Charles Walker is Head of IP Disputes, United States.
Charles tries and wins IP cases. As lead counsel, he won jury verdicts of $5.1 million and $15 million for his client enforcing patents for an offshore drilling technology. He won a $3.6 million jury verdict for a luxury fashion designer enforcing its trademarks. He won hard-fought victories both enforcing and defending against claims involving patents, trademarks, copyrights, trade secrets, false advertising, and unfair competition with demands from $1 million to $1 billion.
Charles has handled cases across the country in federal and state courts, in arbitration, and on appeal. To sharpen his courtroom skills, he tried almost twenty misdemeanor criminal cases as a volunteer city prosecutor.
Charles also counsels a wide range of clients outside of the courtroom. He helps clients identify, protect, and maximize the value of their intellectual assets or, when necessary, avoid or negotiate for the intellectual property rights of others.
1995 - JD, honors, The University of Texas School of Law
1992 - BS, Materials Science and Engineering, electronics option, Rice University
Charles is registered to practice before the US Patent and Trademark Office. He was admitted to practice law in Texas in 1995. He is admitted before the US Supreme Court, the US Court of Appeals for the Fifth and Federal Circuits, all of the US District Courts in Texas, and the US District Courts for the Northern District of Indiana and the Western District of Tennessee.
- Enforced patents for offshore drilling technology as lead counsel. Obtained a judgment of $5.1 million with an injunction based on jury trial win against the client's largest competitor. Won a jury verdict against another competitor for $15 million. Successful on two appeals to the Federal Circuit. Managed related proceedings in the EPO, Norway, Korea, Australia, and Brazil. Negotiated licenses with competitors and clients.
- Obtained judgment of $3.6 million with an injunction following a jury trial win against a large flea market for contributing to the trademark counterfeiting of luxury handbags, noted as one of the first trials to hold a landlord responsible for harboring counterfeiters.
- Obtained summary judgment in state court for patent trial lawyers in legal malpractice claim. Eventually overturned intervening Federal Circuit precedent at the Supreme Court with ruling that state court had subject matter jurisdiction over the patent malpractice case.
- Obtained summary judgment of non-infringement of patent for an oilfield tubular connection. Argued to the Court of Appeals to the Federal Circuit and affirmed.
- Defended against patent claims related to drilling rig designs, drilling and completion operations, hydraulic fracturing, downhole tools, seismic analytical software, payment processing software, catalysts and processes for refining, fraud detection for an electronic funds transfer network, online ticketing software, semiconductor design and processing, computer hardware, shape memory alloy stents, medical supplies, electronic components, tubular thread designs, RNase reverse transcriptase, and ergonomic chairs--many settling after achieving success at a Markman hearing, summary judgment, or trial.
- Enforced patents related to soil stabilization, nutraceuticals, business methods, and roadway rehabilitation resulting in settlements to protect market share or generate licensing revenue, with results including consent judgments after successful Markman rulings or preliminary injunctions.
- Corrected inventorship of patent for oilfield completion process through §256 litigation so that client jointly owned the patent.
- Participated in over twenty Markman proceedings.
- Enforced and defended against trade secret misappropriation claims in state and federal court in cases involving measuring-while-drilling (MWD) tools, gas turbine generators, personality tests, surgical equipment, pipe thread design, database maintenance software, and business consulting, including enforcement success through bench trials and defense success through summary judgment.
- Enforced and defended against copyright claims involving seismic plotting software, IMS database management software, insurance sales software, downhole tool designs, instruction manuals, and jewelry, including appellate win on a copyright deposit issue of first impression.
- Litigated trademark, false advertising, and unfair competition claims involving luxury goods, computers, road rehabilitation, wedding dresses, diapers, insulation, ergonomic chairs, refurbished process controllers, supplement labeling, and radio broadcasting.
- Arbitrated several cases to a final award, including cases against former employees for misappropriation, between competitors for trademark and patent infringement claims related to ergonomic chairs, and in defense of patent infringement claim involving hydraulic fracturing after moving the case from the Eastern District of Texas and into arbitration.
- Obtained and successfully resisted extraordinary relief, including ex parte seizures, TROs, and preliminary injunctions.
- Litigated claims for fraud, breach of contract, breach of warranty, malpractice, and associated business torts related to technology or intellectual property.
- Tried almost twenty misdemeanor criminal cases and won every jury verdict as a volunteer prosecutor for the City of Houston Municipal Court.
Rankings and recognitions
- Lawyer of the Year, Houston: Litigation - Patent, Best Lawyers, 2015
- Lawyer of the Year, Houston: Patent Law, Best Lawyers, 2013, 2016
- The Best Lawyers in America, Best Lawyers, 2012 - 2017
- Chambers USA, Texas: Intellectual Property, Chambers & Partners, 2010 - 2016
- Texas Super Lawyers, Intellectual Property, Thomson Reuters, 2012 - 2016
- Legal 500 US, recommended lawyer, Intellectual Property: Trademarks: Litigation, The Legal 500, 2013 - 2014
- Legal 500 US, recommended lawyer, Intellectual Property: Patent Litigation: Full Coverage, The Legal 500, 2011 - 2016
- IP Star, Managing Intellectual Property, 2013 -2016
- IAM Patent 1000 - The World's Leading Patent Professionals, Intellectual Asset Management, 2014 - 2015
- Future Star, Texas, Benchmark Litigation, 2009 - 2015
- Texas Top Rated Lawyer, LexisNexis Martindale-Hubbell, 2012 - 2014
- Top 50 under 45, IP Law & Business, 2008
- Texas Rising Star, intellectual property litigation, Thomson Reuters, 2005 - 2009
- IP Luminary, Patent World, 2007
- Lawyers on the Fast Track, intellectual property, H-Texas magazine, 2004
- AV Rated Lawyer, LexisNexis Martindale-Hubbell, 2012
- Co Author, "The Effects of New Patent Office Procedures on District Court Strategy ," Texas Lawyer, May 20, 2015
- Co Author, "Trade secrets and the regulation of hydraulic fracturing - Toward a global perspective," Energy, April 11, 2013
- Co Author, "Intellectual Property Issues in Shale – Protecting Your Intellectual Property and Avoiding Infringement," Oil, Gas and Energy Law Section, December 01, 2011
- Co Author, "Innovation in the Energy Sector: Protecting and Exploiting Your Intellectual Property," Fulbright Briefing, January 16, 2008
- Co Author, "Southern District of Texas Adopts Local Patent Rules," Fulbright Briefing, January 15, 2008
- "Patent Trends: Perceptions, Cases and Practices Shaping the Future," December 06, 2006
- "Recent and Future Changes in Patent Law & Litigation," Federal Bar Association, Houston, Texas (2012)
- "Protecting Intellectual Property in the Shale," The Petroleum Engineers Club of Dallas, Texas (2012)
- "Patent Damages--Proving up and Attacking Reasonable Royalty Damages," Texas Intellectual Property Law Journal Symposium, Austin, Texas (2011)
- "Markman and Pre-Markman Hearings—Strategies from Both Sides," State Bar of Texas Advanced Patent Litigation Course, San Antonio, Texas (2010)
- "Retaining and Handling Experts in Litigation," StoneTurn Group, Boulder, Colorado (2010)
- "Infringement Review—Joint, Direct, and Indirect," State Bar of Texas Advanced Intellectual Property Law, Austin, Texas (2010)
- "Patent Remedies" with Michael Lochlar, Annual Institute on Intellectual Property, University of Houston and Houston Intellectual Property Law Association, Houston, Texas (2008)
Prior speeches include topics such as Patent Litigation Trends, Effects of Medimmune on Patent Licensing and Litigation, Injunctions Post eBay, Extraterritorial Effects of IP, Preparing Lay and Expert Witnesses for Deposition, 271(f) Infringement, Ex Parte TROs in IP cases, Music Copyrights in a Digital Age, Copyright Registrations and Deposits in Litigation, Doctrine of Equivalence, Registration of Copyrights and Trademarks, and Intellectual Property Overview.
Memberships and activities
- Texas Bar Foundation (Fellow)
- Federal Bar Association, Southern District of Texas Chapter (President-Elect)
- Houston IP Inn of Court (Barrister)
- Houston Intellectual Property Law Association (former board member and officer)
- Intellectual Property Owners Association
Congress created new patent office procedures in 2012 with the America Invents Act (AIA) to challenge the validity of issued patents. These procedures have become....
May 20, 2015