Jon R. Carter

Partner Intellectual Property

New York +1 212 446 4850

Jon R. Carter

Overview

Jon Carter is a partner in Kirkland’s Intellectual Property Practice Group, focusing on patent-infringement litigation. Jon has extensive experience litigating in U.S. Federal District Court, the U.S. Court of Appeals for the Federal Circuit, and the U.S. International Trade Commission. Jon also has extensive experience representing clients in inter partes review and post-grant review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. Jon has worked on cases covering a wide range of technologies, including wireless communications, computer architecture and software design, semiconductor fabrication, e-commerce, medical devices, and pharmaceuticals. In addition, Jon regularly advises clients on strategic issues related to the development, composition, and use of their intellectual property portfolios.

TecSec, Inc. v. International Business Machines, et al.

  • Currently representing Oracle in a multi-patent case in the Eastern District of Virginia concerning computer encryption technologies.

RetailMeNot, Inc. v. Honey Science LLC

  • Currently representing RetailMeNot in two co-pending lawsuits in the District of Delaware involving multiple patents related to e-commerce transactions. Also representing RetailMeNot in parallel proceedings before the Patent Trial and Appeal Board.

Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc.

  • Currently representing Motorola Solutions in a one-patent case in the Eastern District of Ohio concerning audio technologies for mobile devices. Also representing Motorola Solutions in proceedings before the Patent Trial and Appeal Board.

Godo Kaisha IP Bridge 1 v. Intel Corp.

  • Represented Intel in a nine-patent lawsuit involving semiconductor fabrication technologies in the Eastern District of Texas. Also represented Intel in parallel proceedings before the Patent Trial and Appeal Board.

Intel Corp. v. Future Link Systems, LLC

  • Represented Intel in a seventeen-patent declaratory judgment suit in the District of Delaware concerning computer interconnect technologies.

Intellectual Ventures II LLC v. JP Morgan Chase & Co., et al.

  • Represented JP Morgan Chase & Co. and Citibank in a multi-patent case in the Southern District of New York concerning computer and network security technologies.

In re Certain Graphics Processing Chips, Systems on a Chip, and Products Containing the Same

  • Represented Samsung Electronics Co., LTD as Complainant in the ITC in a multi-patent case against Respondent NVIDIA Corp. concerning computer memory and interconnect technologies.

Luciano F. Paone v. Microsoft Corp.

  • Represented inventor Luciano Paone in a one-patent case in the Eastern District of New York concerning computer encryption technology.

Infosint S.A. v. H. Lundbeck A/S, et al.

  • Represented H. Lundbeck A/S and Forest Laboratories Inc. in a one-patent case in the Southern District of New York concerning the pharmaceutical antidepressants LEXAPRO® and CELEXA®.
IBM, Verification Testing and Design Engineer, 2004–2005

More

Thought Leadership

Publications

Section 101: Not So Elementary, The Patent Lawyer (Apr. 2018)

The Final Say, Who Gets the Last Word? Part 2 (analysis of Petitioner replies to Patent Owner Preliminary Responses), Intellectual Property Magazine 46–48 (Apr. 2018)

Who Gets the Last Word? Part 1 (analysis of Petitioner replies to Patent Owner Preliminary Responses), Intellectual Property Magazine 26–28 (Mar. 2018)

'Appealing' a PTAB decision on institution of a post-grant review, Intellectual Property Magazine (Sept. 2016)

ITC Needs “Material Things” in A Digital World (a review of the Federal Circuit’s decision in ClearCorrect Operating, LLC v. Int’l Trade Comn’n), The Patent Lawyer 29–31 (Nov.–Dec. 2015)

“Circuit-Level Modeling for Concurrent Testing of Operational Defects Due to Gate Oxide Breakdown” for the Design, Automation, & Test in Europe Conference (2005)

Recognition

Recipient, Kirkland & Ellis Pro Bono Service Award, 2010

Memberships & Affiliations

Board, American Symphony Orchestra

Board, Music By The Glass

Credentials

Admissions & Qualifications

  • 2009, New York
  • Registered to practice before the United States Patent and Trademark Office

Courts

  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of New York
  • United States District Court for the Southern District of New York

Education

  • New York University School of LawJ.D.2008
    Articles Editor, NYU Journal of Law & Business
  • Duke UniversityB.S.E., Biomedical Engineering & Electrical Engineering2005