Paul R. Morico

Deputy Department Chair - Intellectual Property (Firmwide) & Practice Group Chair - Energy Technology Litigation (Firmwide) Partner

paul.morico@bakerbotts.com

Houston

P: +1.713.229.1732 F: +1.713.229.7732
Paul Morico Photo

Paul Morico is the firmwide Deputy Department Chair of the Intellectual Property Section of Baker Botts. Mr. Morico also co-chairs the firm’s Energy IP Practice Group. Mr. Morico has broad experience in all areas of intellectual property litigation, including patent, trademark, copyright and trade secret litigation. He has tried cases in some of the most active patent venues in the United States and before the International Trade Commission.

He has also served as lead counsel in numerous district court actions and in actions before the Board of Patent Appeals and Interferences and the Patent Trial and Appeal Board. His patent office proceeding experience includes serving as lead counsel in interferences, inter partes reviews (its predecessor inter partes reexaminations), ex parte reexaminations and in reissues. He recently received a denial of a Petition for inter partes review on behalf of a patent owner concerning a critical patent owned by a major oil services client. He represents clients in disputes involving a variety of technologies that include mechanical devices, computer software, semiconductors, plant genetics, nanotechnology DNA sequencing and gene therapy-based cancer treatments.

Mr. Morico has over 20 years experience with energy and power-related technologies, including extensive experience with downhole drilling and seismic tools; fracturing; subsea wellheads; risers; on and offshore platforms; on and offshore LNG production facilities; subsea umbilicals; on and offshore pipelines; heavy and light gas turbine engines; and alternative power sources for oil and gas recovery systems.

Mr. Morico also has significant experience in litigating matters in the biotechnology area, including bio-nanopores, DNA sequencing, plant genetics and gene-therapy based cancer treatments.  He has represented start-up companies in this field, established companies, universities and medical institutions.

Mr. Morico also over 25 years experience in patent portfolio development and management, and has practiced extensively before the United States Patent and Trademark Office in an equally wide array of technologies. He has broad 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.

He had the honor of representing a consortium of Malaysian companies investigating various technologies for development in Malaysia in a project initiated by the Malaysian prime minister. Mr. Morico also has experience testifying in connection with his representation of clients before the United States Patent and Trademark Office and in connection with the rendering of legal opinions.

Related Experience

Patent Litigation (District Court Experience)

  • Gensetix, Inc., Plaintiff, and the Board of Regents of the University of Texas System, Involuntary Plaintiff, v. Baylor College of Medicine, Diakonos Research, Ltd., and William K. Decker.  (Southern District of Texas). Defending Baylor College of Medicine in patent infringement action.
  • University of California v. Roger Chen et al. (Northern District of California) Representing University of California in an inventor-ship dispute action brought against a former university researcher and his start-up company.
  • Carrier v. Goodman Global et al. (District of Delaware) Represented Goodman in a 5-day jury trial involving patents directed to residential heating and air conditioning equipment.
  • Whirlpool v. 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.
  • Duco v. Aker Solutions (Southern District of Texas) Lead counsel for Aker Solutions in patent infringement suit involving subsea umbilicals.
  • 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.
  • 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.
  • 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.

Patent Litigation (ITC Experience)

  • In re Certain Single-Molecule Nucleic Acid Sequencing Systems and Regeants, Consumables, and Software for use with Same (Investigation No. 337-TA-1032).  Defending Oxford Nanopore Technology, Ltd. in a patent infringement action brought by Pacific Biosciences of California involving bio-nanopore DNA sequencing devices
  • In re Certain Nanopores and Products Containing Same (Investigation No. 337-TA-991). Represented Oxford Nanopore Technology, Ltd. in an action brought by Illumina, Inc. involving bio-nanopore DNA sequencing devices.
  • In re Certain Refrigerators and Components thereof. Represented Whirlpool and its subsidiary Maytag in a 5-day hearing before the International Trade Commission in a patent case relating to residential refrigerators.
  • In re Certain Dynamic Random Access Memory Devices and Components thereof. Represented Samsung in two ITC actions, one initiated by Samsung against Texas Instruments and a related action initiated by Texas instruments against Samsung in connection with 64M and 256M DRAMs.

Trade Secret and State Court Litigation Experience

  • Transformer Protector Corporation and Philippe Magnier v. Mr. William Kendrick and Sentry DS, Inc. (South District of Texas, Harris County Court) Representing Transformer Protector in false advertising and breach of contract action brought against defendants William Kendrick and Sentry DS, Inc.
  • Swivelpole Group Pty Ltd. v. Swivelpole USA, Ltd. (Harris County Court) Lead counsel in misappropriation of trade secret, unfair competition and trade secret action.
  • 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.

Trademark & Copyright Litigation Experience

  • EIG v. Tudor Pickering (Southern District of Texas) Lead counsel for Tudor Pickering in copyright infringement case involving industry-wide energy publication.
  • 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.
  • 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.
  • Virtual Sales Assistant v. Western and Southern Life Insurance Co. (Western District of Texas) Represented defendant in copyright infringement action involving alleged copyrighted financial planning forms.
  • Defended test preparation company in copyright infringement action filed by College Board.

United States Patent & Trademark Office Proceeding Experience

  • 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.
  • Represented Whirlpool in more than half a dozen inter partes reexaminations and an ex parte reexamination involving patents directed to refrigerator products involved in litigation with LG Electronics.
  • Represent Aker in inter partes reexamination proceeding involving a patent directed to subsea umbilicals involved in litigation with Duco.

Transactional Experience

  • Represent major oil field services company in connection with the filing, prosecution and maintenance of a significant portion of its worldwide patent portfolio.
  • Represent subsea company in connection with the filing, prosecution and management its worldwide patent portfolio.
  • Represented a number of companies in the energy industry in connection with their acquisition of intellectual property assets.

Awards & Community

Recognized for excellence by Best Lawyers (Woodward and White, Inc.), 2014

Recognized for excellence by Houston Business Journal, Who's Who in Energy, 2014

Recognized for excellence by IAM 1000 (Globe Business Media Group), 2014 & 2017

Recognized for excellence by Who's Who Legal: Texas (Law Business Research), 2007-2008

Recognized as a Texas Super Lawyer (Thomson Reuters), 2006-2016

IP Stars, 2014

AV® Peer Review Rated by LexisNexis Martindale-Hubbell

News

Publications, Speeches & Presentations

Events

Recent

Protecting Your IP Assets in a "Technology Divorce"

Joint ventures, licensing agreements and other commercial relationships often center on the sharing of technology. When those relationships end, break down or are abused, the parties often face complex disputes over the use or abuse of proprietary technology.

Global Energy Transitions Summit

Baker Botts and the Center for Energy Studies at Rice University’s Baker Institute are co-hosting the first Global Energy Transitions Summit on Thursday, September 28.