Thomas H. Wintner

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.

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

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; obtained favorable Initial Determination of infringement and validity.
• 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, IPR2019-01425, IPR2019-01517, and IPR2019-01618: (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 

• Amgen, Inc. v. Tanvex BioPharma USA, Inc., No. 19-01374 (S.D.Cal.): Biosimilars/BPCIA case involving methods for refolding proteins.
• Lead counsel for commercial arbitration involving the glass recycling industry: obtained favorable judgment and award of attorney's fees following hearing.
• 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.

• Included on the Massachusetts Super Lawyers - Intellectual Property list (2018-2019)

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