Warren S. Heit is a global technology attorney based in Silicon Valley. Warren takes advantage of his background in electrical engineering and computer science to develop a thorough understanding of his clients' technology and business. He uses this understanding to successfully evaluate business risk, negotiate major transactions, and develop sophisticated intellectual property defenses, portfolios and licensing strategies.
Leveraging off of his years of experience at a leading international law firm, Warren guides his clients through different international regulatory schemes and business environments. He provides advice on regulatory compliance, data privacy, intellectual property protection and global trade.
Warren is a top trial lawyer and commercial litigator, with a focus on patent infringement and trade secret disputes. Warren also acts as an international arbitration lawyer, leading key parts of multi-billion dollar arbitrations.
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