Charles Gorenstein

Senior Counsel

1-703-205-8000
Charles Gorenstein

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.

Services

Industries

Representative Matters

  • United States District Court — District of Delaware
    Defended manufacturer against charges of patent infringement relating to vehicle controls. Obtained summary dismissal of action, Rule 11 sanctions against opposing counsel and Section 285 sanctions against plaintiff.
  • United States District Court — Southern District of Texas
    Defended automobile manufacturer against charges of patent infringement relating to automobile ignition and fueling systems. Obtained highly favorable Markman ruling and resulting summary dismissal of all charges.
  • 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.

Articles

  • January 24, 2017

    Law360 Quotes Partner Charles Gorenstein on Potential Impact of Federal Hiring Freeze on USPTO

    by | Law360

    BSKB partner Charles Gorenstein was quoted in a January 24, 2017 Law360 article entitled “Federal Hiring Freeze Could Hurt Patent Quality,” where he discussed the potential impact of the recently instituted federal hiring freeze on processes at the U.S. Patent and Trademark Office (USPTO). Potential impact of the freeze at the USPTO includes possible delays in the patent process, from application intake to examination, as well as the potential for a decrease in quality, as attempts are made to stay on deadline with increased workloads. Mr. Gorenstein notes that the patent office might be particularly susceptible to the effects of this freeze because there has historically been a relatively high turnover rate in the examining corps. He also states “If they continue to lose examiners at really any rate — a normal rate or a higher-than-normal rate — and if they can’t replace them, then inevitably we’ll see a slowdown of output and the backlog will increase. Obviously, that’s going to happen if there are fewer people to do the work.”

  • March 9, 2016

    Law360 Quotes Partner Charles Gorenstein on Recent Patent Agent Privilege Decision

    by | Law360

    BSKB partner Charles Gorenstein was quoted in a March 9, 2016 Law360 article discussing the recent Federal Circuit decision regarding patent agent privilege. The decision recognizes a privilege that applies to communication between patent applicants and patent agents, but extends only to communications necessary to prosecute patents and to engage in other activities for which agents are authorized. Prior to this decision, some district courts recognized patent agent privilege, while others did not. Mr. Gorenstein states, “The biggest effect here is the certainty. The court has taken an issue that has been bouncing around the district courts for a time and let everyone know where the line is. We know where there is privilege and where there is not privilege, and certainty is good.”