Vernon M. Winters

On March 7, Winters found out he had helped the law evolve on what kind of invention ideas qualify for patents.

The U.S. Court of Appeals for the Federal Circuit had affirmed his win in the district court that a patent-holder, Intellectual Ventures Management LLC, had no case for arguing that Winters’ clients had infringed on its ideas. Intellectual Ventures v. Erie Indemnity Co. et al., 2016-1128 and 2016-1132 (Fed. Cir., filed Oct. 27, 2015).

The reason? Intellectual Ventures’ ideas were abstract — not developed enough to be concrete products. Under 35 U.S.C. 101 and a previous case, Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014), one cannot patent an abstract idea. The question since Alice has been: What is abstract and what is not?

Intellectual Ventures said its ideas for database management and mobile applications systems were patentable. But, Winters said, the court concluded: “That sounds like a good idea, but the patent never said, here’s how you’re going to do that.”

“We know it’s precedential because the Federal Circuit deemed it as such,” he said. “It helped to develop Section 101 law as far as what inventions can be patented, and the methodology of how you make that decision.”

For the past year, Winters has also been case manager in litigation protecting patents for Amgen Inc. and its subsidiary Immunex, which makes a rheumatoid arthritis biologic, Enbrel. Sandoz Inc. wants to market and sell a biosimilar to Enbrel, which accounts for nearly one-third of Amgen’s revenues. Immunex Corp. et al. v. Sandoz Inc. et al., 16-cv-1118 (D. N.J., filed Feb. 26, 2016).

Biologics, which have drug-like properties, are made by microorganisms or cells. Under federal law, another company can create a biosimilar to an existing biologic as long as it meets Food and Drug Administration tests for safety, purity and potency.

Winters secured a preliminary injunction keeping Sandoz’s biosimilar off the market until the patents trial set for April 2018.

For Winters, the most satisfying part of patent law is working as a team — with clients, inside counsel and younger attorneys.

“It makes it gratifying and fun,” he said. “One way that makes patent law different from other types of law is that the clients are intimately involved. … You’re not only helping a cause, you’re helping specific people, because you’re in the trenches with them.”

— James Getz