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Charles E. Cantine

PARTNER, NEW YORK



Charles E. Cantine is actively involved in all aspects of intellectual property counseling, including patent, trademark and trade secret litigation, drafting and negotiating international and domestic licensing, distribution and supply agreements, drafting opinions, and drafting and prosecution of patent applications.

As a litigator, Mr. Cantine has participated in all aspects of discovery, pretrial preparations and submissions, and trial. He has served as trial counsel before federal trial and appellate courts throughout the United States, including the district courts for New York, New Jersey, Texas, Delaware, Pennsylvania, Florida, Massachusetts and Minnesota, as well as before the Court of Appeals for the Federal Circuit.

In addition to his litigation experience, Mr. Cantine also performs substantial counseling on intellectual property matters, including advising clients on the development and management of international and domestic intellectual property portfolios involving patents, trademarks and trade secrets to protect his client’s research and development activities, commercial products and strategies. Mr. Cantine also advises his clients on freedom-to-operate matters, including validity and noninfringement opinions, due diligence investigations and competitor portfolio analysis.

Mr. Cantine's roster of clients includes companies in such technology areas as computer hardware and software, telecommunications, digital data storage devices including high density magnetic recording mediums, implantable identification transponders and other related geo-position tracking devices and systems, eye protective coatings and products, chemical compositions, medical devices, computer network infrastructure management and industrial automation.

Representative Matters

His recent matters and cases have included:

  • XpertUniverse v. Cisco Systems, Inc. – Represented XpertUniverse in a patent infringement and fraud case. First chair in a two week jury trial resulting in a verdict of over $70 million for our client, finding that the patents were valid and infringed and that Cisco had committed fraud. The court sustained the jury verdict with regard to the patent claims but reversed as to the fraud claim. The National Law Journal ranked the $70 million jury verdict in the top 5 IP verdicts in 2013. Case is on appeal.
  • Mirror Worlds, LLC v. Apple, Inc. – Represented Mirror Worlds in a patent infringement action on three patents relating to novel ways to organize, archive and display data and documents. Cross examined two fact witnesses during a one-week jury trial in Tyler, Texas. The jury found that Apple willfully infringed the three patents and awarded up to $625 million in damages. The jury also found the patents not invalid. The Court affirmed the finding of no invalidity but vacated the jury’s finding of infringement.
  • Thomas & Betts Corp. v. Richards Manufacturing Co., et al. – Represented Richards Manufacturing in a theft of trade secret and breach of duty of loyalty case relating to rubber injection molding processes for high voltage underground electrical connectors. Second chair in a five-week jury trial. Presented the direct testimony of four expert witnesses on behalf of our client, and cross examined two expert witnesses and the plaintiff’s primary fact witness. Case settled.
  • Axcess International, Inc. v. Savi Technologies, Inc. – Representing Axcess in a patent infringement action on two patents relating to active Radio Frequency Identification (RFID) technology for container tracking. The action is pending in the Northern District of Texas.
  • PODS Enterprises, Inc. v. ABF Freight System, Inc. – Represented PODS in a trademark infringement action relating to portable moving storage containers. The action is pending in the Middle District of Florida.
  • PODS Enterprises, Inc. v. U-Haul, Inc. – Representing PODS in a trademark infringement action relating to portable moving and storage containers. The action is pending in the Middle District of Florida.
  • Synthes (USA) v. Smith & Nephew, Inc. – Represented Synthes in a patent infringement action on three patents relating to bone plates for fracture fixation.
  • Digital Angel Corp. v. Datamrs SA, et al. – Represented Digital Angel in a patent infringement action on a patent relating to passive Radio Frequency Identification (RFID) technology for companion animal tracking.
  • SuperGuide Corp. v. DirecTV Enterprises, Inc. et al. – Represented Gemstar (third party defendant and counterclaim plaintiff) in a patent infringement action on three patents relating to on-screen program guides.
  • Paradise Creations, Inc. v. Westminster International Co. Inc. – Represented Paradise in a patent infringement action relating to ink composition for use in erasable markers.
  • Turn-Key Technology v. Fuji Photo Film USA et al. – Represented Fuji in a patent infringement action relating to plastic injection molding processes.

Activities
Publications
  • "Business Method Patents Under Attack – Is State Street in Jeopardy?" Stroock Special Bulletin, February 27, 2008
  • "In re Seagate Technology, LLC: Federal Circuit Narrows Willfulness, Limits Waiver and Abandons the Duty of Care," Stroock Client Memo, September 10, 2007
  • "A Patent Law Perspective: Is Expedited Approval of Biogenerics Around the Corner?" LabtoWallStreet, Issue 3, 2004
  • "File Early and File Often," Patent Strategy & Management, January 2004
Admitted to Practice
New York, 2000
U.S. District Court, Southern District of New York, 2000; U.S. District Court, Eastern District of New York, 2000; U.S. Court of Appeals, Federal Circuit, 2001
Patent Admissions
U.S. Patent and Trademark Office, 1999
Education
J.D., Fordham University School of Law, 1999; Member, International Law Journal
B.S., The Catholic University of America, 1986
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