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Richard D. Egan  

regan@oepelaw.com  
(512) 347-1611 x15  
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.

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

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

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
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

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

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

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

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

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

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

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

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

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., 6:09-CV-203
Federal District Court for the Eastern District of Texas
Appointed 6/2010 – Magistrate Judge Love

Cheetah Omni LLC v. Verizon Communications et al., 6:09-CV-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-CV-274
Federal District Court for the Eastern District of Texas
Appointed 8/2010 – Judge

Aloft Media, LLC v. Oracle Corporation et al., 6:09-CV-304
Federal District Court for the Eastern District of Texas
Appointed 10/2010 – Magistrate Judge Love

Southwire Company v. Encore Wire Corporation, 6:09-CV-382
Federal District Court for the Eastern District of Texas
Appointed 11/2010 – Judge Davis

Raylon, LLC v. Complus Data Innovations et al., Raylon, LLC v. EZ Tag Corporation et al., 6:09-CV-355 and 6:09-CV-357
Federal District Court for the Eastern District of Texas
Appointed 11/2010 – Judge Davis

Red Hat, Inc. v. Bedrock Computer Technologies, LLC, 6:09-CV-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-CV-12
Federal District Court for the Eastern District of Texas
Appointed 3/2011 – 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

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

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, 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.

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, 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