Jeanne M. Heffernan, P.C. - Partner

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Jeanne M. Heffernan, P.C.

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New York
Phone: +1 212-446-4696
Fax: +1 212-446-4900
Overview News Events Publications

Professional Profile

Jeanne (“Jeannie”) Heffernan is an experienced trial lawyer focusing on patent and trademark infringement litigation. Jeannie has successfully tried more than a dozen patent and trademark infringement cases around the country in a wide range of industries, from medical devices to telecommunications to haute couture.

Jeannie's work was mentioned in the following articles:

  • She “knows how best to conduct patent trials in the Eastern District of Texas, no matter what the technology involved. She litigates across the country and recently represented Medtronic in the Southern District of Florida, where she artfully obtained a summary judgment of non-infringement against patent assertion entity Atlas IP.” – IAM Patent 1000, 6/2016

  • She is described as having as “much experience in the Eastern District of Texas as any national litigator and has managed to get some big wins on the defense side there in terms of arguing for the exclusion of the plaintiff’s damages expert. She’s great at interrogating experts and witnesses, and her follow-up questions are especially probing.” – IAM Patent 1000, 6/2015

  • “The 2015 IP Hot List: Kirkland & Ellis,” The National Law Journal, 6/2015

  • "Defendants Extend East Texas Hot Streak with Wi-LAN Verdict," The AmLaw Litigation Daily, 7/2013

  • "Boston Scientific Award Upped To $42M In Cordis Stent IP War," Law360, 3/2012

  • "Boston Scientific Wins $19.5 Million In Stent Patent Case," Law360, 5/2011

  • "Judge Nixes Infosint's $15 Million Patent Win Over Citalopram," Law360, 6/2010

  • "IP Litigation Department of the Year: Finalist: Young and Hungry," The American Lawyer, 1/2008

  • "Anticounterfeiting Summit," Harper's Bazaar, 2/2006

  • "Deals & Suits: Rambus v. Infineon," Corporate Counsel, 6/2005


Representative Matters

Patent

Defended mobile device and electronics manufacturer against company formed by individual for whom term “patent troll” was coined. Major industry players, including developer of accused technology, had taken licenses to plaintiff’s portfolio. Plaintiff touted licenses as proof patented technology was valuable and infringed by entire industry, including client. Kirkland painted licenses as proof of aggressive enforcement strategy and desire by industry to avoid high cost of litigation. Jury agreed, rendering verdict of non-infringement in client’s favor.

Defended world's largest medical device maker in suit brought by patent assertion entity in rocket-docket district. Patent related to a medium access control protocol for wireless network devices and was asserted against client's remotely-monitored defibrillators, pacemakers, and insulin pumps. Plaintiff sought over $1 billion in damages and trial was set just one year from filing. Weeks before trial, court granted client’s Daubert motion against plaintiff's damages expert, striking the opinion in its entirety, and granted client’s motion for summary judgment that two of three asserted claims were not infringed. On motion for reconsideration that third claim was not infringed, court acknowledged the “extraordinary” nature of the requested relief and granted summary judgment of non-infringement of remaining claim just days before trial, resulting in final judgment in client's favor on all asserted claims.

Defended leading mobile device company in patent infringement suit in E.D. Tex. based on technology allegedly developed by plaintiff before it became a publicly traded patent assertion entity. Plaintiff had previously obtained licenses from more than 130 technology companies for portfolios including its home-grown patent. Just prior to trial, all other defendant-manufacturers had taken licenses. Plaintiff sought $250 million in damages from client and enhancement based on alleged willfulness. After a seven-day trial, jury deliberated an hour and returned a complete defense verdict, finding no infringement on all claims and all claims invalid as anticipated.

Defended global communications client and three other defendants in patent infringement suit in E.D. Tex. involving four patents related to WCDMA wireless technology. Obtained two Daubert rulings in client's favor, substantially reducing plaintiff's damages claims prior to trial. After a six-day trial, jury deliberated for less than an hour and returned a complete defense verdict, finding no infringement on all claims and all claims invalid as anticipated and obvious.

Brought suit in D. Del. on behalf of medical device maker against key competitor concerning drug-eluting stents for use in small coronary arteries.  Court granted summary judgment that competitor willfully infringed patent. Parties proceeded to damages trial, where the medical device maker proved its mixed lost profits and reasonable royalty theory to the jury.  Jury awarded almost $20 million in damages. Court affirmed and amended award to include damages ‎through date of verdict, awarded an ongoing royalty of 32 percent, and doubled damages for willful infringement.

Defended worldwide pharmaceutical companies in action brought by Italian patent holding company in S.D.N.Y. over key ingredients in blockbuster drugs.  Obtained dismissal with prejudice on one patent.  Just prior to trial, obtained summary judgment of invalidity on one of two asserted claims in remaining patent.  Following three-week jury trial, court granted judgment as a matter of law that second claim was invalid, resulting in complete victory for clients.  On appeal, the Federal Circuit summarily affirmed judgment as a matter of law.

Successfully litigated patent infringement suit in S.D. Cal. against personal computer and software makers on patents relating to video-, speech-, and perceptual audio-coding, user interface, and caller id technologies.  Litigation was divided into multiple trials according to technology and two separate juries returned verdicts for client.  At remand trial on patent damages for user interface patent in July 2011, jury returned verdict of $70 million, the precise amount requested by client.

Defended patent infringement suit brought against client and 12 other co-defendants in E.D. Va., alleging infringement of 11 patents in the field of encryption.  Case stayed as to all co-defendants pending outcome of case against client.  After close of discovery, plaintiff dropped 5 patents but sought more than $500 million in damages on remaining patents.  Obtained summary judgment of noninfringement on all remaining patents, which was affirmed on appeal.

Defended national cable service provider in patent infringement suit relating to data-over-cable service.  After five-day jury trial, and only half hour of deliberation, jury returned verdict of no infringement, the third defense verdict ever in a patent infringement case in E.D. Tex.

On remand, defended patent infringement suit in E.D. Va. relating to semiconductor technology in which plaintiff asserted patents filed at same time plaintiff participated in industry standards organization.  Successfully pierced attorney-client privilege under crime-fraud exception and discovered widespread document destruction and litigation misconduct as part of overarching plan to sue industry on adopted standards.  Won bench trial on affirmative defenses of spoliation and litigation misconduct in advance of patent infringement trial and obtained dismissal with prejudice of plaintiff's patent infringement claims.

Defended household goods company in patent infringement suit in E.D. Tex. related to chemical composition.  Uncovered potential antitrust and unfair competition violations, leading to favorable settlement.

 

Copyright and Trade Secret

Defended case in which plaintiffs sought preliminary injunction to shut down client's $300 million business. Counterclaimed against plaintiffs for trade secret misappropriation, copyright infringement, and breach of contract.  Defeated motion for preliminary injunction at evidentiary hearing and successfully moved for summary judgment on plaintiffs' claims, forcing favorable settlement one week prior to trial.

 

Trademark

Defended declaratory judgment action of no trademark or trade dress infringement on behalf of aviation clients, regarding the unauthorized use of famous helicopter trade dress and trademarks in plaintiff’s video game series.  In a bid for a quick win, videogame-maker moved to dismiss the case it filed, claiming that its unauthorized use was protected free speech and nominative fair use.  Court denied the motion on grounds advanced by clients, leading to favorable settlement.

Action brought on behalf of luxury goods client for breach of parties' prior settlement agreement, trademark infringement, trademark dilution, and defamation.  Uncovered widespread litigation misconduct committed by defendant.  In rare move, court granted (from the bench) motion to strike answer and counterclaims as sanction for litigation misconduct.  With motions for default judgment and sanctions against defendant pending, case settled favorably for client.

Defended against trademark, trade dress, and patent infringement claims related to client's packaging design. Counterclaimed for tortious interference with prospective business advantage based on fact investigation. Successful motion practice led to favorable settlement for client, with no change to packaging.

Hired by plaintiff as trial counsel two months prior to trial in trademark infringement action related to defendants' use of marks associated with client’s TV show. Mid-trial, obtained favorable settlement and permanent injunction. Defeated defendants' motion to set aside settlement agreement and for new trial at district court, which was affirmed by Second Circuit.

Litigated trademark infringement action concerning knockoff of client’s famous handbag.  Obtained temporary restraining order and preliminary injunction following evidentiary hearing, leading to favorable settlement, dismissal, and permanent injunction.

Defended against declaratory judgment action related to knockoffs of client’s famous handbag and brought affirmative trademark infringement and unfair competition claims.  Months after obtaining favorable settlement, secured contempt ruling following discovery of renewed infringement and obtained attorney's fees and compensation.

On behalf of luxury goods client, obtained jury verdict of willful trademark infringement and unfair competition in action related to knockoffs of client’s famous handbag and leather-goods designs.
 


Memberships & Affiliations

Member, Eastern District of Texas Bench Bar Planning Committee, 2014-2017

Appointed to ABA IP Litigation Subcommittee

Appointed as Co-Chair, Women in IP Subcommittee, American Bar Association

Appointed to the International Trademark Association Anti-Counterfeiting Committee and North America Subcommittee for the 2012-13 term

Appointed to the International Trademark Association Enforcement Committee and Subcommittee on Issues of Proof for the 2010-11 term


Other Distinctions

Selected as one of Intellectual Asset Management magazine's (IAM) leading patent practitioners in the world for Litigation, 2015-2016

Honored in Managing Intellectual Property’s IP Stars - Top 250 Women in IP, 2014

Selected as a New York "Super Lawyer" for Intellectual Property Litigation by Super Lawyers magazine, 2014-2017

Selected as a New York "Rising Star" for Intellectual Property Litigation by Super Lawyers magazine, 2012-2013

Recognized in The Legal 500 U.S. for Patent Litigation: Full Coverage, 2016, and Trademarks: Litigation, 2012-2013

Leadership Council on Legal Diversity (LCLD), 2014 Fellow

Empire State Counsel 50

Recipient, Kirkland & Ellis Pro Bono Service Award, 2008-2010, 2012-2016


Publications

"Is There Reasonable Certainty about the Standard of Review for Indefiniteness?" American Bar Association News & Developments, 3/30/15

"Do You Have a Leg to Stand On? Standing Issues in Patent Cases." Chapter 9 of the State Bar of Texas, 10th Annual Advanced Patent Litigation Course, Jeanne Heffernan, Mangesh Kulkarni and S. Taylor, 7/17/2014

"Does Nautilus Avoid the 'Zone of Uncertainty'?" American Bar Association News & Developments, 6/20/2014


Seminars

Panelist, “Trial Strategies and Litigation Tactics,” 13th Annual Advanced Patent Litigation Course, July 20, 2017

Presenter, “Discretion Advised: Attorney’s Fees and Enhanced Damages after Octane Fitness and Halo,” Federal Circuit Bar Association Bench and Bar, June 23, 2017

Moderator, “The Tension Between Privacy and Security,” The 2016 ChIPs Women in Tech, Law and Policy Global Summit. Panel include: Erin Egan (VP & Chief Privacy Officer, Policy, Facebook), Erika Brown Lee (Chief Privacy and Civil Liberties Officer, U.S. Department of Justice), Nuala O’Connor (President & CEO, Center for Democracy & Technology) and Noreen Krall (ChIPs Co-founder; Vice President, Chief Litigation Counsel, Apple Inc.)

Panelist, “Trials in East Texas. Is It What You Do or Is It The Way You Do It? From Preparation to Presentation, a Race for Credibility,” The Eastern District of Texas 2016 Bench Bar Conference

Co-Moderator, “Fresh Faces of ED Texas. Policies, Procedures & Practice Pointers As Seen from Behind and Beyond the Pine Curtain,” The Eastern District of Texas 2015 Bench Bar Conference, 10/23/15. Panel included Judge Rodney Gilstrap, Judge Amos Mazzant, Judge Nicole Mitchell, and their staff

Moderator, “Patent Docket Synergy: Challenges and Best Practices from Delaware to East Texas,” The Eastern District of Texas 2014 Bench Bar Conference, 10/24/14. Panel consisted of Chief Judge Leonard Davis (E.D. Tex.), Judge Rodney Gilstrap (E.D. Tex.), Chief Judge Leonard Stark (D. Del.), and Judge Sue Robinson (D. Del.)

Presenter, “Do You Have a Leg to Stand On? Standing Issues in Patent Cases?” 10th Annual Advanced Patent Litigation Course, 7/17/2014

Presenter, “Protecting the Trade Dress Design of the Hermès Kelly Bag,” The 8th PanEuropean Intellectual Property Summit, 12/11/2013

Presenter, “Trademark Developments,” Copyright, Trademark & Internet Symposium, 4/13/2010

Presenter, Advertising & Trademark Law Seminar, 7/21/2009

Presenter, “Keep it Real: Protect Your Brand’s Integrity,” Harper’s Bazaar 2nd Annual Anti-Counterfeiting Summit, 2/1/2006


Courts

New York; United States District Court for the Eastern District of New York; United States District Court for the Southern District of New York; United States District Court for the Eastern District of Texas; United States Court of Appeals for the Federal Circuit; United States Supreme Court

© 2017 Kirkland & Ellis LLP