Vernon Michael Winters

California

State Bar of California

ID Number: 130128

Since 1987

Partner

Weil, Gotshal & Manges LLP

Current

Current

In re: Katz Interactive Call Processing Patent LitigationDefending American Airlines in largest patent MDL litigation in history against allegations of infringement of more than 50 patents. PDL BioPharma, Inc. v. Alexion, Inc. Trial counsel for PDL BioPharma in action for infringement of fundamental antibody humanization patents. j2 Global Technologies, Inc. v. CallWave, Inc.Trial counsel for CallWave against allegations that it was infringing four patents directed to certain facsimile telecommunications systems and methods. Obtained successful settlement; opponent agreed to settle after CallWave filed its claim construction briefs and before the claim construction hearing in the related Catch Curve matter. Catch Curve, Inc. v. CallWave, Inc.Trial counsel for CallWave against allegations that it was infringing four patents directed to certain network routing technologies. Obtained successful settlement; opponent agreed to settle after CallWave filed its claim construction briefs and before the claim construction hearing. Beckman Coulter, Inc. v. Applera Corp.Trial counsel for Applera against allegations of infringement of three patents that purport to claim certain capillary electrophoresis and polymerase chain reaction technologies. Obtained successful settlement; opponent agreed to settle two days before trial. Bio-Rad Laboratories, Inc. v. Applera Corp.Lead trial counsel for Applera against patent infringement, trademark infringement, and unfair competition claims arising out of the use of certain polymers in electrophoresis technologies and certain chromatography technologies. Obtained summary adjudication that removed 99% of the asserted patent damages exposure, Bio-Rad Laboratories, Inc. v. Applera Corp., 2005 WL 2008020 (N.D. Cal. 2005), after which the case settled on favorable terms. ASM America, Inc. v. Applied Materials, Inc.Trial counsel for Applied Materials in disputes in two different jurisdictions regarding thirteen patents that claim certain semiconductor processing technologies. Obtained dismissal of actions with no payment of money or cross-license after filing Applied Materials’ claim construction brief. In the Matter of Certain Disc Drives, Components Thereof, and Products Containing SameLead trial counsel in § 337 proceeding; successfully defended Cornice against allegations of infringing seven patents purporting to claim certain disc drive technologies in seven U.S. patents. After Cornice filed and argued a Motion for Partial Termination, matter successfully settled on confidential terms two days before trial. Applera Corp. v. F. Hoffman-La Roche, Ltd.Lead trial counsel for Applera against numerous Roche entities in concurrent court and arbitration proceedings regarding the rights to certain patented polymerase chain reaction technologies. Matter successfully settled on confidential terms. Global Pharmaceutical Company v. Biotechnology CompanyLead trial counsel for one of the world’s largest biotechnology companies; defended against a nine-figure royalty refund claim based on asserted infringement of recombinant human growth hormone patents under the laws of four different countries. The panel’s 215-page order following a month-long arbitration ruled unanimously for the biotechnology company. Genentech, Inc. v. Celltech Therapeutics, Ltd.Genentech’s lead trial counsel in District Court proceedings; obtained cancellation of Celltech’s US patent and the issuance, to Genentech, of a US patent that claims rDNA technology for making of monoclonal antibodies or fragments. Illumina, Inc. v. Applera Corporation - Applied Biosystems GroupLead trial counsel for Applera in this multi-venued dispute (co-pending federal patent infringement, state court unfair competition, and arbitration) involving technology for high-throughput DNA sequence detection. Applera Corporation - Applied Biosystems Group v. Illumina, Inc., 282 F.Supp.2d 1120 (N.D. Cal. 2003).  Successfully settled all disputes after completely defeating, at trial, opponent’s fraud claims.  Osteotech, Inc. v. GenSci Regeneration Sciences, Inc. and GenSci Laboratories, Inc.Lead appellate counsel in GenSci’s Federal Circuit appeal following an adverse infringement verdict (in a trial handled by a different law firm) identified by IP Worldwide as one of the ten largest intellectual property verdicts in 2001. Matter resolved by settlement (merger). Biogen, Inc. v. Amgen, Inc.Successfully defended Amgen against allegations of infringement of two expression vector and plasmid vector patents. Biogen, Inc. v. Amgen, Inc., 18 F.Supp.2d 105 (D.Mass.1998)(Markman opinion); Biogen, Inc. v. Amgen Inc., 115 F.Supp.2d 139 (D.Mass.2000)(granting Amgen summary judgment). Symyx Technologies, Inc. v. Applied Biosystems Group.Lead trial counsel for Applied Biosystems in binding arbitration proceedings; successfully defended against claims for tens of millions of dollars in damages and royalties based on, as well as co-marketing rights to, the polymer used in Applied Biosystems’ leading capillary electrophoresis instruments. US ex rel Promega Corp. v. Hoffmann-La Roche, Inc.Part of the trial team that defended Applera Corporation - Applied Biosystems Group against qui tam allegations regarding sales of patent-protected polymerase chain reaction and thermocycler technologies. Team obtained, by motion practice, dismissal of action with prejudice. Photonetics, Inc. v. New Focus, Inc.Defended New Focus in infringement and validity litigation of two patents that claimed certain laser technology; successfully resolved the matter on confidential terms. Genentech, Inc. v. Columbia UniversityTrial counsel for declaratory judgment plaintiff in patent invalidity action involving co-transformed mammalian cells for gene expression. Sun Microsystems, Inc. v. Microsoft CorporationRepresented Sun in its Java® technology dispute with Microsoft. Sun Microsystems, Inc. v. Microsoft Corporation, 21 F.Supp.2d 1109 (N.D. Cal. 1998)(granting Sun's injunction motion). Wisconsin Alumni Research Foundation v. GeronAdvised Geron in its dispute with the Wisconsin Alumni Research Foundation regarding Geron’s exclusive rights under certain human embryonic stem cell patents held by WARF. General Precision Instruments, Inc. v. BEI ElectronicsAs trial counsel in a multi-year arbitration, successfully defended BEI Electronics against patent license royalty refund claims based on patents for solid-state gyroscopes. Loral Fairchild Corp. v. Matsushita Elec. Industrial Co., Ltd.Represented National Semiconductor Corp. in litigation over patents to charge coupled devices used in consumer electronics. See, e.g., Loral Fairchild Corp. v. Matsushita Elec. Indus. Co., Ltd, 840 F.Supp.211 (E.D.N.Y. 1994). Successfully resolved the matter on confidential terms following defeat of opponent’s summary judgment motions.

University of California College of the Law, San Francisco

J.D.

1987

UC Berkeley

B.A.

1983

California State Bar  # 130128

Member

1987 - Current

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Critical Developments in Patent Law 2006-7 (Monterey, CA, November 08, 2007) 32nd Annual Intellectual Property Law Institute

"Echoes from EchoStar: Waiver Issues in the Election to Rely on an Opinion of Cousel" (San Jose, CA, November 01, 2006) 7th Annual Advanced Patent Law Institute

Business Method Patents And the Financial Services Industry (San Francisco, September 01, 2006) High-Stakes Financial Services Lending & Litigation Issues Symposium

Please Don’t Feed the Trolls: The Interface Between Patent Trolls, Litigation Strategy, and Economics (Palo Alto, CA, June 01, 2006) NERA Economics Consulting Seminar

Of Claim Construction and Specifications: Phillips Signals a Return to the Invention (San Jose, CA, December 01, 2005) 6th Annual Advanced Patent Law Institute

Judges Panel: How to Manage a Complex Patent Case (San Jose, CA, December 01, 2005) Moderator

Claim Construction (Berkeley, CA, June 01, 2005) 6th Annual BCLT/Federal Judicial Center Intellectual Property Conference for Federal Judges, University of California, Berkeley, School of Law

Perspectives on Patent Law and Innovation: Corporate Counsel Panel (Berkeley, CA, February 01, 2005) Moderator, Federal Circuit Bar Association, University of California, Berkeley, School of Law, Berkeley Center for Law and Technology

The Written Description Requirements and the Patentability of Biotechnology Inventions: The Current Standard(s) (San Francisco, December 01, 2004) 4th Advanced Forum on Biotech Patents: The Tactical and Practical Guide to Today’s Most Complex Issues

Judges Panel: What Judges Dislike About Patent Cases - And What You Can Do to Help (San Jose, CA, December 01, 2004) 5th Annual Advanced Patent Law Institute

Biotech Patents (November 01, 2004) California Lawyer

Current Trends in Claim Construction (Seattle, April 01, 2004) Washington State Bar, Annual Intellectual Property Institute

Section 112 and 'the Written Description Requirement': The Effects of Interpretive Necromancy (San Jose, CA, December 01, 2003) 4th Annual Advanced Patent Law Institute

Judges Panel: A View From the Bench - What Works and What Doesn't (San Jose, CA, December 01, 2003)

Holmes Group and Appellate Jurisdiction: It Wasn't Broken. So Why Was It Fixed? (Seattle, July 01, 2003) 2003 High Technology Protection Summit, Center for the Advanced Research and Study of Intellectual Property

Claim Construction, Markman and Festo: Where We Are and Where We're Going (Silicon Valley, April 30, 2003) Intellectual Property Law Association

Ideas Without Boundaries: International Challenges for the Pharmaceutical/Biotech Industries in the 21st Century (California, March 03, 2003)

Patentability and the Law of Unintended Consequences (Stanford, CA, March 01, 2003) Ideas Without Boundaries: International Challenges for the Pharmaceutical & Biotech Industries in the 21st Century, Stanford Law School published at 24 Loy. L.A. Ent. L. Rev. 1 (2004)

IP Roundtable (March 01, 2003) California Lawyer

Markman and other patent litigation issues at the Third Annual Advanced Patent Litigation Institute, co-sponsored by Berkeley Center for Law and Technology (at Boalt Hall) and the University of Texas Law School. (San Jose, CA, December 05, 2002)

Judges Panel: A View From the Bench - What Works and What Doesn't (San Jose, CA, December 01, 2002) Moderator, 3rd Annual Advanced Patent Law Institute

Forum Shopping and Markman Hearings: A View From the Trenches (Seattle, July 01, 2002) High Technology Protection Summit

Having the King’s Ear: Issues in the Selection and Use of Court-Appointed Experts (San Mateo, CA, May 01, 2002) Biotechnology Law Institute

Having the King's Ear: Issues in the Selection and Use of Court-Appointed Experts (San Mateo, CA, May 01, 2002)

Conception of Biotechnology Inventions: The Federal Circuit Changes the Rules (Ameilia Island, FL , May 01, 2001) The IP Conference

Idiosyncrasies of Technology Litigation (Seattle, May 01, 2001) Center for Advanced Study and Research in Intellectual Property