Charles L. Roberts vCard

2825 East Cottonwood Parkway, Suite 500

Salt Lake City, Utah  84121

801-292-5300

croberts@wasatch-ip.com

 

 

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            Before becoming a registered patent attorney in 1987, Mr. Roberts was a patent agent.  In his 30-year career, he has obtained numerous patents, trademarks and copyright registrations for clients.  For the last 20 years, he has focused his practice on intellectual property disputes.  He has represented plaintiffs and defendants in patent, trademark, copyright, trade secret, and IP contract cases all over the country.  This includes working with defense teams on multi-defendant “patent troll” litigation in East Texas, defending unfounded patent claims in New York City, and pursuing immediate injunctive relief against infringement of a client’s patent or trademark in Utah.

            Mr. Roberts has successfully mediated numerous cases and is familiar with strategies for achieving early resolution of IP disputes, allowing clients to avoid this expensive diversion from their core business.  He has experience with all phases of litigation, including all aspects of discovery, summary judgment proceedings, trials, and appeals. His expertise extends to patent licensing and technology transfer, including university tech transfer.

 

Bar Admissions

  • U.S. Supreme Court

  • Federal Circuit Court of Appeals

  • 10th Circuit Court of Appeals

  • Registered Patent Attorney since 1987

Professional History

  • Wasatch-IP, Salt Lake City, 2013-present (founder)

  • Workman Nydegger, Salt Lake City, 1998-2012

  • Madson & Metcalf, Salt Lake City, 1992-1997

  • Brinks Hofer Gilson & Lione, Chicago, 1989-1991

  • Workman Nydegger & Jensen, Salt Lake City, 1987-1989

Education

  • J.D. (cum laude), J. Reuben Clark Law School at Brigham Young University (1987)

  • Honors B.S. in Mechanical Engineering (cum laude), University of Utah (1984)

Professional Activities

  • Master, Aldon J. Anderson American Inns of Court (President 2017-18)

  • Adjunct Professor of Law, J. Reuben Clark Law School at Brigham Young University (2009-13)

  • Chair of the Intellectual Property section of the Utah State Bar (1996)

  • President, J. Reuben Clark Law School Alumni Association (2006-07)

  • Advisory Board Member, J. Reuben Clark Law School Alumni Association (2007-present)

  • Advisory Board Member, Women’s Tech Counsel (2011-2015)

  • Chair, Intellectual Property Section of the J. Reuben Clark Law Society (2010-11)

  • American Intellectual Property Law Association

Recognitions

  • Utah Business magazine's 2013 Utah Legal Elite (2013-16, 2018)

  • Mountain States Super Lawyer (2007-2018)

  • Top 100 Mountain States Super Lawyers 2012

  • Top 75 Mountain States Super Lawyers 2011

  • Recognized by Intellectual Asset Management in its list of The World’s Leading Patent Practitioners

  • Rated Judicial AV Preeminent by Martindale Hubbell

Representative Matters

  • Finisar Corp. v. DIRECTV, member of plaintiff’s trial team in Beaumont, Texas, final judgment over $117 million (counsel for plaintiff)

  • 3COM v. Zircom, patent infringement case settled for $15 million following entry of preliminary injunction (counsel for plaintiff)

  • Del Sol v. Caribongo, trade dress infringement in Utah (counsel for plaintiff)

  • ActiveO v. Medtronic Spine, trademark infringement action in Utah (counsel for plaintiff)

  • Mitek Surgical Products v. Arthrex, patent infringement action in Utah (counsel for defendant)

  • Cognitronics Imaging Systems v. Captiva Software, patent infringement case in San Diego (counsel for defendant)

  • Mag Instrument v. Nordic Technologies, patent and trademark infringement case in Los Angeles (counsel for defendant)

  • Finisar Corporation v. JDS Uniphase Corporation, breach of contract action in Northern California (counsel for plaintiff)

  • Cybergym Research v. ICON Health & Fitness, patent infringement case tried in Marshall, Texas (counsel for defendant)

  • Whalen Furniture v. Walker Edison Furniture, patent infringement case in San Diego, California (counsel for defendant)

  • Michelson v. Enrich Int’l, breach of contract action in Utah (counsel for defendant)

  • NuSkin v. Enrich Int’l, patent infringement action in Utah (counsel for defendant)

  • Eurosport High Performance v. Turner Motorsport, copyright infringement case in Utah (counsel for plaintiff)

  • IPVX Patent Holdings v. Callware Technologies, patent infringement action in Tyler, Texas (counsel for defendant)

  • Alexsam v. Galileo Processing et al., patent infringement action against 13 defendants in Marshall, Texas (counsel for one defendant)

  • CozySac v. LoveSac, trademark infringement action in Miami, Florida (counsel for defendant)

  • LoveSac v. Monster Sak, patent infringement action in Utah (counsel for plaintiff)

  • LoveSac v. Elite Products, trademark and counterfeiting action in Utah (counsel for plaintiff)

  • Service Management Group v. Mindshare Technologies, copyright action in Kansas City (counsel for defendant)

  • Miche Bag v. The Marshall Group, patent and trade dress infringement action in South Bend (counsel for plaintiff)

  • Park City Transportation v. Park City Premier Transportation, trademark infringement action in Utah (counsel for plaintiff)

  • TDN Solutions v. SkyWest Airlines, patent infringement action in Brunswick, Georgia (counsel for defendant)

  • CoreBrace v. Star Seismic, breach of contract action in Utah (counsel for plaintiff)

  • Vawdrey v. Hobby Lobby, copyright infringement action in Utah (counsel for plaintiff)

  • Vectra Fitness v. ICON Health & Fitness, patent infringement action in Seattle (counsel for defendant)

  • EMC v. Columbia Data Products, patent infringement action in Utah (counsel for plaintiff)

  • Wallcandy v. Die Cuts With a View, patent infringement action in New York City (counsel for defendant)