Morgan Chu and the United States’ First Software Patent Jury Trial

In the mid-1970s, the United States Patent and Trademark Office began increasing the number of patents issued for inventions related to computer software. Software itself, however, was not explicitly considered a patentable item in the United States until 1981. In Diamond v. Diehr, a case involving a computer program that carried out rubber curing processes, the Supreme Court ruled that software used for purposes outside of solving mathematical formulas was indeed patentable.

The first patent case explicitly related to computer software came in 1986’s Candle Corporation v. Boole & Babbage, Inc. Both plaintiff and defendant were companies that handled mainframe installations; Boole & Babbage alleged that Candle had infringed a patent related to mainframe-monitoring software. Morgan Chu of Irell & Manella LLP served as lead trial counsel in defense of Candle. In the course of a two-month trial, Chu brought into question the validity of Boole & Babbage’s patent, resulting in the jury unanimously finding it invalid on two grounds.

The jury first found that Boole & Babbage had engaged in inequitable conduct for failing to provide certain critical information to the patent office at the time of patent. Though this would have been sufficient to win the case in Candle’s favor, Chu found a second ground for invalidation, which involved Boole & Babbage’s sale of the product more than one year before the patent was granted. This eventually resulted in a loss of rights to the patent.

Morgan Chu continues to practice as a partner at Irell & Manella, a law firm with offices in Los Angeles and Newport Beach, California. His representation of Candle marked the first patent litigation case for the firm.

Morgan Chu: Lead Counsel in “Top Ten Defense Verdicts for 2005” Trial

In May 2000, San Jose, California-based Ultratech Stepper, Inc., a technology company producing nanotechnology application tools and equipment for semiconductor fabrication plants, filed a patent infringement lawsuit against its Dutch competitor ASML. Ultratech claimed that ASML had infringed its patent rights on the manufacturing and commercialization of photolithography equipment in the United States. 

Irell & Manella LLP partner Morgan Chu assumed the role as lead counsel in ASML’s defense. From May through June 2005, the case was tried in Oakland, California, before a jury. Though the jury found that ASML had infringed the patents, it unanimously determined that each of the patent claims was invalid, and the court ultimately ruled in ASML’s favor.

Ultratech attempted to overturn the jury’s decision on the patents’ invalidity and sought a new trial, but its attempts were denied by the court, as was the appeal filed with the United States Court of Appeals for the Federal Circuit. 

The Los Angeles Daily Journal named the case among the “Top Ten Defense Verdicts for 2005.” ASML is currently the world’s largest provider of semiconductor industry photolithography systems.

UCLA Medal Honors Irell & Manella Partner

Morgan Chu, a partner since 1982 with renowned Los Angeles intellectual property law firm Irell & Manella LLP, has appeared on numerous lists of the top trial attorneys in the United States over the course of his career. In 2007, he received the UCLA Medal from the University of California, Los Angeles, where he earned his bachelor’s, master’s, and doctoral degrees in the early 1970s. The medal honors its recipients for distinguished achievement and professional eminence. Chu has recovered more than $3 billion in jury awards and settlements in widely publicized intellectual property cases on behalf of clients in the high-technology field. He also is known as a major philanthropist in the Southern California community; his gifts include the endowment of a $2.5 million chair at the graduate school for biological science at City of Hope National Medical Center in Duarte, California.

As students at UCLA in the late 1960s, Morgan Chu and his wife Helen co-founded the school’s Asian American Studies Center, to which they subsequently gifted the funding to endow a scholarship. His stellar academic career also includes a Master of Studies in Law from Yale University and a J.D. from Harvard Law School.