Christine M. Morgan

Morgan has expertise in invalidating patents at the pleading stage, using the so-called Alice defense, based on the U.S. Supreme Court’s 2014 ruling that an abstract idea does not become patent-eligible simply by being implemented on a computer.

She has helped her clients avoid expensive litigation by ending lawsuits quickly and efficiently—ensuring that technology companies remain free to innovate without getting tied up in court.

“The secret sauce in making Alice motions work is in knowing the law in and out and in knowing the audience, the judge,” she said. “It’s also important to have effective presentations, with animations if needed, to show how a patent under challenge does not represent a technology advancement.”

She used that approach to obtain the affirmance of her invalidation of a medical data conversion patent for her client General Electric Co. University of Florida Research Foundation Inc. v. General Electric Co., 916 F.3rd 1363 (Fed. Cir., op. filed Feb. 26, 2019).

The case was also notable for beating back the university’s novel claim that it had sovereign immunity from patent challenges as a government entity. A contrary decision would have allowed such institutions to foreclose eligibility challenges.

In a move to dodge Morgan’s Alice challenge, the school’s lawyers included affidavits that purported to show the patent related to a groundbreaking invention, not just an abstract idea.

“The judge saw through it, saw that the patent was simply over an effort to try to computerize what people had long done.”

Morgan is chair of Reed Smith’s Women Initiative Network in San Francisco, which sponsors seminars and speaking events on relevant topics. Morgan credits her father with inspiring her by leading a highly successful—and unique—majority woman sales team at Xerox Corp. in the 1970s. “He taught me I could do anything, and now I feel like we women owe it to ourselves to get our own networks going.”

— John Roemer