Charles S. Barquist is a litigation partner resident in Morrison & Foerster’s Los Angeles office. Mr. Barquist’s practice is focused on business litigation including patents and other intellectual property, antitrust and unfair competition, and dispute resolution for technology companies.

In the intellectual property field, Mr. Barquist has represented several foreign and domestic companies in patent litigation in U.S. courts and before the International Trade Commission (ITC). Mr. Barquist’s cases include:

• Mr. Barquist recently represented EchoStar at trial in the Eastern District of Texas. Mr. Barquist and his team won a jury verdict finding plaintiff’s patent invalid – allegedly covering DVR technology – on three separate grounds.
• Representation of Veeco Instruments in patent litigation with Asylum Research Corporation, involving atomic force microscopes.
• Representation of TPO Displays Corporation in patent litigation brought by Semiconductor Energy Laboratory Co., Ltd., involving low temperature polysilicon TFT technology for display panels.
• Representation of an individual inventor in patent infringement action against Microsoft Corporation involving software patents. Judgments in excess of $19 million were obtained for our client.
• Representation of AEM (Holdings), Inc. in patent infringement litigation with Cooper Bussmann over chip fuse technology.
• Representation of Pioneer Corporation in patent litigation against Samsung over plasma display panel technology and against Zenith Electronics Corporation over digital television technology.
• Representation of eleven major retailers in litigation brought by Multi-Format, Inc. over DVD technology; complaint was voluntarily dismissed by plaintiff.
• Representation of Celltech R&D Ltd. in a patent and antitrust challenge to a settlement of patent litigation; summary judgment was granted in favor of Celltech, the Federal Circuit affirmed the dismissal.
• Representation of Altera Corporation in patent infringement trials involving programmable logic devices in district court in San Jose, California, and before the ITC in Washington, D.C.
• Representation of EchoStar Communications Corporation as respondent in a patent infringement trial before the ITC, in which the Administrative Law Judge found all patents not infringed, and one patent invalid and unenforceable.
• Representation of Wavestream Corporation in patent litigation against CAP Wireless involving microwave power combiner technology.
• Representation of Express Scripts, Inc. in patent litigation with Ronald A. Katz Technology Licensing involving interactive voice response system technology.

Mr. Barquist also led a team that won a $35 million settlement in a patent infringement action in Minnesota for our client Angeion Corporation, a manufacturer of implantable defibrillators. Other patent litigation has involved technologies such as hard disk drives, infrared thermometers, rechargeable batteries, digital satellite receivers, and environmental stress screening equipment, in such jurisdictions as Delaware, Rhode Island, and California (including San Diego, San Francisco, and Los Angeles). Mr. Barquist has also conducted numerous adversarial licensing negotiations with patent holders in the U.S., Asia and Europe. He has handled a large number of copyright, trademark and unfair competition matters on behalf of domestic and international clients, including a leading CD/DVD replicator, a Big Five accounting firm, a major telecommunications company, an airline, a major toy manufacturer, and a number of Japanese electronics and food products companies.

In addition, Mr. Barquist is experienced in other complex commercial and business litigation, including antitrust, products liability and environmental matters. Significant cases include an antitrust action on behalf of Space Exploration Technologies, a consumer class action against Microstar International, an ICC arbitration in Stockholm involving a turn-key electronics factory in China, a AAA arbitration involving development of a new anti-cancer drug, a products liability trial in New York in which a defense verdict was obtained for a U.S. automaker, representation of a major Wall Street investment bank in a securities fraud arbitration in Chicago in which all claims were dismissed, and the defense of environmental challenges to the harbor improvement plans of a major West Coast port. Mr. Barquist has also handled a number of pro bono matters, including a challenge to California’s distribution of funds for a federal summer jobs program, which recouped $1 million for the San Francisco program, and the winning of a preliminary injunction requiring water releases to protect environmental values in lower Putah Creek, near Davis, California.

Mr. Barquist is listed in Global Counsel 3000 as a Recommended Intellectual Property practitioner in Los Angeles, and was recognized as a Southern California “Super Lawyer” in 2004, 2005, 2006, 2007, and 2008. He was also selected for inclusion in the 2007, 2008, and 2009 editions of The Best Lawyers of America in the specialty of intellectual property law.

Experience

• Member of the bar in New York (1979) and California (1988)
• Morrison & Foerster LLP, Partner, Los Angeles Office, 1995-present
• Morrison & Foerster LLP, Partner, Tokyo Office, 1991-1994 (Mr. Barquist was licensed to practice as a Gaikokuho-Jimu-Bengoshi when resident in Japan.)
• Morrison & Foerster LLP, Partner, San Francisco Office, 1988-1991
• Morrison & Foerster LLP, Partner, New York Office, 1987-1988
• Parker Auspitz Neesemann & Delehanty P.C., Partner, 1985-1987 Associate, 1979-1985
• Law Clerk, Honorable Milton Pollack, United States District Court for the Southern District of New York, 1978-1979

Education

• Harvard Law School, J.D., cum laude, 1978
• University of Michigan, A.B. with high distinction and high honors in history, 1975

Professional Associations

• US Bar/Japan Patent Office Liaison Council
• American Bar Association, Intellectual Property Litigation Committee of the Litigation Section
• American Bar Association, International Litigation Committee of the Litigation Section
• American Bar Association, Products Liability Litigation Committee of the Litigation Section
• American Bar Association, Trial Practice Committee of the Litigation Section
• American Intellectual Property Law Association, Japan Practice Committee
• Association of the Bar of the City of New York, Committee on Professional Discipline
• Association of the Bar of the City of New York, Chair, Committee on State Legislation, 1983-1984
• Daiichi Tokyo Bar Association, 1991-1994
• Los Angeles Intellectual Property Law Association, Chair, Committee on Local Patent Rules, 1998-1999
• Los Angeles County Bar Association, Intellectual Property and Entertainment Law Section, Chair, 2000-2001
• Los Angeles County Bar Association, International Law Section, Chair, 2001-2002
• Los Angeles Intellectual Property Law Association, Vice President, 2002-2003
• Los Angeles Intellectual Property Law Association, President, 2003-2004
• University of Southern California Intellectual Property Institute, Planning Committee 2004 to present, Executive Committee 2006 to present

Lectures

• Practicing Law Institute
• University of Southern California Intellectual Property Institute
• PRIP Tokyo
• Asia Pacific Intellectual Property Association
• National Chengchi University, Graduate Institute of Intellectual Property, Taipei
• American Bar Association Tort and Insurance Practice Section
• American Corporate Counsel Association
• Council for Better Corporate Citizenship (Keidanren, Tokyo)
• International Intellectual Property Center (Kyoto)
• Japan External Trade Organization
• Japan Institute for Invention and Innovation
• Los Angeles County Bar Association
• Los Angeles Intellectual Property Law Association
• The Ministry of Electronics Industry of the People’s Republic of China
• The Nippon Fire & Marine Insurance Co.
• The Tokio Marine & Fire Insurance Co.
• Waseda University
• Tokyo High Court
• Japan Patent Attorneys Association

Publications

• An Introduction to International Trade Commission Litigation (2d ed.), with G. Brian Busey and John L. Kolakowski (2007)
• “MedImmune v. Genentech: The Supreme Court Upends the Federal Circuit’s Declaratory Judgment Jurisprudence,” Law.com (2007)
• “Trying Section 337 Cases before the ITC: Why Early Trial Preparation is Indispensable,” with G. Brian Busey, IP Litigator (2007)
• “Standard Patent Defense Jeopardizes Attorney-Client Privilege,” with Alison Tucher, Executive Counsel (2007)