Charles (Charlie) McMahon focuses his practice on patent, trademark, copyright and unfair competition law. Charlie has represented domestic and multinational clients in federal courts and before the US Patent and Trademark Office, the US Patent Trial and Appeal Board (PTAB), the International Trade Commission (ITC), the US Court of Appeals for the Federal Circuit and the US Supreme Court.
In the last four years, Charlie has tried four patent infringement cases, including two district court jury trials and two ITC Section 337 investigations. He has also argued before the PTAB in an inter partes review proceeding.
Because litigation is just one of many tools for achieving business objectives, Charlie also counsels clients on licensing and litigation avoidance. Collectively, he has advised clients on worldwide IP licensing and settlement deals valued in excess of sixty million dollars.
Charlie is a registered patent attorney with a bachelor’s degree in electrical engineering and experience helping client apply for and obtain patents in the United States and abroad. Charlie is experienced in a variety of technical areas, including wireless communications, solid-state electronics, encryption systems, vehicular transmission systems, digital imaging systems, electronic measurement devices, lithium batteries, software applications and online business-to-business exchange systems.
Recognizing the importance of local pro bono efforts, Charlie is an active supporter of the Cabrini Green Legal Aid (CGLA) clinic in Chicago. Charlie serves on CGLA’s Advisory Board and contributes his time to serve CGLA clients.
InterDigital v. ZTE (D. Del. 2015); led a trial team to a favorable defense jury verdict in this case involving wireless communication technology
ZTE v. InterDigital (PTAB 2015); served as lead counsel in a successful inter partes review proceeding, in which the Patent Trial and Appeal Board cancelled claims that had previously survived a jury validity verdict
Technology Properties Limited v. ZTE (N.D. Cal. 2015); defended a manufacturer of wireless communication devices in this patent infringement action, which resulted in a favorable claim construction ruling and a stipulation of non-infringement
InterDigital v. US International Trade Commission (Fed. Cir. 2015); represented a named respondent from the underlying ITC investigation, resulting in a decision affirming the ITC’s finding that no valid patent claim was infringed
Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-868, 2014); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement
McDavid v. NIKE (N.D. Ill. 2014); represented NIKE and an individual challenging inventorship in this patent infringement litigation involving athletic wear; the case was resolved on the eve of a trial on the inventorship claim
Certain Wireless Deviceswith 3G and/or 4G Capabilities and Components Thereof (ITC Inv. No. 337-TA-800, 2013); represented a manufacturer of wireless devices named as a respondent in this investigation, resulting in a finding of non-infringement
AOL, Inc. v. Yahoo! Inc. (S.D.N.Y. 2009); represented Yahoo! as a declaratory judgment defendant and asserted patent infringement claims on behalf of Yahoo! against AOL; the dispute was resolved on favorable terms
Lithium Battery Patent Enforcement (W.D. Wis. 2008); represented Energizer Holdings, Inc., and Eveready Battery Co. in this case involving two patents for advanced primary battery technology; the court granted a preliminary injunction to halt sales of the infringing batteries
Eaton Corporation v. ZF Friedrichshafen A.G. and ArvinMeritor, Inc. (E.D. Mich. 2008); represented defendants ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this patent infringement action involving automated heavy-duty truck transmission technology; after a two-week trial, the jury returned a unanimous defense verdict on all issues
Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof (ITC Inv. No. 503, 2005); represented respondents ZF Friedrichshafen A.G. and ArvinMeritor, Inc., in this Section 337 patent infringement investigation at the International Trade Commission; in the violation phase of the investigation, the ITC granted respondents’ motion for summary determination with respect to one of the six asserted patents; the ITC also terminated the investigation, at the patent owner’s request, with respect to two other patents and several claims of the remaining three patents; after a ten-day hearing on the merits, the administrative law judge ruled in favor of the respondents on all but one claim of one patent; the respondents designed around the one remaining claim, and Charles helped them work with Customs and Border Protection to ensure continuous importation of the redesigned product; when the patent owner brought an enforcement action, Charles helped ZF and ArvinMeritor become the first respondents ever to defend successfully against such a proceeding at the ITC; as a result of this victory, ZF and ArvinMeritor were able to continue the importation and sale of the redesigned product without interruption
Supreme Court of the United States
US Court of Appeals for the Federal Circuit
US District Court for the Northern District of Illinois
US District Court for the Eastern District of Michigan
US District Court for the Western District of Michigan
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