Skip to main content

Thomas H. Wintner

Member

[email protected]

+1.617.348.1625

Share:

Tom is an intellectual property and commercial litigator who is equally at home handling cases in trial and appellate courts. Tom counsels clients in a variety of industries, including life sciences, health care, higher education, and real estate. He has extensive experience with patent litigation, trade secrets, and other intellectual property matters, especially those involving pharmaceutical and biologic drugs and diagnostics. Tom also has extensive experience with class action litigation in both federal and state court.

Tom's intellectual property work draws on his prior experience as a research chemist and college dean. He has particular experience in patent and trade secret cases involving pharmaceuticals, biotech, diagnostics, the Hatch-Waxman Act (for small molecule drugs), and the Biologics Price Competition and Innovation Act (for large-molecule biologics/biosimilars).  He also has tried cases before the International Trade Commission and the Patent Trial and Appeal Board (IPRs/PGRs).

Outside of intellectual property, Tom handles a variety of commercial litigation matters, including class action defense.

Tom clerked for the Honorable Boyce F. Martin Jr. on the United States Court of Appeals for the Sixth Circuit. Before attending law school, he served as Associate Dean of the Faculty at Williams College.

Education

  • University of Virginia (JD)
  • Harvard University (MA, Bioorganic Chemistry, NSF Fellow)
  • University of Siegen (Fulbright Scholar)
  • Williams College (BA, Chemistry, summa cum laude)

Experience

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 counsel in trial involving methods of engineering bacteria to produce oligosaccharides; Initial Determination pending.
  • 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) (Crotty, J.), affirmed, No. 2018-1051 (Fed. Cir. Dec. 10, 2018): Client’s chemical compound and polymorph patents covering Livalo, an HMG-CoA reductase inhibitor, held valid and infringed over anticipation, obviousness, and double-patenting challenges; defendants’ ANDA approval enjoined.
  • Mitsubishi Chemical Corp. v. Barr Laboratories, Inc., 718 F. Supp. 2d 382 (S.D.N.Y. 2010) (Koeltl, J.), affirmed, No. 2010-1432, 2011 WL 3288394 (Fed. Cir. Aug. 2, 2011): Client’s patent covering high concentration formulation of Argatroban Injection, an anticoagulant, 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) (Cratsley, J.): 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) (Sleet, C.J.): Successfully defended patent infringement action involving pulverulent mannitol.
  • Massachusetts Housing Court (various).

Appellate

  • 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 patents over anticipation, obviousness, and obviousness-type double patenting challenges.
  • Phillips v. Equity Residential Management, L.L.C., 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.
  • 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

  • Laboratory Corporation of America Holdings v. Quest Diagnostics Investments LLC, IPR2019-00738: (Pending)
  • Jennewein Biotechnologie GmbH v. Glycosyn LLC, PGR2019-00023: On behalf of biotechnology patent owner, obtained decision denying institution of PGR.
  • 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.

Other Litigation 

  • Lead counsel for commercial arbitration involving the glass recycling industry.
  • Co-lead counsel for commercial arbitration involving trade secrets and the cell tower industry.
  • 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.
  • Iona and Alexander Conley v. Roseland Residential Trust and NWP Services Corp., No. 18-cv-10629-WGY (D. Mass.): Putative class action involving utility submetering and MA Security Deposit Statute.
  • Phillips v. Equity Residential Management, L.L.C., No. 13-12092-RWZ (D. Mass.): Successfully resolved class action filed on behalf of tenants alleging violations of the MA Security Deposit Statute; obtained favorable ruling from SJC on certified question.
  • 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.
  • Baker v. Equity Residential Management, L.L.C., No. MICV2013-03630 (Mass. Super. Ct.) (pending): Putative class action involving alleged heat and hot water violations pursuant to G.L. c. 186, § 14.
  • Perry, et al. v. Equity Residential Management, L.L.C., No. 12-10779 (D. Mass.):  Successfully resolved seven class actions filed on behalf of tenants in 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.
  • Hy-Ko Products Company v. The Hillman Group, Inc., No. 08-1961 (N.D. Ohio): Patent infringement action involving key duplication technology.
  • Boston Telecommunications Group, Inc. v. Wood, No. 02-05971 (N.D. Cal.): Dispute over investment in cable television venture.
  • American Tower, Inc. v. Woodcrest Co., No. 2009-1309 (Ark. Cir. Ct., Pulaski County): Dispute over cell tower lease.

Recognition & Awards

  • Included on the Massachusetts Super Lawyers - Intellectual Property list (2018)

Involvement

  • Board of Trustees, Massachusetts Social Law Library
  • Board of Trustees, YMCA Camp Belknap, Wolfeboro, New Hampshire
  • Editor, Massachusetts Discovery Practice (MCLE, 3rd ed. 2019)
  • Member, American Chemical Society

Languages

- French

- German

- Spanish

Recent Insights

News & Press

Viewpoints

Apotex to Supreme Court: Review BPCIA 180-Day Notice Requirement

September 21, 2016 | Blog | By Thomas Wintner

On September 9, 2016, Apotex Inc. filed a petition for writ of certiorari in the U.S. Supreme Court seeking review of the Federal Circuit’s decision in Amgen Inc. v. Apotex Inc., Case No. 2016-1308.
On July 5, the Federal Circuit issued another important decision regarding the meaning of certain provisions of the Biologics Price Competition and Innovation Act (BPCIA).

BPCIA Patent Litigation Webinar Recap

March 11, 2016 | Blog | By Thomas Wintner, Joe Rutkowski, Matthew Show

Our Biosimilar webinar series continued this month with Tom Wintner’s BPCIA Patent Litigation presentation. Tom discussed the general framework of litigation under the Biologics Price Competition and Innovation Act (“BPCIA”), including the “patent dance” information exchange under 42 U.S.C. §262(l), and three case studies that inform our current understanding of emerging judicial interpretation of BPCIA requirements.
Tuesday, February 9th was a busy day for Korean biologics company Celltrion Inc. The company had its proposed biosimilar CT-P13 before the FDA Arthritis Advisory Committee as well as a hearing in federal court in Massachusetts as part of the patent dispute with the manufacturer of the reference biologic, Remicade (infliximab), Janssen Biotech.

First Monoclonal Antibody Biosimilar in U.S. Gets One Step Closer to FDA Approval

February 10, 2016 | Blog | By Thomas Wintner, Joanne Hawana

Yesterday, the FDA's Arthritis Advisory Committee voted 21-3 to recommend that CT-P13, Celltrion's proposed biosimilar of Janssen Biotech, Inc.'s Remicade® (infliximab) be approved for all indications -- including, among others, Crohn's disease, ulcerative colitis, rheumatoid arthritis (RA), and ankylosing spondylitis (AS).

ICYMI: Biosimilars and FDA Regulatory Webinar

February 2, 2016 | Blog | By Joe Rutkowski

Our Biosimilar webinar series continued this month with Linda Bentley and Joanne Hawana’s Biosimilars FDA/Regulatory Overview presentation.
On Tuesday, September 29th Mintz Levin's Education practice will host a panel on "VAWA Implementation and the Potential Impact of Proposed Massachusetts Bill S.650 on College and Universities".
Biosimilars continue to be a topic to watch in 2015 as the law around biosimilar products evolves. In March 2015, CMS released guidance addressing Medicare and Medicaid coverage for biosimilar drug products, shortly after the FDA’s approval of a biosimilar version of Amgen’s drug Neupogen®.
On July 21, 2015, the Federal Circuit issued a key decision regarding the meaning of various provisions of the Biologics Price Competition and Innovation Act (BPCIA). See Amgen Inc. v. Sandoz Inc., Fed. Cir. Case No. 2015-1499.
Mintz Levin's Cynthia Larose and Julia Siripurapu recently posted an article to Privacy & Security Matters that examines in-depth the newly signed House Bill 520.

News & Press

An article published by Law360 reported that following the U.S. International Trade Commission’s initial decision that Jennewein Biotechnologie GmbH’s imports infringe a Glycosyn LLC patent on human milk oligosaccharides, the Patent Trial and Appeal Board denied Jennewein’s petition for post-grant review of a related patent.

The Mintz team representing Glycosyn at the ITC includes Michael Newman, Thomas Wintner, Michael Renaud and James Wodarski; and the Mintz team representing Glycosyn at the PTAB includes Michael Newman, Thomas Wintner, Peter Cuomo and Daniel Weinger.
Mintz has secured a string of substantial victories in Hatch-Waxman litigation for innovative drug manufacturers Kowa Pharmaceutical Co., Ltd., Kowa Pharmaceuticals America, Inc., and Nissan Chemical Industries Ltd.
Tom Wintner is quoted in this Law360 article on Sandoz’s efforts to have the U.S. Supreme Court review a Federal Circuit ruling that “found biosimilar makers must wait until their products receive U.S. Food and Drug Administration (FDA) approval before providing 180-day advance notice of sales.”