Charlene represents clients nationwide, primarily information technology and life sciences companies, in a range of disputes, both on the plaintiff and defense side.

With over 20 years of experience as lead trial counsel, Charlene has a nationwide trial practice and is particularly sought after for her forward-thinking approach by information technology and life sciences companies. Charlene currently represents clients developing next-generation memory technologies, providing cutting-edge virtual reality environments and developing foundational technologies for the autonomous vehicles market.

Charlene has represented her clients in the district courts, in arbitral fora, in the International Trade Commission and on appeal. She frequently coordinates international intellectual property enforcement and defense efforts worldwide. She also coordinates strategy on matters pending in patent offices. In addition to extensive experience in patent litigation, patent licensing and patent ownership disputes, she has extensive experience with trade secrets cases, and has resolved a full range of other issues for her clients including antitrust, contract, copyright, standards claims, trade dress and trademark disputes.

Charlene serves on the board of directors for the Federal Circuit Bar Association (FCBA). She regularly comments on new legal developments in her field, is often sought out as a media source and one of her publications was cited in ongoing discussions on patent reform in the U.S. Congress.

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  • Representative Experience

    Information Technology

    Charlene has been extensively involved in the representation of technology companies of all sizes facing claims from non-practicing entities. For example, Charlene:

    • Obtained two walk-aways by patent holders Execware and Select Retrieval
    • Obtained a summary judgment of invalidity in YYZ v. Adobe Systems
    • Acted as lead trial counsel for Hewlett-Packard in Hewlett- Packard v. Acceleron, which set a new standard for when a declaratory judgment action may be brought against a patent holder

    Charlene has also been extensively involved in the representation of patent holders in enforcement of their portfolios, handling matters for Agere, Enova, Macrovision, the Regents of the University of California and others.

    Charlene has also managed strategic patent portfolio analyses projects and performed due diligence on marquee litigation matters in connection with significant corporate transactions.

    Life Sciences

    • Defended the Regents of the University of California and Los Alamos National Security in claims brought by licensee Caldera Pharmaceuticals relating to drug discovery technology licensed from Los Alamos—as Caldera publicly reported, the settlement was less than a tenth of a percent of the amount Caldera originally sought
    • Represented the Regents in enforcement of their extensive patent portfolio relating to Guglielmi detachable coils (GDC coils), which are used in treating brain aneurysms
    • Represented Ambu A/S (Laryngeal Mask v. Ambu A/S) in a patent and unfair competition dispute against its primary competitor over patents covering laryngeal masks used in surgery
    • Represented Corium Technologies (Corium International v. Shoreh Parandoosh) in a patent ownership dispute relating to transdermal patches
    • Worked on the appellate team in the Elan Pharmaceuticals appeal (Elan Pharmaceuticals v. Mayo Foundation) relating to knock-out models

    History of Successful Resolutions

    • Acted as lead trial counsel substituted in to defend Macromedia in a seven-patent, two-jurisdiction dispute between Adobe 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
    • Acted as 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
    • Substituted in to defend O2Micro (O2 Micro Intl. v. Monolithic Power) 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, and a jury verdict of $12 million on O2Micro’s trade secrets counterclaim—both jury verdicts were affirmed on appeal
    • Substituted in as lead trial counsel for Hewlett-Packard in St. Clair Intellectual Property Consultants—client was granted summary judgment of non-infringement
    • Defended startup Scenix Semiconductor (MicrochipTechnology v. Scenix Semiconductor) in a six-patent case brought against it by Microchip Technologies; 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
    • Conducted the first Markman (claim construction) hearing held in the Northern District of California on behalf of Information Storage Devices (ISD); went on to obtain summary judgment of noninfringement of two of three patents, sanctions and a 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 v. Information Storage Devices; the matter settled favorably following remand and renewal of ISD's motions
  • Recent Recognitions
    • Super Lawyers, Northern California, intellectual property litigation (2019)
    • Silicon Valley Business Journal, “One of the 100 Women of Influence in Silicon Valley” (2019)
    • IAM Patent 1000, patent litigation (2020)
    • Euromoney Legal Media Group, Americas Women in Business Law Awards, shortlisted for best patent lawyers (2018)
    • Daily Journal, California’s Top 35 patent professionals (2010)
    • Corporate Legal Times, “Crisis Management: 28 Experts to Call When All Hell Breaks Loose,” one of four intellectual property litigators mentioned
    • AV-Preeminent rated by Martindale-Hubbell
  • Publications and Speaking Engagements
    • “Federal Circuit Rules Presence of Google Servers in District Insufficient to Establish Venue,” Fenwick & West, February 2020 (co-author)
    • “Full Federal Circuit Defers Addressing Venue Based on Presence of Servers in District,” Fenwick & West, February 2019 (co-author)
    • “Key IP Takeaways from the United States-Mexico-Canada Agreement,” Fenwick & West Intellectual Property Bulletin, Winter 2019 (co-author)
    • “A Strategic Look at Champerty and Third-Party Litigation Financing,” Fenwick & West Intellectual Property Bulletin, Winter 2019 (co-author)
    • JTEKT v GKN: Lacking Standing, Competitor Cannot Appeal PTAB IPR Ruling,” Fenwick & West, August 2018 (author)
    • “Under Patent Venue Statute, Servers Housed in Texas District Count as Regular and Established Place of Business,” Fenwick & West, August 2018 (co-author)
    • “Legal FAQ: Introduction to Patent Litigation,” Fenwick & West, August 2018 (co-author)
    • “Safeguarding Your Intellectual Property in a Changing Landscape,” Bloomberg Law In-House Forum West, Bloomberg Law, San Francisco, CA, June 27, 2018 (panel moderator)
    • “Key issues influencing PTAB proceedings,” Managing Intellectual Property PTAB Forum 2018, Managing Intellectual Property, Palo Alto, CA, May 8, 2018 (speaker)
    • SAS Institute v. Matal (previously SAS Institute v. Lee), Top SCOTUS Cases Tech Companies Should Watch, Fenwick & West, Fall 2017 (co-author)
    • "Possibilities and Pitfalls Ahead," Bench & Bar Conference, Federal Circuit Bar Association, Coeur d’Alene, ID, June 21, 2017 (panelist)
    • “Supreme Court's Lexmark Decision Expands Scope of Patent Exhaustion Defense,” Fenwick & West, June 2017 (co-author)
    • “A Proposal for Federal Circuit On Use Of Rule 36,” Fenwick & West, February 2017 (author)

Representative Clients

  • Hewlett-Packard
  • Los Alamos National Security
  • Nexon
  • Nutanix
  • University of California

Education & Admissions

J.D., University of California, Berkeley, School of Law
Order of the Coif
Prosser Prize in Computer Law
Senior Notes and Comments Editor, High Technology Law Journal

A.B., summa cum laude, University of Southern California
Phi Beta Kappa
Sigma Xi

Admitted to practice in California

Admitted to practice in the courts of the State of California

Admitted to practice in the Northern, Central and Eastern Districts of California, District of Arizona, Northern District of Illinois, and Eastern District of Texas

Admitted to practice in the Ninth and Federal Circuit Courts of Appeal and the U.S. Supreme Court

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