Mr. Morton is a trial attorney whose complex litigation practice has included an emphasis on patent litigation since 1998. His representation of small companies and inventors has included a number of trial successes including an $89 million judgment against Clear Channel, a $12 million judgment against Apple, and a $7.4 million judgment against Itron. He has also successfully defended companies such as Medtronic, Liberty Mutual and Draeger in patent cases.
Mr. Morton is also the Chair of our Patent Office Trials Group which focuses on the new procedures for patent office trials on patent validity or derivation created by the America Invents Act. Since the passage of the AIA, Mr. Morton has established himself as a thought leader on issues surrounding the Patent Trial and Appeal Board (PTAB), and in 2018, the PTAB instituted the first-ever derivation proceeding on behalf of his client, Andersen Corporation. His past experience as a patent attorney, combined with handling numerous patent litigation disputes with co-pending reexaminations, makes him ideally suited to lead this practice area.
Prior to becoming a lawyer, Mr. Morton saw the patent system from the inventor’s side. While working at 3M Company he co-authored 3 Records of Invention and was a named inventor on U.S. Patent No. 5,858,624, titled Method for assembling planarization and indium-tin-oxide layer on a liquid crystal display color filter with a transfer process.
Finally, Mr. Morton has significant pro bono experience. His work has included several trials including a two-week trial representing a guardian ad litem and successfully terminating parental rights so three children could be adopted into a new and safe home, and a Federal Court bench trial representing a mother accused of international child abduction in a Hague proceeding, and successfully defeating a petition to return her two minor children to their father in Peru because the children would face a grave risk of harm.
Promega Corporation v. Applied Biosystems, LLC, Life Technologies Corporation, and California Institute of Technology: Judge Richard A. Posner ruled in favor of our client, Promega Corporation, in a suit that it initiated against one of its competitors. In an opinion dated June 12, 2013 from the U.S. District Court for the Northern District of Illinois, Judge Posner ruled that certain claims of U.S. Patent No. RE43,096, asserted against Promega, are invalid. Promega prevailed in its arguments that the claims of the ’096 patent were invalid due to the breadth of the claim constructions that Defendants sought and obtained. Certain asserted claims were invalid for lack of written description support. While the patent describes an improvement to DNA sequencing, the breadth of the claims encompassed technologies that Caltech did not invent, including the PCR-based methods on which Promega’s accused products are based. The asserted claims were additionally invalid as anticipated or obvious in view of the prior art, including a prior art patent to Caltech, which expired years ago. Judge Posner also found certain claims invalid for obviousness type double patenting. Defendants appealed various aspects of Judge Posner’s decision and the judgment. Six days after oral argument, the Federal Circuit summarily affirmed the judgment, awarding Promega a complete victory in the case.
Trial counsel in Grantley v. Clear Channel Communications, Inc., a patent infringement case in which a federal jury in the Eastern District of Texas awarded Grantley Corporation $66 million. The jury found that Clear Channel Communications, Inc. infringed on four of Grantley Corporation's patents related to an integrated inventory management system for radio advertising time. The jury also found that the infringement was willful. The verdict was announced on April 22, 2008. On June 11, 2008, the court enhanced the damages by more than $16.5 million, awarded prejudgment interest and entered judgment totaling more than $89 million. The case settled while on appeal under confidential terms.
Trial counsel in Personal Audio LLC v. Apple Inc., a patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages after finding that Apple's iPods infringed our client's patent for an audio player that can download or receive navigable playlists. The verdict was announced on July 8, 2011. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.
Lead counsel for defendant Draeger Safety Inc. in a patent infringement suit brought by Sperian Respiratory Protection U.S.A. in the Central District of California involving Self Contained Breathing Apparatus ("SCBA") for the fire service industry. Following discovery and a Markman hearing, case settled confidentially with no changes made to Draeger Safety's product.
Trial counsel in Itron, Inc. v. Benghiat, a patent infringement lawsuit venued in Minnesota involving computer software claims to an improved utility meter reading device. Itron sued Ralph Benghiat, for a declaration that his patent was invalid, unenforceable and not infringed. In what The National Law Journal later featured as the “Verdict of the Week,” the jury awarded $7.4 million dollars and found willful infringement by Itron. The case settled for $7.9 million following post trial motions. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)
Lead counsel for defendants in Pederson et. al. v. Akona L.L.C. et. al., a patent inventorship, ownership and contract case venued in Minnesota, involving a floor sweeping compound. Obtained a summary judgment ruling such that Akona owed no damages on any theory and any interest Pederson had in the patent as an inventor must be assigned to Akona. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)
Represented defendant in ADE v. KLA-Tencor, a patent infringement case involving silicon wafer surface inspection systems venued in Delaware where ADE sought a nine figure damage award. Prevailed at the summary judgment stage. (Prior to joining Robins, Kaplan, Miller & Ciresi L.L.P.)
Represented mother accused of international child abduction in trial in a federal court trial known as a Hague Convention proceeding. The mother had fled the father in Peru and brought their two minor children to Minnesota. The default in these cases is that the children are returned to their country of habitual residence, and any further proceedings occur there. In this case, the Court found that in light of physical violence toward the mother and others, death threats, and other evidence concerning the children, the children should stay in Minnesota with their mother because returning them to their father in Peru would present a grave risk of physical or psychological harm to the children.
Represented criminal defendant accused of 12 counts of felony theft by swindle of over $35,000 (alleged mortgage fraud) and 1 count of racketeering. Ultimately agreed to a plea bargain shortly before trial.
Represented a woman after her life partner became severely brain damaged following a cardiac arrest. Client sought assistance when her partner’s family tried to cut her out of her partner’s life and out of the life of the daughter they had raised together for the past five years. This representation included a one day guardianship trial as well as related family court and harassment matters. At the end of the representation the client could visit her life partner freely and a neutral guardian was appointed.
Represented the guardian ad litem for three minor children in a termination of parental rights action. Two of the children were conjoined at birth, separated at the Mayo Clinic, and suffered from a number of long-term health issues. When the first was finally released to the parents he suffered severe abuse and injuries including multiple broken bones. The parents and their lawyers and experts argued that the injuries were the result of other congenital defects or disease. After a two-week trial including multiple experts and doctors, radiologists and nurses from the Mayo, as well as other evidence, the court agreed that the parental rights of the parents should be terminated. After the Minnesota Court of Appeals remanded for further findings, and then later affirmed, all three children were adopted by the foster parents who had been caring for them, and are doing well.
Represented Ski for the Blind in a trademark dispute through MAP for Non-Profits.
Represented Anti-Child Porn.Org on a confidential matter. Represented clients in housing court through the Volunteer Lawyers Network.
Represented clients through Legal Assistance to Minnesota Prisoners (LAMP).
- "Lawyers Weigh In On PTAB Cases At The High Court," Law360 (April 24, 2018)
- "PTAB Institutes First Derivation Trial," Managing Intellectual Property (March 28, 2018)
- "Board grants first patent derivation trial to Andersen Corp.," Minnesota Lawyer (March 29, 2018)
- "3 Things To Know As 1st Patent Derivation Gets Underway," Law360 (March 27, 2018)
- "Skilled in the Art Briefing," Law.com (March 23, 2018)
- "PTAB Launches First Derivation Trial," World Intellectual Property Review (March 23, 2018)
- "Burden of Amended Claims Falls to Petitioner, says Federal Circuit," IPPro Patents (October 9, 2017)
- "A Look Back At The Top AIA-Related Decisions Of 2016," Law360 (January 6, 2017)
- "Hedge Fund's AIA Attack Should Have Biotech Cos. Wary," Law360 (March 9, 2015)
The U.S. Patent System
in a Year of Change
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