Warren S. Heit is a global technology attorney based in Silicon Valley with over twenty-five years of experience. Warren uses his background in electrical engineering and computer science (he majored in both) to develop a thorough understanding of his clients' technology and business. He uses this understanding to help his clients develop sophisticated intellectual property portfolios, litigation positions, and licensing strategies to protect themselves.
He also helps guide his clients through the different regulatory schemes and business environments they encounter as they expand internationally -– e.g, how intellectual property is protected, how products are packaged and marked, how data privacy is protected, and how global trade is conducted.
Warren is a top trial lawyer, with a focus on patent infringement and trade secret litigation. Warren handles both US and cross-border components, particularly for companies based in Europe and Asia.
Warren also is an international arbitration lawyer, handing major part of some of the largest international arbitrations. He offers clients the benefit of his substantial oral advocacy, case strategy and team management experience in large-scale, cross-border disputes around the world, with up to billions of dollars at stake.
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. 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.
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.
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.
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.
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.
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.
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.
"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
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