IP LAW LEADERS PLLC
BAR ADMISSIONS
Heain Lee
Associate
Maryland
Washington, DC (pending)
EDUCATION
J.D., University of Maryland School of
Law, 2013
B.A., Economics and Business; Chinese
language Minor, Kalamazoo College,
2006
MEMBERSHIPS
American Bar Association
Maryland State Bar Association
Ms. Lee’s experience is principally in the area of complex and intellectual
property counseling, litigation, and licensing. In enforcement and defense
actions, she attends to all aspects of discovery and motions practice,
including drafting motions and briefs, preparing and responding to
discovery requests and conducting in-depth legal research and analysis.
Ms. Lee has close to two years of experience working as an Associate, and
formerly as a Student Associate, with IP Law Leaders. She has served as
litigation counsel for firm clients in matters involving patent infringement,
the Lanham Act, false advertising, state deceptive trade practices,
trademarks, trade dress, copyrights, unfair competition, keyword
advertising, and other e-commerce matters through her litigation
experience with the firm.
Her work experience has been focused and concentrated, with peers and
mentors bearing decades of complex technology and IP experience. Ms.
Lee has performed client counseling for over twenty four high technology
and growth oriented corporations, including in the following areas:
computer peripherals; mobile based product recognition; thermal modules;
telecommunications switching; mobile applications and related operating
systems; network protocol; malware software; lumbar processing; titanium
dioxide applications; electronic assembly; automobile technologies; online
residential electronic devices; semiconductor fabrication; housewares and
direct television; and online business method applications.
Ms. Lee also provides intellectual property counseling and risk
management services, including rendering analyses and opinions in the
areas of infringement, validity, design-around, freedom-to-operate,
patentability and ownership resolution. Ms. Lee’s responsibilities also
include patent and trademark procurement, prosecution before the
USPTO, developing, managing and strategizing patent portfolios,
conducting IP due diligence investigations, counseling clients regarding
infringement and conducting pre-litigation infringement analyses.
Before her J.D., Ms. Lee attained a B.A. in Economics and Business. While
in law school, she also participated in numerous additional venues for legal
practice, including in the U.S. Patent and Trademark Office (USPTO) Law
School Clinic Certification Pilot Program and the Saul Lefkowitz Moot Court
Competition.
NOTABLE MATTERS

AIM IP, LLC v. Media5 Corporation, No. 8:2013-CV-00187 (C.D. Cal.
Feb. 4, 2013). Represented defendant, a leading manufacturer of
telecommunications adaptors and gateways, in a patent infringement
matter alleging violation of a telecommunications standard.

Hearthware, Inc. v. E. Mishan & Sons, Inc. (N.D. Ill.). Represented
plaintiff in action involving copyright and trademark infringement, false
association/designation of origin, false advertising, unfair competition
and deceptive trade practices.

Morningware, Inc v. Hearthware Home Products, Inc. (N.D. Ill.).
Represented defendant/counterclaimant, for many years one of the
highest grossing direct television corporations, in an action involving
infringement of patents directed to cookware technology, trade dress
infringement, unfair competition and product disparagement under the
Lanham Act, common law unfair competition, and commercial
disparagement and deceptive trade practices under state law.

Telebrands Corp. v. Hearthware, Inc., No. 2:2012-CV-02455 (D. N.J.
Apr. 25, 2012). Represented defendant in action involving trademark
infringement under §§ 32 and 43(a) of the Lanham Act, Common Law
Trademark Infringement, Common Law Unfair Competition and Unfair
Competition under N.J State statute.

Patent Procurement, Prosecution and Strategy. Developed and
enhanced a nearly 300- patent and trademark matter portfolio for one
of the nation’s leading radio frequency identification (RFID)
companies, a number of the patents bearing on essential standards.
Duties have included: patent preparation; patent and trademark
prosecution before the USPTO, including an extensive continuations
practice; co-managing and directing the day-to-day activities of some
22 foreign associate firms for international patent and trademark
prosecution; drafting trademark appeals; drafting detailed reports for
the general counsel segmenting the portfolio into matters related by
priority dates, summarizing technology and claim coverage, and
rendering value assessments, for all active patent matters.

Pre-Litigation Review and Analysis. Conducted extensive prelitigation, patent infringement and Rule 11 review for high stakes
semiconductor matter for an industry-wide technology where damages
are estimated over $120 million. Duties have included collaborating
with patent analysis firm, reviewing patent prosecution histories,
review of publicly available secondary sources and assisting in case
management with local counsel.

Pre-Litigation Strategy. Conducted comprehensive pre-licensing and
litigation-ready patent infringement analysis for a leading
telecommunications company as against a leading multinational direct
competitor. Duties have included review of analysis performed by inhouse telecom engineers, review of patent prosecution histories,
drafting of accused instrumentalities charts and advising in-house
counsel on strategy.
REPRESENTATIVE PUBLICATIONS
Drafting a wide-ranging set of articles for client outreach program and
published firm’s blog, including:















Copyright Violation and the Constitutionality of Excessive Damages –
Music Downloaders Beware!
Employee Access vs. Misappropriation of Trade Secrets
FIRREA and Bank Fraud
Assignment of Intent-to-use Trademark Applications
Copyright and Architecture
Federal Circuit and Advisory Council Model Orders
The White House on ITC Section 337
The Federal Circuit Rules on Apple v. ITC
The Lanham Act and Jim Brown
M&A and Government Immunity
Trade Secret and Contract Law
ITC Pilot Program to Promote Early Adjudication of Dispositive
Issues
Myriad and Patenting of the Human Gene
Claim Construction & Disclaimer –Federal Circuit Sides with the
University of Minnesota
IP License Agreements Under the AIA













Good-Faith Belief of Invalidity May Negate Induced Infringement
ANDA Litigation and Reverse Payments
Standard of Review Changes for Freeze-Out Mergers
RAND Obligations and Injunctive Relief
First Sale in Copyrights – Supreme Court takes a Fresh Look
Challenging A Patent Without Litigation – The New Inter Partes
Review
America Invents Act Creates a Transitional Program for Covered
Business Method Patents
The New Way to Challenge A Patent When Threatened: The
America Invents Act Creates the Inter Partes Review
The New Way to Challenge A Patent When Threatened: America
Invents Act Creates the Post Grant Review
The Economic Espionage Act
About When Exclusive Patent Licensees Can Sue on their Licensed
Patent
Court Finds Appropriated and Altered Art Protected Under Fair Use
The U.S. Becomes First-to-File For Patents
FOREIGN LANGUAGES
Ms. Lee is fluent in Korean. She is also proficient in reading and writing in
Mandarin (Chinese), and minored in the language in college.