People

Thomas Carter
Thomas B. Carter, Jr.
Senior Associate

Overview

Thomas Carter actively practices in all areas of intellectual property law, including litigation, prosecution of patent applications, adversarial proceedings at the USPTO (including inter partes review and reexaminations), licensing agreements, pre-suit investigations, freedom-to-operate advice, patent opinions, and general counseling. Mr. Carter has experience preparing and prosecuting patent applications involving a broad range of chemical, electrical, mechanical, and biological fields. Mr. Carter also works on patent litigation matters involving a variety of technologies, including media and telecommunications as well as energy and oilfield services.

Prior to attending law school, Mr. Carter worked as a research engineer for a Fortune 500 utility company.

Admission & Affiliations

  • State Bar of Texas
  • United States Patent and Trademark Office
  • United States District Court for the Eastern District of Texas
  • The Honorable Nancy F. Atlas Intellectual Property American Inn of Court
  • Houston Bar Association
  • Houston Intellectual Property Law Association
  • J.D., University of Alabama School of Law 2015
    cum laude
    Articles Editor, Alabama Law Review
    President, Alabama Intellectual Property Law Society
  • B.S., Chemical Engineering, Auburn University 2008

Experience

Representative Media and Telecommunication Cases

  • Multimedia Content Management v. DISH (Western District of Texas) – Received favorable claim construction and subsequent settlement in patent dispute concerning video-on-demand technology.
  • Blue Spike v. DISH (District of Delaware) – Challenged claims in inter partes review of patents concerning licensing and encryption technologies. The case was settled on favorable terms after filing inter partes review petitions on all asserted patents.
  • Customedia Tech. LLC v. DISH (Eastern District of Texas and Court of Appeals for the Federal Circuit) – Challenged claims in inter partes review and covered business method review proceedings and was granted stay of district court action. Invalidation of all claims under 35 U.S.C.§101 upheld at the Federal Circuit.
  • IPA Technologies, Inc. v. DISH (District of Delaware) – Defended DISH in a case involving multiple patents relating to voice-activated remote control technology. The case was settled on favorable terms after filing inter partes review petitions on all asserted patents.
  • Location Services IP v. Yahoo, Inc. (Eastern District of Texas) – Defended Yahoo in a case involving three patents relating to web-based location technology. The case was settled on favorable terms prior to a Markman hearing.
  • LBS Innovations, LLC v. Yahoo, Inc., et al. (Eastern District of Texas) – Defended Yahoo in a multi-defendant case involving a patent relating to web-based location technology. The case was settled on favorable terms prior to a Markman hearing.

Representative Energy Cases

  • Defending major energy company in a patent infringement action in federal district court in Delaware involving two patents relating to mercury capture in power plants. This case is in its early stages.
  • Oil Lift Tech., Inc. v. Millennium Oilflow and MOST Oil USA (District of Delaware) – Defeated preliminary injunction motion in competitor patent suit involving oilfield tools for progressive cavity pump systems.

Prosecution & Transactional Matters

  • Preparation and prosecution of patents in the chemical and biochemical areas for a variety of clients and technologies
  • Strategic intellectual property counseling and advice regarding freedom to operate issues, patent opinions, and licensing for specialty chemical companies

Relevant Technological Experience

  • Power generation using fossil-fuels as well as alternative and renewable fuel sources
  • Carbon capture and sequestration for enhanced oilfield recovery
  • Specialty chemical manufacturing and operations