Charles S. Baker

Partner

Fulbright & Jaworski LLP

Charles S. Baker

Houston

T:+1 713 651 8396

F:+1 713 651 5246

With more than 20 years of experience, Charles has prosecuted and defended complex intellectual property and commercial litigation matters, including patent, trademark, trade dress and copyright infringement matters, as well as trade secret and unfair competition matters. His experience includes significant cases involving major clients such as numerous FORTUNE 500 high-tech companies in the computer hardware and software segments, telecommunications, Internet, VoIP, data storage, and networking industries.

Charles has a track record of successful trials, having tried more than 30 cases to verdict and has argued numerous cases on appeal. In addition to handling numerous intellectual property cases in federal court, he has handled nearly half a dozen matters before the International Trade Commission (ITC). He is known for his representation of the lead defendant in the MGM v. Grokster case, which has been called the most important copyright infringement case in the 21st century.

Furthermore, Charles has litigated numerous complex commercial matters, counsels clients in IP and antitrust matters, and negotiates complex licensing arrangements. He is recognized as a leader in the field of intellectual property litigation, having been named a leading lawyer in Texas: intellectual property by Chambers USA since 2007.

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  • Education

    1985 - J.D., with honors, South Texas College of Law
    1982 - B.B.A., with honors, Accounting, The University of Texas

    Charles is licensed to practice law in Texas, including all federal district courts in Texas, as well as being licensed to practice in the United States Supreme Court, the U. S. Court of Appeals for the Ninth, Fifth and Federal Circuits, the U.S. Tax Court and the U.S. Court of Federal Claims.

  • Representative experience

    Patent

    • Lead counsel for an Internet software company in the defense of a patent infringement lawsuit in California. Case successfully settled after a favorable Markman ruling.
    • Lead counsel for a major medical device company in a patent infringement lawsuit filed in the EDTX. Case settled.
    • Lead counsel for a supplier of remote video monitoring systems used in police vehicles that had been sued for patent infringement in New Jersey as well as representing that same client in a companion investigation before the ITC. Case successfully settled.
    • Represented a large defense contractor in a patent infringement lawsuit brought against the Government in the Court of Federal Claims. Case subsequently settled.
    • Represented one of the world's largest wireless cellular providers in patent infringement case with damages in excess of $100 million. Case settled on appeal.
    • Represented one of the world's leading computer manufacturers in a patent infringement lawsuit. Case was dismissed via summary judgment and affirmed on appeal to the Federal Circuit.
    • Represented a large cell phone manufacturer in a patent infringement action involving eleven patents. Case subsequently settled.

    International Trade Commission

    • Represented a large manufacturer of durable medical products accused of patent infringement with respect to height adjustable medical beds manufactured in China. Case successfully settled on the eve of trial
    • Represented a manufacturer/seller of security cameras and related devices made in China that were accused of patent infringement. Case successfully settled.
    • Represented one of the world's largest manufacturer of DRAM chipsets that were accused of infringing over 30 patents. Case successfully settled on the eve of trial.
    • Represented one of the world's largest manufacturers of wireless cellular phones accused of infringing over a dozen patents. Case settled on the eve of trial.

    Copyright

    • Lead counsel for the world's most popular P2P file sharing software in a high-profile copyright infringement lawsuit in New York federal court. Damages claimed are in excess of $500 million.
    • Lead counsel for a very popular P2P software company that had been sued for copyright infringement. Case was successfully settled.
    • Lead counsel for a large Usenet provider that has been sued in New York for copyright infringement by the Major Record Labels. Damages sought are in excess of $500 million.
    • Lead counsel a geophysical company in a lawsuit against another geophysical company for copyright infringement. Lawsuit successfully settled on the eve of trial.
    • Lead counsel in the Grokster case which was a high-profile copyright infringement lawsuit that has been billed as the most important copyright battle in the 21st century. Claims of contributory and vicarious copyright infringement were dismissed on summary judgment which was affirmed by the Ninth Circuit. On appeal the U.S. Supreme Court remanded the case for further proceedings in order to determine liability for a new theory of secondary copyright infringement known as inducement.
    • Represented a large marine shipping company in a software copyright infringement case and companion trade secret misappropriation case in Texas and California. Case settled.

    Trademark

    • Lead counsel for a medical device company in a breach of contract and trademark infringement lawsuit involving technology with respect to glucometers in cellular phones. Obtained a summary judgment in favor of client.
    • Counseled one of the world's largest computer manufacturers with respect to trademark and copyright issues.
    • Represented the world's most popular soft drink producer in a case of first impression involving the unauthorized sale of its products. Permanent injunction issued and substantial portions of Defendants' antitrust counterclaims were dismissed on the eve of trial. First chair bench trial resulted in favorable verdict for client. Affirmed on appeal (argued appeal).
    • Trade dress infringement action for a large seafood restaurant chain. Case settled with an agreed injunction and payment of attorneys' fees to client.
    • Represented a national restaurant chain in its suit against a knock-off restaurant for infringement of trademarks and trade dress, misappropriation of trade secrets and unfair competition. Case settled with an agreed injunction and payment of attorneys' fees.
    • Represented a large chain of retail stores that supply home furnishings in a trade dress infringement lawsuit. Case settled with an agreed injunction and payment of attorneys' fees.

    Trade Secrets

    • Lead counsel for a large international seismic company in the defense of a $50 million trade secret misappropriation trial that lasted over six weeks. Jury returned verdict in less than two hours totally exonerating client.
    • Lead counsel in several suits brought by a large technology outplacement company against several of its former employees for breach on their non-compete agreements and theft of trade secrets. Obtained temporary restraining orders and successfully tried several temporary injunctions.
    • Lead counsel for a large software company that provides network management in a lawsuit against a former agent for theft of trade secrets and patent infringement. Case successfully settled.
    • Lead counsel for a large manufacturer of alternative power devices in a trade secret misappropriation case in which damages sought were in excess of $100 million.
    • Lead counsel to a voice-over-Internet telephony company and its investors who were sued for fraud, conversion and theft of trade secrets. Damages sought were in excess of $20 million.
    • Represented a large South Korean-based consumer electronics company in a theft of trade secrets and fraud case; successfully argued partial summary judgment motion that lead to favorable settlement. Damages sought against client were in excess of $1.2 billion.
    • Lead counsel for the world's largest oilfield supply company as a plaintiff in a trade secret misappropriation case filed against certain of its former officers and employees. Obtained a temporary restraining order and writ of garnishment, and eventually an agreed temporary injunction. Case favorably settled on the eve of trial.
    • Represented one of the world's largest manufacturers of DRAM chipsets in a trade secret misappropriation lawsuit. Case favorably settled after our motion for partial summary judgment was granted.
    • Lead counsel for a medical device manufacturer in a complex commercial and intellectual property litigation including theft of trade secrets, fraud and breach of contract issues. Plaintiffs claimed damages in excess of $50 million. Case favorably settled after extensive trial preparations, and after defeating plaintiffs' temporary injunction motion and motion for summary judgment.
    • Represented one of the world's largest suppliers of wellhead equipment in a trade secret misappropriation and copyright infringement case. Case favorably settled (agreed injunction and reimbursement of all expenses).

    Commercial Litigation

    • Lead counsel for a large international seismic company in a lawsuit brought against its largest competitor to set aside a settlement agreement. Successfully obtained a summary judgment that was later affirmed on appeal (argued appeal as well).
    • Lead counsel for an Internet software company in several suits involving breaches of various license agreements. All cases successfully settled.
    • Lead counsel for a large Canadian software company in a lawsuit brought by a large car rental company concerning alleged breach of a software license. Case favorably settled.
    • Lead counsel for software company sued for stock fraud. Cases were dismissed with prejudice.
    • Lead counsel for a Houston-based electricity provider in a securities fraud case. Lawsuit was voluntarily dismissed after a motion to dismiss was filed.
    • Represented a large California-based software company that was accused of fraud and breach of contract in Texas state court. Successfully set aside a multi-million dollar default judgment and case settled shortly thereafter.
    • Represented one of the world's largest cell phone manufacturers in defense of several novel nation-wide class action lawsuits in which plaintiffs have asked for economic damages for the failure to include headsets in the sale of cellular phones. Successfully dismissed the MDL which was affirmed on appeal.
    • Represented one of the world's largest cell phone manufacturers in its coverage dispute with its insurance carriers over coverage of an MDL class action. Summary judgment granted, affirmed on appeal.
    • Represented a large South Korean-based consumer electronics company in a complex fraud and breach of contract lawsuit in which we sought damages in excess of $350 million. Case favorably settled while jury was deliberating.
    • Lead counsel for a Big Six accounting firm defending against claims of malpractice and fraud involving approximately $50 million in damages. After partial summary judgment was granted in favor of client case successfully settled. 
    • Represented a national hardware store chain in a $10 million breach of contract and business torts lawsuit. The case was successfully mediated and settled for a sum substantially less than demanded by the plaintiffs. 
    • Co-lead counsel in connection with the confirmation hearing of the nation's largest convenience store chain located in Phoenix, Arizona. Plan of reorganization was successfully approved by the bankruptcy court after a 2-1/2 week trial.
    • Lead counsel in a one-week trial for the nation's largest jewelry store chain in a bankruptcy case in Dallas, involving the placement of approximately $185 million of debtor-in-possession financing for the company. 
    • Co-lead counsel for the nation's largest bus company in a $200 million adversary claim tried in bankruptcy court in Corpus Christi, Texas for one week. Successfully obtained a reduction of the NLRB's claim to $25 million. 
    • Lead counsel in a four-day trial in Lexington, Kentucky in the bankruptcy case of a large offshore exploration and drilling company. Represented the debtor's largest secured creditor (claims were in excess of $30 million). Trial involved the debtor's attempt to obtain interim financing to drill additional offshore wells over the objections of the bank. 
    • Co-lead counsel in the two-week bankruptcy confirmation hearing of one of the world's largest suppliers of gypsum board (represented the unsecured trade creditors' committee in its opposition to the plan of reorganization proposed by the debtor). 
    • Member of a defense team of lawyers responsible for defeating the claims of the FDIC in the largest bankruptcy filing of a bank holding company.
    • Lead counsel for defending a land developer in federal court against charges that he and his company conspired with others to violate the Sherman Antitrust Act and the RICO statute. The plaintiff in the case had sought damages in excess of $10 million. Successfully obtained a summary judgment dismissal and sanctions against opposing counsel, all of which were affirmed by the Fifth Circuit (argued appeal).
  • Professional activities
    • American Bar Association (Litigation and Intellectual Property Law sections) 
    • American Intellectual Property Law Association (AIPLA)
      • Trade Secret Law Committee
    • International Trademark Association
    • International Trade Commission Trial Lawyers Association (ITCTLA)
    • Bar Association of the Fifth Federal Circuit
    • Federal Bar Association
    • Houston Bar Association
    • Houston Intellectual Property Law Association
    • Travis County Bar Association
    • Defense Counsel of America
    • State Bar of Texas (Intellectual Property Law and Litigation sections)
  • Professional honors
    • Texas Super Lawyer - Thomson Reuters (2005 - 2013)
    • Chambers USA - Texas:intellectual property, Chambers and Partners (2007 - 2013)
    • The Best Lawyers in America - Best Lawyers (2007 - 2014)
    • The Best of the Best 2011 - commercial arbitration, Expert Guides (2011)
    • Expert in Commercial Arbitration - Expert Guides, Legal Media Group (2011)
    • Top Six IP Cases for the Year - IP Law & Business magazine, ALM Media (2004)
  • Speaking engagements
    • "Recent Developments in Trade Secret Law," 13th Annual Intellectual Property Law Symposium, UT Law School, Austin, Texas, February, 2012
    • Moderator, "Intellectual Property: Litigation Trends Update," Fulbright Client Seminar, Houston, Texas, December 2011
    • Panelist, "Privacy and Data Protection: Why Should Your Company be Concerned?" Fulbright Client Seminar, Houston, Texas, August 2010
    • Panelist, 11th Annual Intellectual Property Law Institute, Institute of Continuing Legal Education, 2005
    • Panelist, Price Waterhouse Intellectual Property Conferences, 1998, 1999, 2002
    • Panelist, State Bar of Florida-Intellectual Property Law Section, Annual Meeting and Conference, 2006 
  • Publications
    • Chapter titled,"The Intellectual Property Negotiation Process," Maximizing Intellectual Property Value: Leading Lawyers on Leveraging Your IP Portfolio, Negotiating IP Transactions, and Creating Intellectual Capital (Inside the Minds), Aspatore Books, 2007
    • "Protecting IP From Former Employees," Porter & Hedges LLP, 2007
    • "Grokster Is Not Napster," National Law Journal, 2005
    •  "Copyright Protection and Employee E-mail Searches," Executive Legal Adviser, 2005
    • "Don't Ban the Betamax (or the Xerox)," Fort Worth Business Press, 2003
    • Editor, Employee Non-Competition Law, Clark Boardman, 1994–1999
  • Civic involvement
    • St. Martin's Episcopal Church, Vestry Member, 2006
  • Licenses
    • Texas State Bar License