Charles Larsen

Partner, Boston, London

Biography

As a US patent attorney and English solicitor, Chuck Larsen provides clients insightful and multijurisdictional counsel in intellectual property portfolio strategy, transactions and disputes, with particular emphasis in the medical technology space.

Overview

Charles (Chuck) Larsen is an Intellectual Property partner based in the Firm's Boston and London offices. He concentrates his practice on providing strategic counseling and is licensed to practice before the US Patent and Trademark Office (USPTO), the European Patent Office (EPO), US District Court, and the UK High Court.

His practice includes a wide range of strategic areas, including transatlantic patent portfolio development.  He uses analytics to drive portfolio strategy; counsels at the intersection of patents, trade secrets and copyright; and conducts IP due diligence in the US and Europe with an emphasis on transatlantic patent validity, infringement and freedom to operate studies.  He also actively supports clients in US and European patent disputes including Patent Trial and Appeal Board (PTAB) proceedings, EPO oppositions, and litigation.

Chuck has extensive experience in transactional IP matters, including structuring and portfolio due diligence for investments and acquisitions, and negotiating licenses and strategic commercial contracts involving key IP assets.

He has advised on a wide range of technology in engineering and life sciences, including medical technology, chemistry and drug delivery, consumer electronics and signal processing, combustion and energy, and manufacturing. In the medical technology sector, his experience includes a number of areas, including intravascular devices, respiratory systems, orthopedics, neuromonitoring, spine technology, electrical stimulation, healthcare informatics, biological manufacturing and diagnostics.

Prior to joining White & Case, Chuck was a partner at an international law firm.

Bars and Courts
Massachusetts State Bar
Solicitor, England and Wales
US Patent and Trademark Office
US District Court for the District of Massachusetts
Education
JD
Duke University School of Law
MA
Brigham Young University
BS
Brigham Young University
Languages
English

Experience

Represented a US medical technology company in European and US patent office disputes and litigation, and in strategic portfolio development to protect a cutting edge cardiovascular technology.*

Represented a US media company in defending its patent estate in numerous European opposition proceedings and in European litigation.*

Represented a US pain management company in defending a core patent against inter partes review at the PTAB.*

Represented a US consumer electronic and drug delivery device manufacturer in challenging an estate of competitor patents through inter partes review proceedings at the PTAB.*

Represented a US hardware company as patent proprietor in an opposition before the EPO, successfully defending the patent.*

Represented a US medical device manufacturer in a 2011 reexamination proceeding before the US Patent Office, successfully securing affirmation of patents simultaneously being litigated in US Federal Court.*

Represented a US medical device manufacturer in defending a European patent in the EPO Opposition Division and before the EPO Board of Appeals.*

Represented a US medical instrumentation company in a 2013 EPO opposition of a patent held by a major competitor.*

Represented a US-based consumer goods company in developing and implementing a global patent, trademark and technology licensing program to monetize its intellectual property assets.*

Represented a US-based hospital in a national licensing campaign to enforce core technology for medical diagnostics.*

Represented an emerging medical diagnostics company in international patent and freedom to operate strategies.*

Represented a global medical device company in its acquisition of an extremity orthopedic company.*

Represented a global private investment firm and a global blood technology company in connection with the sale to a European healthcare company.*

Represented a global private investment firm in its acquisition of a medical diagnostics company.*

Represented a global private investment firm and a medical diagnostics company in connection with the acquisition of the transplants diagnostics business of a medical products company.*

Represented a men's personal care products company in its acquisition of an oral care products company.*

Represented numerous US technology companies in developing their international IP portfolios.*

Represented numerous private equity and venture capital investors in IP due diligence performance.*

*Matters prior to joining White & Case.

Speaking Engagements

"European Patent Prayers Answered?" American Bar Association Section of Intellectual Property Law 31st Annual Intellectual Property Law Conference, Bethesda, Maryland, April 2016

"European Patent/Unification Update," National CLE Conference Intellectual Property Program, Vail, Colorado, January 2016

"The Impact of the Unified Patent Court on US Companies," Association of Corporate Counsel Patent Committee Program, Palo Alto, California, November 2015

"Europe's Unitary Patent System: What's Next for US Medical Device Companies?" BAIMA Luncheon Seminar, Palo Alto, California, March 2013

"5 Deal Killers: IP Due Diligence in Technology Company M&A Transactions," American Intellectual Property Law Association Mid-Winter Institute, Orlando, Florida, February 2011

"Securing Patent Rights in Europe," Medical Device Manufacturers Association, Webinar, June 2009

"Beyond Business Methods: Assessing the Impact of Bilski on Life Sciences Inventions," Boston Bar Association Life Sciences Committee, Boston, Massachusetts, January 2009

Publications

Co-author, "European Patent Practice for U.S. Attorneys," Bloomberg BNA, 2015

Co-author, "Exploring the Differences Between Post-Grant Proceedings in the U.S. and the EU," Bloomberg BNA's Patent, Trademark & Copyright Journal, March 2015

Co-author, "UPC recap: have you been paying attention?," Intellectual Property Magazine, February 2015

Co-author, "United States," Patent Transactions in the Life Sciences, October 2014

Co-author, "On the verge of the UPC," Intellectual Property Magazine, March 2013