Scott Weingaertner | White & Case LLP International Law Firm, Global Law Practice
Scott Weingaertner
Scott Weingaertner

Scott Weingaertner

Partner, New York

Scott Weingaertner “effectively melds expertise on patent and competition law” and “is admired for his commercial approach to disputes”.

IAM Patent 1000, 2014

Overview

Scott focuses on the litigation and trial of complex IP disputes, as well as on IP strategy and counseling.

Regularly called upon to lead teams in challenging cases, Scott has achieved successful litigation outcomes for industry leaders in internet search, mobile communications, telecommunications, cable, professional networks and video gaming development. He has significant experience representing companies in the automotive industry, as well as in the life sciences. Drawing on more than 20 years litigating technology disputes and prior work as an engineer focused on robotic vehicles as well as space-based defense systems, Scott is skilled at breaking down complex technologies and making them easy for judges and juries to understand.

Scott led the team that served as litigation and trial co-counsel defending Google in a multi-patent and copyright case brought by Oracle targeting the industry-leading Android platform, in which Google secured a complete victory on all asserted patents, which was not appealed. He was a key member of the trial team that successfully obtained a jury verdict of non-infringement on behalf of one of the world's leading computer companies in a case accusing network security systems of infringement.  Recently, he successfully argued for judgment on the pleadings for a leading U.S. based telecommunications carrier, as well their co-defendant carriers, winning a complete victory for all defendants on grounds of unpatentable subject matter.  In addition to his appearances in the district courts, Scott is experienced in international and domestic arbitration of IP-intensive commercial disputes. He recently served as co-lead counsel on behalf of a European-based company in a multi-year dispute with one of the largest U.S. software companies concerning FRAND royalties. He is also experienced in leading teams advising clients on the IP aspects of complex transactions.

Scott's achievements on behalf of firm clients have been recognized by a number of professional directories.  He is currently ranked as a leading practitioner by IAM 1000. The successful defense of Google in the case brought against it by Oracle was awarded Managing IP Law's Milestone Case of the Year for 2013.

Scott re-joined White & Case in 2015, from the New York office of another international law firm.

Bars and Courts

  • US Court of Appeals for the Federal Circuit
  • US Court of Federal Claims
  • US District Court for the Southern District of New York
  • New York State Bar
  • US Patent and Trademark Office

Education

  • JD, University of Pennsylvania
  • SM, Massachusetts Institute of Technology
  • SB, Massachusetts Institute of Technology

Languages

  • English

Experience

Telecommunications Network Dispute

As lead counsel defending a major telecommunications company, secured complete victory for our client, successfully arguing on behalf of our client and the other defendant telecommunications carriers for judgment on the pleadings based on unpatentable subject matter.

Mobile operating system dispute* (Google)

Scott led a team that successfully defended Google as litigation co-counsel in Oracle America, Inc. v. Google Inc., in which Oracle asserted seven patents and a number of copyrights relating to the Java programming language, seeking over a billion dollars in damages. The defense team dismantled Oracle's patent case virtually in its entirety, and successfully challenged its expert damages reports, before prevailing at a six-week jury trial on the two remaining patents and on all major copyright issues.

Network security dispute*

Scott was a key member of a multi-defendant jury trial team that secured a judgment of non-infringement on behalf of one of the world’s leading computer companies, affirmed on appeal.

Software industry dispute*

As co-lead counsel in a multi-forum commercial dispute, and associated international arbitration, concerning breach of contract and the assertion of related IP defenses in the software industry, Scott and his colleagues secured a very favorable settlement on behalf of a European software company against one of the world’s largest database companies.

Cable equipment patent dispute*

Scott acted as lead counsel in a Delaware patent case against a Rockstar Consortium entity, defending the interests of a cable equipment manufacturer.

Display technologies dispute*

Acting as lead counsel, Scott defended an automobile manufacturer in a case concerning display technologies, in the Eastern District of Texas.

Optical drive technology dispute*

Scott acted as lead counsel for a large consumer electronics company in a patent infringement case targeting optical disk drive technology. His team successfully secured a with-prejudice dismissal by the plaintiff.

Remote software monitoring dispute*

As lead counsel in related cases involving remote software monitoring, Scott defended a top mobile handset maker and a leading mobile application developer, in the Eastern District of Texas. Scott took charge of a large joint defense group and, with his team, developed the key defenses that led to a series of favorable settlements. Following this case, he was engaged by a number of video game developers to defend them against the same defendant, in which the team also secured favorable settlements.

Professional networking dispute*

Acted as lead counsel in case involving search technology, in the Northern District of California.

Search technology dispute*

Scott acted as lead counsel in search technology case, in which this team obtained one of the first successful transfers of venue from the Eastern District of Texas to the Northern District of California in search technology case and secured a favorable settlement.

Internet browser case*

Scott acted as lead counsel in defense of patent infringement charges in the Eastern District of Texas, concerning browser plug-in technology, in which his team obtained a stay of proceedings pending reexamination and secured dismissal with no damages.

Memory module case*

Ongoing (stayed) litigation concerning defense of patent infringement claims directed to memory module technology, in the Northern District of California.

*Matters prior to joining White & Case

Publications

  • Supreme Court & Federal Circuit Tip the Patent Scales in 2014, Practising Law Institute 9th Annual Patent Law Institute, pp. 85-108, February 2015, (co-author with Christopher Carnaval, Ketan Pastakia, Timothy Caine & Stephen Shin)
  • Licensors face new challenges after the US Supreme Court's decision in MedImmune v. Genentech, International Journal of Technology Transfer and Commercialisation 2009, Vol. 8, No. 4, pp. 340-355 , (co-author with Leslie Morioka)
  • Software Exportation Dodges Bullet: US Supreme Court Reins in Extraterritorial Effect of US Software Patents in Microsoft v. AT&T, European Intellectual Property Review, Vol. 30, Issue 11, November 2008, (co-author with Adam Conrad)
  • Rendezvous with Obviousness: US Supreme Court Reckons with Patentability in KSR International Co. v. Teleflex Inc. and Lower Courts React, European Intellectual Property Review, Vol. 30, Issue 7, July 2008, (co-author with Adam Conrad)
  • US Supreme Court Holds That Patent Licensee Need Not Repudiate License Before Challenging Licensed Patent in Court: MedImmune, Inc. v. Genentech, Inc., European Intellectual Property Review, Vol. 29, Issue 7, July 2007 , (co-author with Christopher Carnaval)
  • US Supreme Court Rules on Permanent Injunctions in Cases of Patent Infringement: eBay v MercExchange, European Intellectual Property Review,, Vol. 28, Issue 9, September 2006 , (co-author with Christopher Carnaval)
  • New Patent Cases Raise Fundamental Legal Issues, IP Law 360, May 15, 2006

Awards & Recognition

Leading Lawyer, IAM Patent 1000, 2014

Managing IP Law, Milestone Case of the Year, 2013