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CHARLENE M. MORROW
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Emphasis
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spacer image for CHARLENE M. MORROW bio Intellectual Property Litigation
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Profile Ms. Morrow is Chair of the firm's Patent Litigation Group, which has over 35 litigation members and also leverages the expertise of the firm's over 35 member Patent Group.

She has an active nation-wide trial practice representing software, semiconductor and medical device companies in a range of disputes, both on the plaintiff and defense side.

Ms. Morrow's clients have included:
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spacer image for CHARLENE M. MORROW bio Hewlett-Packard Company
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spacer image for CHARLENE M. MORROW bio The Regents of the University of California
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Education
University of California, Berkeley, School of Law (Boalt Hall), J.D., Order of the Coif; Prosser Prize in Computer Law; Senior Notes and Comments Editor for the High Technology Law Journal, 1988
University of Southern California, A.B., summa cum laude, Phi Beta Kappa, Sigma Xi, 1984
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Admitted to Practice Member of the State Bar of California. Admitted to practice in the courts of the State of California, in the Northern, Central and Eastern Districts of California, in the District of Arizona and in the Eastern District of Texas. She is also admitted to practice in the Ninth and Federal Circuit Courts of Appeal.
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Case
Examples

Appellate Representations

Ms. Morrow was lead counsel for Hewlett-Packard in Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358 (Fed. Cir. 2009), which set a new standard for when a declaratory judgment action may be brought against a patent holder.

Software Representations

Ms. Morrow has handled software patent cases involving a wide range of software techniques, including user interfaces, voice recognition interfaces, 2-D and 3-D graphics, digital rights management, Internet technologies, and other communications and networking technologies.  She has also handled software copyright, trade secret, and contract disputes.

Ms. Morrow was lead trial counsel substituted in to defend Macromedia in a seven patent, two jurisdiction dispute between Adobe, Inc. and Macromedia.  After back-to-back jury trials that resulted in a net damage award in favor of Macromedia, and while Macromedia's request for an injunction against Adobe Illustrator was pending, a resolution was reached.

Ms. Morrow was appellate counsel substituted in to handle an appeal for Apple of an adverse summary judgment ruling; the resulting reversal is reported at Apple Computer, Inc. v. Articulate Sys. Inc., 234 F.3d 14 (Fed. Cir. 2000).

Semiconductor Representations

Ms. Morrow has handled patent, trade secret and breach of contract cases involving semiconductor equipment, semiconductor process technologies, device design, integrated circuit design, and packaging.

Ms. Morrow substituted in to defend O2Micro, Inc. in a patent and trade secret dispute with Monolithic Power Systems, and was instrumental in obtaining a defense jury verdict that the patents asserted against O2Micro were both invalid and non-infringed.  O2Micro also obtained a jury verdict of $ 12 million on its trade secrets counterclaim. Both jury verdicts were affirmed on appeal in 2007.

Ms. Morrow was asked to defend start-up Scenix Semiconductor in a six patent case brought against it by Microchip Technologies.  She obtained the withdrawal of four of the six patents, and defeated a preliminary injunction motion on the remaining two.  The district court's claim construction and preliminary injunction decisions were affirmed on appeal, and the matter settled thereafter. MicrochipTechnology, Inc. v. Scenix Semiconductor, Inc., 2000 U.S. App. LEXIS 14131 (2002).  
 
In connection with her defense of client Information Storage Devices, who was sued by Atmel Corporation shortly before it went public, Ms. Morrow conducted the first Markman (patent claim construction) hearing held in the Northern District of California.  She went on to obtain summary judgment of noninfringement of two of three patents, sanctions, and summary judgment of invalidity of the third patent on an issue of first impression.  The latter ruling was reversed in part on appeal in Atmel Corp. v. Information Storage Devices, Inc., 1998 U.S. Dist. LEXIS 17564 (Fed. Cir. 1999).  The matter settled favorably following remand and renewal of ISD's motions.

Medical Device Representations

Ms. Morrow has handled patent, trade secret and breach of warranty cases involving a variety of endoscopic and implantable technologies.

In 2007, Ms. Morrow was lead trial counsel for The Regents of the University of California in a bench trial on the original patent portfolio covering the Guglielmi detachable coils, used primarily in treating brain aneurysms.  The matter settled on the first day of trial, in a manner very favorable to The Regents, after a series of favorable rulings on the defenses raised by defendant ev3.

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Additional Information Following law school, Ms. Morrow clerked for the Honorable William W Schwarzer, United States District Court for the Northern District of California.

Ms. Morrow is AV-rated by Martindale-Hubbell. She is one of four intellectual property litigators mentioned in “Crisis Management: 28 Experts to Call When All Hell Breaks Loose,” Corporate Legal Times (Jan. 2003), was ranked in 2008 as a “Northern California Super Lawyer” by San Francisco magazine and has been named as one of the “Best Lawyers in the Bay Area” by Bay Area Lawyer magazine. She was recognized by The Daily Journal as one of the state’s top 35 patent professionals (covering patent litigators, prosecutors and portfolio managers) and named one of the leading women litigators in California for 2010.

Ms. Morrow is a President Emerita of the San Francisco Bay Area Intellectual Property Inn of Court. Ms. Morrow has given presentations on patent litigation and trial skills to the American Bar Association, Intellectual Property and Litigation sections, and to the Practising Law Institute. Recent publications by Ms. Morrow include: "LG Electronics, Inc. v. Bizcom Electronics, Inc.: Guidance on Extending Patent Rights to Reach Downstream Parties," The Intellectual Property Strategist (March 2007).
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CHARLENE M. MORROW
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Partner,
Litigation Group

Chair,
Patent Litigation Group
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P: 650.335.7155
F: 650.938.5200
cmorrow@fenwick.com
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