Andrew R. Sommer, Partner

Andrew Sommer is a partner in Winston & Strawn’s Washington, D.C. office. He nearly a dozen years of experience with intellectual property matters, with a specific focus on district court and appellate patent litigation. 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 significant experience efficiently and effectively representing his clients’ interests in complex cases involving joint defense groups. Moreover, Mr. Sommer has experience preparing and prosecuting proceedings before the U.S. Patent Office related to patents involved in litigation. He recently authored a chapter in BNA’s “Drafting Patents for Litigation and Licensing,” relating to continued prosecution of a patent, which includes a detailed analysis of the new post-issuance provisions of the Leahy-Smith America Invents Act including post-grant reviews, inter partes reviews, and supplemental examination, and the Patent Office’s new rules packages for handling these proceedings.

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. While earning his undergraduate degree, he was employed at the Laboratory for Laser Energetics, a Department of Energy laser fusion research facility.

Representative Matters

• 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 resolution of the dispute.
• 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 for Motorola, Inc.
• Prism Technologies LLC v. Cellco Partnership (D. Neb.) Representing Verizon Wireless in patent case involving authentication, authorization and accounting systems. Case pending.
• Mayfair Wireless LLC v. Cellco Partnership (D. Del.) Representing Verizon Wireless in patent case involving wireless hotspots. 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.) Representing 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.
• I2Z Technology, LLC v. AOL Inc. (D. Del.) Represented AOL in patent infringement suit involving “draggable map” functionality associated with MapQuest. SPH America, LLC v. Motorola, Inc. (E.D. Va., S.D. Cal.) Represented Motorola in patent infringement litigation relating to voice commands and power conservation in mobile phones. Lawsuit dismissed by stipulation after the case was transferred under 28 U.S.C. 1404 to the Southern District of California.
• Taurus IP, LLC v. Ford Motor Company, et al. and ST Sales Tech, LLC v. DaimlerChrysler, et al. Represented Mazda Motor America, Inc., Ford Motor Company, and Volvo Cars of North America in connection with patent litigation filed in the Western District of Wisconsin, and Mazda Motor America, Inc. in litigation filed in the Eastern District of Texas. Representation of Ford, Mazda, and Volvo on appeal in the Taurus IP litigation. Parties stipulated to dismissal.

Activities

Mr. Sommer in a member of the American Bar Association, Litigation and Intellectual Property Sections; Federal Circuit Bar Association; and Optical Society of America.

His 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. He is currently representing a client in a claim under the Federal Tort Claims Act (FTCA).

Mr. Sommer also sits on the Board of Directors for the Association of Former Law Clerks and Technical Assistants for the United States Court of Appeals for the Federal Circuit (AFLCTACAFC). He is also a member of the American Homebrewers Association.

Education

Speeches and Publications

Mr. Sommer occasionally speaks and writes on topics relevant to patent litigators and practitioners:

Publications

• “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)

Speeches

• “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