Thomas M. Morrow

Tom focuses his practice on IP litigation, with an emphasis in patent and trade secret litigation. Prior to becoming a lawyer, he worked for Amoco as a chemical manufacturing engineer and for Reichhold Chemicals as a senior plant engineer. By education, Tom is a chemical engineer.

Tom is recognized as a “Texas Super Lawyer” in Intellectual Property Litigation by Thomson Reuters. He writes and speaks frequently on IP issues. His publications have addressed defending patent infringement suits, the practice of reverse engineering in compliance with the Digital Millennium Copyright Act, software and business method patents, patent reexamination, the rights of employee-inventors in the U.S. and abroad, fair use in copyright law, and other topics. He has spoken extensively on several areas of copyright and trade secrets law, as well as on IP litigation in the oil and gas industry.

 

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Representative Experience

• Polyzen, Inc. v. RadiaDyne, L.L.C. Won a defense victory and defended it on appeal after a four-day jury trial in Raleigh representing RadiaDyne, the designer of medical balloons used in prostate cancer therapy. Before trial, the court dismissed all patent claims brought by the plaintiff, a medical balloon manufacturer. At trial, the jury unanimously found for our client on plaintiff’s trade secret claim and its claim for unpurchased inventory. The jury also found that plaintiff breached the relevant contract, competed unfairly with our client, and failed to return tooling paid for by RadiaDyne. After a seven-year journey, the case resulted in a judgment for monetary damages for RadiaDyne. The Federal Circuit affirmed all aspects of the district court’s judgment in RadiaDyne’s favor.
• L.C. Eldridge Sales Co, Ltd., et al. v. Azen Manufacturing PTE., LTD., et al. Successfully represented the plaintiff in obtaining a unanimous jury verdict of patent infringement, willful infringement, not invalid, and the full amount of lost profits for the plaintiff in a multi-defendant patent infringement suit concerning engine exhaust systems used on offshore oil rigs. The win is recognized as the #4 Texas IP verdict of 2013 by VerdictSearch.
• Illinois Tool Works v. Independent Ink. Authored an amicus curiae brief for a case that involved IP and antitrust law on behalf of the Houston Intellectual Property Law Association in the U.S. Supreme Court.
• Microsoft Corp v. AT&T Corp. Co-authored a U.S. Supreme Court amicus brief involving the application of 35 U.S.C. § 271(f) to software components of patented products.
• Represented oilfield services companies in several patent infringement cases involving drilling technology, blowout preventers, and casing exit systems.
• Represented companies in several other industries, such as process control systems, internet telephony services, and gift card processing, in patent infringement cases.
• Argued at four Markman hearings.
• Obtained a pay-nothing dismissal with prejudice (pre-Markman) for an oilfield defendant in the Eastern District of Texas.
• Drafted and prosecuted patent applications in a variety of technologies, including oil field drilling, cementing and stimulation; catalyst formulations used in manufacturing polyethylene, tissue-engineering scaffolds, bone-replacement materials and intraocular devices.
• Represented several companies in trade secret litigation.
• Representing a computer reseller in copyright and trademark litigation.
• Represented a magazine publisher in copyright litigation.
• Represented a national nonprofit organization in trademark litigation.

Presentations & Publications

• “Alice’s Wonderland? Software Patents After the Supreme Court’s Alice Corp. Decision,” Valley Lawyer, February 2015
• “The Impact of Alice Corp. v. CLS Bank,” San Fernando Valley Bar Association, IP Section, November 2014
• “Trade Secrets Litigation in the Software Industry,” San Fernando Valley Bar Association, IP Section, January 2014
• “California’s Disclosure Requirement in Trade Secret Litigation,” Valley Lawyer, October 2013
• “Provisional Remedies,” San Fernando Valley Bar Association, Litigation Section, August 2013
• “Challenging Subject-Matter Eligibility In Patent Litigation,” Presented at the State Bar of Texas 26th Annual Advanced Intellectual Property Law Course, 2013
• “Five Ways To Win Patent Litigation,” GE Oil and Gas Views & News, November, 2012 (co-author)
• “Challenging Inventorship In Patent Litigation,” HIPLA Fall Institute, 2012
• “Planning and Preparation for a Patent Infringement Suit,” In-House Texas, Texas Lawyer, January 10, 2011
• “Hot Topics in Trade Secrets,” San Fernando Valley Bar Association, IP Section, June, 2013 (co-presenter)