Winston & Strawn's intellectual property litigation team assumes that every patent case will see the inside of a courtroom, so it never stops digging for evidence and honing each case. That's because the Chicago-based firm's litigation roots were already deeply planted when it started picking up patent cases during the 1970s and 1980s, according to intellectual property practice chairman George Lombardi.
"All the decisions we make in a case are based on trying to come up with theories for and useful information for trial," he said.
The firm dates to 1853 and has always been known for its litigation work, Lombardi said. It's now known for intellectual property litigation, too, and its Chicago bench includes 26 partners and 43 associates or of counsel. The team handled five trials and two evidentiary hearings last year.
Like many firms, Winston increasingly fields lawyers who hold advanced technical degrees, and 16 of its 88 lawyers with those credentials are in Chicago. "In addition to the trial lawyer sensibility, we have people with technical backgrounds," Lombardi said.
The firm's work before the U.S. Court of Appeals for the Federal Circuit in Aventis Pharma S.A. v. Hospira Inc. illustrates its commitment to the courtroom. In April 2012, Winston won a ruling that invalidated two Sanofi patents related to the administration of a cancer drug. Winston proved that Sanofi committed inequitable conduct, or fraud on the patent office.
It was the first and only Federal Circuit affirmance of a lower court's inequitable-conduct ruling since the appeals court raised the standard of proof in a 2011 en banc ruling in Therasense Inc. v. Becton, Dickinson and Co.
At trial, the lead inventor acknowledged that the company hadn't disclosed certain prior art, or published information about the subject matter of the claimed invention. He claimed that prior art didn't apply to Sanofi's drug, according to Winston litigation department chairman Jim Hurst.
Hurst might have argued that it didn't matter whether what the prior art described didn't quite work — that's up to the patent office to decide. "A lot of lawyers would have rested on, 'You didn't disclose this to the patent office,' " he said. Instead, Hurst had his people pore over laboratory notebooks all night after that testimony. They discovered that the company had tweaked the prior-art formulation days later and it worked perfectly, Hurst said. "It was cross-examiners' nirvana," Hurst said.
It was also huge for Hospira. "The client literally made hundreds of millions of dollars," Hurst said.
That prowess also helped the firm win a $1 billion verdict for Monsanto Co. against E. I. du Pont de Nemours and Co. from a St. Louis jury in August 2012. "We had a very good story to tell, I felt, about Monsanto's invention — about the technology and Monsanto's licensing of the technology," said Lombardi, who acted as Monsanto's lead trial counsel.
The case involved Monsanto's "Roundup Ready" herbicide-resistant technology for soybeans and corn. At the time, DuPont complained that it never sold or intended to sell any of the seeds at issue. Then in November, District Judge E. Richard Webber unsealed a 2011 sanctions order against DuPont that the jury never heard about.
The order, based on Winston's discovery and pretrial work, said that DuPont had committed fraud against the court. Monsanto subsequently brokered a $1.75 billion patent licensing agreement with DuPont to settle the companies' patent and antitrust battle this March.
The firm also takes its show to the U.S. Supreme Court. In April 2012, it scored big for the generic drug industry under the Hatch-Waxman Act, which governs how generic drugs come to market. Following a Federal Circuit defeat, Winston won a unanimous high court ruling in Caraco Pharmaceutical Laboratories Ltd. v. Novo Nordisk A/S.
The justices held that Caraco and Sun Pharmaceuticals Ltd. could force brand-name drug makers to correct misleading patent information submitted to the U.S. Food and Drug Administration. The ruling paved the way for generic makers that want to make counterclaims against brand-name drug companies in Hatch-Waxman cases.
Hurst, who argued for the generic companies, said some brand-name manufacturers had been mischaracterizing their patents to shut out generics. He claimed that Winston was the first law firm to pursue the statute's option for a counterclaim even though "the language in the counterclaim at first blush didn't support our position." The firm dug deep into the statutory language to build a case, he said.
"We convinced the district court; we failed to convince the Federal Circuit; and we took it all the way to the Supreme Court to prove we were right," Hurst said.The firm's 2012 wins offer a good snapshot of the high-stakes intellectual property cases Winston excels at, Lombardi said.
"In a single year to have one of the biggest jury verdicts in the IP area of all time, a case like the Supreme Court case that's important to the industry and others in between speaks to the depth and variety and quality of our practice," Lombardi said. — Sheri Qualters
KEYS TO SUCCESS
We focus on how do we take this technology and make it something the jury can understand. How do we make the jury understand its significance and make the jury understand its real world impact?"
"We look at intellectual property cases from start to finish as something that's going to ultimately go to trial, even if it doesn't. And we try to bring that sensibility to every case." — George Lombardi, intellectual property practice chairman, Winston & Strawn
"Step one for an enormously successful IP practice is to have enormously capable trial lawyers. Too many cases go to trial, too much rises and falls on the quality of your trial lawyers, even settlements. That's where I think we stand out."
"You have to have both the patent litigation experience and the technical expertise so that you're not starting from scratch in these cases. And we have both." — Jim Hurst, litigation department chairman, Winston & Strawn