Intellectual Property Litigation Perspectives from a Trial Titan
an interview with Morgan Chu of Irell & Manella LLP
Jason Kim | University of California, Davis, School of Law

Posted Monday, January 10, 2005
5 U.C. Davis Bus. L.J. 8 (2004)

Morgan Chu is a partner at the Century City office of Irell & Manella LLP. He received a B.A., M.A., and Ph.D. from UCLA, a M.S.L. from Yale, and a J.D. from Harvard. He was lead counsel in the first trial involving computer software patent validity and has tried and won cases that place him among the most legendary of trial attorneys. Chu was plaintiff's lead trial counsel in Stac Electronics v. Microsoft (1994), a software patent suit in which the jury found for the plaintiff in the amount of $120 million. He was also plaintiff's lead trial counsel in City of Hope National Medical Center v. Genentech (2002), a biotech patent suit in which the jury returned a verdict of over $500 million. Chu was plaintiff's co-counsel in Texas Instruments v. Samsung (1996), which resulted in a settlement of over $1 billion for the plaintiff.

Chu's accolades are equally impressive. The National Law Journal has named Chu one of the "Top Ten Trial Lawyers" in the country and one of the "Top Players in High-Tech Intellectual Property." California Lawyer named Chu one of the top IP lawyers in the state; Corporate Board Member, in a 2001 survey of company directors, law school deans, and lawyers, ranked him the Best Intellectual Property Lawyer in the nation and one of "12 Superstars" in all legal practice areas; Chambers and Partners currently ranks Chu as the top intellectual property lawyer in California. In a recent poll of 65,000 lawyers by Los Angeles Magazine, Chu was named the top Super Lawyer in Southern California.

Q: Could you tell us about the facts and circumstances of Candle v. Boole & Babbage (1986), the first trial for computer software patent validity, in which you were lead counsel for the winning plaintiff?

A: Let me explain a little bit about the case. Candle Corporation was the alleged infringer. It sued Boole & Babbage for declaratory relief to invalidate the patents. The patents involved very complex software that's used by large mainframe installations - that was one of the main problems in the case.

A second problem was that people believed that getting a jury to understand complex technology well enough to feel comfortable invalidating a patent was extremely difficult, particularly because of the clear and convincing proof standard for invalidity. But that's exactly what the jury did. They found the Boole & Babbage patents to be invalid.

Q: To invalidate a patent, the burden of proof is the "clear and convincing proof" standard, instead of the usual "preponderance of the evidence" standard employed in most civil cases. How did that affect your trial strategy in Candle?

A: Well, we worked really long and hard at trying to find ways to explain complex subjects. And a lot of that's trial and error. We tested out ways of explaining the subject matter to people to see if it would hold, see if it would stick. Then we made changes and tried again, then we made changes and we tried again, and then we made some more changes. It was a lengthy, in-depth iterative process to get to the point where we were comfortable that we had a way to explain the technical concepts to the jury and to allow the jury to feel good about understanding technical concepts. We wanted to empower the jurors so that they could manipulate the concepts for themselves and hopefully in the jury deliberations, so that they could understand the bases on which we were arguing that the patents ought to be declared invalid.

Q: What do you think was the legal impact and significance of the Candle verdict?

A: I think there were two items of importance. First, there was a period of time when patents on computer software were not being issued by the United States Patent Office, or the patent offices elsewhere in the world. Then the law shifted and they began to issue software patents. So even though the patents at issue in the case were declared invalid, it was a recognition of the importance of software patents because many times people will get patents and not litigate them because they feel that they're too weak or there are other issues involved. So, the fact that parties, for which the stakes were large, were willing to take the case to trial validated the importance of software patents.

Second, it proved that the system worked well. It showed that with complex software patents, a jury could make a decision on patent invalidity, when many people had thought that that would be a near impossibility. In other words, it was a way of saying, in the real world with some real patents that were contested, that the system works.

Q: Let's talk about your personal evolution into a top rated IP trial lawyer. Academically and professionally, you've been something of a maverick. You went to college at UCLA without officially earning a high school diploma, were the first person at Yale to receive a Master of Studies in Law--a degree that was essentially created by Yale with you in mind, completed law school at Harvard in only two years, and tried your first patent case after only a single year of practice as an associate at Irell & Manella. Tell us about your sense of the path you've traveled to become a preeminent IP litigator, and how your creative and fearless nature has affected and influenced your success?

A: (laughing) I'm not sure I agree with any of the preface of this question. I think that people focus too much on individuals. I've been a very lucky guy. I'm lucky because I work with the best lawyers and staff on the planet and always have, here at Irell & Manella. And the success has not been due to any one individual and not certainly due to me as opposed to truly being the successes of a team. For trial work, it's the combined talents of a wide span of individuals. So, I include first and second year lawyers, legal assistants, staff, as well as other partners in the law firm. And the combined talents are always much greater than the individual talents.

A way to think about it is to analogize to sports teams. We've all seen sports teams in a variety of different sports where they may have outstanding individuals, but they never play together as a team, and they could never win a championship. Whereas you could have a team of blue-collar players--they're good players but not the best or the greatest players--but they play together well as a team, and they win championships. Trial work and litigation is much the same way, and therefore, I think that the emphasis is too much on individuals and really belongs to team efforts.

Q: You were one of the pioneers in patent litigation, in fact being the first lawyer at Irell to try a patent case while only a year into your legal practice. One could say that you pounced on an emerging field of litigation. What attracted you to patent litigation when it was so unknown? Did you know at the time that it would be as huge as it is today?

A: What attracted me was that my first case of patent litigation showed me that it was a lot of fun. I was able to learn new things, every day in that case, about technology. Today, I'm able to learn new things every day, every week, every month about many different areas of technology. I could be a professional student; I would love to do that for the rest of my life, learning something new. And what's thrilling about it is that I have the best teachers in the world. I have people who are Nobel laureates, leading scientists and engineers in their area of technology. And they're willing to take the time and answer dumb questions for me and my colleagues. They're patient with us, and we get to learn from the masters who are excited about what they're doing. And the oddity about it: at the end of the day we get paid for it! Whereas if you were the richest person in the world, and you went to these people and said, "Gee, can I have two days of your time to teach me the basics of your area of technology?," they'd laugh at you and wouldn't waste their time doing it. But that's what they do for us! And we get to learn something new everyday in terms of different areas of technology, so that's why it's so much fun.

Did I know at the time that patent litigation would be as huge as it is today? At the time, I would say I thought there was graffiti on the wall. And that graffiti turned into clear handwriting over time and the clear handwriting turned into reality. If you think about a time span--I was getting out of school in the 1970s--it didn't take too much to realize that the future of business and the economy in the United States was not going to be rooted in steel mills, in old-line smoke stack industry as opposed to newer businesses. One might not have been able to predict exactly what industries would have taken off, but I think there was at that time graffiti on the wall. In other words, some cryptic writing that suggested that newer businesses, newer industries were going to be the power behind the US economy. And of course, that became much clearer in the '80s, and by the end of the '80s, it was crystal clear.

Q: Does your basic approach to life tend to set you apart from other trial lawyers because you are not afraid to try new things, consider new theories, and break with convention-essentially, to look at and act on things in a totally unique way?

A: The answer to your question is yes. I think that all good trial lawyers enjoy tough problems and love solving them. And in order to solve tough problems, you have to be able to look at the problem, tilt it, look at its underside, turn it around, flip it, find a way to slice into it. By definition, they are tough problems, and therefore not easy to solve. So you have to break with convention. And that's part of the fun.

Q: When you are intensely preparing for an upcoming trial or actually in one, tell us about a typical day for you.

A: Let's see… when I'm preparing for trial, I don't think there is a typical day. But usually it involves working very long hours. I enjoy getting up very early, I always run or have a significant workout after I get up, so it might be the wee hours of the morning. I usually have several hours of quiet time, which is great for me because it allows me to think and do so without an interruption. Then usually there's an hour or so before the trial actually starts that day when I will interact with other members of the trial team, preparing particularly for what is going to happen that day. Then there's the trial day. And then, right after the end of the trial day, there's a period of time when I'm usually doing a download and analysis of what occurred, but it's always forward looking. It's forward looking to what needs to be done that afternoon and evening, what needs to be done for the rest of the week, what needs to be done for the following week. And through that process, we're always revisiting our trial strategy. We're always fine-tuning it, and sometimes making changes that may be significant--deciding not to call certain witnesses that we were certain to call at the beginning of trial, or thinking that we're going to call a witness now that we weren't going to call; emphasizing certain issues and deemphasizing other issues. So it's a continuous process all the time. We have a strategy, but we're always reevaluating it, and indeed, it is something that is actually going on during the trial day, so that we may even have shifts in strategy midmorning--not wholesale shifts--but fine-tuning what we're emphasizing during the course of the trial.

Q: What are some attributes that an effective IP litigator must possess? How much does a science background help?

A: Enthusiasm for learning and teaching. One needs to be enthusiastic about learning brand new subjects in different areas of technology. One also needs to be enthusiastic about teaching those same subjects to a judge and a jury. I do not think it is essential to have a scientific background. What's important is having an inquiring mind. There are many such people who might have been English or history majors and who will be very effective at being intellectual property trial lawyers. I also think that there are people with science backgrounds who don't have other skills that would make them effective intellectual property lawyers. So, having a science or engineering background is by no means essential, and other skills are probably more important.

Q: Your jury verdicts have become legendary--you were on the winning sides of a $120 million verdict in the Stac Electronics case and over $500 million in the City of Hopecase. In jury trials, winning over the jurors psychologically and emotionally may be as important as being legally sound and well prepared. How do you try to come across to jurors knowing that your case depends on their collective vote?

A: The key is credibility. That includes credibility as a lawyer, credibility of the position of the party you represent as expressed through witnesses, and the credibility of the overall presentation at trial.

The interesting thing about jurors, which should be self-evident but I don't believe always is to people who try cases, is that they are people. They're people who come different backgrounds, who have different economic levels, different education levels, different genders, different ages. They view the world differently. But every single one of them has the ability to know when someone is lying, and the ability to know when they should trust someone or distrust someone. Jurors start out, rightfully, being skeptical of everyone's position in a trial. They know that everyone cannot be right, and that's a very healthy part of the process. That is also why credibility is the key.

Q: In the Stac Electronics v. Microsoft case of 1994, you put Bill Gates of Microsoft on the stand. How were you able to convince the jury through cross-examining Gates that Microsoft had infringed Stac's software patents?

A: We had a lot of fun calling Bill Gates. But we had a lot of fun calling many other witnesses, and I do not think that the success in the case depended on Bill Gates or any single witness. Certainly, when we called Bill Gates as an adverse witness there was a lot of interest in the courtroom. The jurors appeared to be keenly interested. But, the Stac Electronics case against Microsoft, as well as every other case, has to be built, brick by brick. And each brick adds to the credibility. So, it's not a single witness, as interesting and fun and exciting as it may have been to call a Bill Gates. He helped our case, we believe, as did many other Microsoft witnesses that we called as adverse witnesses.

Q: What's often the biggest mistake you've seen trial lawyers, especially the less experienced ones, make in the courtroom?

A: The biggest mistakes I've seen other trial lawyers make are, first, they lose credibility by stretching their arguments to the breaking point, and second, being fearful of exercising judgment to focus on the key issues--jettisoning arguments that are weak and not worth making and probably not credible. The second point has to do with the fact that many lawyers--and perhaps it's our training in law school--are taught to spot issues, but we're not taught so well how to throw away issues and be successful at trial work. The tougher part is throwing away issues. Even though you might have fifteen defenses, it's never wise to try a case by attempting to erect all fifteen defenses because the weak defenses clutter up and get in the way of the strong defenses.

Q: To aspiring minority trial lawyers out there, what could you say about the dynamics of race in the courtroom considering that the American legal system is largely populated by Caucasian lawyers trying cases before predominantly Caucasian jurors? What can minority lawyers do to make their race less of an issue at trial, or even an advantage for that matter?

A: Be yourself. Most people have racial and gender stereotypes, but those and other stereotypes fall away as people get to know you. Jurors are people. If they get to know you, and they will during the course of a trial, then those stereotypes fall away and other things become much more important.

Q: What advice would you give to current law students about preparing for a career as an intellectual property trial lawyer?

A: I think the main thing in law school is to take courses from the best professors, without regard to specific areas of law. And that's because law students as well as students in other areas learn best from professors that challenge them and who are able to push the student to new heights. For law in particular, I think it's less important that it be a particular substantive area as opposed to any area of law that has some complexities and problems that are worthy of being solved, which probably includes most areas of the law.

And the second piece of advice is that someone should have fun in law school.

Q: You're known as a tireless worker. Six, seven-day weeks are not uncommon for you. What keeps your drive going to stay at the top?

A: (joking) For this question I'm not accepting any of the premises or the preface to the question as true. But taking the question as, "What has me doing what I do?," I'm having the time of my life. I just absolutely love it. I think I'm the luckiest guy in the world. I'm the luckiest guy in the world because I work with the best people in the world--the lawyers and staff at Irell & Manella. I'm also the luckiest guy in the world because I've been blessed with working with the best clients in the world. They are bright, creative, energetic, and fun. What more could one want?