Charles Gorenstein
Partner
Address
Birch, Stewart, Kolasch & Birch, LLP
Suite 100 East
8110 Gatehouse Road
Falls Church, VA 22042
USA
Telephone +1-703-205-8000
Facsimile +1-703-205-8050
E-mail
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Bar Admissions
1981, District of Columbia and U.S. Court of Appeals, District of Columbia Circuit; 1982, U.S. District Court for the District of Columbia and U.S. Court of Appeals for the Federal Circuit; 1988, Virginia, U.S. District Court, Eastern District of Virginia; 1995, U.S. District Court, for the Eastern District of Wisconsin and for the Eastern District of Michigan; 2000, U.S. District Court, District of Colorado; registered to practice before U.S. Patent and Trademark Office.
Education
Pennsylvania State University (B.S., Engineering Mechanics, with honors, 1972); American University (J.D., summa cum laude, 1980). Tau Beta Pi.
Memberships
Bar Association of the District of Columbia; Virginia State Bar Association; American Bar Association (Member, Section of Patent, Trademark and Copyright Law); American Intellectual Property Law Association; Inter-American Association of Industrial Property ("ASIPI") (United States Alternate Delegate, 1996-2001); Industrial and Professional Advisory Council, Pennsylvania State University, College of Engineering (1988-1993 and 2001-2003); International Trademark Association (INTA).
Experience
Mr. Gorenstein has been engaged in the practice of patent law and other aspects of intellectual property law since 1972. His practice emphasizes all facets of representing clients with regard to litigation, negotiations, and licensing. Mr. Gorenstein has litigated, tried and/or settled favorably dozens of cases brought in U.S. district courts and the International Trade Commission. He has also negotiated settlements short of litigation in numerous disputes. He has represented both patent owners and defending parties in disputed patent matters. A large part of his direct experience relates to defending against charges of infringement in a variety of situations and scenarios with emphasis on defending against charges of infringement of patents in the electrical and mechanical arts.
Mr. Gorenstein has represented parties in several appeals to the U.S. Court of Appeals for the Federal Circuit.
Mr. Gorenstein's responsibilities with the firm of Birch, Stewart, Kolasch & Birch, LLP also include prosecution of patent applications in the electrical and mechanical arts including complex data processing and computer systems, automotive and related technologies, and a wide range of other subject matter, and prosecution and client counseling relating to trademark matters.
Exemplary Cases
- United States District Court — Eastern District of Texas
Represented patent owner-plaintiff in infringement suit asserting infringement of patent relating to burners and fragrance lamps. Approx 1.5 years of discovery, motions and trial preparation. Obtained settlement favorable to client two days before trial.
- United States District Court — Eastern District of Texas
Defended manufacturer of burners and fragrance lamps in declaratory judgment action seeking declaration of noninfringement of manufacturer's patent. Negotiated voluntary dismissal of suit brought against client.
- United States District Court — Southern District of California
Defended automobile manufacturer against charges of infringement of patents relating to plastic molded tail light lenses and methods of manufacturing such lenses. Obtained summary judgment of noninfringement in favor of client.
- United States District Court — Eastern District of Texas
Defended automobile manufacturer against charges of infringement of patent relating to automotive alarm systems. Obtained immediate dismissal of client from suit, prior to any discovery or proceedings, by establishing that suit was filed against client without proper basis.
- United States District Court — Eastern District of North Carolina
Defended manufacturer of biometric identification devices in action seeking declaration that client's patent was invalid and not infringed by plaintiff, and seeking damages under several state-law based contract and tort claims. Obtained dismissal of all federal and state law claims against client, with prejudice.
- United States District Court — Eastern District of Michigan
Represented automobile manufacturer in defending infringement suit relating to side impact sensors for automotive airbag systems. Obtained summary judgment of noninfringement in favor of client.
- United States District Court — Northern District of Ohio
Defended manufacturer of lawn care equipment in suit asserting infringement of patent on lawn mower blades. Defended vigorously through discovery and motions period and obtained favorable settlement for client.
- United States District Court — District of Colorado
Represented manufacturer of facsimile machines and its indemnified customers in defending patent infringement action relating to telephone dialing and call routing features of facsimile machines. Also defended related actions in the U.S. District Courts for the Southern District of New York and the Eastern District of New York. Obtained favorable settlement for clients.
- United States District Court — District of Colorado
Defended manufacturer of ski equipment in infringement suit relating to cross country ski bindings. Obtained favorable settlement for client.
Notable Appeal Decisions
Counsel — In re Tanaka, 640 F.3d 1246, 98 USPQ2d 1331 (Fed. Cir. 2011) — Received favorable decision of the Court of Appeals for the Federal Circuit reversing USPTO ruling limiting reissue rights of patentees, assuring right of patentees to add claims of varying scope to patents in reissue without altering existing patent claims.
Counsel — In re Iwahashi, 888 F.2d 1370 (Fed. Cir. 1989) — Received favorable decision on patentability of algorithm-related invention in first case considered by the Court of Appeals for the Federal Circuit relating to 35 U.S.C. §101 and algorithm-based inventions.
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