Dale M. Heist

Partner

Philadelphia
T +1.215.564.8939
F +1.215.568.3439

"Dale Heist is particularly respected for his expertise in patent litigation... [He is] a 'very creative patent attorney who is very sensitive to clients' business needs.'"

— Chambers USA 2015

Overview

Dale Heist has amassed a distinguished track record in major patent infringement cases. He has been recognized for more than a decade by Chambers USA as a "solid practitioner" (2013), a "great strategist" (2012) and a "creative thinker" (2010) in large, complex IP disputes. Chambers notes that he is "smart and efficient" (2008) with "a great way of explaining complicated things" (2006) that "forces opposing counsel to work extra hard" (2005). Dale has been listed among the The Best Lawyers in America© for intellectual property litigation for ten consecutive years and was named by Best Lawyers® as "Lawyer of the Year" in Philadelphia for intellectual property litigation in 2013. He has been repeatedly named a Pennsylvania "Super Lawyer" for IP litigation and was first selected for inclusion in the International Who's Who of Business Lawyers for patent law in 2011. He has been recognized in IAM Magazine's separate lists for the world's leading patent litigators, world's leading patent practitioners and world's leading IP strategists. In 2012 and 2013, he was recognized by Lawyer Media Group's Life Sciences Guide as a "Life Sciences Star" for intellectual property.

Select Experience

  • Has been involved in more than 130 patent infringement cases over his long career, including:
    • Served as lead counsel for Microsoft before the U.S. International Trade Commission in a patent-based Section 337 proceeding relating to e-readers. The case settled after trial. (2012)
    • Served as lead counsel for Orthofix in Nuvasive v. Orthofix, a patent infringement case relating to bone grafts containing mesenchymal stem cells. (2010)
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Experience

  • Has been involved in more than 130 patent infringement cases over his long career, including:
    • Served as lead counsel for Microsoft before the U.S. International Trade Commission in a patent-based Section 337 proceeding relating to e-readers. The case settled after trial. (2012)
    • Served as lead counsel for Orthofix in Nuvasive v. Orthofix, a patent infringement case relating to bone grafts containing mesenchymal stem cells. (2010)
    • Served as trial counsel for Microsoft in AT&T v. Microsoft, in which Microsoft prevailed in the Supreme Court. The Court ruled that software code could not be considered a "component of a patented invention," and that copies of code made in a foreign country could not be considered to have been "supplied from the United States" within the meaning of 35 U.S.C. § 271(f)(1). (2004)
    • Represented Bayer in Bayer Healthcare LLC v. Abbott Labs, an infringement case involving a Bayer patent directed to immunoassay machines. The case settled before trial. (2004)
    • Represented the defendant in W.L. Gore & Associates Inc. v. Impra Inc. through a four-month trial and lengthy appeal process that resulted in overturning a patent previously held valid by the Court of Appeals.

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Pennsylvania (2003 to 2017)
    • Band 1
  • IAM Patent 1000: The World's Leading Patent Practitioners
    • Pennsylvania: Recognized for Patent Litigation (2013 to 2017)
  • IAM Patent Litigation 250's The World's Leading Patent Litigators 
  • IAM Strategy 250's The World's Leading IP Strategists (2012)
  • Who's Who Legal: Patents (2015 to 2017)
  • The Best Lawyers in America© (2006 to 2018)
    • Litigation – Intellectual Property
      • Best Lawyers® "Lawyer of the Year" (2013, 2018)
    • Litigation – Patent
      • Best Lawyers® 2015 "Lawyer of the Year"
  • Martindale-Hubbell: AV Preeminent
  • Pennsylvania "Super Lawyer" (2004 to 2017)
  • LMG Guide to the Leading Firms and Attorneys in US Life Sciences: "Life Sciences Star" for intellectual property (2013 to 2014)
  • Lawdragon 500 finalist
  • BTI Consulting Group, noted for best quality of service

Memberships

  • American College of Trial Lawyers: Fellow
  • American Bar Foundation: Life Fellow

Prior Positions

  • U.S. Patent and Trademark Office: Assistant Patent Examiner

Admissions

  • U.S. Supreme Court, 1984
  • U.S. Court of Appeals, Third Circuit, 1980
  • U.S. Court of Appeals, Seventh Circuit, 1982
  • U.S. Court of Appeals, Federal Circuit, 1982
  • U.S. District Court, Eastern District of Texas, 2010
  • U.S. District Court, District of Colorado, 1999
  • U.S. District Court, Eastern District of Pennsylvania, 1977
  • U.S. Patent and Trademark Office, Registration No. 28,425
  • Pennsylvania, 1976
  • New Jersey [Inactive], 1977

Education

  • J.D., Villanova University School of Law, 1976
  • B.S., Electrical Engineering, Villanova University, 1970