UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PETROLEUM GEO-SERVICES CORP.,
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`ION GEOPHYSICAL CORPORATION
`AND ION INTERNATIONAL S.A.R.L.
`Petitioners,
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`v.
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`WESTERNGECO LLC,
`Patent Owner
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`Case IPR2014-00688
`Patent No. 7,080,607
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`DECLARATION OF DAVID J. HEALEY IN SUPPORT OF
`PETITIONER’S MOTION FOR PRO HAC VICE ADMISSION
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`1
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`PGS 1059
`PGS et al. v. WesternGeco
`IPR2014-00688
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`Proceeding No.: IPR2014-00688
`Attorney Docket: 37136-0002IP1
`DECLARATION OF DAVID J. HEALEY IN SUPPORT
`OF PETITIONER’S MOTION FOR PRO HAC VICE
`ADMISSION
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`I, David J. Healey, hereby declare the following:
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`I am a member in good standing of the State Bar of Texas, as well as the
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`1.
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`United States Court of Appeals for the Federal Circuit. I have briefed multiple
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`appeals in the Federal Circuit and have had at least three oral arguments before that
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`Court. Since at least 1994, I have been counsel in cases focused on patent
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`infringement in the United States District Courts for the Southern (Houston and
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`Galveston Divisions), Western (Austin Division), Northern (Dallas Division) and
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`Eastern Districts (Texarkana, Marshall, Lufkin and Beaumont Divisions) of Texas;
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`the District of Delaware; the Eastern District of Virginia (Alexandria and
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`Richmond Divisions); the Northern District of California (San Francisco, San Jose
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`and Oakland Divisions), and the Northern District of Illinois (Chicago Division)
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`(among others). I have also appeared in “337 actions” involving patent
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`infringement in the International Trade Commission in Washington D.C. I have
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`given presentations involving patent law and litigation at seminars at the U.S.
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`Patent and Trademark Office, the University of Texas, the State Bar of Texas, the
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`Houston Intellectual Property Law Association, and the Eastern District of Texas
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`Bench-Bar Conference, among others. I have written and published articles on
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`patent law topics. I was one of the founding members of the Houston Intellectual
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`Proceeding No.: IPR2014-00688
`Attorney Docket: 37136-0002IP1
`Property Inn of Court (now the Honorable Nancy J. Atlas Inn of Court), and helped
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`to write the local patent rules for the Southern District of Texas in 2007. (I have
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`also argued appeals in the Fifth Circuit, Fourth Circuit and the Texas Supreme
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`Court).
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`2.
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`I have not been suspended or disbarred from practice before any court or
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`administrative body.
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`3.
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`I have never had an application for admission to practice before any court or
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`administrative body denied.
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`4.
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`No sanction or contempt citation has been imposed against me by any court
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`or administrative body.
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`5.
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`I have read and will comply with the Office Patent Trial Practice Guide and
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`the Board’s Rules of Practice for Trials set forth in part 42 of the Code of Federal
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`Regulations.
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`6.
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`I will be subject to the USPTO Rules of Professional Conduct set forth in 37
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`C.F.R. §§ 11.101 et seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).
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`7.
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`I am concurrently applying to appear pro hac vice before the Office in
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`IPR2014-00687, to which IPR2015-00566 was joined, and IPR2014-00689, to
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`which IPR2015-00565 was joined.
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`8.
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`I am an experienced attorney with more than 20 years of experience
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`representing clients in patent cases at trial and on appeal. These cases have
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`Proceeding No.: IPR2014-00688
`Attorney Docket: 37136-0002IP1
`involved medical devices, computer software, chemicals, subsea oil exploration
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`and extraction equipment, mechanical devices, chemical compositions,
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`telecommunications, and semiconductors, among other technologies. I have
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`briefed and argued numerous claim construction and validity matters. I regularly
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`litigate patent cases in various forums including the United States Court of Appeals
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`for the Federal Circuit, federal district courts, and the International Trade
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`Commission. Through my experience in patent litigation matters, I have
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`represented clients in many phases of litigation including discovery, claim
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`construction hearings, jury trials, bench trials, and appeals. My biography is
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`attached hereto as Exhibit A.
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`9.
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`On March 6, 2015, I argued the appeal in the United States Circuit Court for
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`the Federal Circuit in WesternGeco LLC v. ION Geophysical, Corp., which
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`involves the patents in these IPR proceedings. Previously, I worked on post-trial
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`motion practice from late August 2012 to April 2014 in the United States District
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`Court for the Southern District of Texas on the district court litigation that lead to
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`this appeal.
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` hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`Proceeding No.: IPR2014-00688
`Attorney Docket: 37136-0002IP1
`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code and that such willful false
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`statements may jeopardize the validity of the application or any patents issued
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`thereon.
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`Pursuant to 28 U.S.C. Section 1746(2), I declare under penalty of perjury
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`that the foregoing is true and correct.
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`Executed on April 28, 2015.
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`Respectfully submitted,
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`/s/ David J. Healey
`David J. Healey
`Fish & Richardson P.C.
`Suite 2800
`1221 McKinney St.
`Houston, Texas 77010
`(713) 654-5300
`Email: healey@fr.com
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`David J. Healey
`Senior Principal
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` Houston ,
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` TX
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` 713 - 654 - 5310
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` healey@fr.com
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` Download vCard
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`Background
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`Mr. Healey has been litigating complex cases in Federal and State Courts for twenty-five years, and has been
`focused on patent litigation and related antitrust and tort claims since 1994. Mr. Healey has tried cases in the Federal
`Courts, International Trade Commission, International Chamber of Commerce (Arbitration), American Arbitration
`Association, NASD Arbitration Forum, and private arbitration. He has argued appeals in the Federal Circuit, Fifth
`Circuit and Fourth Circuit Courts of Appeals, as well as the Texas Supreme Court and Texas Intermediate Courts of
`Appeals. Mr. Healey has been actively involved in planning and executing multi-jurisdictional strategies involving
`courts in the U.S. and Europe, and administrative agencies (including re-examination in the US PTO, invalidity and
`declaratory judgment actions in Europe, and state regulatory matters). Mr. Healey has worked on patent and antitrust
`issues with the Federal Trade Commission, and has represented clients patent related competition matters before
`the Federal Trade Commission as well as the European Union.
`Mr. Healey has put substantial effort recently into ways to better manage patent litigation to reduce costs and the
`internal burden on clients. He has successfully developed strategies for dealing with non-practicing entities to defend
`patent claims quickly and cheaply.
`Mr. Healey has been involved in negotiating patent licenses in the semiconductor and software industries, he has
`represented clients in dealing with obligations and licensing in standard-setting organizations, and he has litigated
`the substantive and anticompetitive effects of licenses in court, in arbitration, and in administrative agencies.
`Mr. Healey has also been a frequent speaker on patent and antitrust matters, and has been fortunate enough to have
`been recognized by industry polls and publications for his work. Additionally, he is the author of Patent Math, a blog
`that regularly discusses patent business and legal strategies; he can be followed at www.patentmath.com.
`Mr. Healey graduated from the University of Texas School of Law in 1985 with honors, and Brown University in
`1982. Mr. Healey served as law clerk to the Honorable James DeAnda, United States District Judge, Southern
`District of Texas, from 1985-1987.
`Mr. Healey has been active in the State Bar of Texas Intellectual Property Committee, the Eastern District of Texas
`Bar Association, and community projects where he lives in the Houston area. Prior to opening Fish & Richardson’s
`Houston Office, Mr. Healey was a partner in the patent litigation section of an international law firm, and previously
`was a partner in his own patent litigation boutique firm, as well as a national patent litigation boutique firm in
`Houston, Texas.
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`Education
`JD, University of Texas at Austin School of Law 1985
`with honors
`BA, Brown University 1982
`Admissions
`• Texas 1985
`• United States District Court for the Eastern District of Texas
`• United States District Court for the Southern District of Texas
`• United States District Court for the Western District of Texas
`• Supreme Court of the United States
`• United States Court of Appeals for the Federal Circuit
`• United States Court of Appeals for the Second Circuit
`• United States Court of Appeals for the Fourth Circuit
`• United States Court of Appeals for the Fifth Circuit
`• United States District Court for the Northern District of Illinois
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`Clerkships
`The Honorable James DeAnda, 1985 - 1987
`Memberships & Affiliations
`Houston Intellectual Property Inn of Court, Founding Member and Treasurer
`Former Director of Eastern District of Texas Bar Association (two terms)
`Chairman, Eastern District of Texas Bench Bar Meeting 2006-2008
`Chairman, Antitrust Committee, State Bar of Texas Intellectual Property Section, Antitrust Committee, 2004-2005
`Member, ABA, AIPLA, Federal Circuit Bar Association, HBA, HIPLA
`Life Fellow, Texas Bar Foundation
`Other Distinctions
`Recent Rankings
`Recognized as an “IP Star” by Managing Intellectual Property (2013, 2014).
`Recognized as a 2013 Top Rated – AV® Preeminent™ Lawyer in Intellectual Property Law.
`Listed in “The World’s Leading Patent Litigators”, since 2011 by Intellectual Asset Management.
`AV Rated Pre-Eminent by Martindale-Hubbell, highest rating for skill and ethics.
`Ranked Tier One for Intellectual Property by Chambers Global, since 2008.
`Listed in Best Lawyers in America, for Intellectual Property Litigation, Patent Litigation, and Patent Law since 2007.
`Texas Lawyer, 2002 and 2007 surveys, one of top five “Go To” Intellectual Property Lawyers in Texas (the only
`lawyers so ranked in both surveys).
`Listed in Texas Super Lawyers, since 2002.
`Listed in the Law Dragon 3000.
`Recent Presentations and Publications since joining Fish & Richardson
`“Recent Developments in Technology Law,” UT Law 28th Annual Technology Conference (May 22, 2015).
`Intellectual Property in Electronics and Software: A Global Guide to Rights and Their Applications, (2013),
`contributor.
`International Global Rights in Software: A Guide to Rights and Their Applications, (2013), contributor.
`Injunctive Relief for Standard-Essential Patents, Fish INSIGHTS Webinar, November 2013.
`State Bar of Texas, Advanced Patent Law Seminar, August 2013, co-author, Antitrust and IP update
`State Bar of Texas, Annual Meeting Dallas, Texas, June 2013, Speaker on Injunctions in Patent Cases
`Co-panelist with Prof. Richard Gilbert, Antitrust Enforcement in the Licensing and Technology Arenas, 26th Annual
`Technology Law Conference by the University of Texas School of Law, May 23, 2013.
`Speaker, February 17, 2012, Texas Intellectual Property Law Journal Symposium, University of Texas Law School,
`“Patent Value”
`Co-panelist with Steve Susman and Chad Everingham, Impact of America Invents Act on Multi-Defendant Litigation,
`Intellectual Property Owners Webinair Series, November 8, 2011.
`2011 Federal Circuit Bar Association-Eastern District of Texas Joint Bench Bar Conference, planning committee
`member and presented on Antitrust and Patents.
`2011 University of Texas Advanced Patent Law Seminar, planning committee member and panelist on Patent
`Damages
`2011 University of Houston-Houston Intellectual Property Law 27th Institute on Patent Law, Patent Damages
`presentation
`Quoted in “The Roles of Lead and Local Counsel”, Texas Lawyer, October 24, 2011.
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`Quoted in “The time is now to begin adapting TTO operations under America Invents Act”, Technology Transfer
`Tactics, Vol. 5, No. 10, p. 149, October 28 2011.
`2011, “Patent Reform:Plan now or pay later — patent law changes that impact your business,” Houston Business
`Journal, August 5, 2011
`Seminar Presenation and Paper, International Patenting and Enforcement: What Your Company Should Be Doing
`Now!, State Bar of Texas Intellectual Property Law Seminar, July 15, 2011
`2011 University of Texas Technology Law Conference, Maximizing Patent Value – Minimizing Cost: EU & IP & U,
`May 26, 2011
`2011, Industry Standards in Patent Licensing and Litigation, BD Academy Webinar, April 15
`2011, “Beware of ‘Guillotine Licenses’ for Patents with U.S. Companies,” China Intellectual Property, March-April,
`Issue 42
`2011, “Are Reasonable Royalties An Equitable Remedy?” Texas Intellectual Property Journal 2011 Annual
`Symposium, February 18
`2010, “Patent Math: Making Sure Your Strategies Add Up,” China IP Magazine, with Marc Stone, August 20 issue
`Article, “Q&A: Often Abandoned, Patents Should Be Viewed as Assets,” Houston Business Journal, August 8, 2010
`2010, “A Broken Spoke?,” The National Law Journal, May 31 issue
`2010, “DO the Math: Overspending + Failing to Realize Patents’ Value = YOU Losing Money,” Corporate Counsel,
`with Marc Stone, May 20 issue
`2010, “A New Checklist for Patent Damages,”Law360, April 19 issue
`2010, “The UK’s Fast Lane For IP Enforcement” IP Law360, December 20 issue
`Blog on Patent Business and Legal Strategies, www.patentmath.com, since July 2010
`2010, Eastern District of Texas Bench Bar Conference, Plano, Texas, Conference Planning Committee, &
`Moderator-Panelist on Improving Efficiency in Patent Litigation
`2010, University of Texas Advanced Patent Law Seminar, Austin, Texas, Conference Planning Committee, Speaker
`on Patent Pools and Standard-Setting: In re Princo.
`2010, Houston Intellectual Property Law Association, Conference Planning Committee
`2009, University of Texas Advanced Patent Law Seminar, Austin, Texas, Panelist on damages and presented paper
`on Lucent v Gateway, Planning Committee member
`2009, Eastern District of Texas Bench Bar Conference, Frisco, Texas, Moderator for Panel on Eastern District
`Practice with Judges Ward and Clark, Attorney participant panel with Eastern District Bench, Planning Committee
`member
`2009, “The Texas Four Step,” Initial Disclosures in the Eastern District of Texas, IP Litigator magazine, September
`Issue
`2009, AIPLA Spring Meeting, San Diego, California, Panelist with Chief Judge Michel of the Federal Circuit; initial
`disclosures
`2009, AIPLA, Winter Meeting, Miami Florida, Panelist on Litigation Management
`2009, Fish & Richardson, Houston, Texas, Panel on Litigation and IP Management and Trends
`2008, Counsel Café, Palo Alto, California, Panelist on Global Patent Litigation
`2008, University of Texas Advanced Patent Law Seminar, Austin, Texas, Presentation on Antitrust and Patent Law
`Recent Developments, Planning Committee member
`Prior to joining Fish & Richardson, Mr. Healey has spoken, participated as a panelist, and presented papers at
`multiple conferences each year since 1996, including for example, participating as a panelist on standard-setting and
`antitrust at the ABA Antitrust Section’s Spring Meeting in Washington, D.C., presenting on litigation of trade secret
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`and patent claims at the University of California-Berkeley Advanced Patent Law Seminar in San Jose, California, on
`re-examination strategy in litigation at the George Mason University-University of Texas Advanced Patent Law
`Seminar at the USPTO, and on patent pools, standards, and unfair competition and antitrust, at State Bar of Texas
`Seminars. He has also done private seminars on patent damages and standard-setting for international corporations.
`Services
`• Litigation
`• Commercial Litigation
`• Patent Litigation
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`Experience
`Representative Intellectual Property engagements
`ION Geophysical in post-trial motions after $100 million adverse judgment.
`NexPay and Talon in multiple trade secret, patent and copyright matters arising out of third-party payor claims
`administration systems and software.
`Cyberonics, Inc. in licensing dispute involving medical device patents.
`Drilformance LLC in licensing matters.
`Smartphone manufacturer on standard-setting issues.
`Electronic device maker on patent pool issues.
`Zenith in patent lawsuit on television receivers.
`TradeStation Group, Inc. and subsidiaries in patent lawsuit on securities and commodities trading software, and
`Federal Circuit Appeal.
`BMC in patent lawsuit on security software.
`McAfee in multiple lawsuits on antivirus software.
`LG in ICCC arbitration over patent license fees.
`LG Electronics in a patent lawsuit on plasma displays.
`McAfee in a Federal Circuit appeal from an adverse judgment in a patent case involving network security software.
`Adobe in multiple patent infringement cases involving distributed computing patents.
`Manufacturer of music players and smartphones in multiple cases on software.
`Samsung in multi-jurisdictional litigation involving memories, including claims for patent infringement, breach of
`contract, unfair competition, fraud and antitrust violations in standard-setting in the Northern District of California, the
`Eastern District of Virginia, Delaware Chancery Court, the FTC and the EU.
`Samsung in Texas State Court fraud and antitrust cases involving licensing and standard-setting for DRAMs.
`The University of Texas in establishing and managing a standard-setting group in the chemical and oil refinery
`construction industry.
`Kvaerner in an antitrust and unfair competition case over patents alleged against standards for offshore oil
`exploration equipment.
`Samsung in ITC and Federal Court litigation over patents asserted against ETSI standards for wireless
`communications.
`Samsung in licensing negotiations over CDMA and WCDMA wireless technology.
`Samsung in licensing involving NAND Flash Memory.
`Exxon-Mobil in defense of a patent lawsuit against configuration of undersea pipelines.
`Exxon-Mobil in licensing and trade secret disputes involving chemical catalysts.
`Exxon-Mobil in patent litigation over chemical filters.
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`William Riles against Amerada Hess over patent for installation of offshore drilling platform.
`Nextsport in a lawsuit involving a mechanical patent involving turning mechanisms for scooters.
`Microsoft in multiple patent lawsuits involving Windows, Office, email.
`SciCoTec and Dr. Alt in a patent lawsuits against Medtronic over pacemaker technology.
`SciCoTec and Dr. Alt in arbitration and a patent lawsuit against Boston Scientific over stents and catheters.
`Samsung in a trade secret lawsuit in trial and interlocutory appeal involving “third generation switching” telephony
`technology.
`Lexar Media in trade secret and patent lawsuits against Toshiba on NAND Flash Memory technology.
`Samsung in trial and appeal in a patent lawsuit on amorphous silicon decided on inequitable conduct.
`NetIQ in AAA arbitration over computer software patents.
`Samsung in International Chamber of Commerce arbitrations over 2G and 3G patent rights and license.
`TitleData in copyright and trade secret licensing and regulatory matters.
`Computer Associates in computer software copyright litigation.
`Sony Music in formulating new legal strategy for confirmation of contracts with underage performers (Destiny’s
`Child).
`Other Representative Litigation engagements
`Represented Respondents in Texas Supreme Court on First Amendment lawsuit.
`Represented lawyer on certain substantive constitutional issues as part of the defense of a multi-count RICO
`indictment.
`Represented Hartford Insurance Group of companies in over fifty class actions involving antitrust, consumer
`protection (credit scoring, claims management practices, pricing and underwriting) and state regulatory issues from
`1987-2005.
`Represented Westinghouse (Siemens Westinghouse) in construction and trade secret litigation.
`Represented Reuters in tax litigation as well as unfair competition litigation in Texas State trial and appellate courts.
`Represented Oppenheimer & Co. in numerous securities arbitrations.
`Represented MALDEF and ACLU in cases involving statutes to prohibit rental of housing based on immigration
`status.
`Represented John O’Quinn in lawsuit against State Bar of Texas.
`Represented MCorp in trial against FDIC.
`Represented Greyhound in trial against NLRB.
`Represented Texas State Optical in securities case in trial court and interlocutory appeal against Grand Metropolitan
`plc and Pearl Vision.
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