Elizabeth M.N. Morris

     Ms. Morris focuses her practice on patent prosecution and litigation covering a wide range of technologies, including medical devices, software, business methods, thermodynamics, and semiconductor manufacturing. Her patent prosecution practice involves utility and design patents, and her litigation practice focuses on the technological aspects of patent litigation, including claim interpretation, technical reports, and jury technology tutorials. Recently, Ms. Morris represented a hard disk drive motor manufacturer in a patent infringement case related to fluid dynamic-bearing motors, which resulted in a favorable multimillion-dollar settlement for the client.
     Ms. Morris received her J.D. from Santa Clara University School of Law in 2006, where she served as editor-in-chief for the Santa Clara Computer & High Technology Law Journal and as a research assistant to Professor Chisum. Ms. Morris also served as president of the Intellectual Property Association, sat on the board of the High Technology Law Institute, and was appointed by the Dean as a pupil to the American Ingram Inn of Court. She won the Witkin Academic Excellence Award in her Trademarks class; the CALI Excellence Award Constitutional Law II; and was awarded the Certificate of Excellence in Legal Analysis, Research, and Writing. While in undergraduate school, she interned as a process engineer for Flextronics International and as a mechanical engineer for SMP Technology. Ms. Morris was appointed to the honors engineering program at Purdue University, where she received her B.S. in mechanical engineering.
     Ms. Morris is admitted to practice in California and before the U.S. Patent and Trademark Office and the U.S. District Courts for the Northern, Eastern, and Central Districts of California.

External Links

Elizabeth M.N. Morris' Bio at Morgan Lewis

Publications

Territorial Impact Factors: An Argument For Determining Patent Infringement Based Upon Impact on the U.S. Market
Author: Elizabeth M.N. Morris Abstract The world has increasingly become a global marketplace. A product may have components manufactured in countries A, B, and C; assembled in country D; and offered for sale in country E. Furthermore, the use of that product may take place in country F or G. In this global marketplace, how is patent infringement determined? Traditionally, under United States law, patents have been given only territorial application. Thus, a competitor of a patented product can avoid an infringement suit by merely stepping outside of the country for one element of the process while still deriving most of his economic benefit within the United States. This narrow definition of patent infringement works poorly in a world with a global marketplace. Change is necessary. The current trend is to analyze extraterritorial use under 35 U.S.C. § 271 sections (f) and (g), the sections of the Patent Act that grant specific and limited extraterritorial protection. However, as can be seen in the recent cases of Eolas Tech. Inc., v. Microsoft Corp. and AT&T Corp. v. Microsoft Corp., both of which analyzed extraterritorial use under 35 U.S.C. § 271(f), it is easy for the courts to follow the letter of the statute but miss the purpose of patent protection in the United States.2 I argue that courts should stop the current trend and instead look to the precedent of the 2004 case of NTP, Inc., v. Research In Motion, Ltd. when interpreting infringement under the general infringement provision of 35 U.S.C. § 271(a). This paper argues that United States patent infringement cases should be analyzed based on factors that determine the economic impact on the United States market rather than based on the statutory technicalities of where each element is made, used, or sold. These factors that I refer to as “territorial impact factors” are: (1) control (2) beneficial use, and (3) ownership. Using these factors, courts can determine whether the impact from the potential infringement takes place primarily within the United States and thus affects the patent owner’s exclusive patent rights, or primarily outside of the United States and thus does not affect those exclusive rights. Part I gives a historical perspective of the United States’ position on the extraterritorial impact of patent law. It discusses the presumption that a patent applies only within the territorial boundaries of the United States. It then looks at several historic cases that have dealt with this presumption and analyzes how these cases would have been decided using the territorial impact factors. Part II discusses Deepsouth Packing Co., Inc v. Laitram Corp. and the statutory changes in 35 U.S.C. § 271(f) and § 271(g) enacted in reaction to the Court’s decision in Deepsouth. It also discusses the current inconsistencies presented in cases that have attempted to define these new statutory sections. Part III discusses two subsequent cases, Decca Limited. v. The United States and NTP, Inc., v. Research In Motion, Ltd., which defined and refined the concept of “territorial impact factors,” although not specifically referring to them by that name. Finally, Part IV discusses the benefits of using territorial impact factors as an interpretation of 35 U.S.C. § 271(a), and why they are a better way to deal with extraterritorial issues than sections 271(f) and (g). Then it analyzes how Eolas Tech. Inc., v. Microsoft Corp. and AT&T Corp. v. Microsoft Corp. should have been decided using the territorial impact factors rather than 35 U.S.C. § 271(f).		court factor impact infringement patent product section state territorial united Volume 22 Issue 2 Page 351 Download the article.

Will Shrinkwrap Suffocate Fair Use?
Author: Elizabeth M.N. Morris Abstract This article explores the balance between using copyright law and contract law to protect intellectual property, specifically computer software. This article analyzes the balance between the software creator’s rights and the public good that results from access to the source code. Section II gives a general overview of the types of protection available to software producers. Section III discusses contract protection for software and the growing acceptance of shrinkwrap licenses and other adhesion agreements as valid contracts. Section IV discusses traditional copyright protection for software in great detail. It discusses the exclusive rights under copyright law as well as the fair use exception to these exclusive rights. Section V discusses the Digital Millennium Copyright Act (DMCA) and its reverse engineering exceptions. Section VI explains how contract law, traditional copyright law, and the DMCA work together, and how preemption doctrines control what happens when they are in conflict with one another. Section VII argues that decisions that uphold adhesion contract prohibitions on reverse engineering were wrong because they did not properly apply preemption analysis. Section VIII argues that the precedents set such decisions are especially frightening when applied to the DMCA.		computer contract copyright court engineering license protection reverse shrinkwrap software Volume 23 Issue 2 Page 237 Download the article.

The Shifting Sands of Price Erosion: Price Erosion Damages Shift by Tens of Millions of Dollars Depending Upon the Admissibility of Pre-Notice Eroded Prices
Authors: Elizabeth M.N. Morris , David Bohrer , and Dr. Matt Lynde Abstract Competition from an infringing product reduces the price the patent holder can charge for its product. An economist pegs the beginning of the reduced prices to the date the infringing conduct begins. In other words, there is economic harm to the patent holder in the form of falling prices on or soon after the infringing sales begin. However, the accounting period for patent infringement damages often begins much later–the commencement of the damage accounting period is usually tied to the date the patent holder gives actual or constructive notice under the patent marking statute. This article addresses whether the calculation of damages on the infringing sales that fall within the accounting period should: a) reflect the fact that, as of the commencement of the accounting period, prices have already eroded to a specific level, or b) employ the fiction that, as of the commencement of the accounting period, there has been no previous erosion in prices. There is sparse and conflicting law regarding whether or not the court should allow damage experts to consider and rely upon evidence of pre-notice eroded prices in calculating price erosion damages. As price erosion is often a major portion of the total damages awarded for patent infringement, this unsettled area of law is ripe for clarification.		court damage erosion holder infringement infringing notice patent price sale Volume 25 Issue 4 Page 723 Download the article.