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David_Weingarten
M. David Weingarten, Ph.D.
Partner
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  • 271 17th Street, NW
  • Suite 1400
  • Atlanta, GA 30363-6209
+1 404 653 6457
david.weingarten@finnegan.com david.weingarten@finnegan.com

M. David Weingarten, Ph.D.

Partner

  • +1 404 653 6457 +1 404 653 6457
  • david.weingarten@finnegan.com david.weingarten@finnegan.com
  • 271 17th Street, NW
  • Suite 1400
  • Atlanta, GA 30363-6209
  • vCard
David_Weingarten

David Weingarten, Ph.D., has a diverse chemistry and life sciences practice focusing on patent litigation before U.S. district courts and the U.S. International Trade Commission (ITC), post-grant trial proceedings at the U.S. Patent and Trademark Office (USPTO), patent prosecution, and strategic portfolio management. 

David's practice focuses on complex chemical, pharmaceutical, and biotechnology patent litigation before U.S. district courts and the ITC and on post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the USPTO. David also has extensive experience preparing and prosecuting U.S. patent applications, coordinating and managing foreign prosecution, developing strategies for portfolio management and planning, and participating in diligence projects on behalf of domestic and foreign clients. In addition, he drafts opinions on patent infringement, validity, and enforceability, and prepares intellectual property agreements, such as those relating to license and supply.

David represents on a pro bono basis disabled veterans in proceedings before the U.S. Court of Appeals for Veterans Claims. He also serves as an industry mentor for students from Emory University and Georgia Institute of Technology to help prepare them for careers in technology innovation. David is recognized on the Capital Pro Bono High Honor Roll.

Prior to practicing law, David spent more than a decade in the pharmaceutical industry developing drugs across a wide range of therapeutic areas, including cardiovascular, metabolic, respiratory, and inflammation. As a member of senior management, he was responsible for leading research and development efforts in drug discovery, process research and development, and manufacturing. He also prepared New Drug Application (NDA) submissions, conducted due diligence, and managed technology transfers.

During his doctoral studies, David investigated the rhodium(II)-catalyzed reaction of a-diazo ketones and its application toward organic synthesis. As a National Institutes of Health (NIH) post-doctoral research fellow at Columbia University, he designed and developed new combinatorial methods for determining enantioselective chemical processes and implemented molecular modeling to analyze complex experimental results.

 

While at Emory University School of Law, David was a Robert W. Woodruff Fellow; a Dean's teaching Fellow; received awards for outstanding academic achievement in contract drafting, negotiations, deal skills, and patents and global health; and was awarded first place, Emory University School of Law Transactional Negotiation Meet. David was also an Achievement Rewards for College Scientists (ARCS) scholar; a Northern Telecom Scholar; a Department of Education graduate fellow; and an American Chemical Society, Organic Division graduate fellow at Emory University.

Et Cetera

  • Order of the Coif.
  • Capital Pro Bono High Honor Roll, 2019.
  • Judicial intern for the Honorable Chief Justice Hugh P. Thompson, Supreme Court of Georgia, 2010.
  • Judicial intern for the Honorable Elizabeth E. Long and the Honorable Alice D. Bonner, Fulton County Superior Court – Business Case Division, 2010.
  • Coauthor. "Securing and Maintaining a Strong Patent Portfolio for Pharmaceuticals," Medicinal Chemistry Letters, 2019.
  • Coauthor. "Carboxylated, Heteroaryl-Substituted Chalcones as Inhibitors of Vascular Cell Adhesion Molecule-1 Expression for Use in Chronic Inflammatory Diseases," Journal of Medicinal Chemistry, 2007.
  • Coauthor. "An Efficient Synthesis of a Dual PPAR α/γ Agonist and the Formation of a Sterically Congested α-Aryloxyisobutyric Acid Via a Bargellini Reaction," Journal of Organic Chemistry, 2005.
  • Coauthor. "Enantioselective Resolving Resins from a Combinatorial Library. Kinetic Resolution of Cyclic Amino Acid Derivatives," Journal of the American Chemical Society, 1998.
  • Coauthor. "Tweezers with Different Bite: Increasing the Affinity of Synthetic Receptors by Varying the Hinge Part," Angewandte Chemie International Edition (English), 1998. 

Experience

Novartis Pharmaceuticals Corporation et al. v. Fresenius Kabi USA, LLC et al.

Representing Novartis in district court litigation against multiple generics related to KISQALI®, a breakthrough CDK4/6-inhibitor for the treatment of breast cancer.

1:21-cv-00870, D. Del., Judge Williams

Vifor (International) AG and American Regent, Inc. v. Mylan Labs. Ltd. et al.

Trial counsel for Vifor and American Regent in two Hatch-Waxman Act cases against Mylan and Sandoz regarding their attempts to obtain FDA approval for their respective ANDAs directed to generic copies of Injectafer®.  After a six-day bench trial, the cases resulted in a favorable settlement for our clients with a generic entry date well past the expiration of the composition patents.

3:19-cv-13955, 3:19-cv-16305, D.N.J., Judges Wolfson, Arpert

AstraZeneca AB v. Zydus Pharmaceuticals (USA) Inc.

Trial counsel for AstraZeneca in Abbreviated New Drug Application (ANDA) litigation against Zydus on its Farxiga® pharmaceutical drug product.  After a bench trial, Judge Andrews ruled that the defendant failed to prove that any of the patent claims at issue were invalid due to obviousness, resulting in a complete win for our client.

1:18-cv-00664, D. Del., Judge Andrews

American Regent, Inc. v. Pharmacosmos Therapeutics Inc. et al.

Counsel for American Regent in litigation in the District of New Jersey against Pharmacosmos and their branded drug, Monoferric®, related to American Regent patents covering the use of iron carbohydrate complexes for the treatment of iron deficiency diseases. The case resulted in a favorable settlement for our client.

3:20-cv-01350, D.N.J., Judges Goodman, Martinotti, Quraishi
PGR2020-00009, PTAB, Judges Tornquist, Franklin, Wisz

Ajinomoto Co., Inc. et al. v. CJ Cheiljedang Corp. et al.

Counsel for Ajinomoto in the Southern District of New York in litigation involving patents related to genetically modified organisms and the use thereof to make commercial quantities of tryptophan.  This case resulted in a favorable settlement for our client and follows successful representation of Ajinomoto in related IPR proceedings, ITC investigation, and subsequent Federal Circuit appeal.

1:16-cv-03498, S.D.N.Y., Judges Gorenstein, Vyskocil
337-TA-1005, ITC, Judges Bullock, Essex
18-1590, -1629, Fed. Cir., Judges Dyk, Moore, Taranto
IPR2017-01551, -01698, PTAB, Judges Franklin, Mitchell, Moore, Sawert, Yang

Genzyme Corporation et al. v. Novartis Gene Therapies, Inc. et al.

Defending Novartis against Genzyme’s patent infringement allegations related to recombinant adeno-associated virus vector technology used in Novartis’ breakthrough gene therapy Zolgensma®.

1:21-cv-01736, D. Del., Judge Andrews

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Insights

Event

Discovery in U.S. Patent Litigation & Managing its Potential Impact in Related Foreign Cases Discovery in U.S. Patent Litigation & Managing its Potential Impact in Related Foreign Cases

January 18, 2023

Webinar

Event

A Fresh Look at Chemical and Pharmaceutical Selection Inventions: U.S. and European Perspectives A Fresh Look at Chemical and Pharmaceutical Selection Inventions: U.S. and European Perspectives

December 20, 2022

Webinar

Event

ABA’s Business Law Section Hybrid Spring Meeting 2022 ABA’s Business Law Section Hybrid Spring Meeting 2022

March 31-April 2, 2022

Atlanta

Event

Biologics and Biosimilars: FDA Initiatives and Guidance, Approvals and Exclusivity, Patent Prosecution, Litigation Biologics and Biosimilars: FDA Initiatives and Guidance, Approvals and Exclusivity, Patent Prosecution, Litigation

February 16, 2022

Webinar

Event

Recent IP Court Decisions Relevant to International Businesses Recent IP Court Decisions Relevant to International Businesses

October 1, 2021

Virtual

Event

American Chemical Society’s Resilience of Chemistry Conference American Chemical Society’s Resilience of Chemistry Conference

August 22-26, 2021

Atlanta

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Professional Recognition

“The Atlanta office is not short of litigation firepower; John Livingstone and David Weingarten are other compelling advocates, particularly in the context of major pharmaceutical and biotechnology cases.”

Intellectual Asset Management Patent 1000

“John Livingstone and David Weingarten are other compelling advocates, particularly in the context of major pharmaceutical and biotechnology cases.”

Intellectual Asset Management Patent 1000

“The Atlanta office is not short of litigation firepower; John Livingstone and David Weingarten are other compelling advocates, particularly in the context of major pharmaceutical and biotechnology cases.”

Intellectual Asset Management Patent 1000

“John Livingstone and David Weingarten are other compelling advocates, particularly in the context of major pharmaceutical and biotechnology cases.”

Intellectual Asset Management Patent 1000

News

Press Release

45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked 45 Finnegan Attorneys Recommended by Intellectual Asset Management; Firm Continues to Be Top Ranked

July 8, 2022

Intellectual Asset Management

Media Mention

Litigators of the Week: Shout Out Litigators of the Week: Shout Out

October 22, 2021

The AmLaw Litigation Daily

Press Release

Twenty Finnegan Attorneys Recognized by Best Lawyers Twenty Finnegan Attorneys Recognized by Best Lawyers

August 20, 2021

U.S. News—Best Lawyers

Announcement

Best Lawyers Recognizes 21 Finnegan Attorneys Best Lawyers Recognizes 21 Finnegan Attorneys

August 28, 2020

Press Release

Finnegan Announces Seven New Partners Finnegan Announces Seven New Partners

January 1, 2020

Announcement

Finnegan Announces 2019 Mentors of the Year Finnegan Announces 2019 Mentors of the Year

December 30, 2019

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Professional Activities

  • American Bar Foundation
    (Fellow, 2021-present)
  • American Intellectual Property Law Association
    (Food and Drug Law Committee, Vice-Chair, 2020-present; Programs Coordinator, 2018-2020; Chemical Practice Committee)
  • American Chemical Society
    (Chemistry and the Law Division; Medicinal Chemistry Division; Organic Chemistry Division)
  • Atlanta Intellectual Property American Inn of Court
    (Barrister)
  • Georgia Bar Association
    (Intellectual Property Law Section)
  • American Bar Association
    (Section of Intellectual Property Law)
Admissions and Education

Admissions

  • Georgia

Court of Appeals, Georgia
U.S. District Court, N.D. Georgia
U.S. Court of Appeals, Federal Circuit
U.S. Court of Appeals, Veterans Claims
U.S. Patent and Trademark Office

Education

Emory University School of Law
J.D., with honors, 2011
Emory University
Ph.D., Organic Chemistry, 1996
University of West Florida
B.S., Chemistry, 1991

David's Practices

Enforcement and Litigation
Appeals
Branded Hatch-Waxman (ANDA) Litigation
ITC Section 337 Investigations
Patent Litigation
Pretrial Strategies
Patent Invalidation Proceedings
PTAB Post-Grant Review: IPR, PGR, and CBM
Portfolio and Market Strategy
Due Diligence
IP Portfolio Management
Licensing, Pooling, and Other Transactions
Opinions and Counseling
Patent Prosecution
Patent Reissues

David's Industries

Chemicals, Industrials, and Materials
Chemical
Consumer Goods and Services
Consumer Products
Electronics and Information Technology
Augmented Reality/Virtual Reality (AR/VR)
Life Sciences
Biologics
Biotechnology
Pharmaceutical

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