Scott Cunning

Practices

Industries

Education and Clerkships

J.D., George Washington University Law School, 2004, with honors, Executive Managing Editor, AIPLA Quarterly Journal, 2003-2004; Moot Court Board; Mock Trial Board

B.S., Chemical Engineering, Carnegie Mellon University, 2001

Admissions

District of Columbia

U.S. Patent and Trademark Office, 2018

Virginia

Court Admissions

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. District Court for the Eastern District of Virginia

U.S. District Court for the Western District of Virginia

Court of Appeals of Virginia

Supreme Court of Virginia

Profile

Scott Cunning is the administrative partner for the Washington, D.C. office of Haynes and Boone. Scott assists generic pharmaceutical companies by helping them bring generic versions of branded products to market. Scott also counsels tech companies helping them to navigate patent disputes in federal district courts. Scott’s clients value his tireless dedication and efforts to tailor his legal strategies to help their business succeed.

Scott’s experience has spanned a diverse variety of technological areas including semiconductor processing, digital data compression, implantable medical devices, medical imaging devices, electronic patient diaries and methods of drug delivery. He helps lawyers inside pharma and tech companies face high-risk patent litigation. Scott’s clients value that he invests time learning how his clients’ industries operate so that he can develop effective and efficient litigation strategies that will fit into their larger business objectives.

Scott has experience appearing before federal district courts throughout the country. Additionally, while attending The George Washington University Law School, Scott had the privilege to intern for the Honorable Richard Linn at the United States Court of Appeals for the Federal Circuit. Scott also served as the executive managing editor for the AIPLA Quarterly Journal. In addition to his law degree, Scott holds a B.S. in chemical engineering.

Scott was selected for inclusion in Washington, D.C. Super Lawyers Rising Stars, Thomson Reuters, in Intellectual Property Litigation, 2014-2019.

Selected Publications and Speeches

  • “Doctrine of Equivalents in Pharmaceutical Cases,” presenter, 8th Annual Pharma IPR Conference, March 6, 2019.
  • “Doing the Patent Dance in the Biosimilars Era,” panelist, Financial Times U.S. Healthcare & Life Sciences Summit, May 10, 2018.
  • "The Biologics Tango: Reading Tea Leaves on the Patent Dance and Pre-Marketing Notice Requirements," co-author, Lexology, April 27, 2017.

Honors

Super Lawyers

D.C. Super Lawyers Features Nine Haynes and Boone Lawyers

Nine Haynes and Boone lawyers have been selected to 2019 edition of the Washington, D.C., Super Lawyers/Rising Stars directory, an annual award listing published by Thomson Reuters.

Selected Client Representations

  • In re Sebela Patent Litigation. (D.N.J. 2014) (Prevailed on non-infringement and invalidity after trial).
  • Afilias, PLC v. Architelos, Inc. (E.D. Va. 2015). Obtained a large jury verdict for Afilias against Architelos for theft of trade secrets, conversion, and conspiracy claims involving internet security technology.
  • DSS Technology Management, Inc. v. Taiwan Semiconductor Manufacturing Company, Ltd. et al. (Fed. Cir. 2015). Argued appeal for TSMC. The Federal Circuit affirmed the lower court’s claim construction and determination of non-infringement for all asserted claims.
  • Petition for inter partes review by Taiwan Semiconductor Manufacturing Company, Ltd. (IPR2014-01030). Coordinated a parallel challenge to a patent asserted against TSMC in the Eastern District of Texas. The Board determined that all claims that had been asserted in the litigation were unpatentable.
  • DSS Technology Management, Inc. v. Taiwan Semiconductor Manufacturing Company, Ltd. et al. (E.D. Tex. 2014). Defended TSMC against claims of patent infringement by non-practicing entity, DSS, in the United States District Court for the Eastern District of Texas. After a favorable claim construction ruling, DSS stipulated to non-infringement for all asserted claims.
  • Otsuka Pharmaceutical Co., Ltd. v. Prinston Pharmaceutical Inc. et al. (D.N.J. 2014) (Settled favorably).
  • Teijin Ltd. et al. v. Prinston Pharmaceutical Inc. (D. Del. 2014) (Settled favorably).
  • Pfizer, Inc. et al. v. Impax Laboratories, Inc. (D. Del. 2013). (Settled favorably).
  • In re Transdata, Inc. Smart Meters Patent Litigation (W.D. Okla. 2012). (Settled favorably).
  • Eisai, Inc. et al. v. Banner Pharmacaps, Inc. et al. (D. Del. 2011). (Settled favorably).
  • Shionogi Pharma, Inc. et al. v. Impax Laboratories, Inc. (D. Del. 2010). (Settled favorably).
  • In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litigation (D. Del. 2009).
  • Pfizer, Inc. et al. v. Impax Laboratories, Inc. (D.N.J. 2008). (Settled favorably).
  • Purdue et al. v. Impax Laboratories, Inc. (D. Del. 2008). Defended Impax in the United States District Court for the District of Delaware and in proceedings before the Judicial Panel on Multidistrict Litigation against patent infringement suit initiated under the Hatch-Waxman Act.
  • Elan Corp., PLC v. Andrx Pharmaceuticals, Inc. (S.D. Fla. 2005). (Settled favorably).
  • Flexsys America v. Sinorgchem Shandong et al. (N.D. Ohio 2005). Represented Sinorgchem in parallel action related to ITC investigations concerning rubber antidegradants. Court granted summary judgment of non-infringement on all asserted claims.
  • Audio MPEG, Inc. et al. v. SanDisk Corp. (E.D. Va. 2006). Represented patent licensors Audio MPEG and Sisvel and four European patent holders in their multi-jurisdiction action against SanDisk for infringement of patents essential to the MP3 audio compression standard. Successfully dismissed SanDisk's declaratory judgment claim in the Northern District of California. Litigated infringement in the Eastern District of Virginia which led to a worldwide settlement.
  • PHT Corporation v. Invivodata, Inc. et al. (D. Del. 2004). Defended Invivodata against PHT's claim of infringement of a patent related to electronic patient diaries for clinical trials. Successfully obtained favorable claim construction rulings on the eve of trial which led to a favorable settlement.
  • American CalCar, Inc. v. BMW of North America, LLC (S.D. Cal. 2004). Defended BMW against American Calcar's claim of infringement on 12 patents related to multiple technologies including park-distance control, navigational systems, adaptive cruise control, and man-machine interfaces. Summary judgment was obtained on most of the patents-in-suit which led to a favorable settlement.
  • Advanced Neuromodulation Systems v. Advanced Bionics Corp. (E.D. Tex. 2004). Represented medical device manufacturer in patent infringement and trade secret misappropriation lawsuit. Lawsuit was settled favorably on behalf of the client.
  • The North Face Apparel Corp. v. Northface University, LLC (N.D. Cal. 2004). Obtained consent judgment and permanent injunction on behalf of The North Face enjoining university defendant from using the term "North Face" or variations thereof as a university name, trade name, or domain name, and abandonment of trademark applications for said terms in connection with university services.

Pro Bono Representations

  • Austin et al. v. Bolden, (D.C. Superior Ct.). Represented tenant Pierce in suit for repair of housing conditions. Case was dismissed after landlord made requested repairs.
  • Prepared trademark registration applications for non-profit group conducting charitable sporting competitions to support cardiac research.
  • Assisted refugees in successfully obtaining asylum status. 

Professional and Community Activities

  • American Intellectual Property Law Association
  • American Bar Association, Litigation Section
  • International Trade Commission Trial Lawyers Association
  • Generic Pharmaceutical Association, Associate Member

Representative Matters

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