Timothy Carroll

Partner

Tim Carroll’s exceptional record of success in representing industry leaders and emerging companies in high-risk patent cases has earned him the respect of his peers and the trust of his clients. Tim focuses his practice on cutting-edge technologies, including mobile apps, location-based services, messaging systems, medical devices, content-management platforms, Wi-Fi-enabled thermostats, and green technologies. Whether serving as lead trial counsel before the International Trade Commission (ITC), successfully arguing before the Federal Circuit Court of Appeals, or obtaining an outright win on liability grounds in the fabled Western District of Texas, he has secured scores of victories for his clients. 

Tim first-chairs all of his cases, securing trial wins and preliminary injunctions, forcing adversaries to stipulate to noninfringement, winning summary judgment awards, prevailing in claim-construction arguments, and securing substantial attorneys' fee awards. He routinely leads joint defense groups involving some of the largest and most sophisticated companies and law firms in the country. His national high-stakes practice, aggressive but fair approach, exceptional advocacy skills, and impressive win-loss record have all contributed to the strong rapport he has built with clients and colleagues.

Tim has successfully litigated dozens of trade secret disputes involving military weaponry and defense systems, aerospace products, and financial technologies, and has extensive experience in inter partes reviews (IPRs) and other post-grant proceedings. Tim maintains a thorough understanding of the search and archiving platforms used by modern corporations, enabling him to provide counsel to more than 100 global businesses, including two Fortune 15 companies, on adopting and implementing lawful complaint information management programs and e-discovery and litigation readiness initiatives.

Experience

Representative Matters

Patent Litigation

  • Defended the leading smart thermostat manufacturer in an ITC investigation concerning the alleged infringement of four patents. The matter resulted in an initial determination in favor of Tim’s client
  • Represented a leading medical device manufacturer in a 20-plus patent dispute against a rival medical device manufacturer. Successfully resolved the matter via a settlement and patent license agreement
  • Served as first chair for the defense in a patent infringement case involving a device referred to as an end fitting, which is used in oil production. Tim also argued on counterclaims of noninfringement and invalidity, as well as a counterclaim against the plaintiff for patent infringement. The Court ruled in favor of Tim’s client in pretrial rulings, forcing the plaintiff to stipulate to non-infringement
  • Defended a premium cable and satellite television network against accusations that its video streaming service infringed a nonpracticing entity’s patents
  • Represented the manufacturer and seller of trapping systems in the defense of a patent infringement case involving traps to catch feral pigs and other wild animals
  • Defended a company that develops and sells enterprise information management software and obtained a favorable resolution based on Section 101 grounds
  • Served as the lead trial counsel for a medical device company in the defense of a patent infringement case concerning medical devices used in the repair of soft-tissue injuries in the shoulder region
  • Counseled a medical device company and its trial team in an effort that resulted in a jury verdict of $17.4 million
  • Served as the lead trial counsel for the manufacturer of a tail device during a hearing on its motion for preliminary injunction, which the court granted. The tail device is used by the trucking industry to reduce fuel expenditures and comply with various environmental regulations. The defendant sought to build a copycat device, necessitating the client’s patent assertion
  • Acted as lead counsel for the developer of legal and compliance software in a patent case regarding search engine technology wherein Tim and the team secured the dismissal of the case because the patent claimed ineligible subject matter. Tim and the team also pursued an IPR against asserted patents
  • Served as lead counsel in a case where the client, a company that develops and sells enterprise information management software, prevailed on invalidity grounds
  • Served as lead counsel for a real estate investment trust in a patent infringement case regarding smart phone applications; obtained summary judgment and sanctions awards for the client
  • Defended a financial services company as lead counsel in a patent litigation dispute over message storage, delivery, and management methods. Tim and one other attorney were selected by a 60-defendant joint-defense group to lead the arguments for the defense during the claim construction hearing. Tim earned a key victory on claim construction that resulted in the plaintiff stipulating to noninfringement
  • Served as lead counsel for a real estate investment trust and led an 18-defendant joint defense group. Tim obtained a victory on claim construction for his client and the other defendants
  • Acted as lead counsel for multiple software providers in b2b patent litigation disputes over computerized fax and messaging technologies
  • Served as lead counsel in the successful no-liability defense of a patent infringement action involving content management software
  • Acted as lead counsel for a global software company, whereby Tim achieved an outright dismissal of the action
  • Acted as lead defense counsel for a multinational information and analytics company in an action involving patented search technologies
  • Served as the defense team lead in a claim of patent infringement in an action relating to visual display technologies
  • Acted as the lead defense counsel for Canadian entities that offer automated classroom technologies to universities and other educational institutions
  • Served as the lead counsel for the inventor and multiple patents holder of software-defined wide-area networking (SD-WAN), reliability, security, and WAN optimization products in its patent litigation against a competitor. The asserted patents involved network-related inventions
  • Acted as the lead counsel for a financial services company in a successful patent litigation defense involving a dispute over message storage, delivery, and management methods
  • Served as lead counsel in the successful defense and early dismissal on behalf of a major software company in a patent infringement action challenging electronic content management software
  • Defended, as lead counsel, a client in a patent infringement action challenging a computerized routing system utilizing optical character recognition. Achieved favorable claim construction and successful dismissal on behalf of the client
  • Acted as lead counsel in successful no-liability defense against a patent infringement action brought against a client involving computerized smart thermostat technology
  • Acted as lead counsel for a software company in a case relating to telecommunications and routing software that was successfully resolved
  • Served as lead counsel in a case including a software feature used by the agricultural industry. Through his defense of this action, Tim obtained a successful result for the client

Commercial Litigation

  • Secured an outright dismissal of a case brought against a prominent insurance company and its subsidiary. In so doing, the plaintiff ended its claim to common law trademark rights and its complaint for money damages. Before the court dismissed the plaintiff’s claims, Tim moved to terminate sanctions following his examination of plaintiff’s supporting fact witnesses
  • Represented the plaintiff, a maker of helmet-mounted display systems used by military pilots, in an action seeking a restraining order prohibiting its rival from using the client’s trade secrets to unfairly compete with it
  • Represented the plaintiff, a Texas limited liability company involved in various aspects of the entertainment industry, in obtaining a summary judgment ruling in the client’s favor. In so doing, Tim and this team also secured a fee-shifting award
  • Acted as lead counsel for a software provider in litigation over a law firm's license to use software products; obtained summary judgment for the client
  • Served as lead counsel in the successful defense of various corporations in a shareholder class action challenging an enterprise information management software company’s 2009 acquisition of a company that offered a suite of content management, web portal, collaboration, document management, and records management software
  • Secured injunctive relief and favorable settlement for a Chicago-based manufacturer in a case involving allegations of misappropriation of confidential information and trade secrets
  • Acted as the lead trial lawyer for a company that delivers a marketing technology platform for hotels, hotel chains, management companies, and travel websites in its claims for fraud, breach of contract, and unfair competition against a technology services company that serves the travel industry
  • Led the representation of the plaintiff, a company that delivers a marketing technology platform for hotels, hotel chains, management companies, and travel websites, in an action for copyright infringement and violation of the Computer Fraud and Abuse Act and for other torts
  • Secured orders of dismissal, through motion practice, in favor of a multimedia conglomerate and a food and drink processing corporation in an action involving defamation brought in 2008 in the Circuit Court of Cook County, Illinois
  • Secured summary judgment for a money management firm accused of securities fraud in the Northern District of Illinois
  • Represented a multinational investment bank and financial services holding company in the successful defense of 10/11 claims relating to a transfer of interest in a promissory note following a seven-week trial

Insights

Credentials
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Education

  • J.D. DePaul University College of Law 1999
  • B.S. Political Science and Government University of St. Francis 1993

Bar Admissions

  • Illinois

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Texas
  • U.S. District Court for the Western District of Wisconsin

Professional Memberships and Activities

  • Member, Northern District of Illinois, Trial Bar
  • Member, American Bar Association
  • Member, Clinton-Gore Alumni Association

Recognition
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  • Super Lawyers
    • Illinois, 2012 – 2020
    • Rising Star, Illinois, 2010 – 2012
  • IAM Patent 1000, The World’s Leading Patent Professionals, 2013 – 2021
  • America’s Top 100 High Stakes Litigators, Illinois, 2020
  • Law Bulletin Media, Leading Lawyer, Intellectual Property Law, 2009 – 2020
  • Martindale-Hubbell, AV® Preeminent Peer Review Rated
  • Montclair's Who's Who Among Law Professionals