Danielle (DJ) Healey has been litigating complex cases in federal courts, state courts, and agencies, and handling licensing, antitrust, mediation and arbitration matters for over 34 years. She has focused on patent litigation and related antitrust and tort claims since 1994.
Ms. Healey has tried cases in U.S. district courts, state courts, U.S. International Trade Commission, International Chamber of Commerce (arbitration), American Arbitration Association, NASD Arbitration Forum, and private arbitration. She 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. Ms. Healey has been actively involved in planning and executing multi-jurisdictional strategies involving courts in the U.S. and Europe, and administrative agencies (including reviews in the U.S. Patent and Trademark Office (USPTO), invalidity and declaratory judgment actions in Europe, and state regulatory matters). Ms. Healey has worked on patent and antitrust issues with the U.S. Federal Trade Commission (FTC), and has represented clients intellectual property related competition matters before the FTC, the European Union, and Texas state authorities.
Ms. Healey has been involved in negotiating patent licenses in the semiconductor and software industries, she has represented clients in dealing with obligations and licensing in standard-setting organizations, she has been general counsel to a standard-setting group, and she has litigated the substantive and anticompetitive effects of licenses in court, in arbitration, and in administrative agencies.
Ms. Healey has also been an active speaker and author on trade secret, patent extraterritorial liability, patent damages, IP related antitrust law, arbitration and mediation. She has been fortunate enough to have been recognized by industry polls and publications for her work.
Ms. Healey graduated from the University of Texas School of Law in 1985 with honors, and Brown University in 1982. Ms. Healey served as a law clerk to the Honorable James DeAnda of the U.S. District Court for the Southern District of Texas, from 1985-1987.
Ms. Healey was one of the founders of the Houston IP Inn of Court, has been active in the State Bar of Texas intellectual property committee, the Eastern District of Texas bar association, and community projects where she lives in the Houston area. Prior to opening Fish & Richardson’s Houston office, Ms. Healey was a partner in the patent litigation section of an international law firm, and previously was a partner in her own patent litigation boutique firm, as well as a national patent litigation boutique firm in Houston, Texas.
Presentations and Publications
Ms. Healey is a contributing author to Fish’s IP Law Essentials.
“Employees, Trade Secrets, and Antitrust,” speaker, UT Law CLE’s 34th Annual Technology Law Conference (May 26, 2021).
“Antitrust Issues with “No-Poaching” Agreements,” co-author, Fish IP Law Essentials Blog (October 15, 2020).
“Trade Secret Update (DTSA),” co-speaker, Houston Intellectual Property Law Association (HIPLA) 2020 Annual Fall Institute on Intellectual Property Law (October 3, 2020).
“Antitrust and Patents – What’s happening in the Covid-19 Crisis?” co-speaker, American Bar Association – 2020 IP Fall Institute (September 30, 2020).
“Solutions to Pandemic Patent License Problems: Impracticability, Frustration, Impossibility and Force Majeure for IP Lawyers,” Fish Litigation Webinar (June 25, 2020).
“California Law on Reverse Payment Settlements Goes into Effect” Fish Litigation Blog (January 7, 2020)
“Protecting Your Trade Secrets in a Recession,” Corporate Counsel (September 30, 2019).
“Stop Trade Secret Trolls Before They Start: A New Theory of ‘Fair and Honest’ Misappropriation of Trade Secrets,” Fish Litigation Blog (August 26, 2019).
“2017 – 2018 Patent Law Update,” Panelist, Lavender Law IP Workshop, (August 10, 2018 – New York City).
“Application of U.S. IP Law to Exports, Offshore, on the Outer-Continental Shelf, the High Seas and Overseas,” Co-speaker, 2nd Energy Industry Intellectual Property Law Conference (March 22, 2018 – Houston).
“Negotiation Ethics for In-House Counsel,” Co-speaker, Fish L.E.A.D. event (February 1, 2018 – Houston).
“ADR in IP,” Houston Intellectual Property Law Association’s 33rd Annual Institute on Intellectual Property Law (October 6, 2017 – Galveston).
“Licensing Standard Essential Patents and Protecting IP Rights,” Strafford Webinar (November 21, 2017).
“Infringement Remedies,” UT Advanced Patent Law Institute (November 2, 2017).
“Global Patent Licensing and Enforcement, Including Patent Exhaustion and the Role of the Impression v. Lexmark Decision,” Patent Law in Global Perspective Seminar (October 20, 2017).
“Patent-Specific Arbitration Law in the United States – What You Need To Know,” Fish Litigation Blog (October 9, 2017).
“Lexmark Creates Problems for Licensors and Sellers of Patented Products,” Fish Litigation Blog (October 2, 2017).
Speaker and Author, 2017 Patent Antitrust Update, State Bar of Texas Advanced Patent Law Conference (July 20, 2017).
“Can Good Behavior Avoid Bad Consequences Under Halo,” State Bar of Texas Advances Patent Law Seminar (July 2016).
“Arbitration in Technology Law,” UT Advanced Technology Law Seminar (May 2016).
“Damages Update” and “Damages Roundtable,” UT Advanced Patent Law Seminar (November 2016).
“Recent Developments in Technology Law,” UT Law 28th Annual Technology Conference (May 22, 2015).
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 Webinar 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.
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
2011, Seminar Presentation 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, 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, Ms. 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 and patent claims at University of California-Berkeley’s advanced patent law seminar in San Jose, California, on re-examination strategy in litigation at George Mason University-University of Texas’s advanced patent law seminar at the USPTO, and on patent pools, standards, and unfair competition and antitrust, at the state bar of Texas seminars. She has also done private seminars on patent damages and standard-setting for international corporations.
Representative Intellectual Property Litigation
Prevailed for ION Geophysical in post-trial motions and on appeal eliminating approximately $100 million for damages for foreign use.
Prevailed in getting litigation stayed as scheduling conference in Chart Trading v. TradeStation Group, et al. (E.D. Tex. 2016)
Prevailed in getting litigation stayed pending CBMs in Trading Technologies Int’l v. TradeStation Group, et al. (N.D. Ill. 2016)
Prevailed in litigation stay pre-answer in Trading Technology Int’t v. TradeStation Group, et al. (S.D. Fl. 2016).
Prevailed in dismissal on appeal of multiple trade secret, patent and copyright matters arising out of third-party payor claims administration systems and software in Nexpay v. Gilman.
Represented Cyberonics, Inc. in licensing dispute involving medical device patents.
Represented Drilformance LLC in licensing matters.
Represented smartphone manufacturer on standard-setting issues.
Represented electronic device maker on patent pool issues.
Represented LG and Zenith in patent lawsuits on television technology in N.D. Ill., E.D. Tex., and N.D. Cal.
Represented BMC in patent lawsuit on security software.
Represented McAfee in multiple lawsuits on antivirus software.
Represented LG in ICCC arbitration over patent license fees.
Represented LG Electronics in a patent lawsuit on plasma displays.
Represented Adobe in multiple patent infringement cases involving distributed computing patents.
Represented manufacturer of music players and smartphones in multiple cases on software.
Represented 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.
Represented Samsung in Texas State Court fraud and antitrust cases involving licensing and standard-setting for DRAMs.
Represented Samsung in multiple ICC arbitrations over smartphones.
Acted as General Counsel for the University of Texas group in establishing and managing a standard-setting group in the chemical and oil refinery construction industry.
Represented Kvaerner in an antitrust and unfair competition case over patents alleged against standards for offshore oil exploration equipment.
Represented Samsung in ITC and Federal Court litigation over patents asserted against ETSI standards for wireless communications.
Represented Samsung in licensing negotiations over CDMA and WCDMA wireless technology.
Represented Samsung in licensing involving NAND Flash Memory.
Represented Exxon-Mobil in defense of a patent lawsuit against configuration of undersea pipelines.
Represented Exxon-Mobil in licensing and trade secret disputes involving chemical catalysts.
Represented Exxon-Mobil in patent litigation over chemical filters.
Represented William Riles against Amerada Hess over patent for installation of offshore drilling platform.
Represented physician in negotiations, arbitrations, and lawsuits over medical device patents.
Represented Microsoft in multiple patent lawsuits involving Windows, Office, email.Represented Samsung in a trade secret lawsuit in trial and interlocutory appeal involving “third generation switching” telephony technology.
Represented Lexar Media in trade secret and patent lawsuits against Toshiba on NAND Flash Memory technology.
Represented Samsung in trial and appeal in a patent lawsuit on amorphous silicon decided on inequitable conduct.
Represented NetIQ in AAA arbitration over computer software patents.
Represented TitleData in copyright and trade secret licensing and regulatory matters against State of Texas.
Represented computer Associates in computer software copyright litigation.
Represented Sony Music in formulating new legal strategy for confirmation of contracts with underage performers (Destiny’s Child).
Other Representative Litigation
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.
Recognized as a World Intellectual Property Review Leader (2021).
Recognized as a “Top Women in IP” by Texas Lawyer (2020).
Named “Lawyer of the Year” by The Best Lawyers in America© for Litigation – Intellectual Property (2021).
Named a WIPR “Influential Woman in IP” (2019).
Recognized as an “IP Star” by Managing Intellectual Property (2013-2020).
Recognized in IAM Patent 1000 – “The World’s Leading Patent Professionals” (2016-2020).
Rated AV Preeminent by Martindale-Hubbell, highest possible rating for both legal ability and ethical standards (2019).
Recognized as a “Stand Out Lawyer” by Acritas (2018).
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.
Ranked for Intellectual Property by Chambers Global, since 2008.
Listed in Best Lawyers in America, for Intellectual Property Litigation, Patent Litigation, and Patent Law (2007-2021).
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.
“DJ is a very effective advocate for her clients.”
— Client testimonial, 2021 Chambers and Partners USA
“She’s a go-to for big strategy thinking. She has a very good knowledge of the law and an ability to outthink everybody.”
— Client testimonial, 2020 Chambers and Partners USA
“Healey stands out for her trial and arbitration experience and dual patent and unfair competition expertise.”
— Client testimonial, 2019 IAM Patent 1000
- IP Licensing, Transactions, and Agreements
- Commercial Litigation
- ITC Litigation
- Patent Litigation
- Trade Secret Litigation
Certificate, Advanced Arbitration Skills, University of Houston Law Center (2016) A.A. White Dispute Resolution Center
J.D. with honors, University of Texas Law School (1985)
B.A., Brown University (1982)
- Texas 1985
- Supreme Court of the United States
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Second Circuit
- U.S. Court of Appeals for the Fourth Circuit
- U.S. Court of Appeals for the Fifth Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Southern District of Texas
- U.S. District Court for the Western District of Texas
U.S. District Court for the Southern District of Texas, The Honorable James DeAnda, 1985 - 1987
Board of Directors, Stonewall Law Association of Greater Houston
Houston Intellectual Property Inn of Court, Founding Member and Treasurer
Chairperson, Pride and Allies Subcommittee, IPO Diversity and Inclusion Committee 2020-present
Chairperson, Women in IP Committee, State Bar of Texas Intellectual Property Section 2020-present
LGBT Bar Association, Justice Council Member 2017-present
Planning Committee and program co-chair, University of Texas Technology Law Conference (May 25, 2017)
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
May 26, 2021
Fish & Richardson Ranks in Top “Band 1” Nationwide Rankings for Intellectual Property and ITC Practices in Chambers USA 2021
May 26th, 2021 | 1:30 pm CDT
34th Annual Technology Law Conference
November 5th, 2020 | 8:00 am CDT
UT Law’s 25th Annual Advanced Patent Law Institute
October 15, 2020
Antitrust Issues with "No-Poaching" Agreements
September 22, 2020
DJ Healey Named to the 2020 “Top Women in IP” list by Texas Lawyer
September 21st, 2020
2020 IPO Annual Meeting
August 12, 2020
Fish & Richardson Receives Top “Gold” Ranking from IAM Patent 1000 for National Litigation Practice; National Rankings in the Plaintiff Firm and Prosecution Firm Categories
August 4, 2020
32 Fish & Richardson Attorneys Named 2020 “IP Stars” by Managing Intellectual Property Magazine
June 2, 2020
Fish & Richardson Receives Top “Band 1” National Rankings for Intellectual Property and ITC Practices in Chambers USA 2020
June 25th, 2020 | 1:30 pm EDT
Webinar | Solutions to Pandemic Patent License Problems: Impracticability, Frustration, Impossibility and Force Majeure for IP Lawyers
May 21st, 2020
UT Law CLE Technology Law Conference
March 18, 2020
How COVID-19 May Impact Your Contracts: Force Majeure, Impossibility of Performance, and Commercial Impracticability
Author: DJ Healey