R. Trevor Carter

Intellectual Property Litigation

Trevor has extensive experience in intellectual property litigation, particularly patent disputes, across various legal forums including district courts, the Patent Trial and Appeal Board (PTAB), the ITC, and the Federal Circuit. He secures favorable outcomes for clients through summary judgments, jury verdicts, and appellate affirmations. Trevor has effectively invalidated patents based on issues such as obviousness, indefiniteness, and violations of legal requirements, as well as defended the patentability of key claims. He has also achieved favorable procedural rulings, such as dismissals with prejudice, denial of institution, and barring infringing products from the US. These successes underscore Trevor’s ability to navigate complex patent litigation and achieve results that protect and advance client interests.

Representative Experience

District Court

• Secured summary judgment of noninfringement and invalidity for violating the “original patent requirement.” Not appealed. (2023, C.D. Cal.)
• Secured summary judgment of no pre-suit damages. All three asserted patents subsequently invalidated at PTAB and affirmed on appeal. Case then dismissed with prejudice. (2021, E.D. Tex)
• Secured favorable Rule 12 patent ineligibility ruling, leading to dismissal with prejudice. Not appealed. (2015, D. Del.)
• Secured summary judgment of noninfringement of all asserted claims and attorneys’ fees. Affirmed on appeal. (2015, D.D.C.)
• Jury verdict finding inequitable conduct (advisory verdict) to render unenforceable a patent our client previously licensed and stopped paying royalties on. Cross appeal of invalidity affirmed on appeal. (2010, N.D. Tex.)
• Jury verdict of no infringement of two design patents. Settled favorably post-trial. (2008, E.D. Tex)

Federal Circuit

• Affirmed inter partes review and final written decision (IPR FWD) finding all challenged claims anticipated (2023).
• Affirmed IPR FWD finding all challenged claims obvious (2023).
• Affirmed IPR FWD finding all challenged claims obvious (2023).
• Vacated an IPR FWD based on a factual issue (motivation to combine) and subsequently prevailed at the PTAB on remand (2021).
• Affirmed an IPR FWD finding all challenged claims obvious (2021).
• Affirmed a post-grant review final written decision finding all challenged claims invalid as indefinite under 35 U.S.C. § 112(f) (2021).

International Trade Commission

• As respondent counsel, secured complete defense verdict involving three asserted patents. Two patents found invalid as obvious. Third patent found not infringed and invalid for violating “original patent requirement” under 35 U.S.C. § 251 (2023).
• As complainant counsel, secured an early consent judgment barring all infringing products from the US (2018).

Patent Trial and Appeal Board

• Invalidated all challenged claims of three patents in IPR based on obviousness in the face of approx. $1B in alleged commercial success evidence. Affirmed on appeal (2022).
• In IPR FWD, upheld as patentable key claims from challenged patent that we continue to litigate to trial in district court today. Not appealed (2022).
• Invalidated all challenged claims in a PGR based on the indefiniteness of a means-plus-function term that did not use the word “means”. Affirmed on appeal (2020).
• Invalidated all challenged claims in an IPR based on obviousness. Affirmed on appeal (2020).
• In IPR FWD, upheld as patentable key claims from challenged patent that we continue to litigate to trial in district court today. Affirmed on appeal (2019).
• Obtained denial of institution for all claims of key patent covering important client technology (2017).

“Trevor's deep knowledge…regarding our company and its competitors sets him apart from others.”

CHAMBERS USA (CLIENT QUOTE)

Thought Leadership

Trevor is active in the patent litigation community through board and committee work, speaking and writing. He is a member of the executive committee and president for the S. Jay Plager Intellectual Property American Inn of Court and, since 2007, Trevor has been a contributing author to the American Bar Association's Intellectual Property Law Newsletter since 2004 and has also served on IP advisory boards for Law360 and Patent Strategy & Management.

“Trevor provides commercially focused, helpful advice that solves problems.”

CHAMBERS USA (CLIENT QUOTE)