Heather M. Schneider

Partner

New York
Willkie Farr & Gallagher LLP
787 Seventh Avenue
New York, NY 10019-6099
T 212 728 8685
F 212 728 9685
hschneiderwillkie.com

Heather M. Schneider is a partner in the Intellectual Property Department and President-Elect of the New York Intellectual Property Association. Ms. Schneider's practice focuses on patent litigation, trademark prosecution, transactional work, and antitrust issues involving intellectual property. Her litigation experience encompasses numerous technologies, including pharmaceuticals and biologic products, computer software, medical devices, and chemical products. Her transactional experience includes client counseling on patent and software issues, including licensing, development and collaboration agreements, mergers, and bankruptcy. Heather is working on numerous confidential matters evaluating patents for companies developing vaccines and biosimilars, including patents directed to proteins, cell culture media, polynucleotides, vectors, host cells, and production methods.

In the pharmaceutical field, Heather has played a significant role in a recent collaboration agreement regarding a promising COVID-19 treatment and in litigations and appeals for major life sciences companies involving drug products including: erythropoietin (Epogen), dexmedetomidine (Precedex), rotigotine (Neupro), fingolimod (Gilenya), paricalcitol (Zemplar), oxycodone HCI (OxyContin), argatroban (Argatroban Injection), and amlodipine besylate (Norvasc). She was lead counsel in obtaining a preliminary injunction for breach of contract and other claims for a matter involving agricultural fertilizers. In the computer field, Heather appeared before the U.S. and Canadian courts in the Nortel bankruptcy litigation involving the allocation of proceeds from the sale of Nortel's $4.5 billion portfolio of telecommunications patents.

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Heather M. Schneider is a partner in the Intellectual Property Department and President-Elect of the New York Intellectual Property Association. Ms. Schneider's practice focuses on patent litigation, trademark prosecution, transactional work, and antitrust issues involving intellectual property. Her litigation experience encompasses numerous technologies, including pharmaceuticals and biologic products, computer software, medical devices, and chemical products. Her transactional experience includes client counseling on patent and software issues, including licensing, development and collaboration agreements, mergers, and bankruptcy. Heather is working on numerous confidential matters evaluating patents for companies developing vaccines and biosimilars, including patents directed to proteins, cell culture media, polynucleotides, vectors, host cells, and production methods.

Selected Significant Matters

  • Confidential Vaccine and Biosimilar Matters – Evaluate patents for companies developing vaccines and biosimilars, including patents directed to proteins, cell culture media, polynucleotides, vectors, host cells, and production methods.
  • Confidential Financial Institution – Led team to prepare for arbitration against software vendor that caused tens of millions in damages to credit card platform; evaluated all technical aspects of software failures with client staff; handled negotiations and reached favorable settlement.
  • Confidential FinTech and Insurance Matters – Negotiate license for auction platform; provide brand advice to cryptocurrency mining company; negotiate license for risk management software; work on IP and antitrust issues related to industry-standard financial identifiers.
  • Relief Therapeutics – Led deal team with corporate partner for the negotiation of a collaboration agreement with NeuroRx, Inc. for the commercialization of RLF-100™ (Aviptadil) worldwide. RLF-100 is a pharmaceutical treatment with potential applications for the treatment of
    COVID-19 patients.
  • Amgen v. Hospira (erythropoietin) – Trial counsel in first jury trial under the BPCIA, which resulted in a split decision on patent infringement, validity, and Safe Harbor issues.
  • Hocking v. Eco Agro – Lead trial counsel that obtained preliminary injunction in Alabama state court for plaintiff in case that involves breach of contract, defamation, misappropriation of trade secrets, and other claims related to agricultural fertilizers.
  • Cisco – Worked on Cisco acquisition of Voicea, a privately held company focused on voice collaboration technology that leverages the power of AI.
  • Principia v. SFG – Trial counsel for plaintiff in S.D.N.Y. case asserting misappropriation of trade secrets, breach of contract, and other claims involving client's proprietary swaps analytic software.
  • Purdue v. Amneal (oxycodone HCl) – Counsel for appellees Amneal and Kashiv Pharma, LLC defending multiple IPR decisions invalidating OxyContin patents.
  • AbbVie v. Hospira (paricalcitol) – Trial counsel in U.S. District Court victory for Hospira in patent infringement case. Court ruled that Hospira's generic paricalcitol product does not infringe AbbVie's U.S. patent, ending multi-year litigation.
  • Hospira and Orion v. Sandoz (Precedex) – Trial counsel in district court judgment protecting the validity and enforceability of the patent for the active ingredient in the sedative Precedex.
  • In re Nortel Networks – Trial counsel for UK pension plan in unprecedented joint U.S./Canadian bankruptcy trial, addressing allocation of proceeds from the sale of Nortel's $4.5 billion portfolio of telecommunications patents. Received favorable trial decisions from the Delaware and Canadian courts, case settled on appeal.
  • Arkema v. Honeywell – Represent chemical company in declaratory judgment action seeking to invalidate patents directed to 1234yf, a hydrofluorocarbon used in automobile refrigeration.
  • CryptoPeak v. Commonwealth and Forethought – Obtained dismissal in one case and settlement in another for companies accused of infringing internet cryptography patents.

Selected Professional and Business Activities

  • Prior to attending law school, Heather worked as a Senior Technical Consultant for Hewlett-Packard. She is co-author of the book Mobile Applications: Architecture, Design, and Development (Prentice Hall 2004).
  • Heather is President-Elect of the New York Intellectual Property Law Association. She is also on the Advisory Board for the Pace University Seidenberg School of Computer Science and Information Systems.
  • In 2017, Heather received a Certificate in Genetics and Genomics from the Stanford University Center for Professional Development, where she completed courses in genetics, personal genomics, gene therapy, genetic engineering, and biotechnology.
  • Heather is on Willkie’s Pro Bono Committee and does a significant amount of pro bono work, including obtaining a preliminary injunction, favorable settlement, and attorneys’ fees for the ACLU in a case involving reproductive rights; representing a number of special immigrant juvenile and T-Visa applicants; and providing IP advice to non-profits including JUST Capital. Heather was named Pro Bono Attorney of the Year 2020 by Kids in Need of Defense (KIND).

Selected Publications and Lectures

  • GlaxoSmithKline v. Teva - Induced Infringement Despite Skinny Labels, JPPCLE 2021 Webinar Series (June 9, 2021).
  • Recent Court Decisions That Are Shaping Patent Law, PLI Patent Law Institute (April 2, 2020).
  • Standing for IPR Appeals, with T. Thieme and J. Blanton, NYIPLA, The Report (forthcoming).
  • When Does an Unsuccessful Petitioner Have Standing to Appeal an Adverse PTAB Decision?, with T. Thieme and J. Blanton, NYIPLA, The Report (Summer/Fall 2019), available here.
  • Organized and moderated panel on Market Developments in Biosimilars with speakers from BIO, AAM, CLSA, and Charles River Associates in San Francisco, CA in conjunction with J.P. Morgan Healthcare Conference (Jan. 9, 2019).
  • Mini-Roundtable, IP Infringements in the Life Sciences Sector, Corporate Disputes (Oct-Dec 2018), available here.
  • Quarterly Biosimilar Webinar Series with Taylor Wessing (Sept. 2018-Present).
  • PTAB Developments Involving CRISPR-Cas9 Gene Editing Technology, with M. Johnson, NYIPLA, The Report (April/May 2017).
  • "RAND" or "FRAND" Royalties: Considerations After Microsoft v. Motorola, with E. Chang and S. Lombardi, ABA Section of Antitrust Law, The Antitrust Counselor, Vol. 7.3 (June 2013).
  • Frequently Asked Antitrust Questions, Chapter on Antitrust & Intellectual Property with D. Park and J. Lucena-Pichardo, ABA Section of Antitrust Law (2d Ed. April 2013).
  • NYIPLA, Patent/Antitrust Concerns Arising in Corporate Transactions (Jan. 16, 2014).
  • Hot Topics at the Intersection of Intellectual Property and Antitrust (Sept. 30, 2014; Apr. 20, 2015; Feb. 17, 2016).
  • Mobile Applications: Architecture, Design & Development, with V. Lee and R. Schell, Prentice Hall PTR Books (April 2004).

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