White & Case
 
Warren S. Heit
Partner
Silicon Valley

T: + 1 650 213 0321
F: + 1 650 213 8158
E:
Practice Experience
Warren S. Heit is a trial lawyer, concentrating on patent infringement and trade secret litigation in the electrical engineering and computer science arts. Mr. Heit obtained a degree in electrical engineering magna cum laude, with a second major in computer science.

He is experienced litigating in US federal district courts, Section 337 Investigations at the International Trade Commission and in California state courts. Mr. Heit has been litigating for over twenty years, handling cases in computer hardware and software, wireless communications, flat panel displays, semiconductor manufacturing, solid state memories, digital signal processing, telecommunications, and e-commerce. Mr. Heit represents clients located throughout the globe, including United States, ITC, Japan, Korea, China, Singapore, UK, France, and Germany, in addition to his local clients based in Silicon Valley.

Mr. Heit 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, Mr. Heit writes and negotiates agreements for the transfer of technology and for the licensing and cross-licensing of patent, trademark and/or copyright rights.

Prior to practicing law, Mr. Heit worked as an electrical engineer for Raytheon Corporation, where he helped develop a test and artificial intelligence system for the Patriot missile system.

Representative Matters
  • Representation of Google in a high-profile patent infringement matter filed by Interval Licensing LLC, in the US District Court of the Western District of Washington against major Internet search and e-commerce companies alleging that they have infringed on four patents held by Interval Licensing. (Interval Licensing LLC v. AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!, and YouTube (W.D. Wash. 2010).
  • In the Matter of Certain Liquid Crystal Display Devices, Including Monitors, Televisions, and Modules, and Components Thereof. Represented Chimei Innolux (Taiwan) in Section 337 Investigation at ITC regarding LCD flat panel display technology. Obtained Final Determination of non-infringement or invalidity of all five asserted patents on behalf of Respondents Chimei InnoLux.
  • Commonwealth Scientific Industrial Research Organisation (CSIRO) v. Lenovo et al. Represented Sony Corporation (Japan), Sony Electronics (US), Sony Corporation of America (US) in patent infringement action brought in Federal District Court in Eastern District of Texas regarding wireless communication under IEEE Standards. Obtained dismissal with prejudice without any payment to plaintiff.
  • Silvaco v. Cirrus Logic, Inc. Represented Cirrus Logic, Inc. in a trade secret misappropriation action brought by Silvaco in California state court regarding misappropriation of certain trade secrets relating to computer code. Won on summary judgment of no misappropriation based on novel theory that accused misappropriator cannot be liable for misappropriating only executable code. Ruling affirmed by California Supreme Court.
  • Taiwan Semiconductor Manufacturing Corporation (TSMC) v. Semiconductor Manufacturing International Corporation (SMIC). Representation of TSMC (Taiwan) in patent infringement and trade secret misappropriation Section 337 Investigation at ITC, Federal District Court and California state court regarding semiconductor wafer manufacturing. Achieved significant favorable outcome for TSMC.
  • In the Matter of Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Cellular Telephone Handsets. Represented HTC (Taiwan) in Federal Circuit appeal regarding Broadcom's Section 337 Investigation at ITC. Fed. Cir. appeal decided October 14, 2008. Successfully avoided application of a limited exclusion order in seminal decision affecting future Section 337 Investigations.
  • Marvell Corporation v. Commonwealth Scientific Industrial Research Organisation (CSIRO) v. Marvell Corporation. Represented Marvell in declaratory judgment patent action brought in Federal District Court in Eastern District of Texas regarding wireless communication under IEEE Standards. Asserted novel breach of reasonable and non-discriminatory (RAND) commitments made to IEEE standards body. Achieved highly favorable claim construction ruling on behalf of accused infringer which quickly resulted in favorable settlement.
  • Richtek v. Powerchip. Represented Powerchip (Taiwan) in a trade secret misappropriation action brought by Richtek in California state court regarding alleged misappropriation of trade secrets relating to power management ICs. Obtained an early dismissal of client Powerchip by defeating plaintiff’s misappropriation claims on demurrer.
  • ARM Ltd., v. picoTurbo. Representation of ARM Ltd. (U.K.) in patent infringement litigation involving seven US patents relating to computer architectures for embedded microprocessors. Obtained favorable settlement at summary judgment stage.
  • M-Systems, Inc. et al. v. Trek 2000 International, Ltd. (Singapore) Representation of Trek 2000 International in patent infringement litigation in Singapore involving a Singaporean patent relating to a USB portable memory device. Singapore's High Court found Trek's USB portable mass storage device patent to be valid, enforceable and infringed by M-Systems and another company, Ritronics.
  • Varian Semiconductor v. Lam Research Corporation. Representation of Lam Research Corporation in patent infringement litigation involving three US patents relating to semiconductor wafer processing.
  • Stanford Telecommunications, Inc. v. Broadcom. Representation of Stanford Telecommunications, Inc. in patent infringement litigation involving US patent relating to cable sub-systems.
  • Philips Electronics v. Cirrus Logic, Inc. et al. Representation of Cirrus Logic, Inc. in patent infringement litigation involving US patent relating to I2C bus.
  • Acco Brands, Inc. v. Logitech. Representation of Kensington (subsidiary of Acco Brands) in patent infringement litigation involving a US design patent relating to a trackball design.
  • Quality Semiconductor v. Novalogic. Representation of Quality Semiconductor in a trade secret action against a competitor who hired away key engineers and stole key features of a content addressable memory.

Bars and Courts
California State Bar, 1993
Connecticut State Bar, 1990
US Patent and Trademark Office
New York State Bar, 1991
US District Courts for the Central, Eastern, Northern and Southern Districts of California

Education
JD, Fordham University, 1990
BSEE, Tufts University, magna cum laude, 1986

Professional Associations and Memberships
American Bar Association
California State Bar Association

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

Speaking Engagements
Presenter, "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

Languages
English

Citizenship
United States