Brian A.
Carpenter

Brian Carpenter has appeared in more than 400 lawsuits, most of them patent cases. He has served as lead trial counsel through jury verdict, argued before the U.S. Courts of Appeals for the Federal Circuit and the Fifth Circuit, and represented clients ranging from large corporations — among them Fujitsu, J.C. Penney, Brookstone, and VIA Technologies — to individual inventors.

EXPERIENCE

A registered patent attorney with a degree in mechanical engineering, Brian is a hands-on lawyer who writes the major briefs himself and works directly in the documents. He is particularly adept at mastering sophisticated technology quickly: wireless protocols such as Bluetooth and 802.11 Wi-Fi; computer and computer chip architectures; network architectures and components, including routers, data storage, load balancers, and caching servers; and telecommunications systems, including LTE and 5G. That understanding lets him isolate the issues that will decide a case and build a cost-effective strategy around them. Just as important, he can teach a complex technology to people without a technical background — the skill that sways claim construction hearings and jury trials.

Monetization of patent portfolios has been a focus of Brian’s practice for more than two decades, beginning with a review of hundreds of patents owned by NCR Corporation, which he organized into groups and asserted against targets that included Yahoo! and others. He later managed four monetization programs involving at least sixteen lawsuits built on a portfolio covering networking technologies and peer-to-peer file sharing. He also prosecutes ex parte reexaminations and has participated in numerous inter partes review proceedings before the Patent Trial and Appeal Board.

Representative Matters

Wireless and Telecommunications

• Serves on the team representing a portfolio owner asserting numerous 5G patents against Apple Inc. and Lenovo Group Ltd.
• Represented the patent owner against Apple in a case involving claims covering a short-range, low-power wireless communications protocol used by Bluetooth devices such as wireless keyboards and mice.
• Represented Advanced Media Networks, LLC in enforcing its mobile hub station patent against AT&T, Verizon, T-Mobile, Sprint, U.S. Cellular, Chrysler, and Audi, and prepared briefing in the related inter partes
• Defended Best Western International, Inc. against claims that routers and switches used to provide guest internet service in hotels infringed.

Semiconductors and Computer Architecture

• Lead trial counsel for VIA Technologies, Inc. in a jury trial before Judge Gilstrap in the Eastern District of Texas concerning a method for pre-snooping CPU cache memory. The plaintiff asked the jury for $39 million; the jury awarded $2.1 million. Brian argued the appeal, and the Federal Circuit affirmed.
• Represented VIA Technologies, Inc. in a second Eastern District of Texas case involving south bridge chips and the low pin count (LPC) bus, arguing claim construction and negotiating a favorable settlement shortly before trial.
• Represented Gateway, Inc. in the District of Utah in a case concerning a software patch for an I/O controller in a personal computer.

Internet, Networking, and Software

• Completed a patent assertion program for Parallel Networks, LLC against manufacturers of load balancers and caching servers in the District of Delaware, involving hardware and software that cached dynamic webpage content by transforming URL header information.
• Represented Parallel Networks, LLC against numerous gaming companies on peer-to-peer caching claims and, engaged after an appeal and remand, argued additional claim construction and defended against summary judgment in suits against national retailers.
• Represented the patent owner against Pandora Media, LLC on patents covering a networked streaming media system that generates playlists from stored ratings.
• Defended J.C. Penney Corp., Inc. against Eolas Technologies in the Eastern District of Texas; a jury invalidated the asserted patents after a bifurcated trial.
• Represented an inventor against IBM in a suit over a software tool that optimized object code, arguing claim construction and settling favorably shortly before trial.

Other Technologies

• Obtained a ruling of indefiniteness for Directed Electronics, Inc. that invalidated approximately 100 claims across numerous patents concerning automotive sensors and a serial data bus.
• Argued and won summary judgment for Protective Optics, Inc. declaring all claims of the asserted patent invalid.
• Represented Hon Hai Precision Industry Co., Ltd. and Foxconn Electronics, Inc. against Molex, Inc. in the Northern District of Illinois on claims for breach of a license agreement, tortious interference, and antitrust violations under the Sherman Act.
• Negotiated a $32 million settlement for Fischer Imaging Corporation, owner of a patent for a stereotactic breast biopsy machine, concluding litigation that had run for a decade.
• Represented StoneAge, Inc., an employee-owned manufacturer of rotary hydraulic pipe cleaning tools used in refineries and power plants, as plaintiff in one suit and as defendant in another.

PUBLICATIONS & SPEAKING ENGAGEMENTS

• “Possible Limit on the Use of ‘Common Sense’ to Invalidate a Patent Claim for Obviousness Based on a Single Reference”
• “Overview of Current Claim Construction Practice in View of Phillips” — Patent Claim Construction: The Advanced Legal Forum, West Legalworks
• “Legal and Regulatory Issues for IP” — IP Portfolio Management Conference, West Legalwor

PASSIONS

Outside of the office, Brian enjoys skiing, biking, landscape photography, tennis and history.