissan Chemical, Mintz sued nine generic drug makers that had filed Abbreviated New Drug Applications (ANDA) with the FDA. The court upheld the validity and infringement of all asserted claims in two patents for the cholesterol drug Livalo®.
Case Study
Mintz protected clients’ patents related to the cholesterol drug Livalo®. Mintz defended against three IPRs filed by generic manufacturers that had filed Abbreviated New Drug Applications (ANDA) with the FDA and secured Patent Trial and Appeal Board denials of institution of the generic companies’ IPR petitions.