Overview

Heather Auyang is a partner in the firm’s intellectual property and complex commercial litigation practice groups. She counsels clients on infringement and enforcement activities involving intellectual property matters, domain name dispute resolution, and brand protection. Heather’s cases have involved a broad range of technologies, including biotechnology, networking products, wearable technology, mechanical devices, nanoparticles, and chemistry related patents.

As a former Associate Solicitor at the United States Patent and Trademark Office, Heather handled patent and trademark appeals cases before the Federal Circuit and district court, and was involved in numerous high profile matters, including as part of the post grant legislative team and participated as part of advisory teams for Supreme Court cases such as Quanta Computer, Inc., et. al. v. LG Electronics, Inc. (doctrine of patent exhaustion), Microsoft Corp. v. AT&T Corp. (extraterritorial effect of 35 U.S.C. § 271(f) with respect to software components), eBay Inc. v. MercExchange, L.L.C., (injunctive relief), and Merck KGaA v. Integra Lifesciences I, Ltd. (scope of the safe harbor provision, 35 U.S.C. § 271(e)(1)).

Heather also handles class action cases (on both the plaintiff and defense sides) in state and federal courts and general commercial litigation.

Notable Representations

Patent Litigation

Represent TP-Link USA Corporation in various patent infringement matters over the years in the Central and Northern Districts of California, Eastern and Western Districts of Texas, Delaware, and Puerto Rico involving various technologies including Wi-Fi standards and audio-visual technology. Favorable outcomes across all cases.

Defended Microsoft Corporation in a patent infringement case before Judge Carter in the Central District of California involving sound-activated and voice-operated remote control transmitter technology. Case settled on favorable terms after discovery and motion practice.

Represented Inverness Medical Technology against Becton, Dickinson Co. in a Delaware case involving immunoassays (home pregnancy and ovulation tests). Case settled after extensive litigation (including a factory inspection in Ireland) and motion practice close to trial.

Part of trial team representing Dow Chemical Company and DuPont Dow Elastomers L.L.C. in a successful trial against Exxon Corporation involving patents related to metallocene catalysts in the Eastern District of Texas. Also handled cases involving block copolymers.

Represented DuPont Pharmaceuticals Co. and DuPont Contrast Imaging, Inc. against Mallinckrodt Inc. and Molecular Biosystems, Inc. in a Delaware case involving low-density, gas-filled microspheres used in medical imaging, such as ultrasound contrast agents. Case settled on favorable terms after three years of intensive litigation.

Trademark Litigation

Representing TP-Link USA Corporation against Thimes Solutions Inc. in a case involving antitrust, Lanham Act, trade libel, and tortious interference claims concerning unauthorized TP-Link products sold on Amazon. Appeal pending before the Ninth Circuit after successfully winning summary judgment on trade libel and tortious interference claims. This is the second time before the Ninth Circuit, in the first round, the appellate court affirmed dismissal of antitrust and Lanham Act claims in TP-Link USA’s favor.

Represented TP-Link USA Corporation against claims asserted by Careful Shopper for trade libel and tortious interference concerning unauthorized TP-Link products sold on Amazon. Case was initially filed in the Southern District of New York, and after a successful motion to dismiss for lack of personal jurisdiction, the case resumed in the Central District of California. Obtained favorable settlement after extensive litigation.

Copyright Litigation

Representing Estate of Jean Royère in a copyright and trademark case against Edition Modern and Denis de la Mésière. in the Central District of California involving Mr. Royère’s iconic designs, including furniture and lighting.

Commercial Litigation

Represented Symantec Corporation in a Los Angeles Superior Court case involving breach of a patent assignment agreement for sizable patent portfolios. Cases settled favorably after intensive litigation.

Defended TP-Link USA Corporation in class action matters in the Central and Northern Districts of California involving false advertising claims. Cases settled favorably after extensive motion practice, no class certified. One case involved successful disqualification of class counsel.

Represented plaintiff in class action against Orbit Baby involving false advertising of baby and toddler products. Successful settlement and resolution for consumers.

Federal Circuit Cases

In re Basell Poliolefine Italia S.P.A., No. 07-1450 (Fed. Cir. Nov. 13, 2008): patent case involving double patenting related to the polymerization of olefins where the applicant claimed priority to an application filed in 1954.

In re Serenkin, 479 F.3d 1359 (Fed. Cir. 2007): patent case involving 35 U.S.C. § 251 and foreign patent law issues.

In re Buszard, No. 06-1489 (Fed. Cir. Sept. 27, 2007): patent case concerning anticipation for claims to a flame retardant polyurethane foam.

In re Stoller, No. 06-1534 (Fed. Cir. Oct. 4, 2006): trademark case involving a jurisdictional issue under 28 U.S.C. Section 1295(a)(4)(B) concerning sanctions imposed by the Trademark Trial and Appeal Board against vexatious litigant.

In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004): patent case involving what constitutes a “printed publication” under 35 U.S.C. § 102(b) for claims directed to methods of preparing foods using extruded soy cotyledon fiber.

Skills

Heather’s success at summary judgment briefing and motion practice.

Honors

Department of Commerce Distinguished Attorney Award
USPTO Special Act Award

Education

Tulane University Law School (J.D., cum laude, 1997)
University of California (B.S., Biology, 1994)

Admissions

Bar Admissions
California, Illinois, and District of Columbia
USPTO Patent Bar

Court Admissions
U.S. District Court for the Northern District of California
U.S. District Court for the Central District of California
U.S. District Court for the Eastern District of California
U.S. District Court for the Eastern District of Texas
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
United States Supreme Court

Prior Affiliations

FireEar Corporation
United States Patent and Trademark Office
Clifford Chance US, LLP
Roper & Quigg

Memberships

Women’s Intellectual Property Association

Publications/News

Thomas W. Krause and Heather F. Auyang, What Reversals and Close Cases Reveal About Claim Construction: The Sequel, 13 J. MARSHALL REV. INTELL. PROP. L. 525 (2014). Article was referenced by U.S. Supreme Court Justice Alito during oral argument in Teva Pharmaceuticals v. Sandoz on October 15, 2014. The issue was whether a district court’s claim construction should be reviewed de novo or for clear error.

Thomas W. Krause and Heather F. Auyang, What Close Cases and Reversals Reveal About Claim Construction at the Federal Circuit, 12 J. MARSHALL REV. INTELL. PROP. L., VOL. 4 (Spring 2013), Reprinted in INTELLECTUAL PROPERTY LAW REVIEW 2013 (Thomson West 2014)