Warren Heit | White & Case LLP International Law Firm, Global Law Practice
Warren Heit
Warren Heit

Warren Heit

Partner, Silicon Valley

T +1 650 213 0321 / + 1 650 213 0300

E wheit@whitecase.com

in LinkedIn profile

Overview

Warren Heit is an experienced trial lawyer, whose practice is focused on patent infringement and trade secret litigation in the electrical engineering and computer science sectors.

Clients value Warren’s unique insight into their business, drawing on his high level electrical engineering background. Prior to practicing law, Warren worked as an electrical engineer for Raytheon Corporation, where he helped to develop a test and artificial intelligence system for the Patriot missile system.

With more than 20 years’ litigation experience in US federal district courts, California state courts and Section 337 Investigations at the International Trade Commission (ITC), his track record and reputation have attracted high profile clients including Google, Sony and HTC.

The skill and insight which Warren brings to his work has enabled him to achieve numerous victories for his clients. Although many of his representative clients are based in Silicon Valley, his track record has attracted a broad client base which extends across the United States and around the world, spanning Taiwan, Japan, Korea, China, Singapore, the UK, France, and Germany.

Warren’s clients seek his counsel with regard to a range of technological matters, including computer hardware and software, wireless communications, flat panel displays, semiconductor manufacturing, solid state memories, digital signal processing, telecommunications, and e-commerce.

He is registered to prosecute patent applications before the US Patent and Trademark Office (PTO), which he uses to help clients design and build strategic patent portfolios around their most valuable technologies. In addition, he writes and negotiates agreements for the transfer of technology and for the licensing and cross-licensing of patent, trademark and/or copyright rights.

Warren is a member of the American Bar Association and the California State Bar Association, and an author of a number of publications on patent law.

Bars and Courts

  • California State Bar
  • Connecticut State Bar
  • US Patent and Trademark Office
  • New York State Bar
  • US District Courts for the Central, Eastern, Northern and Southern Districts of California

Education

  • JD, Fordham University
  • BSc in electrical engineering, Tufts University

Languages

  • French
  • English

Experience

Chimei InnoLux Corporation International Trade Commission Case

Warren served as lead counsel for Chimei InnoLux Corporation, one of Taiwan’s leading makers of flat panels and liquid-crystal displays, in a Section 337 Investigation brought before the ITC. Warren managed to secure victory for Chimei InnoLox, with non-infringement findings on all of the patents. This result represented a complete victory for Chimei, and set an important precedent concerning which expenses non-practicing entities can count toward the establishment of a domestic industry.

Google’s alleged patent infringement

Warren advised Google in a high-profile patent infringement matter filed by Interval Licensing LLC, in the US District Court of the Western District of Washington. Interval Licensing brought the action against a number of major internet search and e-commerce companies (including AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube), alleging that they had infringed on four patents held by them.

Registration of "Thumbdrive" trademark

Warren represented Trek 2000 International Ltd., inventor of the ThumbDrive™ USB flash drive, in a lengthy but ultimately successful case brought before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO). Warren introduced evidence of Trek's long and extensive use of the mark, its successful efforts in policing incorrect use of the mark, and the absence of competitors using the mark in a generic way. Citing this evidence, the Board rejected the Trademark Office's position that the mark was generic, and ordered that Trek's commercial rights should be protected and that the ThumbDrive™ mark should be registered.

Sony’s patent infringement action

Warren advised Sony Corporation (Japan), Sony Electronics (US), Sony Corporation of America (US) in a patent infringement action brought in the Federal District Court in Eastern District of Texas regarding wireless communication under IEEE Standards. Warren obtained a dismissal with prejudice without any payment to the plaintiff.

Cirrus Logic’s trade alleged secret misappropriation

Warren represented Cirrus Logic, Inc. in a trade secret misappropriation action brought by Silvaco in a California state court. This action related to the misappropriation of certain trade secrets relating to computer code. Warren won on summary judgment of no misappropriation, based on the novel theory that the accused misappropriator cannot be liable for misappropriating only executable code. This ruling was subsequently affirmed by the California Supreme Court.

TSMC’s alleged patent infringement

Warren worked with TSMC (Taiwan) in a patent infringement and trade secret misappropriation Section 337 Investigation at ITC, Federal District Court and California state court, regarding semiconductor wafer manufacturing. Warren achieved a significant, favorable outcome for his client.

Speaking Engagements

"Successfully Defending A Section 337 Investigation", 2012 Symposium on International Legal Strategies for Taiwan Technology Companies: A Focus on Intellectual Property and Antitrust Issues, 13 June 2012, Hsinchu, Taiwan and 15 June 2012, Taipei, Taiwan, Presenter

Publications

  • CLS Bank v. Alice Corp. further muddies §101 patent eligibility, Lexology, May 16, 2013
  • ITC proposes rule changes for Section 337 investigations, Lexology, July 26, 2012
  • ED Texas court transfers multi-defendant patent litigation out of Texas to California, Lexology, August 13, 2010
  • Business method patents: Supreme Court’s decision in Bilski effectively returns to the status quo ante the Federal Circuit’s decision, Lexology, July 2, 2010
  • Federal Circuit vacates Lucent damages award and provides guidance for reasonable royalty analysis, Lexology, September 16, 2009