Heather M. Schneider is a partner in the Intellectual Property Department and President 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. She supervises the firm’s trademark prosecution practice and prosecutes trademarks for clients in the financial, cryptocurrency, private equity, and entertainment industries, as well as numerous pro bono clients. She also advises clients on IP prosecution and enforcement strategy, acquisitions, and ownership structures. Ms. Schneider 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, Ms. Schneider 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: the Pfizer COVID-19 vaccine (Comirnaty), erythropoietin (Epogen), dexmedetomidine (Precedex), rotigotine (Neupro), fingolimod (Gilenya), paricalcitol (Zemplar), oxycodone HCI (OxyContin), argatroban (Argatroban Injection), and amlodipine besylate (Norvasc). In the computer field, Ms. Schneider has assisted clients in litigations brought by non-practicing entities involving cryptography and other software technologies. She appeared before the U.S. and Canadian courts in the Nortel bankruptcy litigation involving allocation of proceeds from the sale of Nortel's $4.5 billion portfolio of telecommunications patents, successfully obtaining proceeds for UK pensioners that developed LTE-related patents. She is representing a steel equipment manufacturer who brought suit against a competitor for trade secret misappropriation and other claims involving steel caster technology at a $1 billion plant. She was lead counsel in obtaining a preliminary injunction for breach of contract and other claims for a matter involving agricultural fertilizers.
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Experience
- Georgia Appleseed Center for Law & Justice – 2022-2023 Pro Bono Champion
- Empire State Counsel award from New York State Bar Association for performing 50 or more hours of free legal services to low income individuals in 2022.
- Ms. Schneider is President 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.
- Prior to attending law school, Ms. Schneider worked as a Senior Technical Consultant for Hewlett-Packard where she worked on projects for companies like Coca-Cola, Lifetime Television, Con Edison Communications, and others using Visual Basic, ASP.NET, Site Server, SQL Server, Java, and other technologies. She is co-author of the book Mobile Applications: Architecture, Design, and Development (Prentice Hall 2004).
- Ms. Schneider 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. Ms. Schneider was named Pro Bono Attorney of the Year 2020 by Kids in Need of Defense (KIND).
- In 2017, Ms. Schneider 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.
- Patent Ownership and Litigation Financing: A New Era Begins in Delaware?, with E. Chang and O. Lu, Intellectual Property & Technology Law Journal, Wolters Kluwer (publication pending).
- 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).
- American Financial Exchange – Represented American Financial Exchange, an electronic exchange for direct lending and borrowing for American banks and financial institutions, in its acquisition by 7RIDGE.
- Alnylam v. Pfizer; Pfizer v CureVac – Represent Pfizer in patent work related to its COVID-19 vaccine, including declaratory judgment action against CureVac regarding its alleged vaccine patents.
- 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
- Danieli Corporation v. SMS Group - Asserted misappropriation of trade secrets and other claims for a client involving steel caster technology. Successfully defeated motions to ; action is pending.
- Hocking Int'l Labs v. Eco Agro Resources - Obtained a preliminary injunction to stop tortious interference with customers for a patented technology for an agricultural chemical manufacturer. The case later settled favorably.
- Trademark Prosecution and Counseling – Supervise firm’s trademark prosecution practice across numerous industries. Help clients develop prosecution, licensing, and coexistence strategies, as well as enforcement, litigation, and TTAB proceedings.
- 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.
- 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. Presented witnesses in the U.S. and Canadian courts to describe UK employees’ inventions and IP policies. 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.
Credentials
Education
Columbia University School of Law, J.D., 2006 Pace University, M.S., 1999 Ohio University, B.A., 1993