Heather Auyang

EDUCATION

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

PRIOR AFFILIATIONS

• FireEar Corporation (In-House IP Counsel)
• United States Patent and Trademark Office
• Clifford Chance US, LLP
• Roper & Quigg

BIOGRAPHY

Heather Auyang is a partner in both the firm’s intellectual property practice and complex commercial litigation groups. She counsels clients on potential and pending infringement and enforcement involving intellectual property matters and domain name dispute resolution. Heather’s cases have involved a broad range of technologies, including in the areas of business method, mechanical, software, biotechnology, chemical and networking products.

As a former Associate Solicitor at the United States Patent & Trademark Office (USPTO), Heather handled patent and trademark cases before the U.S. Court of Appeals for the Federal Circuit and district court litigation. Heather also served as an IP associate at Rogers & Wells (and Clifford Chance US post-merger) and Roper & Quigg (now Jenner & Block) during which Heather’s representative clients included The Dow Chemical Company; DuPont, ConocoPhillips; and Genentech.

As part of the firm’s complex commercial litigation group, Heather handles class action cases on both the plaintiff and defense sides in both state and federal courts, as well as general commercial litigation involving such areas as breach of contract and theft of trade secrets.

Representative Experience

• Currently representing plaintiff in a case involving breach of a patent assignment agreement for a sizable patent portfolio.
• Successfully defended clients against multimillion dollar patent infringement demands.
• Settled numerous patent infringement cases ranging from walk away to low five figures.
• Advised and negotiated licensing terms to substantial patent portfolios.
• Provided trademark enforcement strategy and managed oppositions for worldwide brand.
• Settled multimillion dollar breach of contract case for a fraction of the potential liability involving Forbes 2000 client.
• Obtained dismissal of class action lawsuit involving false advertising of networking products for less than $100 after successfully disqualifying class counsel.
• Represented plaintiff in class action involving false advertising of baby and toddler products.

Federal Circuit

• 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 a 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.

U.S. Supreme Court

• Quanta Computer, Inc., et. al. v. LG Electronics, Inc., 553 U.S. 617 (2008):  Court’s unanimous decision expanded the scope of the doctrine of patent exhaustion.
• Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007):  Court limited the extraterritorial effect of 35 U.S.C. § 271(f) with respect to software components; specifically, whether a U.S. software manufacturer could be held liable under U.S. patent laws for copies of infringing software made, sold, and installed on computers overseas.
• eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006): Court held that district courts should not automatically grant injunctive relief in patent cases.  Instead, patent owners, like other litigants seeking equitable relief, must demonstrate entitlement to a permanent injunction under the four-factor test.
• Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005):  Court expanded the scope of the safe harbor provision, 35 U.S.C. § 271(e)(1), which creates an exemption from patent infringement for use of a patented invention “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.”

Activities

• Los Angeles Intellectual Property Law Association
• Giles Sutherland Rich American Inn of Court, Examiner Depositions (2005)
• Asian American Bar Association of the Greater Bay Area
• Women’s Intellectual Property Association

Awards

• Department of Commerce Distinguished Attorney Award
• USPTO Special Act Award

Publications

• 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)

Bar Admissions

• State Bar of California, U.S. District Court for Northern, Central and Eastern Districts
• State Bar of Illinois
• The District of Columbia Bar
• USPTO, United States Supreme Court
• U.S. District Court for the Eastern District of Texas