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Charlene M. Morrow

Partner, Litigation  

Mountain View 650.335.7155

Overview

Charlene Morrow has a nationwide trial practice and is particularly sought after by information technology and life sciences companies. With over 20 years of experience as lead trial counsel, 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 and patent licensing and ownership disputes, she has handled a full range of issues for her clients including resolving antitrust, contract, copyright, standards claims, trade dress, trademark and trade secrets disputes.

Case Examples

Information Technology Representations

Charlene has been extensively involved in the representation of technology companies of all sizes facing claims from Non-Practicing Entities. She is approved panel counsel for RPX Insureds.

Information technology representation highlights include:

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

In addition, Charlene has represented patent holders in enforcement of their portfolios, handing matters for Agere, Enova, Macrovision, The Regents of the University of California and others. She has also managed strategic patent portfolio analyses projects and performed due diligence on significant litigation matters.

Life Sciences Representations

  • 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. Previously represented The Regents in enforcement of their extensive patent portfolio relating to Guglielmi detachable coils (GDC coils) used in treating brain aneurysms.
  • The Laryngeal Mask Co. v. Ambu A/S. Represented Ambu A/S in a patent and unfair competition dispute against its primary competitor over patents covering laryngeal masks used in surgery.
  • Corium International, Inc. v. Shoreh Parandoosh. Represented Corium Technologies in a patent ownership dispute relating to transdermal patches.
  • Elan Pharmaceuticals v. Mayo Foundation. On the appellate team in the Elan Pharmaceuticals appeal relating to knock-out models.

History of Successful Resolutions

  • 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.
  • 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.
  • O2 Micro Intl. v. Monolithic Power. 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, 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.
  • MicrochipTechnology, Inc. v. Scenix Semiconductor, Inc. Defended start-up 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 client Information Storage Devices. 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. The matter settled favorably following remand and renewal of ISD's motions.

Recognition

Charlene serves on the Board of Directors for the Federal Circuit Bar Association (FCBA). She regularly comments on new legal developments in her field and one of her publications was cited in ongoing discussions in Congress on patent reform. She is regularly recognized by Super Lawyers as a top rated intellectual property litigation attorney and was identified by IAM magazine as an “outstanding” patent practitioner in its 2013 IAM Patent 1000 – The World’s Leading Patent Practitioners. She was recognized by The Daily Journal as one of the state’s top 35 patent professionals in 2010 and in 2003 she was one of only four intellectual property litigators mentioned in “Crisis Management: 28 Experts to Call When All Hell Breaks Loose,” Corporate Legal Times. She is AV-Preeminent rated by Martindale-Hubbell.

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