Scott Weingaertner

Partner, New York

Biography

“[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

Mr. Weingaertner focuses on the litigation and trial of complex life sciences and technology IP disputes, as well as on related strategy and counseling. For more than 25 years, he has achieved successful outcomes for industry leaders.

Mr. Weingaertner currently serves as lead trial counsel in cases in the life sciences, building on experience in matters involving cardiology, biologics, drug delivery, blood assay technology, genetically modified organisms and other disciplines. He is currently lead trial counsel in one of the largest medical device cases in the country, concerning implantable intravascular blood pumps. For a European medical device manufacturer, he recently secured dismissal, with zero damages, in two cases involving cardiological devices.

Mr. Weingaertner has particular experience successfully defending high stakes patent cases, before and through jury trial. He 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. Mr. Weingaertner also served as trial counsel to IBM in a multi-defendant case where his team successfully won a jury verdict of non-infringement, as well as judgment as a matter of law, which was affirmed on appeal. He successfully argued on behalf of Verizon, as well their co-defendant carriers AT&T and Century Link, for judgment on the pleadings, winning a complete victory for all defendants. He took over the defense of Motorola as lead counsel, as well as a large joint defense group, opposing a well-known industry-wide enforcement action, securing a very favorable result for his client and its customer base. He served as co-lead counsel on behalf of a European-based company in multi-year arbitration and litigation with Sun Microsystems, acquired by Oracle during the dispute, in a case concerning FRAND royalties, securing a favorable settlement following a two week hearing. With that successful result, he achieved the second of two successful challenges to the Java licensing program, the only successful challenges ever brought.

Mr. Weingaertner and his team were awarded Managing IP Law's Milestone Case of the Year for their successful defense of Google's Android platform, which Oracle had sought to enjoin. He is ranked as a leading practitioner by Best Lawyers, IAM 1000, IAM Strategy 300 and other directories.

Bars and Courts
New York State Bar
US District Court for the Southern District of New York
US District Court for the Eastern District of Texas
US Court of Appeals for the Federal Circuit
US Court of Appeals for the Ninth Circuit
US Court of Federal Claims
US Patent and Trademark Office
Education
JD
University of Pennsylvania
SB, SM
Massachusetts Institute of Technology

Dept. of Mechanical Engineering

United States Air Force Academy
Languages
English

Experience

Scott has over 30 years of experience in technology and intellectual property law and in the resolution of complex commercial disputes. He has been lead trial counsel in patent litigations, complex commercial litigation involving technology and license disputes, and arbitrations involving complex transactions and agreements. Some recent representative cases on which he was lead trial counsel are set out below:

As lead trial counsel for the sole manufacturer of intravascular heart pumps in a case accusing the company's entire product line, secured favorable claim construction rulings that forced the plaintiff to drop six of its eight asserted patents, as well as its lead trial counsel. Our team then won summary judgement of non-infringement of the first of two pending cases. Our team then also won on claim construction in the second of the two cases, securing a construction that leads to another non-infringement result, while successfully moving to amend our client's declaratory judgment counterclaims to add serious inequitable conduct charges.

As lead trial counsel to one of the world's largest consumer electronics companies, filed a successful emergency lawsuit on the eve of the winter holidays, seeking a TRO and PI against the primary licensor of audio technology regarding its abusive licensing practices and related threats. Our team pleaded violations of Section 2 of the Sherman Act, breach of contract, tortious interference and other causes of action, in response to which our adversary hired two of the nation's leading firms to defend it, yet within a matter of weeks settled on very favorable terms for our client.

As lead trial and appellate counsel to the company that invented multi-factor authentication for network security, secured at the U.S. Court of Appeals for the Federal Circuit a rare reversal of a dismissal under 35 U.S.C. Sec. 101, which Law 360 identified as one of the leading patent law wins of the year.

As co-lead trial counsel for a leading Asia-based biosimilar company, litigated its first case, involving breast cancer treatment Herceptin. In a case that involved forty asserted patents and a schedule of six months from filing to the close of fact discovery, we narrowed the asserted patents down to a single patent and secured a favorable dismissal.

As lead counsel for a U.S. pharmaceutical company, Scott prepared a case along with one of his London partners to be brought in the English High Court for breach of contract against a university that had failed to assign rights in a patent portfolio, while also addressing potential disputes with the licensee company under that portfolio. Our team's litigation strategy led the university to effectively drop demands it had made in order to secure its assignment, positioning our client for a successful acquisition of the company by a leading U.S. pharmaceutical company.

As lead trial counsel for a European cardiological device manufacturer, after motion practice to dismiss for lack of jurisdiction, we secured a rare voluntary dismissal of a case pending in the Western District of Texas against a non-U.S. corporate affiliate and are pursuing litigation of the dispute in the forum of our client's choice.

As lead counsel for a European cardiological device manufacturer, secured dismissal of two cases (WDWi and EDTX) with zero damages.

In our capacity as technology litigation counsel, represented Asia-based electronics manufacturers in range of supply and procurement disputes, where the supplies in issue were mission-critical for the underlying technologies. On more than one occasion, our technology disputes expertise and track record of aggressively defending against and attacking abusive supplier practices was selected over the offering of other global law firms with practices focused on procurement disputes.

On behalf of a leading insurtech company, successfully sued for copyright infringement and violations of the Computer Fraud and Abuse Act, leading the adversary to hire new counsel, then abandon its infringing activities before answering the complaint.

As lead counsel defending a major U.S. 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.

As noted above, 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.*

As lead counsel for Baxter in litigation against Talecris, a subsidiary of Labcorp, concerning blood assay technology, secured a favourable settlement on behalf of it and its licensee National Genetics Institute.

As trial counsel to IBM's Internet Security Systems business where IBM secured a judgment of non-infringement, affirmed on appeal. In the same action, Symantec, represented by leading litigators lost before the jury on the same patents. Recently, Cisco Systems also lost before the jury on the same patents.*

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.*

As lead counsel in a Delaware patent case against a Rockstar Consortium entity, defending the interests of a cable equipment manufacturer ARRIS.*

Acting as lead counsel, Scott defended Mercedes-Benz in a case concerning display technologies, in the Eastern District of Texas.*

Mr. Weingaertner acted as lead counsel for Hewlett Packard in a patent infringement case targeting optical disk drive technology. His team successfully secured a with prejudice dismissal by the plaintiff.*

As lead counsel for in related cases involving remote software monitoring, Mr. Weingaertner defended Motorola in the Eastern District of Texas. Asked to take over the case from another firm, Mr. Weingaertner 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, including ActivisionBlizzard and CapCom, to defend them against the same defendant, in which the team also secured favorable settlements.*

Acted as lead counsel to Google in the first patent infringement case involving its search engine. After his team secured on mandamus to the Federal Circuit one of the first successful transfers of venue from the Eastern District of Texas to the Northern District of California, his team won at Markman, and the case settled favourably for Google shortly thereafter.*

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.*

*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 and Recognition

Leading Lawyer, IAM Strategy 300 – The World's Leading IP Strategists – 2017, 2018, 2019

Best Lawyers 2017, Litigation – Patent

Leading Lawyer, IAM Patent 1000 2016, 2017, 2018, 2019

Managing IP Law, Milestone Case of the Year, 2013