Carl C. Charneski
Counsel
Overview

“As a former USITC Administrative Law Judge, let me take you behind the curtain and give you an insider’s view of a Section 337 proceeding from beginning to end.”

Carl is a former Administrative Law Judge with the U.S. International Trade Commission and has seen it all from the other side of the bench. With this unique perspective, Carl understands what is important to the out-gunned and out-manned trial judge tasked with deciding the winner in complex Section 337 proceedings. Having experienced first-hand the “ups and downs” of presiding over Section 337 investigations, Carl can share with you his insights on how to effectively, efficiently, and persuasively present your best case before the ITC.   

Carl is co-chair of the Brinks ITC practice group.  He brings to this group the rare talent of actually having presided over Section 337 investigations and actually having issued initial determinations resolving the investigation at the critical trial level where the all-important evidentiary record is created. These Section 337 ITC investigations included patent, trademark, and copyright infringement, as well as trade secret misappropriation.  Further, the investigations over which Carl presided as the judge covered a wide range of high-tech industries such as flash memory, GPS, semi-conductors, digital TVs, digital cameras, smart phones, tablet technology, wind turbines, and ground fault circuit interrupters.

Carl also advises clients on ITC-related litigation strategies before the U.S. District Courts and the U.S. Court of Appeals for the Federal Circuit. In addition, Carl adds depth to the firm’s green technology practice group, having previously served as an Administrative Law Judge with the U.S. Environmental Protection Agency as well as Counsel to the Federal Mine Safety and Health Review Commission.

Education
  • J.D.,
    St. John's University School of Law, 1976
  • B.A.,
    St. Francis College
Bar Admissions
  • District of Columbia
  • U.S. Court of Appeals, Dist. of Columbia
  • Virginia
Area of Focus
Experience | Legal

United States International Trade Commission
Administrative Law Judge, April 2007 - July 2011

U.S. Environmental Protection Agency
Administrative Law Judge,  1995 - 2007

Social Security Administration
Administrative Law Judge, 1994 - 1995

U.S. Department of Labor
Trial and Appellate Attorney, 1988 - 1994

Federal Mine Safety & Health Review Commission
Counsel, 1983 - 1988
Attorney, 1977 - 1983

Forward Thinking
in the media
September 20, 2016
On September 20, 2016, Washington D.C. Counsel, Carl Charneski, wrote a guest post for Law360 entitled, "Do All Roads Lead To The ITC?" Please visit here to read.
in the media
June 09, 2016
On June 9, 2016, Law360 published an article written by  Counsel, Carl C. Charneski entitled, “A Former ALJ’s View of Witness Statements at the ITC.” Please visit here for link.
alert
April 01, 2016

On March 31, 2016, the Federal Circuit issued an Order denying Petitions for Rehearing En Banc filed by the U.S. International Trade Commission and intervenor Align Technology, Inc.

alert
February 12, 2016

In a case of major significance, on January 27, 2016, both the U.S. International Trade Commission (ITC) and Align ...

in the media
November 02, 2015

On November 2, 2015 Lyle Vander Schaaf and Carl Charneski were mentioned in the Law360 ...

alert
December 19, 2013
On December 13, 2013, a divided Federal Circuit panel reversed the U.S. International Trade Commission and held that the section 337 statute does not authorize the ITC to adjudicate any investigation under which the theory of infringement is based ...
multimedia
January 29, 2013

Brinks Gilson & Lione offered its glimpse into three significant developments for 2013. The seminar is eligible for one ...

publication
December/January 2013
Carl C. Charneski and Tiffany W. Shimada penned “Does Louis Vuitton's Recent Victory at the US International Trade Commission Mark that Tribunal as a Viable Alternative to District Court? ” for the December/January issue of World ...
publication
September/October 2012
Carl C. Charneski wrote “Have ‘Public Interest Factors’ Finally Come of Age at the ITC?' for the September/October 2012 issue of World Intellectual Property Review. Click here to read.
publication
May/June 2012
Carl C. Charneski penned “Impact of the AIA on Patent Litigation: Changes That May Affect Your Choice of Forum,” for the May/June 2012 issue of Landslide. Click here to read more.
publication
September/October 2011
Carl C. Charneski penned “Selecting a Forum: ITC Versus District Court,” for the September/October 2011 issue of World Intellectual Property Review. Click here to read.
publication
October 2011
Carl C. Charneski penned “Infringement Litigation: ITC or District Court?” for the October 2011 issue of IP Today.
publication
September 2011
Carl C. Charneski is interviewed in the September 2011 Metropolitan Corporate Counsel article “Former ITC Judge Brinks Wealth of Experience to Private Practice.”
Presentations
  • "Demystifying the Recent Decisions and Appeals at the ITC," Park Hyatt Washington IP Strategy Summit, Washington, DC, June 7, 2016 
  • "Utilizing the ITC in Your Enforcement Strategy,” Enforcement conference Lunch ‘n’ Learn Event,  Palo Alto, CA, March 19, 2015
  • "The Inner Workings of the ITC and Common Misconceptions," 7th Annual Advanced Forum, Washington, DC, February 24-25, 2015
  • "An Overview of Patent Litigation," AIPLA panel, Brinks Gilson & Lione, DC and Chicago office, November 6, 2014
  • "The Changing Landscape of 337 Proceedings Before the U.S. International Trade Commission," IP Strategy Summit: Enforcement, Silicon Valley, CA, June 19, 2014
  • “How Is The U.S. International Trade Commission Faring In Today's Regulatory Climate?” NLJ Regulatory Summit, Washington, DC, November 13, 2013
  • "Best Practices When Presenting to the ITC," co-presenter with Jay Reiziss, The IP Strategy Summit: Enforcement, Washington, DC, May 30, 2013
  • "ITC Bench Q&A: Claim Construction and the Markman Hearing," Moderator, ACI's Managing Complex ITC Litigation conference, San Francisco, Calif., October 30, 2012
  • "Judicial Perspectives on NPE Litigation," ACI's Advanced Summit on NPE Litigation, How to Successfully Defend Against Complex IP Infringement Claims & Litigation Involving 'Patent Trolls,' New York, June 12, 2012
  • "Going to Trial at the ITC: 5 'Litigator’s Golden Rules' for Achieving Success at the ITC," ACI's Expert Forum on ITC Litigation & Enforcement, Washington, DC, February 28, 2012
  • "Impact of the AIA on Patent Litigation: Changes That May Affect Your Choice of Forum" Patent Strategies After the America Invents Act, Seattle, Wash., January 30, 2012
  • "Using U.S. Trade and Competition Laws to Protect the Value of Brand Names and Other Trademarks in a Global Economy,” Chicago International Trade Commissioners Association, Chicago, October 4, 2011
  • American Conference Institute's 3rd Expert Forum on ITC Litigation & Enforcement, New York, New York, 2011
  • Silicon Valley IP Law Association, Palo Alto, Calif., 2010
  • "The ITC Comes to Silicon Valley" Conference, San Jose, Calif., 2010
  • Korean Intellectual Property Association (KINPA) Conference, Seoul, Korea, 2009
  • ITC Trial Lawyers Association, 2008
  • AIPLA Spring Conference, Houston, Texas, 2008
Representative Matters

Section 337 Decisions and Investigations

  • In the matter of Certain Personal Computer/Consumer Electronic Convergent Devices, Components Thereof: and Products Containing Same, Inv. No. 337-TA-558
  • In the matter of Certain Equipment For Telecommunications Or Data Communications Networks, Including Routers, Switches, And Hubs, And Components Thereof, Inv. No. 337-TA-574
  • In the matter of Certain Nickel Metal Hydride Consumer Batteries, Components Thereof: and Consumer Electronic Products Containing Same, Inv. No. 337-TA-579
  • In the matter of Certain Hydraulic Excavators and Components Thereof, Inv. No. 337-TA-582
  • In the matter of Connecting Devices (“Quick Clamps”) for Use with Modual Compressed Air Conditioning Units Including Filters, Regulators, and Lubricators (“FRL’s”) that are Part of Larger Pneumatic Systems and the FRL Units They Connect, Inv. No. 337-TA-587
  • In the matter of Certain Switches and Products Containing Same, Inv. No. 337-TA-589
  • In the matter of Certain Bassinet Products, Inv. No. 337-TA-597
  • In the matter of Certain Lighting Control Devices Including Dimmer Switches and/or Switches, Inv. No. 337-TA-599
  • In the matter of Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602
  • In the matter of Certain DVD Players and Recorders and Certain Products Containing Same, Inv. No. 337-TA-603
  • In the matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605
  • In the matter of Certain Semiconductor Devices, DMA Systems and Products Containing Same, Inv. No. 337-TA-607
  • In the matter of Certain Endodontic Instruments, Inv. No. 337-TA-610
  • In the matter of Certain Ground Fault Circuit Interrupters and Products Containing the Same, Inv. No. 337-TA-615
  • In the matter of Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same, Inv. No. 337-TA-617
  • In the matter of Certain Low Antimony Phosphoric Acid, Inv. No. 337-TA-620
  • In the matter of Certain Systems for Detecting and Removing Viruses or Worms, Components Thereof, and Products Containing Same, Inv. No. 337-TA-624
  • In the matter of Certain Silicon Microphone Packages and Products Containing the Same, Inv. No. 337-TA-629
  • In the matter of Certain Acetic Acid, Inv. No. 337-TA-633
  • In the matter of Certain Hair Irons and Packaging Thereof, Inv. No. 37-TA-637
  • In the matter of Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-641
  • In the matter of Certain Vein Harvesting Surgical Systems and Components Thereof, Inv. No. 337-TA-645
  • In the matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, Inv. No. 337-TA-648
  • In the matter of Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing Or Relating To Same and Certain Products Containing Same, Inv. No. 337-TA-655
  • In the matter of Certain Voltage Regulators, Components Thereof, and Products Containing Same, Inv. No. 337-TA-564
  • In the matter of Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components, Inv. No. 337-TA-663
  • In the matter of Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof, Inv. No. 337-TA-672
  • In the matter of Certain Machine Vision Software, Machine Vision Systems and Products Containing Same, Inv. No. 337-TA-680
  • In the matter of Certain Flash Memory and Products Containing Same, Inv. No. 337-TA-685
  • In the matter of Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694
  • In the matter of Certain Personal Data and Mobile Communications Devices and Related Software, Inv. No. 337-TA-710
  • In the matter of Certain Large Scale Integrated Circuit Semiconductor Chips and Products Containing Same, Inv. No. 337-TA-716
  • In the matter of Certain Automotive Vehicles and Designs Therefore, Inv. No. 337-TA-722
  • In the matter of Certain Collaborative System Products and Components Thereof, Inv. No. 337-TA-728
  • In the matter of Certain Adjustable-Height Beds and Component Thereof, Inv. No. 337-TA-734
  • In the matter of Certain Toner Cartridges and Components Thereof, Inv. No. 337-TA-740
  • In the matter of Certain Data Storage Products and Components Thereof, Inv. No. 337-TA-748
  • In the matter of Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof, Inv. No. 337-TA-752
  • In the matter of Certain Birthing Simulators and Associated Systems, Inv. No. 337-TA-759
  • In the matter of Certain Display Devices, Including Digital Televisions and Monitors II, Inv. No. 337-TA-765
  • In the matter of Certain Electronic Devices, including Mobile Phones, Mobile Tablets, Portable Music Players, and Computers, and Components Thereof, Inv. No. 337-TA-771
Press Releases & Events
September 15, 2016

On September 15, Carl Charneski will present, "Demystifying the Recent Decisions and Appeals ...

June 01, 2016

CHICAGO—National law firm Brinks Gilson & Lione is “at the top of the list” again this year for intellectual property according to IAM Patent 1000 2016—The World’s Leading Patent Professionals, Intellectual Asset Management (IAM) magazine's guide to leading private practice patent professionals and firms.

June 7, 2016

Brinks is sponsoring the IP Strategy Summit: Washington, DC, taking place on Tuesday, June 7, 2016 at the Park ...

March 13, 2015
CHICAGO—Carl C. Charneski, an attorney at Brinks Gilson & Lione and a former Administrative Law Judge at the U.S. International Trade Commission (ITC), was a featured presenter at the 7th Annual Advanced Forum on ITC Litigation & ...
March 13, 2015
CHICAGO—The U.S. International Trade Commission (ITC) continues to be an “attractive tribunal in the age of highly complex intellectual assets and global competition,” says James R. Sobieraj, president of Brinks Gilson & Lione, ...
September 03, 2014
CHICAGO—Brinks Gilson & Lione has been named Trade Law Firm of the Year: USA by Lawyer Monthly in its Legal Awards 2014 edition, principally on the strength of its International Trade Commission practice group, which includes 35 attorneys ...
June 16, 2014
CHICAGO— Each year, Intellectual Asset Management magazine's IAM Patent 1000—The World’s Leading Patent Practitioners spotlights best-in-class patent prosecution, licensing and litigation practitioners and firms, and this year ...
June 03, 2014
CHICAGO—Fourteen attorneys at intellectual property law firm Brinks Gilson & Lione have been selected by Managing Intellectual Property magazine to appear in its second edition of IP Stars for 2014. Brinks attorneys named include firm ...
January 14, 2014
CHICAGO -- Brinks Gilson & Lione, one of the nation’s largest intellectual property law firms, has announced the 2014 chairpersons of its legal and industry practice groups and geographic task forces. The firm added a new practice group ...
June 16, 2014
WASHINGTON, D.C.—Intellectual property law firm Brinks Gilson & Lione's Washington, D.C. office has again this year received high recognition in IAM Patent 1000—The World’s Leading Patent Practitioners, placing in the ...
November13, 2013
On November 13, Carl C. Charneski will be moderating “How Is The U.S. International Trade Commission Faring In Today's Regulatory Climate?” at the NLJ Regulatory Summit in Washington, DC.
July 4, 2013
On July 4, Carl C. Charneski will be speaking at the Creative Economy & Intellectual Property Conference 2013 in Seoul, Korea.  
June 20, 2013
On June 20, Carl C. Charneski will be speaking at the San Diego Intellectual Property Law Association June 2013 Dinner meeting in San Diego, CA. 
May 29, 2013
On May 29, Laura Beth Miller and Carl C. Charneski will be speaking at The IP Strategy Summit: Enforcement in Washington, D.C. Ms. Miller will be speaking on the panel “Standard Essential Patents (SEPs) and Your Enforcement ...
February 15, 2013
On February 15, Ryan L. Marshall and Carl C. Charneski will be moderating panel discussions. Mr. Charneski will be moderating the panel "Practicing Before the ITC," and Mr. Marshall will be moderating the, "University ...
January 15, 2013
CHICAGO – Brinks Gilson & Lione has added four new attorneys as chairs of its firm-wide practice groups and formed two new task forces to focus on intellectual property legal services to clients in Germany and Brazil. Appointees include ...
October 30, 2012
On October 30, Carl C. Charneski will be moderating the panel, "ITC Bench Q&A: Claim Construction and the Markman Hearing" at ACI's Managing Complex ITC Litigation conference in San Francisco, CA.
June 19, 2012
CHICAGO – Brinks Gilson & Lione has been ranked among the top U.S.-based patent law firms in Intellectual Asset Management’s inaugural IAM Patent 1000: The World’s Leading Patent Practitioners. The rankings are based on ...
June 12, 2012
On June 12, Carl C. Charneski will participate on the panel, "Judicial Perspectives on NPE Litigation" at the IP Litigator's Advanced Summit on NPE Litigation, How to Successfully Defend Against Complex IP Infringement Claims ...
Honors
  • Leading Patent Practitioner, Intellectual Asset Management magazine's "IAM Patent 1000: The World’s Leading Patent Practitioners," 2014-2016
Affiliations
  • Giles S. Rich American Inn of Court
Back to Top