Derrick J. Carman

Derrick Carman helps large and small clients assert their intellectual property rights and defend against allegations of intellectual property infringement. He focuses on patent litigation, representing clients in Federal Courts, the United States Patent and Trademark Office, and the International Trade Commission. Mr. Carman helps clients manage the complicated strategic considerations involved in navigating the IP litigation landscape.

Mr. Carman also works with patent owners to develop patent portfolio monetization strategies, including licensing and litigation strategies. He has experience with a broad range of technologies, including battery technology, medical devices, projector systems, e-commerce platforms, luggage, computer graphics software, and computer memory systems.

Prior to becoming an IP litigator, Mr. Carman prepared and prosecuted patent applications in-house and in private practice. Mr. Carman’s background in patent prosecution combined with his experience in a variety of litigation forums provides a unique insight into the operations of IP law.

Education

• Syracuse University College of Law, J.D. (2013), cum laude, Justinian Honorary Society; Syracuse Law Review, Computer Editor (2012-2013)
• Denison University, B.S. in Physics (2010)

Representative Matters

U.S. Court of Appeals

Represented former employee of the Department of the Interior in appeal from the Merit Systems Protection Board following her termination. The Court of Appeals for the Federal Circuit vacated and remanded finding that the MSPB failed to conduct the requisite analysis as to the reasonableness of the termination under the Douglas factors. Moreno v. Dep’t of the Interior, Appeal No. 2020-1507 (Fed. Cir. 2021).

U.S. District Court

Represented biological sciences R&D company in defense of claims for patent infringement. Case settled on favorable terms prior to trial. Kyowa Hakko Kirin Co., Ltd. v. Aragen Bioscience, Inc., NDCA-3-16-cv-05993.

Represented emergency response software in defense of claims for patent infringement. Case was voluntarily dismissed following filing of a motion to dismiss. 911 Notify, LLC v. MobileTREC Corporation, DDE-1-15-cv-00582 (prior to joining Robins Kaplan).

U.S. Patent and Trademark Office

Represented Patent Owner in response to ten petitions for inter partes review of patents related to peripheral bus design. The Patent Trial and Appeal Board denied all ten petitions. IPR2021-00604; IPR2021-00605; IPR2021-00606; IPR2021-00607; IPR2021-00608; IPR2021-00666; IPR2021-00667; IPR2021-00668; IPR2021-00669; IPR2021-00670.

Represented Patent Owner in response to four petitions for inter partes review of patents related to cellular communications. The Patent Trial and Appeal Board denied institution of all four petitions. IPR2018-01474; IPR2018-01478; IPR2018-01556; IPR2018-01557.

U.S. International Trade Commission

Trial Counsel for owner of cellular communications patent portfolio including an 8-day patent infringement trial before the International Trade Commission. Certain 3G- and LTE-compliant Cellular Communication Devices and Components Thereof , Inv. No. 337-TA-1138.

Represented subpoenaed third party in multiple International Trade Commission Investigation concerning lithium-ion battery separators. Certain Batteries and Electrochemical Devices Containing Composite Separators, Components Thereof and Products Containing Same , Inv. No. 337-TA-1087; Certain Lithium-Ion Battery Cells, Battery Modules, Battery Packs, Components Thereof, and Products Containing the Same , Inv. No. 337-TA-1181.

Represented subpoenaed third party in International Trade Commission Investigation concerning smart thermostats and HVAC systems. Certain Smart Thermostats, Smart HVAC Systems, and Components Thereof , Inv. No. 337-TA-1185.

• Listed in Benchmark Litigation's 40 & Under Guide (2024)
• Listed in The Best Lawyers in America: Ones to Watch (2021-2025 editions)
• Named a “New York Rising Star,” by Super Lawyers (2023-2024)

Professional

• American Intellectual Property Law Association
• Colorado Bar Association
• New York Intellectual Property Law Association
• New York State Bar Association 

Speeches

Ethics Check-In: USPTO Insight and Practical Implications of AI
Panelist, Connecticut Bar Association Intellectual Property Section, Hartford, CT (December 12, 2023)