
Paula D. Heyman
Registered Patent Attorney • Attorney
Education
J.D., Syracuse University College of Law, magna cum laude
B.S., Cornell University, Electrical Engineering
Expertise
Patent Litigation • Post-Grant Review Proceedings • Appeals • US & International Patent Prosecution • Intellectual Property Licensing and Enforcement
Paula Heyman is a patent litigator and registered patent attorney who thrives on a challenge. She excels in the most complex cases, representing clients in federal courts across the U.S. and the International Trade Commission (ITC). She is an innovative trial attorney with extensive experience in all phases of litigation, from pre-suit investigation, fact and expert discovery and claim construction through motion practice, trials, and appeals.
Paula is exceptionally skilled in handling the most complicated patent litigations for technology, medical device, energy, telecommunications, and product manufacturing companies. She has prevailed in cases involving a wide array of technologies, including computer systems, computer chips, artificial intelligence, telecommunications systems, database management software, website functionality, medical devices, and natural gas processing.
Paula effectively uses witness testimony and graphics to explain the complex technologies at the center of her matters to judges and juries in a way that is both understandable and compelling such that they will be remembered throughout the trial. Articulate and communicative, Paula also makes it a priority to keep her clients well-informed along every step of the litigation process.
In addition, she frequently represents clients in proceedings before the Patent Trial and Appeal Board. Her understanding of the impact these administrative proceedings have on traditional patent litigation gives her clients a significant advantage over their opponents.
Because she has both prosecuted and litigated patents, Paula provides an uncommon and unique perspective in her strategic counsel to companies looking to identify and protect their intellectual property assets. She assists her clients in the management and development of strategic world-wide patent portfolios in areas such as integrated circuit design and software for the layout of integrated circuits; semiconductor manufacturing technology, including the design and manufacture of photomasks and the processing steps necessary to fabricate integrated circuits; oilfield equipment and associated software; and telecommunications and video conferencing technology. Her experience in handling both domestic and international patent prosecution results in broad protection for her clients’ patents in each jurisdiction.
Earlier in her career, Paula worked as in-house counsel for Philip Morris Products S.A. in Switzerland. While in law school, she served as executive editor of the Syracuse Law Review. Prior to law school, Paula was a circuit design engineer at Digital Equipment Corporation in Hudson, Massachusetts, and at IBM in Austin, Texas. Before joining Maschoff Brennan, Paula practiced for over 20 years as a patent prosecutor and litigator at two large law firms in Austin. She is licensed to practice before the USPTO.
In addition to practicing law, Paula loves to travel and explore unique destinations. Her bucket list destinations include Antarctica, Africa for a wildlife safari and New Zealand. Depending on the season, she can often be found hiking or on the ski slopes.
My Focus
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Professional Admissions & Associations
Texas State Bar
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
US District Court for the Southern District of Texas
US District Court for the Eastern District of Texas
US District Court for the Western District of Texas
US District Court for the Northern District of Texas
US District Court for the Northern District of Georgia
US District Court for the Southern District of New York
US District Court for the Southern District of Indiana
The Honorable Lee Yeakel Intellectual Property American Inn of Court
Austin Intellectual Property Law Association
Intellectual Property Owner’s Association
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Publications & Presentations
• “Uncertain Times: When Does IPR Estoppel Apply” at UT Advanced Patent Law Institute (Nov. 3, 2023)
• “It’s Not Skynet: AI and Machine Learning Ethics for IP Lawyers” at TIPLJ 22nd Annual IP Symposium (Feb.
24, 2023)
• “Navigating IPR Estoppel in Litigation” at UT Advanced Patent Law Institute (Oct. 21, 2022)
• “Navigating IPR Estoppel in Litigation” at TIPLJ, 21st Annual IP Symposium (Mar. 4, 2022)
• “Federal Circuit Holds That ‘Secret’ Sales and Offers for Sale May Constitute Prior Art Under Post-AIA
Section 102” in Baker Botts Intellectual Property Report (May 2, 2017)
• “Sovereign Immunity Protects State-Funded Patent Owners from Post-Grant Proceedings” in Baker Botts
PTAB Trials Blog (Apr. 11, 2017)
• “Getting the Facts: Expert Testimony for FRAND Patents” at University of Texas Intellectual Property Law
Journal (TIPLJ), 14th Annual IP Symposium (Feb. 13, 2014)
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Representative Engagements
Represented an industrial automation control provider in litigation asserting multiple patents related to process control using neural networks
Represented a large medical device company in litigation asserting multiple patents related to electrochemical glucose monitoring technology
Successfully defended a large enterprise software and services company against multimillion-dollar commercial fraud claims.
Successfully represented a major computer equipment manufacturer at trial, including conducting direct examination of several fact witnesses and cross-examination of technical expert, where damages liability was reduced by 90%
Provided litigation defense at the ITC for a large data storage company and a major computer equipment manufacturer
Provided litigation defense in district court for a large telecommunications company
Prepared and prosecuted patent applications, litigation defense, and post-grant proceedings in the USPTO on behalf of a major computer equipment manufacturer
Advised a large energy company on the management of its patent program and the preparation and prosecution of domestic and foreign patent applications
Represented a large consumer appliance company in patent interference proceedings at the USPTO
Represented a large packaging company in patent interference proceedings at the USPTO
Counseled a major photomask manufacturer on patent program management and patent prosecution
Advised a small software company on patent program management and preparation and prosecution of patent applications