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

Scott Weingaertner

Partner, New York

“[W]ins cases by being on top of the facts and by knowing the law better than the other side. He is a very intelligent lawyer and really puts his client first.”

IAM Patent 1000 2017

Overview

Scott focuses on the litigation and trial of complex technology and life sciences IP disputes, as well as on related strategy and counseling. For more than 25 years he has achieved successful outcomes for industry leaders. He has led teams in high-stakes cases involving medical devices and other life sciences cases, automotive technology, mobile phones, internet search, cable equipment, video games and other cutting edge technologies.

Scott currently serves as lead counsel in several cases in the life sciences, building on experience in cases involving cardiology, biologics, drug delivery, blood assay technology, genetically modified organisms and other disciplines.  He has prevailed in leading technology cases, having led the team that served as litigation and trial co-counsel defending Google in the multi-billion dollar patent and copyright case brought by Oracle targeting the industry-leading Android platform. In that case, Google secured a complete victory on all asserted patents, which was not appealed. Scott was trial counsel in a multi-defendant team that successfully obtained a jury verdict of non-infringement, as well as judgment as a matter of law, on behalf of one of the world's leading computer companies in a case involving computer network security, affirmed on appeal. More 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. In addition to his appearances in the district courts, Scott is experienced litigating before the U.S. International Trade Commission and 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 multi-year arbitration and litigation with one of the largest U.S. technology companies in a case concerning FRAND royalties.

Scott has experience with and is a commentator on artificial intelligence and autonomous vehicles (including driverless cars and drones), as well as on the legal and policy issues raised by these emerging technologies. He is ranked as a leading practitioner by Best Lawyers, IAM 1000, IAM Strategy 300 and other directories, and has been awarded Managing IP Law's Milestone Case of the Year.

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
  • United States Air Force Academy

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

Speaking Engagements

Panelist and speaker, "Exploring the Things in the Internet of Things: Implications for Business, Consumers, and the Law", New York Law School, February 3, 2017.

Publications

  • Patent Law in 2016: Seeking Clarity in the Wake of Reform, Practising Law Institute 11th Annual Patent Law Institute, pp. 291-307, March 2017, (co-author with John Padro, So Yeon Choe and Rahul Sarkar)
  • 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 Strategy 300 – The World's Leading IP Strategists – 2017

Best Lawyers 2017, Litigation – Patent

Leading Lawyer, IAM Patent 1000 2016, 2017

Managing IP Law, Milestone Case of the Year, 2013