Morgan was selected for the 2022 award for her career focus on computer hardware and software patent litigation and continuing success related to Section 101 of U.S. patent law—or what is known as the “Alice defense” after the landmark U.S. Supreme Court 2014 decision in Alice Corp. v. CLS Bank International.
In its profile of Morgan, the Daily Journal hails her as “one of the country’s leading experts on what is, and what is not, an abstract idea” under the Alice defense.
As the profile highlights, none of the patents Morgan has challenged in court has been found to be eligible. Owing to this reputation, Morgan is often called upon to draft and argue Alice motions in high-profile patent disputes, and “she regularly helps clients avoid millions of dollars in potential liability by invalidating patents at the pleading stage.”
As the Daily Journal noted, there have been many “twists and turns” to the Alice defense, and Morgan has followed every one of them. For example, the Daily Journal highlighted Morgan’s successful defense of Arlo Technologies against infringement claims for modes of transferring data to the cloud.
Morgan also recently represented GE in invalidating a patent describing a way to collect patient data in varying formats from several medical devices, convert the data to a unified format, and then display it in a graphical user interface. As Morgan stated in the Daily Journal, “That’s an interesting idea, but it’s abstract because the patent didn’t really tell you how to do that.” The patent in question belonged to the University of Florida Research Foundation and also raised a sovereign immunity claim that was likewise defeated.
As Morgan noted, the problem with many software patents is that their claimed inventions are written so broadly, “they don’t really tie it down to a particular technical improvement.”
Overall, Morgan has racked up an impressive string of wins as lead trial counsel, including in “bet-the-company” Patent Trial and Appeal Board (PTAB) proceedings in which she successfully invalidated two NASDAQ electronic trading patents asserted against electronic options exchange company MIAX.
In the MIAX cases, the PTAB agreed with Morgan that the claims of Nasdaq’s ‘827 and ‘051 patents are invalid under Alice because they merely recite the abstract concept of routing information to a particular destination using generic computer technology.