Robert W. Morris

Member

Overview

Robert Morris focuses his practice on patent litigation, patent prosecution, and licensing. He is experienced in patent and trade secret litigation matters covering various technologies, such as semiconductor processing, semiconductor memory devices, computer systems, hard drives, and liquid crystal displays.

For more than 15 years, Robert has been trial counsel in numerous patent, trade secret, and other commercial litigations relating to semiconductor processing technology, high-technology electronics, computer systems and software, and various other technologies. He also regularly acts as counsel to clients concerning licensing opportunities, patent validity and infringement, and patent prosecution.

In addition to Robert’s extensive litigation experience, he has for over 20 years been managing complex U.S. and international patent portfolios, while providing overall counseling for the management of intellectual property assets. In this regard, he also provides counseling related to opinion work, intellectual property licensing, and product clearances.

Representative Matters

  • Chatwal Hotels & Resorts LLC v. The Dollywood Company et al., (SDNY) Served as lead counsel in representation of Chatwal in a trademark infringement action related to the DreamMore Resort.
  • Echo Design Group, Inc. v. Fownes Brothers (N.D.N.Y) Served as lead counsel in the defense of Fownes Brothers in a patent infringement action related to touch-screen glove technology.
  • MiniFrame v. Microsoft (S.D.N.Y.) Served as lead counsel in representation of MiniFrame in an antitrust action related to computer systems.
  • CardXX, Inc. v. Dynamics Inc., et al. (W.D. Wash.) Served as lead counsel in the defense of Dynamics in a patent infringement action related to smart banking cards (case was dismissed).
  • Fownes Brothers v. GLT et al. (S.D.N.Y.) Served as lead counsel in the representation of Fownes Brothers in a Lanham Act action concerning false and misleading statements concerning touch-screen gloves (case settled).
  • GLT v. Fownes Brothers (N.D. Cal.) Served as lead counsel in the defense of Fownes Brothers in a breach of contract and trade secret misappropriation action related to touch-screen glove technology (case was dismissed/transferred & consolidated).
  • OPTi v. AMD (E.D. Tex.) Served as lead counsel in the defense of AMD at trial in a patent infringement action relating to pre-snooping memory in computer systems (case settled at trial).
  • OPTi v. AMD et al. (E.D. Tex.) Served as lead counsel in the defense of AMD in a patent infringement action originally filed against eight defendants relating to the use of Intel’s Low Pin Count (LPC) industry standard (case settled).
  • MediaTek v. Sanyo (E.D. Tex.)/Sanyo v. MediaTek (C.D. Cal.) — Managed Sanyo’s defense in the Texas patent infringement action filed by MediaTek related to, among other technologies, the creation of MPEG videos in digital cameras; achieved favorable global settlement of both litigations.
  • Saifun Semiconductor v. AMD & Fujitsu (S.D.N.Y.) — Represented Saifun in an action for patent infringement and trade secret misappropriation related to storing multiple bits of data in a single memory cell, including transistor level design and semiconductor processing technology; case settled favorably for Saifun.
  • Truss Technology v. Boucherand et al. (E.D. Mich.) Served as lead counsel in the representation of Truss Technology in a patent infringement action related to processes and equipment for making housing roof trusses; achieved favorable settlement for Truss Technology.
  • Georgia-Pacific v. British Plaster Board (D. Del.) — Represented Georgia-Pacific in a patent infringement action related to fiberglass coated exterior wall boards that are used in building applications; case settled favorably for Georgia-Pacific.
  • Neles-Jamsbury v. Fisher Controls (D. Mass.) — Defended Fisher Controls in a patent infringement action related to noise attenuation devices in ball valves; case ended with a finding of “No Infringement” after a two week trial.
  • Convolve & MIT v. Compaq & Seagate (S.D.N.Y.) — Defended Compaq in a multiparty patent infringement and trade secret misappropriation action related to hard drive operation and user interfaces; case is still pending at another firm.
  • Plasma Physics/Solar Physics litigations (E.D.N.Y.) — Represented Plasma Physics and Solar Physics in a series of patent infringement actions related to semiconductor processing and LCD fabrication against various companies including: Analog Devices, AMD, Hitachi, Hynix, IBM, Intel, LG Group, Matsushita, Mitsubishi, NEC, Samsung, Sharp, Sony, ST Microelectronics, Texas Instruments and Toshiba; actions settled favorably for PlasmaPhysics and Solar Physics.
  • Multi-Tech v. Compaq et al. (D. Minn.) — Defended Compaq in a multi-defendant patent infringement action related to VoIP communications; action was dismissed with prejudice.
  • College Savings Bank v. Florida Postsecondary Education Expense Board (D.N.J.) — Represented College Savings Bank in a patent infringement action brought against the state of Florida in a case that went to the United States Supreme Court; the inventions at issue in the case were the basis for the creation of the various 529 College Savings Plans that are now offered throughout the country.

Professional Affiliations

  • American Bar Association
  • New York Intellectual Property Law Association

Community Involvement

  • Beth El Synagogue Center of New Rochelle, Counsel and Member of the Board of Trustees 

Awards and Recognition:

  • Selected for inclusion in New York Super Lawyers in the area of intellectual property litigation

Featured:

Robert Morris discusses issues relating to USPTO releasing APIs (IPWatchdog)

Is Apple V. Samsung The Beginning Of The End For Patents? (Law360)

News and Insights

Publications:

  • “R-E-L-A-X: We Can Still Patent Software, But Don’t Expect A Clear Test Anytime Soon,” co-authored for LawyerIssue, January 2017.
  • “Is Apple V. Samsung The Beginning Of The End For Patents?” co-authored, Law360, March 2016.
  • “The ‘On Sale’ Bar After Pfaff,” Intellectual Property Strategist, October 2009.

Speaking Engagements:

  • “Best Practices for Protection of Software and Business Methods Post-Alice,” co-presenter, Clear Law Institute webinar, November 2016.
  • What to do When Facing a Patent Infringement Lawsuit,” presenter, Eckert Seamans’ Continuing Legal Education Seminar, August 2016.

Media Coverage:

  • “How ‘The Donald’ Does Intellectual Property,” IP Watchdog, March 2017.
  • “What Will Happen When the USPTO Releases its APIs to the Wild?” IP Watchdog, June 2016.
  • “Microsoft Asks High Court To Reject Antitrust Suit,” Law360, August 2014.
  • “New Challenges in the Proposed Patent Reform Act of 2011,” Metropolitan Corporate Counsel, April 2011.