Trevor Coddington

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Trevor Coddington focuses his practice on all aspects of intellectual property law, particularly patent litigation and procurement. Trevor offers a unique combination of patent prosecution skills, litigation insight, real-life experience, and technical know-how delivered with sensible business advice. Trevor has decades of experience acquiring, enforcing, and challenging patents, having litigated numerous infringement and validity matters in various federal district courts and drafted and obtained hundreds of patents before the United States Patent and Trademark Office (USPTO).

In the late 1990s, while obtaining his Ph.D. in Physics, Trevor started his legal career as a patent examiner at the USPTO. There, he examined patent applications in the art of applied cryptography, touching upon numerous emerging technologies in e-commerce, telecommunications, and cybersecurity. Leveraging his experience as a PTO examiner, Trevor’s clients value his skills in searching and finding prior art and overcoming the obstacles that patent challengers and patentees face in post-grant proceedings.

His interest in and experience with cutting-edge technologies continues today. Trevor is recognized for his expertise in holograms used by the entertainment industry, having been integral in numerous patent disputes involving the technology that enabled the digital resurrections of Tupac Shakur at Coachella and Michael Jackson at the Billboard Music Awards, among other deceased artists.

In addition to patents, Trevor is a sought-after advocate in other intellectual property matters involving trademarks, copyrights, and trade secrets. He has obtained numerous trademark registrations around the world and actively assists clients in protecting their valuable brands and trade secrets.

In addition to his practice, Trevor is also committed to volunteer work. Trevor counseled (pro bono) teams competing in the annual Biomimicry Global Design Challenge (BGDC) presented by the Biomimicry Institute. The BGDC creates viable solutions inspired by nature that address the United Nations Sustainable Development Goals (SDGs). Trevor also enjoys mentoring legal minds and future inventors and entrepreneurs. He is committed to leveling the playing field by supporting and guiding underrepresented groups in business and technology.

Notable Work

Trademark Cancellation:

Represented petitioner Pathway in successfully cancelling two registered trademarks by Respondent HangZhou in Pathway Innovation and Technologies, Inc. v. HangZhou Zero Zero Technology Co., Ltd., Cancellation Nos. 92067884 and 92068617 (TTAB, May 31, 2023). The Board found that the registered and senior trademarks HOVER CAMERA and HOVER CAMERA PASSPORT, for “cameras for drones” and “drones,” respectively, are likely to cause consumers to be confused between the source of HangZhou’s products and Pathway’s document camera products, which bear Pathway’s prior-registered HOVERCAM design mark and prior-registered word marks HOVERCAM and HOVERCAM SOLO.

Patent Reexamination:

Successfully defeated all grounds of anticipation and obviousness raised by the challenger to continue the patentee’s enforcement campaign of United States Patent No. 8,756,845.

Federal Circuit Reversal:

Represented patentee and appellant Evolusion before the Federal Circuit, which reversed and vacated the district court’s summary judgment ruling of non-infringement and vacated the defendant’s award of attorney’s fees in Evolusion Concepts, Inc. v. HOC Events, Inc., No. 2021-1963 (Fed. Cir., Jan. 14, 2022).

Contributory Infringement Avoided:

Established that mylar film used in Hologram theatrical performances had substantial non-infringing uses, and defendant client was granted summary judgment of no contributory infringement in Hologram USA, Inc. v. Pulse Evolution Corp., et al., Case no. 2:14-cv-0772 (D.Nev., Jan. 31, 2017).

Patent Royalty Standard:

Obtained an 18.77 percent royalty for a patentee via a non-confidential settlement with an alleged infringer. Evolusion Concepts, Inc. v. Cross Engineering, LLC, et al., Case No. 3:18-cv-00871-MSB (S.D.Cal.). The 18.77 percent royalty rate now serves as a standard in the client’s enforcement/licensing campaign.

Patent Infringement Claim Abandoned:

Sought declaratory judgment of non-infringement for a client, which resulted in patentee abandoning its infringement claim and purchasing client’s product line for a significant amount of money.

Patent Validated Over Alice Challenge:

Defeated a motion to dismiss on Alice grounds with the court adopting client’s argument. Confident Technologies Inc. v. AXS Group LLC et al., Case No. 3:17-cv-02181-H-MDD (S.D.Cal.) (“The Court agrees with plaintiff that the invention claimed in the ‘578 patent is not directed to an abstract idea”).

Patent Reexamination:

Successfully defended a client’s five patents during extensive reexamination proceedings, then successfully obtained a lucrative settlement resulting in an effective 25 percent royalty payment.

Patent Enforcement:

Successfully obtained a lucrative settlement for a patentee against one of the largest pharmacy chains in the United States a few months after filing. Drafted and obtained patent at-issue as well.

Patent Law Expert Testimony:

Testified as an expert in patent law on several occasions involving disputes related to USPTO procedure, patent licensing and ownership, and acts of inequitable conduct by patent applicants.

Successful Validity Challenge:

Found invalidating prior art that had not been considered by the USPTO during reexamination of an asserted patent and convinced the patentee to dismiss its claims against a client within months after filing the lawsuit.

Non-Infringement Acknowledgment:

Forced accountability on a patentee to issue a press release announcing that a client’s products do not infringe and that customers may purchase client’s products without fear of reprisal.

Patent Expert Testimony:

Testified as an expert in patent law on several occasions involving disputes related to USPTO procedure, patent licensing and ownership, and acts of inequitable conduct by patent applicants.

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Thomas Jefferson School of Law, San Diego, CA, Adjunct Professor on Registering Trademarks with USPTO, 2021
Biomimicry Institute, IP and Business Counselor, 2018-2020
United States Patent & Trademark Office (USPTO), Patent Examiner, 1998-2000

University of California, San Diego, Jacobs School of Engineering and von Liebig Center for Entrepreneurism and New Technology Advancement, Special Course on Entrepreneurship and New Venture Creation, Guest Speaker, "Intellectual Property Protection/Enforcement – The “Do’s' and “Don’ts,'" 2011

California
U.S. Patent and Trademark Office
* Not admitted to the practice of law in Texas

U.S. Court of Appeals
U.S. Court of Federal Claims
U.S. District Court, Central District of California
U.S. District Court, Eastern District of California
U.S. District Court, Southern District of California
U.S. District Court, District of Colorado
U.S. District Court, Southern District of Texas
U.S. District Court, Western District of Texas

Trevor Q. Coddington, Ph.D.

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