Areas of Practice
- U.S. Court of Appeals, 9th Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Northern District of Illinois Trial Bar
- U.S. District Court for the Northern District of California
- U.S. District Court for the District of Delaware
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Western District of North Carolina
- U.S. District Court for the Eastern District of Pennsylvania
Northwestern University Law School, Chicago, Illinois, J.D. cum laude, May, 2002
Northwestern University, B.A., with Honors, June 1997
Mr. Charfoos is an accomplished privacy and data protection lawyer specializing in incidence response, privacy litigation and European data privacy compliance (GDPR and cross border data transfers). Mr. Charfoos is a certified information privacy professional for the U.S. Sector (CIPP/US). He litigated his first privacy case in 2010, building on nearly a decade of experience in patent and technology cases. Today, Mr. Charfoos not only represents clients in court but also counsels clients in all aspects of privacy and data protection. He is particularly focused on helping his clients address the new privacy landscape in Europe by putting into place contractual, compliance and educational programs that comply with U.S. and EU regulations. His clients are engaged in a number of different industries including computer science, telecommunications, electrical engineering, mechanical engineering, financial services, genetics, biotechnology, medical devices and other areas.
During his many years as an intellectual property litigator, Mr. Charfoos secured many victories for his clients. In 2012, he secured two major trial victories for his clients including one of the top defense verdicts in California that year. Mr. Charfoos has also won a number of appeals before the Federal Circuit, Ninth Circuit and Indiana Court of Appeals. In addition to leading litigation and appellate teams, Mr. Charfoos counsels clients on intellectual property portfolio valuation and technological development and patent prosecution strategy along with privacy and data protection matters. He represents clients in many different industries, including computer science, telecommunications, electrical engineering, mechanical engineering, financial services, genetics, biotechnology, medical devices, and technology outsourcing.
Mr. Charfoos is also an active member of the International Association of Privacy Professionals co-chairing the Chicago Knowledgenet. He also continues to maintain a strong commitment to pro bono activities representing learning disabled children and several local animal welfare organizations.
Privacy and Data Security
Representing diversified financial services group in a data breach litigation brought against a check processing and payday loan company for negligently allowing client’s check information to be compromised resulting in millions of dollars of fraudulent checks to be written.
Represented a global manufacturer on a data breach and trade secret theft by corporate insiders in China including leading the forensic analysis, isolating any additional malicious code left behind and leading the litigation strategy.
Counseling one of the world’s largest eCommerce and payments processing companies in all aspects of its GDPR compliance and cross border data transfer systems.
Advising a major international manufacturing conglomerate on its privacy and data security systems – with a particular emphasis on meeting GDPR requirements.
Advised an OEM auto parts company in response to a data breach relating to the theft of W-2 information for employees across 7 states.
Guided one of the several of world’s largest automakers on the development of its privacy and data security programs for their U.S. autonomous vehicle fleets and various aftermarket parts.
Advising one of the largest construction equipment rental companies on the development of its privacy and data security programs for its Canadian and European affiliates and protecting data transfers from that region.
Advising a United States college on a school wide review of its privacy and data security programs, in particular with respect to information received from international applicants.
Representing a major financial institution in its development of its privacy and data protection program including compliance with European Union privacy and data transfer laws and data breach response plans.
Working with a large, multi-national automobile parts supplier on the development of its privacy policies and data breach response plan.
Working with a HUD approved Housing Education Program consultant on compliance with HUD privacy regulations and development of the consultant’s privacy program and breach response plan.
Represented a Fortune 20 company on a modernization outsourcing contract that was terminated by its former customer. The customer alleged that certain personally identifiable information was visible on public terminals even after users logged off. After a six-week bench trial, the Court found that no data breach had occurred among other findings for my client.
Representing a financial services firm against two large competitors in a trade secret, misappropriation, trademark infringement and breach of copyright suit relating to Exchange Traded Funds. The case is currently pending in the Northern District of Illinois.
Advising a national automotive parts supplier on its Privacy Shield certification and compliance.
Advised an international metal manufacturer on compliance with the European General Data Protection Regulation, including reviewing and revising external facing privacy notices.
Representing a women’s fashion company in a series of copyright enforcement actions against online Chinese competitors.
Lead trial counsel in a patent litigation filed against a Chinese competitor in the medical device field. After commencement of discovery and claim construction, Mr. Charfoos secured a major victory for his client when the competitor agreed to withdraw all accused products from the market.
Represented a Fortune 20 company on a modernization outsourcing contract that was terminated by its former customer. After successfully compelling the customer to produce tens of thousands of documents improperly held under various claims of privilege, Mr. Charfoos scored a significant victory prior to trial, winning summary judgment against the customer on all of its fraud claims. After a six-week bench trial, the Marion County Superior Court awarded Mr. Charfoos's client more than $52 million on its claims against the former customer for payment for services rendered. The court simultaneously dismissed the customer's claims for breach of contract, including its claim for more than $1.3 billion in damages. Mr. Charfoos also successfully defended against a data privacy breach claim brought by the customer.
Defended a corporation in a suit relating to mobile device management. Prior to trial, Plaintiff dropped one of its patents from the litigation, and the Court invalidated over half of the claims in the remaining patent. The case was tried to a verdict in 2012. After the verdict, the Judge granted Defendant’s JMOL motion, finding that Defendant did not infringe the Plaintiff’s patent. Awarded one of the top 25 defense verdicts in California in 2012.
Represented Plaintiffs in a multi-patent suit relating to peritoneal dialysis. Defendant conceded infringement on a number of patents prior to trial. The case was tried to verdict in 2010.
Represented Defendants and Counterclaim-Plaintiffs in a multi-patent dispute against a corporation relating to email synchronization. The parties settled prior to trial.
Defended two corporations in a patent infringement litigation. After the United States District Court for the District of Delaware ruled in client’s favor on claim construction, the plaintiffs stipulated judgment in client’s favor. United States Court of Appeals for the Federal Circuit affirmed the District Court’s claim construction and upheld the judgment of no infringement.
Represented a corporation which owns several patents in the field of electronic check conversion. Client was the plaintiff in a multi-patent and multi-defendant litigation in the United States District Court for the District of Delaware. Shortly before trial, the trial court issued several key evidentiary rulings in client’s favor and Defendants subsequently settled the case.
Represented client in negotiations involving the spin-off of a unit. Transaction completed with restructuring of the entity and its debt.
Represented an eProcurement services provider, in a breach of contract and fraud case brought against former strategic partner in the Federal District Court of Northern California. Won motions for summary judgment and defeated opponent’s multiple appeals to the Ninth Circuit Federal Court of Appeals. Case thereafter settled.
Represented manufacturer of specialized railroad cars, in patent infringement suits brought against competitor in the federal district courts of Delaware and Pennsylvania. The case was settled.
Represented a manufacturer of truck parts, in patent infringement suit brought in the federal district court in Alabama. Obtained settlement for client.
Represented major financial institution in a renegotiation of an internet services contract.
Appointed to represent criminally insane inmate in a Section 1983 claim brought against his treating psychiatrists for improper involuntary medication and inconsistent delivery of medication. Lead trial counsel during five day federal jury trial.
Representing a local Chicago business involved in specialty veterinary treatment of animals in the review and prosecution of all intellectual property assets including trademarks, copyrights and trade secrets.
Representing Chicago’s largest no-kill animal organization in the prosecution of a trademark in the United States Patent and Trademark Office. In addition, performing a comprehensive IP asset evaluation for client to determine other areas of potential protection.
Represented a seven-year-old Downs Syndrome child. Client’s school district was not providing sufficient resources to accommodate client’s speech, learning and physical deficiencies. Secured independent evaluations for client and negotiated substantial increases in the services that the school would provide to client.
Seminars & Speeches
- February 21, 2017
- Post-Data Breach Litigation and Strategies, Mitchell Hamline School of Law
- Europe’s General Data Protection Regulation and Privacy Shield, Mitchell Hamline School of Law
- The New Reality of EU-U.S. Cross-Border Data Transfers and Immediate Steps You Can Take to Avoid Non-ComplianceJuly 27, 2016
- Information Security in Financial Services, Panelist, PLI Financial Services IT 2016 Avoidance of Risk, New York, New YorkMay 18, 2016
- Protect and Defend: Why Cybersecurity Matters and What You Can Do to Protect Your Organization and Board from Data Breach RisksApril 28, 2016
- December 29, 2016World Data Protection Report
- August 29, 2016Point B + Beyond
- June 21, 2016World Intellectual Property Reviewhttp://www.dykema.com/news-item-gabriel-and-charfoos-author-trade-secrets-article-for-world-ip-review_062216.html
- April 13, 2016The Cybersecurity Law Report Vol. 2, No. 8http://cslawreport.com
- November 24, 2015World Intellectual Property Reviewhttp://www.worldipreview.com/article/form-18-much-ado-about-nothing.
- December 19, 2014SerendIPityhttp://www.ip-lawblog.com/recent-supreme-court-opinions-lead-uspto-to-issue-new-interim-patentability-guidelines_121914
- November 18, 2014SerendIPityhttp://www.ip-lawblog.com/patent-reform-is-back-on-the-table-maybe
- September 26, 2014SerendIPityhttp://www.ip-lawblog.com/update-on-us-v-trek-leather-important-veil-piercing-case_092614
- September 3, 2014SerendIPityhttp://www.ip-lawblog.com/illinois-has-a-new-weapon-against-frivolous-patent-assertions_9-2014
- May 23, 2014Inside Counselhttp://www.insidecounsel.com/2014/05/23/the-future-of-patents-all-eyes-up-on-high?ref=hp
- “Stopping the ‘Patent Troll’: Or, What You Need to Know About the Current Litigation to End Abusive Patent Litigation"April 24, 2014Metropolitan Corporate Counselhttp://www.metrocorpcounsel.com/articles/28636/stopping-%E2%80%9Cpatent-troll%E2%80%9D-or-what-you-need-know-about-current-legislation-end-abusive-p
- April 22, 2014Inside Counselhttp://www.insidecounsel.com/2014/04/22/the-america-invents-act-big-changes-not-just-for-p?ref=nav
- "Eye on Copenhagen - Implications for 'Green IP,'" Co-AuthorDecember 3, 2009Law360
- "Multidistrict Litigation in Patent Infringement Cases," Co-AuthorMarch 20052005 IPO Articles & Reps., Bus. and Lit. Issues Sec., No. 9
- "How Far Have We Come, And Where Do We Go From Here: The Status Of Global Computer Software Protection Under The TRIPS Agreement"22 NWJILB 261 (2002)
- Charfoos and Fonté Co-Author World Data Protection Report Article on EU-U.S. Privacy Agreement AlternativesDecember 29, 2016
- August 2, 2016
- June 22, 2016
- June 15, 2016
- April 27, 2016
- March 15, 2016
- March 4, 2015
- Discusses Huge Number of Patent Cases in Front of U.S. Supreme Court; Decades’ Total Could Match or Exceed Record Set in 1880’sMay 23, 2014
- Provides Update on Current Legislation to End Abusive Patent LitigationMay 4, 2014
- Says In-House Counsel Need to be as Aware of the Act’s Changes as Patent LawyersApril 30, 2014
- Recent Home Depot Settlement a Reminder of Data Breach Ramifications and Importance of Risk Mitigation Policies and ProceduresMarch 31, 2017
- March 2, 2017
- September 9, 2016
- July 19, 2016
- July 14, 2016
- SEC’s Focus on Enforcing Data Security Safeguards Continues: Lessons Learned from its $1M Fine of Morgan StanleyJune 15, 2016
- June 1, 2016
- March 23, 2016
- March 2, 2016
- February 2, 2016
- January 26, 2016
- January 13, 2017
- January 11, 2016
- January 13, 2015
- Firm Continues to Expand in Key Practice Areas With Hire of Aaron CharfoosJanuary 28, 2014
- SEC’s Focus on Enforcing Data Security Safeguards Continues: Lessons Learned from Its $1M Fine of Morgan Stanley
- Law360: 3 Reasons IP Cases Still Need General Trial Lawyers
- The Storm Before the Calm Part II
- The Storm Before the Calm
- The Supreme Court Eyes Enhanced Patent Damages
- Success Rate Trends of Section 101 Motions for Summary Judgment
- 2015 Patent Litigation Trends
- The Rise of the 12(b)(6) Motion
- A Brief Dip: 2015 Sees A Big Increase In Patent Litigation
- Is That Patentable? The USPTO Issues New Guidance on Patentable Claims Post-<i>Alice</i>
- Recent Supreme Court Opinions Lead USPTO to Issue New Interim Patentability Guidelines
- Patent Reform is Back on the Table (Maybe)
- Update on U.S. v. Trek Leather: Important Veil Piercing Case
- Illinois Has A New Weapon Against Frivolous Patent Assertions
- Why the Surge of Patent Infringement Case Filings on April 23?
- Supreme Court to Take Up Issue of Deference Owed to District Court's Claim Construction in Patent Litigation Suit
- Important Veil Piercing Case to Watch
- Patent Litigation Fast Track: Earlier Resolution for Cases Brought by Non-Practicing Entities?
Memberships & Involvement
American Bar Association, Intellectual Property Law Section (Former Co-Chairman of the Computer Hardware Law Committee)
Intellectual Property Owners Association, Green Technology Committee, Member
International Association of Privacy Professionals (IAPP), Chicago KnowledgeNet Chapter, Co-Chair
American Chemical Society, Member
Awards & Recognition
Recognized as an Illinois Super Lawyer® for IP Litigation, 2017
Recognized in Illinois Super Lawyers® as a Rising Star for IP Litigation, 2013-2016
Named an Illinois Emerging Lawyer in Intellectual Property Law and Patent Law, by The Leading Lawyers Network, 2016