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Danielle (DJ) Healey
Partner
Overview
Danielle “DJ” Healey has been recognized by Chambers Global, Chambers U.S., Best Lawyers in America, IAM, and Super Lawyers as one of the preeminent intellectual property litigators in the U.S. She has over 30 years of experience in planning and executing enforcement strategies and counter-strategies in Federal and State Courts, the ITC, the FTC, European Courts, and the European Commission.
DJ has put together lawsuits for plaintiffs to enforce their patents, protect their trade secrets, defend their copyrights, and to deal with overreaching by others through antitrust and other business torts. She has worked with defendants to efficiently and effectively navigate their intellectual property and related antitrust problems, in some cases saving her clients billions of dollars.
With clients ranging from large corporations to individual inventors and entrepreneurs, DJ has done and won trade secret lawsuits in state and federal courts in California and Texas, prosecuted and defended patent and antitrust lawsuits in every district in Texas, in the Northern District of Illinois, the Northern and Central Districts of California, the District of Colorado, the District of Connecticut, the District of Delaware, the Southern District of New York, the Western District of Oregon, the Western District of Washington, and the Eastern District of Virginia, as well as at the ITC. She has negotiated patent licenses in the semiconductor and software industries, represented clients in dealing with obligations and licensing in standard-setting organizations, served as general counsel to a standard-setting group, worked on organization of standard-setting groups, and litigated the substantive and anticompetitive effects of licenses in court, arbitration, and administrative agency hearings. She has also tried cases in U.S. District Courts, state courts, the U.S. International Trade Commission, the International Chamber of Commerce (arbitration), the American Arbitration Association, the National Association of Securities Dealers Arbitration Forum, and private arbitration.
DJ was also counsel in a seminal U.S. Supreme Court decision on international patent enforcement and remedies. She has argued appeals in the Federal Circuit, Fourth Circuit, and Fifth Circuit Courts of Appeals, as well as the Texas Supreme Court and Texas Intermediate Courts of Appeals.
In addition to her legal practice, DJ continues to build a profile as a highly respected thought leader as an active speaker and author on trade secrets, patent extraterritorial liability, patent damages, IP-related antitrust law, arbitration, and mediation. She also helped found the Houston IP Inn of Court, she was a director the Eastern District of Texas Bar Association, she worked with the Judges of the Southern District of Texas to draft its patent rules, and has had an active pro bono practice working with the ACLU, MALDEF, Lambda Legal, RAICES, Tahirih, and Immigration Equality among other groups.
Prior to joining Spencer Fane, DJ was a principal in an international patent litigation boutique firm. She also completed a clerkship for the Hon. James DeAnda in the U.S. District Court for the Southern District of Texas.
Credentials
Education
- The University of Texas School of Law, 1985 (J.D.), with honors
- Brown University, 1982 (B.A.)
- University of Houston Law Center – A.A. White Dispute Resolution Center (Certificate of Advanced Arbitration Skills)
Court Admissions
- U.S. Supreme Court
- 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 District of Colorado
- 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
- Won a trade secret case in California State Court over computer memory technology for several hundred million in damages.
- Tried to conclusion and won an arbitration over rights to telecommunications technology saving client nearly $500 million in damages.
- Worked with Lambda Legal on the groundbreaking lawsuit for LGBTQ employment protection, Hively v. Ivy Tech on remand to the district court.
- Served as one of the drafters of the ABA Dispute Resolution Committee’s proposed rules for self-administered arbitrations. Was also involved in drafting resolutions for ABA committees.
- Co-authored the American Bar Association’s objections to the Florida Bar Association’s ruling rejecting diversity requirements for CLE programs, as well as ABA’s positions on transgender rights.
- Prevailed on summary judgment in a trade secret lawsuit involving software for compression of written materials, resulting in a multi-million dollar settlement.
- Prevailed in a patent lawsuit on multiple summary judgement motions by a medical device manufacturer and by excluding experts from testifying resulting in the physician-inventor obtaining the second biggest settlement in a patent case in the Eastern District of Texas at the time.
- Prevailed in a patent lawsuit against major beauty product brands for an inventor resulting in a settlement of millions dollars.
- Won reversal of a preliminary injunction and dismissal by Federal Circuit of a lawsuit involving copyrights, trade secrets and patent claims over computer software in a complete defense victory.
- Prevailed as post-verdict counsel for a defendant in post-trial motions eliminating hundreds of millions of supplemental damages, and limiting exemplary damages to a small percentage of the verdict.
- Represented a major technology company 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 U.S. District Courts for Northern District of California and Eastern District of Virginia, Delaware Chancery Court, the FTC, and the European Union.
- Represented a major technology company in multi-jurisdictional litigation involving memories, including claims for patent infringement, breach of contract, fraud, and antitrust violations in standard-setting in Texas State Court and federal courts in the Eastern District of Texas, saving client billions of license payments.
- Represented major telecommunications equipment company in ITC in first trial of a fair, reasonable and non-discriminatory royalty and standard-setting defense.
- Represented name-brand technology companies in patent lawsuits on television technology in multiple federal courts.
- Represented electronic trading company and won Patent Trial and Appeal Board proceedings and appeals to the federal circuit, resulting in a settlement for client.
- Represented a company in multiple lawsuits on antivirus software.
- Represented a company in multiple patent infringement cases involving distributed computing patents.
- Represented a manufacturer of music players and smartphones in multiple cases on software.
- Represented clients in transactions involving intellectual property transfers, tax structures for intellectual property
- Represented a major technology company in a Texas state court fraud and antitrust case involving licensing and standard-setting for DRAMs.
- Represented a major technology company in multiple ICC arbitrations over smartphones.
- Acted as General Counsel for a state university system in establishing and managing a standard-setting group in the chemical and oil refinery construction industry.
- Represented a company in an antitrust and unfair competition case over patents alleged against standards for offshore oil exploration equipment.
- Represented a major technology company in ITC and Federal Court litigation over patents asserted against ETSI standards for wireless communications.
- Represented a major technology company in licensing negotiations over CDMA and WCDMA wireless technology.
- Represented a major technology company in licensing involving NAND flash memory.
- Represented major oil and gas company in defense of a patent lawsuit against configuration of undersea pipelines.
- Represented major oil and gas company in licensing and trade secret disputes involving chemical catalysts.
- Represented a major oil and gas company in patent litigation over chemical filters.
- Represented a client in a patent matter involving installation of offshore drilling platform.
- Represented a physician in negotiations, arbitrations, and lawsuits over medical device patents.
- Represented a major software developer in multiple patent lawsuits involving computer programs.
- Represented a major technology company in a trade secret lawsuit in trial and interlocutory appeal involving “third generation switching” telephone technology.
- Represented a company in trade secret and patent lawsuits against major competing technology companies.
- Represented a major technology company in trial and appeal in a patent lawsuit on amorphous silicon decided on inequitable conduct.
- Represented a company in AAA arbitration over computer software patents.
- Represented a company in copyright and trade secret licensing and regulatory matters against the state of Texas.
- Represented a company in computer software copyright litigation.
- Represented a major music recording label in formulating new legal strategy for confirmation of contracts with underage performers.
- Represented respondents in a Texas Supreme Court First Amendment lawsuit.
- Represented a lawyer on certain substantive constitutional issues as part of the defense of a multicount RICO indictment.
- Represented a group of insurance companies in over 50 class actions involving antitrust, consumer protection (credit scoring, claims management practices, pricing, and underwriting), and state regulatory issues from 1987-2005.
- Represented a company in construction and trade secret litigation.
- Represented a major multimedia news provider in tax litigation as well as unfair competition litigation in Texas state trial and appellate courts.
- Represented a company in numerous securities arbitrations.
- Represented organizations in cases involving statutes to prohibit rental of housing based on immigration status.
- Represented an individual in a lawsuit against State Bar of Texas.
- Represented a company in a trial against FDIC.
- Represented a major transportation company in a trial against NLRB.
- Represented an organization in a securities case in trial court and interlocutory appeal against two individual companies.
- Houston Business Journal, Diversity in Business Award, 2023
- Best Lawyers in America, 2007-present
- Best Lawyers in America, Lawyer of the Year, Intellectual Property Litigation, 2021
- Chambers Global, 2021-present
- Chambers USA, Texas, Band 1, 2008-present,
- Martindale-Hubbell, AV Preeminent Lawyer, 2013-present
- IAM Patent 1000, 2011-2022
- Texas Super Lawyers, 2003-2021
- World Intellectual Property Organization (WIPO), Diversity Champion, 2021
- World Intellectual Property Review, Leader, 2021
- Texas Lawyer, Top Women in Intellectual Property, 2020
- World Intellectual Property Review, Influential Women in IP, 2019
- Acritas Standout Lawyer, 2018
- Managing Intellectual Property, IP Star, 2013-2022
- Houston Business Journal, Women Who Mean Business Award, 2019
- Texas Lawyer, Top Five Go-To Intellectual Property Lawyers in Texas, 2002, 2007
- The Judge Nancy J. Atlas IP Inn of Court (Houston), Charter Member; Former Officer
- State Bar of Texas, IP Section, Former Chairperson; Women and IP Committee; Antitrust Committee
- Intellectual Property Owners, Pride and Allies Resource Group, Former Chair & Co-Chair
- Houston Intellectual Property Association, Former Co-Chair Amicus Committee; Diversity Committee
- Stonewall Bar Association, Director
- National LGBTQ Bar Association, Justice Circle Member
- State Bar of Texas, Intellectual Property Section, Former Committee Chairman
- Intellectual Property Owner’s Association
- “Anti-Suit Injunctions And International Patent Litigation,” State Bar of Texas CLE Advanced Patent Law, June 10, 2021
- “Employees, Trade Secrets, and Antitrust,” University of Texas Technology Law Seminar, May 26, 2021
- “Talk on being Transgender in Law Practice,” Nancy J. Atlas Houston IP Inn of Court, March 24, 2021
- “They Certainly Don’t See Trans-People as People: Trans-Lawyers Discuss Their Fight for Acceptance-in-the-Legal Industry,” Law.com, March 11, 2021
- “Early Morning Session: Presented by Women in IP – Dance Like Nobody’s Watching: How To Create An Inclusive Work Environment To Foster Growth Of A Diverse Workforce,” 58th Annual Conference On Intellectual Property Law, Institute for Law and Technology, November 2020
- “Antitrust 2020: Changing Politics, Technology and Problems Have Caused Upheaval! A RealTime Presentation of Disruption in Antitrust and Competition Law”, University of Texas Advanced Patent Law Seminar, November 2020
- “Bankruptcy in the United States,” BuzzFeed’s IP Legal Department, October 12, 2020
- “Trade Secret Update, DTSA),” 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?” American Bar Association – 2020 IP Fall Institute, September 30, 2020
- “Antitrust 2020: Changing Politics, Technology, and Problems have caused Upheaval! A RealTime Presentation of Disruption in Antitrust and Competition Law,” University of Texas Technology Law Conference, May 26, 2020
- “Antitrust,” 20th Annual Berkeley-Stanford Advanced Patent Law Institute: Silicon Valley, December 2019
- “Case Law and Regulatory Antitrust Developments Post-Actavis,” University of Texas Advanced Patent Law Seminar, November 2019
- “Protecting Your Trade Secrets in a Recession,” Corporate Counsel, September 30, 2019
- “IP Workshop, Digital Currency Panel,” National LGBT Bar Lavender Law, August 10, 2019
- “Before, During and After: What are an employer’s responsibilities when an employee transitions gender?” National LGBT Bar Lavender Law, August 8, 2019
- “Key Litigation Finance Strategies for Patent Practitioners – Practising Law Institute,” Practicing Law Institute, July 26, 2019
- “Trade Secret Law For Software IP Protection,” University of Texas Technology Law Conference, May 2019
- “Extraterritoriality After WesternGeco,” Intellectual Property Owners Assoc. Webinar, January 2019
- “Extraterritoriality: When Acts Overseas Create Liability under U.S. Patent Law,” University of Texas Advanced Patent Law Seminar, November 2018
- “Negotiation Ethics,” Licensing Executives Society 2018 Annual Meeting, October 2018
- “Patent Damages,” ABA IP Law West Seminar, October 2018
- “Shifting Landscape of Technology & Innovation Protection and the Expanding Role of the PTAB and the ITC”, Exxon-Mobil IP Legal Department Retreat, October 2018
- “2017 – 2018 Patent Law Update,” Lavender Law IP Workshop, August 10, 2018
- “Transition and Transvisibility in Law Firms: Handling the Transition and Practicing After Transition,” National LGBTQ Bar Association, August 8, 2018
- “Transgender: What is it and How is it to Live and Practice Law as a Transgender Woman,” Weatherford International, June 2018
- “Application of U.S. IP Law to Exports, Offshore, on the Outer-Continental Shelf, the High Seas and Overseas,” Second Energy Industry Intellectual Property Law Conference, Houston, Texas, March 22, 2018
- “Presentation on Law of Indemnity,” Intel Legal Department, Patent Law Group, January 11, 2018
- “Licensing Standard Essential Patents and Protecting IP Rights,” Strafford Webinar, November 21, 2017
- “Impression Products v. Lexmark: How Can Sellers Protect Themselves After Their Patent Rights Are Exhausted? Two Examples and One Warning,” JD Supra, November 17, 2017
- “Global Patent Licensing and Enforcement, Including Patent Exhaustion and the Role of the Impression Products v. Lexmark Decision,” Stanford Law School, Patent Law in Global Perspective Seminar, October 20, 2017
- “ADR in IP,” Houston Intellectual Property Law Association’s 33rd Annual Institute on Intellectual Property Law, October 6, 2017
- “Intersection of Antitrust and Patent Law,” State Bar of Texas Advanced Patent Law Conference, July 20, 2017
- “Damages Update” and “Damages Roundtable,” University of Texas Advanced Patent Law Seminar, November 2016
- “Can Good Behavior Avoid Bad Consequences Under Halo,” State Bar of Texas Advanced Patent Law Seminar, July 2016
- “Arbitration in Technology Law,” University of Texas Technology Law Seminar, May 2016