“I would say it was looked on as a dusty specialty that was kind of one of those corners that people didn’t get involved in,” Morrill told us this week.
Now after four decades that included the rise and fall of his well-known IP boutique Skjervin Morrill, the patent litigator is taking a step back, giving up his partnership at Sidley Austin to become senior counsel. But as the cliché goes, the 71-year-old lawyer won’t be slowing down.
Clean rooms, healed wounds and big, big mountains, after the jump.
Morrill still bikes to Sidley’s downtown office from his home on Telegraph Hill on his beat-up mountain bike. And he’s still scaling mountains — by the dozens. One of his goals is to climb all 58 11,000-foot-or-taller peaks in his native Nevada. So far he’s got 35 under his belt — his latest conquest was Troy’s Peak.
Morrill’s story starts in the copper mines, like Utah’s Kennecott Copper, where he working as an engineer. He later moved to California and became a patent litigator at Petty Andrews because he was the one who had the engineering background.
Far ahead of the curve, Morrill founded Skjervin Morrill, an IP boutique, in 1976.
“He was one of the early pioneers of patent boutiques in the area,” said Tom Friel, a patent litigator at Cooley Godward Kronish who got his start with Morrill.
At the new firm, Morrill and the firm defended NEC from Intel’s accusations that it ripped of its code in a case that became famous because the “clean room” defense was used for the first time. The late Alan MacPherson, Skjerven and Morrill gave an independent engineer the task of programming a chip to do the same thing as the NEC and Intel chips, but with no access to any previously written code — the clean room. The three sets of code were given to experts who determined that the similarities weren't due to copying but due to the constraints of the task.
Morrill said that part of the credit goes to two associates, Doug Derwin and Dan Siegel, who came up with the idea. He and MacPherson saw that it was a good one.
Morrill also beat the notoriously litigious Intel in a trademark dispute with AMD over its “386” microprocessor mark. The court decided that the number was a generic mark and Intel went on to name its next chip the more distinct “Pentium.”
Skjerven Morrill collapsed following the dot-com bust in 2003. The end was messy with the partners pushing MacPherson out as chairman a year before. Lawsuits followed. “We had our differences but we always maintained our respect for each other,” Morrill said.
Morrill said that MacPherson’s memorial service earlier this year was a testament to the healing of old wounds, with much of the old firm in attendance.
As senior counsel, Morrill will no longer be an equity partner, though he’ll still be working full time. He said it was a mutual decision between him and the firm. Maybe not such a bad thing in these tough times.
“There certainly won’t be any capital calls,” he joked. “Not that Sidley would do that.”
Looking back over his career, Morrill said he has always been concerned about the civility of patent litigators. And to that end he founded the San Francisco Bay Area Intellectual Property Inn of Court under the theory that if lawyers had dinner with each other they’d be apt to treat each other with a little more respect.
— Zusha Elinson