Concentration

Patent, trademark, copyright and trade secret litigation; patent prosecution; product clearance; and licensing matters

Summary

Paul Morico has broad experience in all areas of intellectual property litigation, including patent, trademark, copyright and trade secret litigation. Mr. Morico has litigated intellectual property cases in federal courts throughout the United States and before the International Trade Commission and Board of Patent Appeals and Interferences. He represents clients in disputes involving a variety of technologies that include mechanical devices, semiconductors and plant genetics.

Mr. Morico handles patent prosecution involving an equally wide array of technologies. He also has vast experience in conducting product clearance evaluations and managing intellectual property-related transactions, including counseling clients on licensing and transfers of intellectual property and on intellectual property aspects of corporate transactions, including conducting related due diligence reviews.

Representative Engagements

• Ronald Voglewede v. Wook Yong Lee et al. (Board of Patent Appeals and Interferences) - Lead counsel for Whirlpool in two interferences against LG involving patents directed to ice and water dispensing systems for residential refrigerators.
• LG Electronics et al. (District of Delaware) – Represented Whirlpool and its subsidiary Maytag in a 7-day jury trial involving patents directed to residential refrigerators,
• In re Certain Refrigerators and Components thereof (USITC) Represented Whirlpool and its subsidiary Maytag in a five-day hearing before the International Trade Commission in a patent case relating to residential refrigerators.
• Innovative Global Systems, L.L.C. v. Turnpike Global Tech, LLC et al. (Eastern District of Texas) Defended Cadec Global in patent infringement case involving vehicle communication systems.
• Fotomedia v. AOL LLC et al. (Eastern District of Texas) Defended Yahoo! in a patent infringement case involving photo sharing website technology.
• Virtual Sales Assistant vs. Western and Southern Life Insurance Co. (Western District of Texas) Represented defendant in copyright infringement action involving alleged copyrighted financial planning forms.
• Alcatel USA Resources, Inc. v. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent & Trademark Office (Eastern District of Virginia) Represented Alcatel in an APA action against the United States Patent and Trademark Office (USPTO) in a facial challenge to the USPTO's interpretation of the applicability of the inter partes reexamination statute to continuation applications filed after the effective date of the statute based on original applications filed before the effective date of the statute.
• Emergis Technologies, Inc. v. Midwest Energy, Inc. et al. (District of Kansas) Represented defendant Cable One, Inc., in a patent infringement suit involving electronic invoicing and payment systems.
• Rainforest Cafe, Inc. v. Walgreens, et al. (Southern District of Texas) Represented plaintiff Rainforest Cafe in a copyright infringement action involving plaintiff's stuffed tree frog dolls. 
• Emi-Tech, Inc. v. Champion Engineering, et al. (Eastern District of Texas) Tried trade secret misappropriation case for Emi-Tech in an action involving a leak detection system. Obtained a verdict for Emi-Tech, which included an award of punitive damages.
• Plant Genetic Sys NV v. Dekalb Genetics Corp. (District of Connecticut) Represented accused infringer in a patent infringement action involving genetically engineered crops.
• Garver, et al. v. Illinois Tool Works Inc. (Eastern District of Michigan) Represented three inventors against Illinois Tool Works in a patent infringement case involving automotive fasteners.
• Esterline Tech Corp., et al. v. H&L Accessory Inc. (Western District of Washington) Represented trademark infringement defendant in a case involving repaired aircraft components.
• Represented a consortium of Malaysian companies investigating various technologies for development in Malaysia in a project lead by the Malaysian prime minister.

Publications, Speeches and Presentations

Publications

• "Nakamura Case Presents Opportunity for Novel Litigation Strategies," The IP Litigator, May/June 2005 (Thomas Morrow, co-author)
• "Shifting the Balance: The Nakamura Case Dramatically Illustrates How Japanese Patent Law Can Sometimes Favor Inventors Over Their Employers—U.S. Inventors Aren't as Lucky," IP Law & Business, June 2004 (Thomas Morrow, co-author)
• "Landmark U.S. Legislation Seeks to Prevent Anticompetitive Use of Pharmaceutical Patents," BNA International World Licensing Law Report, March 2004 (Thomas Morrow, co-author)
• "All Grown Up: A $521 Million Verdict Signals Adulthood for Business Method and Software Patents," IP Law & Business, November 2003 (Thomas Morrow, co-author)
• "Are Prior User Rights Consistent With Federal Patent Policy? The U.S. Considers Legislation to Adopt Prior User Rights," Patent World, April 1996

Speeches and Presentations

• Speaker, Intellectual Property Issues in the Oilfield Services Sector, Oilfield Services Law Conference, Houston, Texas, October 2011 
• Speaker, Opinions of Counsel Post-Seagate, HIPLA/IPIL 27th Annual Institute on Intellectual Property Law, Galveston, Texas, October 2011
• Speaker, Opinions of Counsel Post-Seagate, State Bar of Texas/IP Section Annual Meeting, San Antonio, Texas, June 2011
• Moderator, Litigation Validity: Obviousness and Collateral Challenges, ABA Section of Intellectual Property Law, 25th Annual Conference, Washington, D.C., April 2010
• Moderator, Intellectual Property Panel Discussion, BioHouston Commercialization Conference, Houston, Texas, November, 2005
• "Issues in Filing Foreign Priority Applications," Advanced Patent Prosecution Seminar, American Intellectual Property Law Association, San Francisco, June 2005
• Conference Chair, IP Licensing Nuts & Bolts 2005, Lighthouse Seminar Group, Houston, Texas, March 2005
• Conference Chair, 20th Annual Institute on Intellectual Property Law, Houston Intellectual Property Law Association and University of Houston Law Center, Galveston, Texas, October 2004
• "Recent Developments in Trade Secrets and Patent Infringement Litigation," Federal Bar Association, Houston, Texas, September 2003