Charles J. Monterio, Jr.

Partner
Charles Monterio

Charles Monterio, Jr. handles complex patent litigation cases for both plaintiffs and defendants, achieving four wins in recent years, including three trial wins. Charles also possesses extensive experience in patent-related strategic counseling, trade secret litigation, and post-grant proceedings before the U.S. Patent & Trademark Office (USPTO). He has managed litigations in a wide range of technologies, including the chemical industry, manufacturing processes, medical devices, electronic devices, and computer software, and cases involving misappropriation of trade secrets claims.

Charles has litigation experience related to all phases of a case, including formulating case strategy, managing discovery, taking and defending depositions, preparing and opposing motions, and working with industry experts. He has conducted trials and argued numerous hearings, including Markman and summary judgment hearings, before district courts. Charles also has experience in patent portfolio counseling and prosecution, concentrating in the fields of biotechnology, chemical and mechanical, and electrical technologies.

Prior to joining private legal practice, Charles was a judicial intern with the Honorable Gerald Bruce Lee, U.S. District Court for the Eastern District of Virginia, where he handled issues such as the Federal Death Penalty Act, the Federal Torts Claims Act, and civil procedure questions in connection with motions to dismiss, motions for summary judgment, and other dispositive motions. He also served on a U.S. Senate committee conducting legal policy studies on IP and biotechnology. On Capitol Hill, he was involved in the development and presentation of new biotechnology concepts and facilities, and a study of the current framework of biotechnology research and funding. Charles also worked in the state of Iowa's Office of the Governor, where he supported former Governor Thomas J. Vilsack.

Experience

Representative Matters

  • Obtained a dispositive summary judgment ruling of invalidity on behalf of the world's leading manufacturer of water-soluble polymers and its related companies in a patent infringement matter involving polymer manufacturing processes
  • Obtained a jury verdict of willful infringement on behalf of a power and energy company in a patent infringement matter involving energy conservation technology
  • Obtained a jury verdict of non-infringement on behalf of a multinational electronics manufacturer in a patent infringement matter involving data processing technology
  • Obtained an extremely favorable resolution on behalf of a multinational electronics manufacturer in a patent infringement matter involving data security technology
  • Obtained a jury verdict on behalf of a patent services firm in a patent infringement matter involving search advertising systems

Insights

Credentials
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Education

  • J.D. Drake University Law School 2004
    • Legislative Practice Certificate
    • Member, Drake Journal of Agricultural Law
    • Legal Policy Intern, Governor Thomas J. Vilsack, Office of the Governor, State of Iowa
    • Legal Intern, Senator Tom Harkin of Iowa, U.S. Senate Committee on Agriculture, Nutrition, and Forestry
    • Judicial Intern, The Honorable Gerald Bruce Lee, United States District Court for the Eastern District of Virginia
    • Judicial Intern, The Honorable R. Terrence Ney, Fairfax County Circuit Court
  • B.S. Architectural Engineering and Civil Engineering University of Miami 2001
    • Iron Arrow Honor Society
    • NAACP Community Service Award
    • NAACP Leadership Award

Bar Admissions

  • District of Columbia
  • U.S. Patent and Trademark Office
  • Virginia

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of Virginia

Professional Memberships and Activities

  • Fellow, Leadership Council on Legal Diversity, 2013

Recognition
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  • District of Columbia Courts, Capital Pro Bono Honor Roll, 2018
  • Super Lawyers, Rising Stars, Washington, DC, 2014 – 2015
  • National Law Journal, Plaintiffs’ Hot List, 2013
  • Lawyers of Color, Hot List, 2013

Community
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Volunteerism

  • Deacon, chair of the Diaconate, vice chair of Church Council, Alfred Street Baptist Church
  • Member, Kappa Scholarship Endowment Fund
  • Member, Kappa Alpha Psi Fraternity, Inc.