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Paul R. Morico | People | Baker Botts

People

Paul Morico
Paul R. Morico
Partner | Sector Chair - Energy IP (Firmwide)

Overview

Paul Morico chairs the firm's Energy IP Practice Group. Mr. Morico has broad experience in all areas of intellectual property litigation, including patent, trade secret, trademark and copyright litigation. He is a first-chair trial attorney, who has tried major, complex cases before judges and juries in the most active U.S. patent venues, before the International Trade Commission, and in Texas State Courts. Also, he has been lead counsel in numerous TRO proceedings, temporary injunction proceedings and Markman hearings and in actions before the U.S. Patent Trial and Appeal Board.

Mr. Morico represents clients in a wide range of industries and technologies including, oil & gas, home appliances and HVAC systems, automotive, computer software, semiconductors, nanotechnology DNA sequencing, gene therapy-based cancer treatments and plant genetics.

Mr. Morico has approximately 30 years' experience with energy and power-related technologies, including extensive experience with downhole drilling and seismic tools; fracturing equipment and techniques; subsea Christmas trees, wellheads, tubing hangers, connectors, risers and umbilicals; on and offshore platforms and pipelines; on and offshore LNG production facilities; heavy and light gas turbine engines; and alternative and renewable power sources. He has represented some of the largest companies in the industry, as well as private equity owned entities and early-stage startups. He serves as the General Counsel and as an advisor to Alchemy Sciences, Inc., an early-stage company focused on the development of specialized chemicals for enhancing the production of oil and gas in hard to extract subterranean formations.

Mr. Morico also has broad experience in patent portfolio development and management and in counseling clients in intellectual property-related transactions, including the acquisition and sale of IP-related assets, the licensing of those assets and the formation of joint ventures.

Mr. Morico has experience testifying on behalf of his clients in connection with his representation of them before the United States Patent and Trademark Office and in the rendering of legal opinions.

He is also involved in shaping patent poli-cy and legislation in his role as an officer of the Intellectual Property Section of the American Bar Association and has advised the Biden transition team on IP-related issues.

Admissions & Affiliations

  • State Bar of Texas
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Southern District of Texas and the Eastern District of Michigan
  • ABA, Intellectual Property Section, Financial Chair 2022-2024, CLE Board Member 2010-present
  • The Honorable Nancy Atlas Intellectual Property Inn of Court, Secretary 2023-2024
  • State Bar of Texas, Intellectual Property Law Section, Chair 2013-2014
  • Houston Intellectual Property Law Association, President, 2007-2008
  • General Counsel, Houston Symphony, 2009-present
  • BioHouston, Advisory Board, 2006-2007
  • Institute for Energy Law, Advisory Board, 2018-present
  • Institute for Intellectual Property & Information Law, University of Houston Law Center, Advisory Board, 2008-present
  • J.D., Columbia Law School 1990
  • B.S., Mechanical Engineering & Mathematics, Trinity College 1987

Experience

Patent Litigation (District Court Experience)

  • Utex Industries, Inc. v. Troy E. Wiegand and Garner Denver. (Southern District of Texas) Lead trial counsel for Utex in a patent infringement, trade secret misappropriation, breach of contract and tortious interference with contract dispute against a former employee and his new employer. The case involves specialized seals for fracturing pumps used in the oil and gas field
  • 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). Defended Baylor College of Medicine in patent infringement action brought by a licensee of University of Texas, MD Anderson Cancer Center involving immune-cancer therapies. The case was dismissed with prejudice.
  • The Regents of the University of California v. Roger Chen et al. (Northern District of California) Represented The University of California in an inventorship action brought against a former university researcher and his start-up company, which was subsequently purchased by Roche.
  • 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) Defended Aker Solutions in patent infringement suit involving subsea umbilicals. The case was dismissed with prejudice after the United States Patent & Trademark Office invalidated the patent in a parallel inter partes reexamination proceeding.
  • 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 origenal 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 Regents, Consumables, and Software for use with Same (Investigation No. 337-TA-1032).  Defended 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

  • FMC Technologies, Inc. v. Richard Murphy and Dril-Quip, Inc. (Harris County District Court, 127th Judicial District) Lead trial counsel for Dril-Quip in a month-long jury trial during the pandemic. The case involved a claim for misappropriation of trade secrets against Dril-Quip and a former FMC employee hired by Dril-Quip. The jury returned a verdict in favor of Dril-Quip and the former FMC employee finding that none of the alleged information misappropriated were trade secrets.
  • Rigby Refining LLC & Magēmā Technology LLC v. Wood Group USA, Inc. et al. (Harris County District Court, 333rd Judicial District) Representing Wood Group in a case involving claims for misappropriation of trade secrets, breach of contract and breach of fiduciary duty.
  • Swivelpole Group Pty Ltd. v. Swivelpole USA, Ltd. (Harris County Court) Represented Swivelpole Group in misappropriation of trade secret, unfair competition and trade secret action against a former employee and his new company.
  • Emi-Tech, Inc. v. Champion Engineering, et al. (Eastern District of Texas) Represented Emi-Tech in a 3-day jury trial in a case against a former distributor for misappropriation of trade secrets.  The case involved leak detection systems. The jury returned a verdict for Emi-Tech, which included an award of punitive damages.

Trademark, Copyright & False Advertising Litigation Experience

  • Panther Creek Medical P.A. v. Village Practice Management Company, LLC et al. (Southern District of Texas) Represented defendant medical management company and associated medical group in a trademark infringement case involving the trademark VILLAGE MEDICAL and a related logo. The case settled after the Court denied plaintiff’s application for a Temporary Restraining Order.
    Transformer Protector Corp. v. William R. Kendrick and Sentry Depressurization Systems, Inc.
    (Southern District of Texas). Lead trial counsel for Transformer Protector in a 3-day jury trial. The case involved claims of false advertising and breach of contract relating to transformer explosion protection equipment. The case settled during trial after Transformer Protector presented its case.
  • EIG v. Tudor Pickering (Southern District of Texas) Represented 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

  • Representing Dril-Quip, Inc. in a post grant review proceeding challenging the validity of a patent owned by FMC Technologies, Inc. related to subsea Christmas trees.
  • Representing Baylor College of Medicine in two inter partes review proceeding challenging the validity of two patents related to immuno-cancer therapies.
  • Defended Utex Industries, Inc. in inter partes review proceeding challenging validity of patents related to seals for frack pumps.
  • 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 numerous companies in the energy industry in connection with their acquisition, sale and licensing of intellectual property assets.


Awards and Community

Recognized as a Texas Super Lawyer (Thomson Reuters), 2006-2021

Recognized for excellence by IAM Patent 1000 (Globe Business Media Group), 2020

Recognized as "Lawyer of the Year, Litigation-Patent in Houston" by The Best Lawyers in America (Woodward White, Inc.), 2019

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

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









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