Andrew Sommer is a partner in Winston & Strawn’s Washington, D.C. office. In addition to having first-chair trial experience, Mr. Sommer has almost fifteen years of experience with intellectual property matters, with a specific focus on patent litigation in a broad array of forums including district courts, the International Trade Commission (“ITC”), the Federal Circuit, and in trials before the Patent Trial and Appeal Board (“PTAB”). He also has experience managing and developing patent portfolios and counseling clients on a variety of intellectual property matters.
Mr. Sommer has handled all phases of patent litigation, from the filing of a complaint through appeal. He has served as lead trial counsel in federal court litigation, has argued dispositive motions, and argued Markman hearings in both district court and the ITC. He is also a recognized authority and strategist when it comes to counseling clients on the interplay between litigation and trial proceedings before the PTAB. He has been involved in more than two dozen PTAB trials and has been both on the Patent Owner and Petitioner’s sides of the proceedings. He has authored, and regularly updated, two chapters in BNA’s “Drafting Patents for Litigation and Licensing,” one relating to continued prosecution of a patent and the other relating to validity trials before the PTAB.
Mr. Sommer took a year away from the practice of law to clerk for the Honorable Kimberly A. Moore of the United States Court of Appeals for the Federal Circuit and served during Judge Moore’s first year on the bench. Before entering private practice, he was a patent examiner with the United States Patent and Trademark Office, where he examined patent applications relating to optical amplification.
- In re Certain Nonvolatile Memory Devices and Products Containing Same, 337-TA-909. Represented Complainant in connection with investigation involving nonvolatile memory products. Case settled two days before the Initial Determination was expected.
- In re Certain Flash Memory Chips and Products Containing Same, 337-TA-893. Represented Respondents in connection with investigation involving nonvolatile memory products.
- MHL Tek, LLC v. Nissan Motor Co., et. al. & MHL Tek, LLC v. General Motors Corp., et. al. (E.D. Tex.) Representation of General Motors Corporation; Ford Motor Company; Volvo Cars of North America, LLC; Saturn Corporation; Jaguar Land Rover North America, LLC; American Suzuki Motor Corporation; Isuzu Motors Limited; and Isuzu Motors America, LLC in patent infringement lawsuit in the Eastern District of Texas involving multiple patents. Obtained dismissal of two asserted patents for lack of standing and summary judgment of no infringement of the third patent. See MHL Tek, LLC v. General Motors Corp., 622 F.Supp. 2d 400 (E.D. Tex. 2009). The dismissal was affirmed, and in fact, broadened on appeal to include all patents-in-suit. See MHL Tek, LLC v. Nissan Motor Co.,No. 2010-1287, -1317, -1318 (Fed. Cir. Aug. 10, 2011).
- WiAV Solutions, LLC v. Motorola, Inc. et al. (E.D. Va.) Represented Motorola in patent infringement lawsuit involving nine patents asserted against WCDMA and GSM technology. Obtained numerous favorable rulings, ultimately leading to a favorable settlement.
- Technology Patents LLC v. Deutsche Telekom, et al. (D. Md., Fed. Cir.) Lead draftsperson on a joint appellee’s brief arguing for affirmance of the district court’s dismissal of over 100 foreign companies for lack of personal jurisdiction. The brief was joined by 96 parties. Also representing Motorola Solutions, Inc. and Motorola Mobility, Inc. in connection with this appeal. Successfully represented European wireless carriers Koninklijke KPN N.V., KPN Mobile N.V., KPN B.V., E-Plus Mobilfunk GmbH, Base N.V./S.A., and Brazilian wireless carrier TNL PCS S.A. (d/b/a “Oi”) to obtain dismissal for lack of personal jurisdiction in district court. Obtained summary judgment of noninfringement.
- Mayfair Wireless LLC v. Cellco Partnership (D. Del.) Representing Verizon Wireless in patent case involving wireless hotspots. Obtained dismissal for lack of subject matter jurisdiction. Case presently in appeal.
- Katrinecz v. Motorola Mobility LLC (W.D. Tex.) Representing Motorola Mobility in patent litigation concerning certain phone keypads. Case pending.
- St. Clair Intellectual Property Consultants, Inc. v. Motorola Mobility, LLC (D. Del.) Representing Motorola Mobility in six patent cases involving power management functionality, common bus architectures, and mappable I/O features. Case pending.
- Mobile Enhancement Solutions LLC v. Motorola Mobility (N.D. Tex.) Represented Motorola Mobility in a four-patent case against an Acacia entity involving a wide array of technologies related to 4G LTE technology, 802.11n technology, wireless hotspots, and map application functionality.
- Brandywine v. Cellco Partnership(M.D. Fla.) Represented Verizon Wireless in a two-patent case allegedly involving voicemail and MMS messaging.
- Brandywine v. Cellco Partnership (M.D. Fla.) Represented Verizon Wireless in a patent case involving foldable electronic card assemblies for wireless communication.
- Brandywine v. Verizon Communications Inc. (M.D. Fla D. NJ) Represented Verizon Online LLC in a seven-patent case allegedly involving DSL and dial-up modem technologies.
- Micro Enhanced Technology v. Cellco Partnership (N.D. Ill.) Represented Verizon Wireless in a six-patent case involving wireless lock technology. Case severed and stayed as to our client.
- SPH America, LLC v. Acer Corp., et al. (S.D. Cal.) Represented Motorola Mobility and Motorola Solutions in a patent infringement lawsuit involving patents claimed to be essential to WCDMA and CDMA2000 technology.
Mr. Sommer received a B.S. in Optics from the University of Rochester in 2001. He received a J.D., magna cum laude, from George Mason University School of Law in 2004, where he held several positions on the editorial board of the George Mason Law Review.
Honors & Awards
- Named one of “D.C.'s Rising Stars” (40 lawyers 40 or under) by The National Law Journal, noting his “vigorous intellectual property practice” (2014)
- SuperLawyers Rising Star in intellectual property law (2014)
- Recipient of the Washington Lawyer’s Committee’s Pro Bono Leadership Award (2014)
Mr. Sommer served as lead counsel in a trial under the Federal Tort Claims Act that secured a Winston pro bono client a judgment of over $900,000. His other pro bono representations include successfully representing a Vietnam-era veteran before the Board of Veterans’ Appeals and Virginia regional office and representing two victims of a mortgage fraud scheme in a case in Fairfax County Circuit Court in Virginia. Case ended with judgments in favor of his clients.
Publications & Speaking Engagements
Mr. Sommer occasionally speaks and writes on topics relevant to patent litigators and practitioners:
- BNA’s Drafting Patents for Litigation and Licensing, “Continued Prosecution of the Patent,” and “Validity Trials at the Patent Trial and Appeal Board,” Chapters 4 & 13, 2d ed. (2013) & cumulative supplement (2014, 2015 (forthcoming))
- “Continued Prosecution of the Patent,” Cumulative Supplement, Chapter 4, BNA’s Drafting Patents for Litigation and Licensing (2012)
- “Promoting the Progress of Useful Arts in the 21st Century: A Primer on Key Provisions of the Leahy-Smith America Invents Act, Efforts Towards Implementation, and Early Interpretation,” DC Bar CLE (December 2012)
- “Indirect Patent Infringement.” ABA-YLD(2010)
- “Are You an Enabler?” Minnesota CLE(April 2010)
- “Ricoh Company, Ltd. v. Quanta Computer.” Annual Review of Intellectual Property Law Developments in 2009 (Jan. 15, 2010)
- “Patent Obviousness in the Wake of KSR International Co. v. Teleflex, Inc.Paul M. Rivard and Allen F. Gardner, Eds., American Bar Association, 2010, Authored chapters on obviousness cases from district courts within the First and Third Circuits
- “Hiding the Crown Jewels: Maintaining Trade Secrets.” OPN: Optics Innovations(June 2006)
- “Finding Legal Advice: Money-Saving Tips for Small Businesses.” OPN: Optics Innovations(March 2006)
- “Trouble on the Commons: A Lockean Justification for Patent Law Harmonization.” Journal of the Patent & Trademark Office Soc’y 87, No. 2 (Feb. 2005)
- “The State Secrets Privilege in Prepublication Review: Proposing a Solution to Avoid a Seemingly Inevitable Tragedy.” Geo. Mason L. Rev. 12, No. 1 (Fall 2003)
- Federal Bar Association Roundtable, “Patent Litigation in the ‘Rocket Docket’ and the PTO/PTAB Recent Developments 2015” (Jan. 28, 2015)
- “Patent Law Year in Review,” DC Bar CLE (Dec. 9, 2014)
- “PTAB AIA Trial Roundtables,” Patent Trial and Appeal Board of the United States Patent and Trademark Office (April 15, 2014)
- Federal Bar Association Roundtable, “Patent Litigation in the ‘Rocket Docket’ and at the PTO” (And Other Recent Developments” (Jan. 29, 2014)
- IP Defense Summit, Silicon Valley, “Post-Issuance Trials at the PTAB” (Jan. 21, 2014)
- “IP Year in Review – Part 1: Legislative and Administrative Developments,” DC Bar CLE (Dec. 11, 2013)
- “IP Year in Review – Part 2: The New Patent Law and More,” DC Bar CLE (Dec. 11, 2012)
- “How the America Invents Act’s Post-Issuance Proceedings Influence Litigation Strategy,” Winston & Strawn eLunch (Aug. 23, 2012)
- “Are You an Enabler?” MINN CLE, (April 28, 2010)
- “35 U.S.C. § 101: How Can Such a Seemingly Simple Statute Be So Complex?” CompTIA, (May 2008)
- “Patent Lemmings.” Giles S. Rich American Inn of Court, (Feb. 2008) Presentation co-authored with Hon. Kimberly A. Moore
- District of Columbia
- US Patent & Trade Office
- USCA - Federal Circuit for Hon. Kimberly A. Moore
- George Mason University, JD, 2004
- University of Rochester, BS, 2001