Charles J. Monterio, Jr.
Patent Litigation and IP Counseling
Charles has tried cases to verdict in federal court and handles all phases of patent litigation, including formulating case strategy, managing discovery, taking and defending depositions, preparing and opposing motions, working with industry experts, and arguing Markman and summary judgment hearings before district courts. He has appeared before federal district courts nationwide and has experience with U.S. Patent and Trademark Office (USPTO) post-grant proceedings, including inter partes review (IPR) and post-grant review (PGR). In addition to being a litigator, Charles is also a trusted advisor on patent portfolio strategy, patent prosecution, and IP counseling concentrating in the fields of biotechnology, chemical and mechanical, and electrical technologies. He helps companies evaluate freedom-to-operate issues, manage prosecution portfolios, and develop IP strategies aligned with business objectives.
IP Public Policy and Government Service Background
Charles's path to litigation was shaped by early experiences at the intersection of law, policy, and innovation. As a judicial intern to Judge Gerald Bruce Lee in the Eastern District of Virginia, he worked on significant federal criminal and civil matters. On Capitol Hill, he assisted a U.S. Senate committee with its work on IP and biotechnology policy. Charles also worked in the Iowa Governor's Office, where he supported former Governor Thomas J. Vilsack.
Related Practices
Related Industries
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
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
- Virginia
- U.S. Patent and Trademark Office
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
- 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
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.