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.


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