Charlene Morrow has over 20 years of experience representing information technology and life sciences companies. She has a nationwide trial practice representing her clients in the district courts, in arbitral fora, in the International Trade Commission and on appeal to the Court of Appeals for the Federal Circuit. She also coordinates strategy on matters in the Patent Office. She also frequently coordinates international enforcement and defense efforts worldwide. In addition to extensive experience in patent litigation, she has handled a full range of issues for her clients including resolving antitrust, contract, copyright, license, standards, trade dress, trademark, and trade secrets disputes.
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. Her work includes obtaining two recent walk-aways by patent holders Execware and Select Retrieval. She also obtained summary judgment of invalidity in YYZ, LLP v. Adobe Systems, Inc., 137 F.Supp.3d 675 (D. Del. 2015).. She was also lead trial 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. One of her recent publications was cited in the ongoing discussions in Congress on patent reform.
Over the years, Charlene has also represented patent holders in enforcement of their portfolios, handing matters for Agere, Enova, Macrovision, and others. She has also managed strategic patent portfolio analyses projects and performed due diligence on significant litigation matters.
In the life sciences arena, Charlene most recently 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 has publicly reported, the settlement was less than a tenth of a percent of the amount Caldera originally sought. She had previously represented The Regents in enforcement of their extensive patent portfolio relating to Guglielmi detachable coils (GDC coils) used in treating brain aneurysms. She also represented Ambu A/S in a patent and unfair competition dispute relating to laryngeal masks, and Corium Technologies in a patent ownership dispute relating to transdermal patches. She was also on the appellate team in the Elan Pharmaceuticals appeal relating to knock-out models.
IAM magazine identified Charlene as an “outstanding” patent practitioner in its 2013 IAM Patent 1000 – The World’s Leading Patent Practitioners, where she is profiled as a “semiconductors, software and medical device expert.” In 2010 she was recognized by The Daily Journal as one of the state’s top 35 patent professionals (covering patent litigators, prosecutors and portfolio managers). In 2003 she was one of four intellectual property litigators mentioned in “Crisis Management: 28 Experts to Call When All Hell Breaks Loose,” Corporate Legal Times. She is AV-rated by Martindale-Hubbell.
Charlene 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.
In 2007, Charlene 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.
Charlene 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 in 2007.
Charlene also substituted in as lead trial counsel for Hewlett-Packard in St. Clair Intellectual Property Consultants, where her client was granted summary judgment of non-infringement.
Charlene 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, which was sued by Atmel Corporation shortly before it went public, Charlene conducted the first Markman (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.