Mindy M. Morton
Partner
Admissions
California;
New York
Address
3000 El Camino Real | 5 Palo Alto Square Suite 400, Palo Alto, CA 94306
Office Tel.
650.645.9020
Fax
650.687.8320
Overview
Mindy focuses on intellectual property, data privacy, internet, and healthcare litigation. She helps companies from funded start-ups to public companies handle trade secret, privacy, copyright, trademark, patent, and complex commercial disputes. Mindy frequently assists with complex commercial litigation involving software contracts, intellectual property licenses, and non-compete agreements.
Intellectual Property: In addition to managing litigation involving all matters of IP, Mindy serves on the steering committee for Sedona Conference’s Working Group 12 on trade secrets and co-chairs the ABA IP Section’s Trade Secrets Committee. She leads Procopio’s Trade Secrets practice group.
Data Privacy: Mindy defends companies with an online presence against individual, class action/mass arbitrations and lawsuits filed under CIPA (California Invasion of Privacy Act) and related laws. These trap and trace cases allege wiretapping and invasion of privacy through use of web chats, session replay, cookies, pixels, and pen registers.
Internet: Mindy defends internet companies against lawsuits based on user posts, and is a passionate defender of CDA Section 230. This includes claims of defamation, copyright and similar claims on First Amendment, DMCA and US SPEECH Act grounds. She also contributed to an ABA book on Social Media Law.
Health Care: Mindy defends healthcare entities against claims brought by physicians and staff and provides advice regarding medical staff matters. She also litigates healthcare technology, medtech, retaliation, and medical device cases. Mindy leads Procopio’s Health Care sector group.
- Lead counsel for plaintiff, a cooling design company, in trade secret and breach of contract case involving data center cooling technology; confidential settlement before trial.
- Lead counsel for defendant, a health care entity, in major whistleblower case under Health & Safety Code 1278.5 ; case settled favorably on the eve of trial.
- Lead counsel for defendant, a leading online platform, in a case involving trade secret, CFAA, and ECPA claims; confidential settlement following the filing of a motion to dismiss under Section 230.
- Lead counsel for defendant, a consumer tea company, in trade secret, breach of contract and trademark case; case settled on favorable terms.
- Obtained judgment and costs defending a leading online publishing platform in a case involving Communications Decency Act, US SPEECH Act, and First Amendment issues. The case was one of the first cases involving the US SPEECH Act.
- Represent health care entity in breach of contract and fraud cases.
- Negotiated an early dismissal in a case involving alleged trademark infringement for third-level domain names.
- Served as first chair in a $10M jury trial in Santa Clara County Superior Court (DVS v. Sun, et al.), in which she obtained a nonsuit verdict. Mindy briefed and argued the successful appeal.
- Represented a group of investors in a $60M breach of contract case involving novel issues of Chinese and New York law, obtaining two motions to dismiss, a $60M writ of attachment and transfer order and a contempt order.
- Successfully moved to dismiss declaratory relief complaint in case involving patent for embryo imaging.
- Represented medical device company in patent case involving first sale doctrine.
- Represented plaintiff in patent dispute involving mobile banking technology.
- Obtained a temporary restraining order, preliminary injunction, and contempt citation for violation of temporary restraining order against a former employee who started a competing company using client’s technology; confidential settlement on the eve of trial.
- Represented Napster in its dispute with the recording industry.
- Defended a group of multinational companies at the district court level for patent infringement involving Intel chipsets. Quanta v. LG Electronics, 553 U.S. 617 (2008).
- WIPR USA Trade Secrets Rankings, Recommended, 2024
- Super Lawyers®, 2015 – 2024
- Patent 1000, IAM, 2024
- Martindale-Hubbell® AV Preeminent Rating
- Woman Leader in the Law, American Lawyer magazine, 2021
- Diversity Award Winner, Santa Clara County Bar Association, 2019
- Outstanding Program Award Winner, American Inns of Court, 2018-2019
- AmLaw Top Rated Lawyer in Intellectual Property Law, 2018
- Women of Influence Honoree, Silicon Valley Business Journal, 2016
- JD, Yale Law School (Editor – Yale Law Journal), 1997
- BA, University of California, Berkeley (Highest Distinction in General Scholarship, Highest Honors in Political Science, Phi Beta Kappa), 1994
- Panelist. “Managing Trade Secrets,” Advanced Trade Secrets 2024: New Challenges, New Solutions, and New Imperatives, Practising Law Institute, webinar, October 15, 2024.
- Panelist. “Nuts and Bolts of Trade Secrets,” Beverly Hills Bar Association, webinar, October 8, 2024.
- Moderator. “Protecting Trade Secrets and Confidential Information Through Contract,” 2024 Annual Meeting of The Sedona Conference Working Group 12, Phoenix, Arizona, September 10, 2024.
- Co-author. “Contract Terms Serve as Eligibility Criteria for Medical Staff Membership and Privileges,” April 30, 2024.
- Speaker. “Healthcare Law and Standards,” Medical Tourism International Legal Compliance Certification, Academy Temos, San Miguel de Allende, Guanajuato, Mexico, June 18, 2024.
- Panelist: Behind the Filter: Legal Realities of Social Media,” 9th Annual Berkeley Law Sports and Entertainment Conference,” Berkeley, CA, April 5, 2024.
- Panelist. “How the NDCA Flagship Program Can Help Your Clients in Cases Big and Small,” The FBA Northern District of California and the Northern District of California Practice Program, San Francisco, CA and virtual, January 24, 2024.
- Panelist. “Trade Secrets Overview: Elements and Liability,” Trade Secrets Symposium 2023, New York City Bar, webinar, December 11, 2023.
- Panelist. “Cultivate Your Community,” UPWARD, virtual, November 7, 2023.
- Panelist. “Trade Secrets: Trends & Strategy in 2023 and Beyond,” CenterForce USA IP Strategy Summit, Palo Alto, CA, October 25, 2023.
- Panelist. “Procopio International Litigation & Arbitration Retreat: Resolution of Conflicts involving the U.S. and Mexico,” San Diego, September 29, 2023.
- Panelist. “Protecting and Enforcing Intellectual Property Rights in the PRC and Asia: Practical Suggestions on a Limited Budget,” ACC, webinar, July 25, 2023.
- Panelist. “Protecting Children Online,” Stanford’s Digital Economy Best Practices Conference, Palo Alto, CA, June 12, 2023.
- Presenter. “Protecting the Crown Jewels… Tips and Trends in Trade Secret Law,” ACC San Diego La-LAW-palooza, San Diego, CA, April 21, 2023.
- Panelist. “Tips and Trends in Trade Secrets Law,” Procopio event, Irvine, CA, March 22, 2023.
- Panelist. “Exploring the Contours of What is a Trade Secret: A deep dive on confidential information vs. trade secrets, employee’s general skill and knowledge vs. an employer’s trade secrets, and their role in the enforcement of restrictive covenants,” 2022 AIPLA Trade Secret Summit, Miami, FL, December 9, 2022.
- Panelist. “Trade Secrets — It’s Heating Up,” Centerforce IP Strategy Summit West, Palo Alto, CA, October 11, 2022.
- Panelist. “Diversity, Equity and Inclusion in the Metaverse,” Digital Economy Best Practices 2022, Stanford Law School, Palo Alto, CA, June 13, 2022.
- Co-editor. “Commentary on Equitable Remedies in Trade Secret Litigation,” The Sedona Conference Working Group on Trade Secrets, March 2022.
- Author. “Why Companies Should Care About Increasing Criminal Enforcement of Trade Secret Theft,” State Bar of Michigan IPLS Proceedings, Volume 32, Issue 2, 2021.
- Co-presenter. “Trade Secrets – The Protection vs. Promotion Conundrum Explained,” July 21, 2021.
- Panelist. “Litigation Trends and Recent Cases,” Practising Law Institute’s Advanced Trade Secrets Law Program, October 13, 2021.
- Co-author. “Trade Secrets Protection: Some Common Sense and an Ounce of Prevention is Worth a Pound of Cure,” August 3, 2021.
- Co-author. “ABA Section of Intellectual Property Law, Trade Secrets Interferences with Contracts Committee Annual Trade Secret Law Report 2019/2020,” American Bar Association, May 2021.
- Panelist. “Global Perspectives to Maintain Your Competitive Edge Through IP,” ABA Intellectual Property Law Section Annual Meeting, April 14, 2021.
- Co-presenter. Webinar. “Recent Developments in Trade Secrets: What In-House Counsel Need to Know,” February 18, 2021. Recording and PowerPoint.
- Speaker. “RBG & me,” The Club SV event, October 29, 2020.
- Co-editor (with Tyler Paetkau). “California Federal Civil Rules, Northern District of California Civil Local Rules,” LexisNexis 2020 edition and update, October 2020.
- Moderator. “Federal Sentencing and the Presentence Investigation Report.” Santa Clara County Bar Association event, September 24, 2020.
- Co-presenter. “Part One: Navigating Anticipated CCPA Enforcement & Mitigating Litigation,” July 21, 2020.
- Co-presenter. “Contract Drafting Tips From the Litigator’s Perspective: Avoiding Lawsuits in the Post COVID-19 World,” May 27, 2020
- Co-presenter. “Trade Secrets and Cybersecurity in the COVID-19 World: Tips and Trends,” May 20, 2020.
- Co-presenter. “Avoiding Litigation While Resolving Disputes: Commercial Contract Challenges During COVID-19,” May 5, 2020.
- Co-author. “Avoiding Litigation While Resolving Disputes: Commercial Contract Challenges During COVID-19,” April 27, 2020.
- Co-presenter. “Trade Secret Tips and Trends,” March 5, 2020.
- Co-author. “Cybersecurity, Sports Betting, Hemp, and Child Welfare: 2020 Indian Law Updates,” January 6, 2020.
- Author. “The Rise of Criminal Enforcement for Trade Secret Theft,” Law360, September 6, 2019.
- Author. “Why Companies Should Care About Increasing Criminal Enforcement of Trade Secret Theft,” September 4, 2019.
- Speaker. “Tips and Trends in Trade Secrets Law: DTS Act,” SCCBA Federal Courts Committee – MCLE Seminar, San Jose, June 27, 2019.
- Panelist. “Become Cyber-Trained In-House Counsel, Part Three,” Procopio seminar with ACC San Diego, May 21, 2019
- Moderator. “Work Life Balance at Different Stages of Your Career,” IP Counsel Café, Palo Alto, CA, May 8, 2019.
- Panelist. “Become Cyber-Trained In-House Counsel, Part Two,” Procopio seminar with ACC San Diego, April 16, 2019.
- Co-author. “Practical Issues of the Defend Trade Secrets Act: Lessons from Waymo v. Uber and Impact of the DTSA on Corporate Practice,” Intellectual Property Law and Policy Journal (Hokkaido University School of Law), April 2019. (Article in Japanese)
- Presenter. “Defend Trade Secrets Act,” Intellectual Property Owners Association, February 20, 2019.
- Presenter. “The Defend Trade Secrets Act,” Intellectual Property Owners, Software-Related Inventions Committee, February 20, 2019.
- Co-presenter. “Exploring the Stages of a Trade Secrets Case Through Hypotheticals,” Association of Corporate Counsel, September 12, 2018.
- Co-presenter. “Trade Secrets – An Emerging Force in Intellectual Property,” West LegalEd Center, September 11, 2018.
- Author. “5 Steps to Keeping Your Trade Secrets Secret.” February 7, 2018.
- Author. “Technology-Assisted Review: an Effective Way to Tackle the Mountains of Electronic Data,” ABTL Report, April 2015.
- Co-presenter. “Ethical Considerations in Intellectual Property Litigation: An Interactive Dialogue and Case Study,” Menlo Park, CA, May 7, 2014.
- Co-author. “Technology-Assisted Review: The Judicial Pioneers,” The Sedona Conference Journal® Volume 15, December 2014.
- Co-author. “Dealing With IP Theft By Employees,” The Recorder, September 12, 2012.
- Author. “Don’t Let Confidential Information Walk Out the Door,” The Bottom Line, Vol. 30, No. 5.
- Author. “Drafting and Challenging Section 2019.210 Statements in Trade Secret Litigation,” Northern California Association of Business Trial Lawyers Report, Vol. 15, No. 2.
- Contributing author. “Copyright, Trademark and Trade Dress Litigation Model Jury Instructions,” ABA Section of Litigation.
- Co-Chair, ABA Trade Secrets Committee, Intellectual Property Section, 2021-present
- Sedona Conference Working Group 12 on Trade Secrets
- Steering Committee Member, 2021 – present
- Brainstorming Group Co-Leader, 2021 – present
- Contributing Editor, 2018 – present
- Board Member, Audit and Security Chair, Santa Clara Vanguard, 2021 – present
- Co-Chair, Next Gen Mock Pitch Committee, ChIPs, 2015 – present
- Founder, Women Helping Women Network, 2019 – present
- Mentor and Group Leader, HiPower, 2019 – present
- SF Bay Area Intellectual Property Inn of Court, Master of the Bench and June Pupillage Group Leader, 2015 – present
- UC Berkeley, Women in Leadership, Co-Chair of Equity and Inclusion Committee, 2020 – present
- Co-Director, Lyric Theatre Victorian Carolers, 2014 – present
- UC Berkeley Class of 1994 Reunion Committee, Chair of 25th Reunion
- The CLUB, former Vice President of Operations and Board Member
- Santa Clara County Bar Association, 2012 President
- Schola Cantorum, past Chair of the Board of Directors
- Mills, James. “Procopio Adds Davis Wright Employment Atty in Palo Alto,” Law360, August 21, 2024.
- Blackwood, Marissa. “Dennis Doucette and Mindy Morton Join Procopio’s Management Committee, Bringing Expertise in Corporate and Health Law/IP Litigation,” Bollyinside, February 28, 2024.
- Elliott, Bob. “Leading Corporate and Health Law/IP Litigation Partners Elected to Procopio’s Management Committee,” Verve Times, February 28, 2024.
- Cueto, Emma. “What’s Working for Mid-Law in Effort to Improve Diversity,” Law360, July 26, 2022.
- Posses, Shayna. “Emerson Can’t Review Facebook Deal In Trade Secrets Row,” Law 360, November 26, 2018.
- “On the Move,” The Recorder, June 14, 2013.
