WI-LAN Inc. v. Alcatel-Lucent USA Inc. et al

Filing 156

Joint MOTION to Appoint Expert Technical Advisor by Alcatel-Lucent USA Inc., Ericsson Inc., Exedea INC., HTC America, Inc., HTC Corporation, Sony Ericsson Mobile Communications (USA) Inc., Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, WI-LAN Inc.. (Attachments: # 1 Exhibit A-Richard Egan CV, # 2 Text of Proposed Order)(Fedock, John)

EXHIBIT A

Area of Practice
Mr. Egan has worked extensively as both a neutral and non-neutral in patent litigation matters. He serves as a neutral court appointed technical advisor/special
master for Federal Courts with regard to Markman Hearings and Summary Judgment motions. Mr. Egan’s work as a neutral also includes court appointed mediator
positions in patent litigation matters. As a non-neutral, Mr. Egan serves as an expert
witness with regard to patent matters.

Richard D. Egan
[e-mail] [phone] x15

Education
University of Texas at Austin, J.D., with high
honors, 1991; Order of the Coif; Chancellors;
Associate Editor, Texas Law Review, 1991-1992.
University of Texas at Austin, B.S.E.E., with
highest honors, 1985.

Admissions
State Bar of Texas 1992
U.S. Court of Appeals, Federal Circuit
U.S. District Court, Western, Eastern,
Northern and Southern Districts of Texas
U.S. District Court, Northern District of
California,
Registered to practice before the U.S.
Patent and Trademark Office

Memberships
Travis County and American Bar Associations;
State Bar of Texas; American Intellectual
Property Law Association; Austin Intellectual
Property Law Association

Mr. Egan’s non-litigation work focuses on strategic patent counseling including
patent portfolio evaluations, pre-litigation patent investigations, opinions of counsel,
developing intellectual property strategies for emerging companies, and intellectual
property licensing. In this capacity, he performs defensive counseling for minimizing
intellectual property risk exposure and for responding to patent infringement allegations. He also performs offensive counseling to maximize intellectual property valuations and establish patent enforcement strategies. Mr. Egan also provides patent
litigation support/management assistance and provides expert testimony on patent
matters. A portion of Mr. Egan’s work also relates to patent application drafting and
prosecution.
Mr. Egan has served as a court appointed Technical Advisor to Federal District
Judges in patent litigations, including the following cases:
Tantivy Communications v. Lucent Technologies, 2:04-CV-79
Federal District Court for the Eastern District of Texas
Appointed 5/2005 – Judge Ward
z4 Technologies v. Microsoft Corp. and Autodesk Inc., 2:04-CV-335
Federal District Court for the Eastern District of Texas
Appointed 6/2005 – Judge Davis/Magistrate Judge Guthrie
Toshiba Corp. v. Hynix Semiconductor, 3:04-CV-2392-B
Federal District Court for the Northern District of Texas
Appointed 8/2005 – Judge Boyle
Epic Realm v. Speedera, 2:05-CV-150
Federal District Court for the Eastern District of Texas
Appointed 9/2005 – Magistrate Judge Craven

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ConnecTel v. Cisco Systems, 2:04-CV-396
Federal District Court for the Eastern District of Texas
Appointed 10/2005 – Judge Davis

Colorquick, LLC. v. Eastman Kodak Company, 6:07-CV-390
Federal District Court for the Eastern District of Texas
Appointed 3/2008 – Judge Davis

Epic Realm v. AutoFlex Leasing et al. / Epic Realm v. Franklin
Covey Co., et al., 2:05-CV-163 and 2:05-CV-356
Federal District Court for the Eastern District of Texas,
Appointed 12/2005 – Magistrate Judge Craven

Morris Reese v. AT&T et al., 2:07-CV-219
Federal District Court for the Eastern District of Texas
Appointed 3/2008 – Judge Folsom

Golden Bridge Technology v. Nokia and Lucent Technologies,
2:05-CV-151 Federal District Court for the Eastern District of
Texas - Appointed 1/23/06 – Magistrate Judge Love
Fenner Investments, Ltd. v. Juniper Networks, Inc. et al.,
2:05-CV-5 Federal District Court for the Eastern District
of Texas - Appointed 1/23/06 – Magistrate Judge Love
Advanced Neuromodulation Systems v. Advanced Bionics,
4:04-CV-131 Federal District Court for the Eastern District
of Texas - Appointed 6/20/06 – Judge Schell
Mediatek, Inc. v. Sanyo, 6:05-CV-323 Federal District Court
for the Eastern District of Texas Appointed 9/18/06 – Judge Davis
Biax Corp. v. Intel Corp. and Analog Devices Inc.,
2:05-CV-00184 Federal District Court for the Eastern
District of Texas - Appointed 10/18/06 – Judge Ward
Reid v. General Motors Corp., 2:05-CV-401, 2:07-CV-19
Federal District Court for the Eastern District of Texas
Appointed 4/2007 – Judge Folsom
Pioneer Corp. v. Samsung SDI Co., Ltd., 06-CV-384
Federal District Court for the Eastern District of Texas
Appointed 8/2007 – Judge Folsom
Garmin Ltd v. Tomtom, Inc., 2:06-CV-338
Federal District Court for the Eastern District of Texas
Appointed 8/2007 – Judge Davis
Input/Output, Inc., et al., v. Sercel, Inc., 5:06-CV-00236
Federal District Court for the Eastern District of Texas
Appointed 9/2007 – Magistrate Judge Craven
Gwin, Inc. v. Don Best Sports et al., 2:06-CV-318
Federal District Court for the Eastern District of Texas
Appointed 10/2007 – Judge Davis
Web Telephony v. Bell Atlantic Communications, Inc. et al.,
2:07-CV-85 Federal District Court for the Eastern District
of Texas - Appointed 11/2007 – Judge Folsom
RFID World Ltd. v. Wal-Mart Stores, Inc. et al., 2:07-CV-85
Federal District Court for the Eastern District of Texas
Appointed 11/2007 – Judge Davis
Bear Creek Technologies, Inc. v. J2 Global Communications, Inc.,
5:07-CV-00071 Federal District Court for the Eastern District
of Texas - Appointed 1/2008 – Magistrate Judge Craven
Z4 Technologies, Inc. v. Microsoft Corporation, 6:07-CV-00540
Federal District Court for the Eastern District of Texas
Appointed 3/2008 – Judge Davis

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Advanced Technology Incubator v. Sharp Corporation et al.,
2:07-CV-468 Federal District Court for the Eastern District
of Texas - Appointed 4/2008 – Magistrate Judge Bryant
800 Adept, Inc. v. AT&T Mobility, LLC, et al., 5:07-CV-23
800 Adept, Inc. v. Enterprise Rent-A-Car, Company, et al.,
5:07-CV-57 Federal District Court for the Eastern District
of Texas - Appointed 5/2008 – Magistrate Judge Craven
Parallel Networks, LLC. v. Netflix, Inc. et al., 2:07-CV-562
Parallel Networks, LLC. v. Priceline.com, Inc. et al.,
2:08-CV-45 Federal District Court for the Eastern District
of Texas - Appointed 5/2008 – Judge Folsom
Verizon Services Corporation, et al. v. Charter Fiberlink
et al., 5:08-CV-25 Federal District Court for the Eastern
District of Texas - Appointed 6/2008 – Judge Folsom
Lonestar Inventions v. Nintendo of America, 6:07-CV-261
Lonestar Inventions v. Sandisk Corp., 6:07-CV-374
Lonestar Inventions v. Xilinx, 6:07-CV-393
Lonestar Inventions v. Matsushita Electric, 6:08-CV-43
Federal District Court for the Eastern District of Texas
Appointed 8/2008 – Judge Davis
Motorola, Inc. v. Vtech Communications, Inc. et al.,
5:07-CV-171 Federal District Court for the Eastern District
of Texas - Appointed 9/2008 – Magistrate Judge Craven
Linex Technologies, Inc. v. Belkin International et al.,
2:07-CV-222 Federal District Court for the Eastern
District of Texas - Appointed 11/2008 – Judge Davis
Aloft Media, LLC. v. Microsoft Corp., et al., 6:08-CV-50
Federal District Court for the Eastern District of Texas
Appointed 12/2008 – Magistrate Judge Love
Fenner Investment v. 3COM Corporation et al., 6:08-CV-061
Federal District Court for the Eastern District of Texas
Appointed 12/2008 – Magistrate Judge Love
MacLean-Fogg Company v. Eaton Corporation, 2:07-CV-472
Federal District Court for the Eastern District of Texas
Appointed 3/2009 – Judge Davis
Voxpath Networks v. Verizon Business Networks et al.,
4:08-CV-127 Federal District Court for the Eastern District
of Texas - Appointed 5/2009 – Judge Schell
Cheetah Omni v. Samsung Electronics et al., 6:08-CV-279
Federal District Court for the Eastern District of Texas
Appointed 7/2009 – Judge Davis

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Texas Advanced Optoelectronic Solutions v. Intersil
Corporation, 4:08-CV-451 Federal District Court for the
Eastern District of Texas - Appointed 7/2009 – Judge Schell

Southwire Company v. Encore Wire Corporation, 6:09-CV382 Federal District Court for the Eastern District of Texas
Appointed 11/2010 – Judge Davis

Nidec v. LG Innotek, 6:07-CV-108
Federal District Court for the Eastern District of Texas
Appointed 9/2009 – Magistrate Judge Love

Raylon, LLC v. Complus Data Innovations et al., Raylon, LLC
v. EZ Tag Corporation et al., 6:09-CV-355 and 6:09-CV357 Federal District Court for the Eastern District of Texas
Appointed 11/2010 – Judge Davis

Konami Digital v. Harmonix, 6:08-CV-286
Federal District Court for the Eastern District of Texas
Appointed 9/2009 – Magistrate Judge Love
Aloft Media v. Microsoft Corporation, 6:08-CV-51
Federal District Court for the Eastern District of Texas
Appointed 9/2009 – Magistrate Judge Love
Marshall Patent Holdings v. Incomm Holdings, Inc. et
al., 6:08-CV-222 Marshall Patent Holdings v. Ipsmarx
Technology et al., 6:08-CV-75 Federal District Court for the
Eastern District of Texas - Appointed 10/2009 – Judge Davis

Red Hat, Inc. v. Bedrock Computer Technologies, LLC, 6:09CV-549 Federal District Court for the Eastern District of
Texas - Appointed 12/2010 – Magistrate Judge Love
Sipco, LLC v. Datamatic, Ltd. et al., 6:09-CV-532 Federal
District Court for the Eastern District of Texas - Appointed
3/2011 – Magistrate Judge Love
Marshall Packaging Co. v. Pepsico, Inc. et al., 6:10-CV12 Federal District Court for the Eastern District of Texas
Appointed 3/2011 – Judge Davis

Variant, Inc. v. Flexsol Packaging Corp., et al., 6:08-CV-478
Federal District Court for the Eastern District of Texas
Appointed 1/2010 – Judge Davis

Whetstone Electronics, LLC v. Xerox Corporation et al.,
6:10-CV-278 Federal District Court for the Eastern District
of Texas - Appointed 5/2011 – Magistrate Judge Love

Aldav, LLC et al., v. Clear Channel Communications, 6:09CV-170 Federal District Court for the Eastern District of
Texas - Appointed 2/2010 – Magistrate Judge Love

Ceats, Inc. v. Continental Airlines et al., 6:10-CV-120
Federal District Court for the Eastern District of Texas
Appointed 5/2011 – Judge Davis

Dr. Raul Chirife v. St. Jude Medical, Inc., Pacesetter, Inc.,
agent of St. Jude Medical Cardiac Rhythm Management
Division, St. Jude Medical S.C., Inc., 6:08-CV-480 Federal
District Court for the Eastern District of Texas - Appointed
3/2010 – Judge Davis
Fractus, S.A. v. Samsung Electronics Co., Ltd. et al., 6:09CV-203 Federal District Court for the Eastern District of
Texas - Appointed 6/2010 – Magistrate Judge Love
Cheetah Omni LLC v. Verizon Communications et al., 6:09CV-260 Federal District Court for the Eastern District of
Texas - Appointed 7/2010 – Judge Davis
Colorquick v. Vistaprint et al., 6:09-CV-323 Federal District
Court for the Eastern District of Texas - Appointed 7/2010 –
Magistrate Judge Love
Bedrock Computer Technologies v. Softlayer Technologies
et al., 6:09-CV-269 Federal District Court for the Eastern
District of Texas - Appointed 8/2010 – Judge Davis
Southwire Co. v. Encore Wire Corp. et al., 6:09-CV-289
Federal District Court for the Eastern District of Texas Appointed 8/2010 – Judge Davis
Soverain Software v. J.C. Penney Corp. et al., 6:09-CV274 Federal District Court for the Eastern District of Texas
Appointed 8/2010 – Judge Davis
Aloft Media, LLC v. Oracle Corporation et al., 6:09-CV304 Federal District Court for the Eastern District of Texas
Appointed 10/2010 – Magistrate Judge Love

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Mr. Egan has served as a court appointed mediator in
patent litigations, including the following mediations:
Fenner Investments, Ltd. v. Hewlett-Packard Co. and Dell,
Inc., 6:08-CV-273 Federal District Court for the Eastern
District of Texas - Appointed 1/2010 – Magistrate Judge
Love - Fenner-Hewlett-Packard Mediation
Fenner Investments, Ltd. v. Hewlett-Packard Co. and Dell,
Inc., 6:08-CV-273 Federal District Court for the Eastern
District of Texas - Appointed 1/2010 – Magistrate Judge
Love - Fenner-Dell Mediation

Professional Background
Mr. Egan has worked in private practice for over 15 years
focusing on patent matters. Mr. Egan’s current practice
includes a mix of strategic patent counseling and patent
procurement activities.
Mr. Egan has represented clients in negotiations related to
patent enforcement positions and defensive positions. His
work has included the technical and legal analysis related to
patent evaluations and the resolution and licensing related to
such work. Mr. Egan has rendered numerous formal opinions
of counsel for offensive and defensive positions. With regard
to litigation matters, Mr. Egan has provided an in-house
patent counsel role to those clients without in-house patent
counsel. For those clients with in-house patent counsel, he
has provided continued litigation assistance, particularly
with regard to technical positions.
Mr. Egan’s patent procurement activities relate to patent
applications and prosecution for strategic inventions. In this
role, he focuses on the patent applications for an entity’s
initial intellectual property filings. In addition, with regard
to more mature companies he specializes in strategic
applications where intellectual property violations are likely
or where improvements in intellectual property coverage are
desired.
Prior to forming O’Keefe, Egan, Peterman & Enders, LLP, Mr.
Egan was an associate at Arnold, White and Durkee from
1992-1996. In that capacity Mr. Egan was involved primarily
in patent litigation activities. Mr. Egan’s litigation experience
covered a wide range of technical subject areas with an
emphasis in the semiconductor field.
Prior to entering the legal field, Mr. Egan was a development
integration engineer at Advanced Micro Devices from
1985-1989. In that capacity he worked on transferring
new products from research and development into high
volume manufacturing. His experience included both
product engineering and manufacturing engineering. The
primary products he was involved with included non-volatile
memories, static memories, and microcontrollers.

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