30 Rockefeller Plaza
New York, NY 10112
United States of America

+1 (212) 408-5396
cfish@chadbourne.com
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Charles M. Fish

Counsel

Practice Description

Chuck Fish advises on all aspects of intellectual property procurement and deployment, from long-term patent portfolio strategy through day-to-day tactical value extraction. For nearly 20 years, he has acted in all phases of U.S. patent and trade secret litigations and arbitrations, both at the trial and appellate levels. His litigation and dispute resolution experience also includes a variety of software and on-line media copyright and related IP and contractual matters. Additionally, Mr. Fish has extensive licensing and transactional experience involving large and small companies, universities and individual inventors. He has been involved in licensing, buying and selling patents and technologies in a wide range of fields, including new and old media, communications, computer software and consumer and professional products. Regularly responsible for extensive IP due diligence investigations connected with acquisitions, divestitures and joint ventures, he also frequently advises clients on the scope and validity of patents and other IP belonging to others, including risk assessments and cooperative and confrontational approaches to potentially competitive patent rights.

Representative Matters

  • Lead in-house attorney in the first patent case to have a Markman proceeding. Following a six-week jury trial, Client won a JMOL, affirmed by the Federal Circuit.
  • Represented Sony Music in a patent suit involving a Pink Floyd album. Obtained a summary judgment of non-infringement affirmed by the Federal Circuit.
  • Achieved a summary judgment of non-infringement, later followed by a favorable settlement, as lead in-house attorney in a patent action filed by a non-practicing entity claiming to have invented digital encoding of cable television signals.
  • Led briefing on an 11th Amendment patent case in the Federal Circuit when a client's customers were sued by a state university.

Honors

Mr. Fish is listed in IAM Strategy 250 - The World’s Leading IP Strategists (2011).

Publications

Speeches and Events
 

Practice Areas

Intellectual Property

Litigation

Communications, Media and Technology

Privacy And Data Security

Outsourcing

Mobile Technology

Industries

Communications, Media and Technology

Education

  • United States Naval Academy, B.S., 1984
  • Wayne State University Law School, J.D., cum laude, 1992

Professional Background

  • Vice President & Chief Patent Counsel, Time Warner, Inc. 2002-2008
  • Vice President, Sector IP Law Director, Motorola, Inc. 2000-2002
  • Chief Patent Counsel, General Instrument Corporation, 1997-2000
  • Patent Attorney, Sony Corporation of America, 1995-1997

Admissions

1993

New York

1994

U.S.D.C. - S.D.N.Y.

2000

U.S. Ct. App. - Fed. Cir.

1993

U.S. Patent Bar

Languages

English