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Kenyon Successfully Represents Toyota in Years-Long Patent Litigation

Kenyon & Kenyon LLP successfully represented Toyota Motor Corp. in a long term patent litigation against American Vehicular Sciences (AVS). Originally brought by AVS in the Eastern District of Texas, the matter asserted 24 patents across seven separate cases – accusing essentially every major Toyota vehicular safety system. In the three years since the original filing, the Kenyon team filed 12 separate petitions for inter partes review (IPR) and won a stay in the E.D. Tex. pending resolution of the IPRs. The Patent Trial and Appeal Board granted each of the IPRs, and significant claims were cancelled or dropped. Additionally, the Kenyon team successfully petitioned the Federal Circuit for a writ of mandamus and the case was transferred from the E.D. Tex. to the Eastern District of Michigan, and filed various invalidity summary judgment papers, causing the plaintiff to drop a number of other asserted patents. In May of 2015, the E.D. Mich. granted the plaintiff’s unopposed motions to dismiss with prejudice all of the remaining cases against Toyota. (2015)

Matthew G. Berkowitz Partner
New York, NY 1.212.908.6462

Overview

Matt Berkowitz’s practice focuses on patent litigation in federal district courts and the International Trade Commission (ITC), as well as post-grant proceedings in the U.S. Patent and Trademark Office. Mr. Berkowitz has experience across a broad spectrum of technologies, including consumer electronics, hybrid vehicles, pre-collision vehicle systems, endodontic instruments, aircraft systems, and pharmaceuticals. 

Mr. Berkowitz has been named one of the “Top 40 under 40 Intellectual Property Lawyers” by the American Society of Legal Advocates. 

Representative Experience

  • Toyota as lead counsel in five inter partes review proceedings. Toyota’s petitions granted on all 50 combined claims across the five proceedings for which review was requested.
  • Toyota in multiple ongoing cases originally involving 24 patents. Multiple patents dismissed before claim construction. 3 of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board. American Vehicular Sciences v. Toyota (E.D. Tex).
  • Elpida (current subsidiary of Micron Technology) in an eight patent semiconductor memory litigation involving district court actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing. Intellectual Ventures v. Elpida (D. Del., W.D. Wash., ITC).
  • Sony as a complainant in a seven patent ITC investigation concerning mobile telephones that settled favorably at the end of fact discovery.  In the Matter of Certain Mobile Telephones and Modems (ITC).
  • Toyota in a litigation relating to vehicle telematics, which has been successfully stayed pending inter partes reexamination. In all three reexaminations, all asserted claims stand rejected. Fernandez v. Toyota (C.D. Cal.). 
  • Airbus in a litigation relating to fuel tank inerting systems, which was successfully stayed pending inter partes reexaminations of all asserted claims.  Mr. Berkowitz argued an appeal of one of the reexaminations before the Patent Trial and Appeal Board, wherein the Board affirmed the rejection of all asserted claims. Firepass v. Airbus (E.D.N.Y.). 
  • Sony in litigation resulting in summary judgment of invalidity based on lack of written description, which was affirmed by the Federal Circuit on appeal. Trans Video Electronics v. Sony Electronics (N.D. Cal.)
  • GE Healthcare (GEH) in a 38-day false advertising trial wherein the court rejected plaintiff Bracco’s $4 billion damages claim against GEH and held that Bracco had itself engaged in false advertising. Bracco Diagnostics v. Amersham Health (D.N.J.).
  • Toyota in district court actions and an ITC investigation, in which Toyota avoided the injunction on hybrid cars sought by plaintiff. Paice v. Toyota (E.D. Tex., ITC).  
  • Guidance Endodontics in multi-patent Section 337 investigation concerning endodontic instruments that settled favorably. In the Matter of Certain Endodontic Instruments (ITC).

Experience

Additional Representative Matters

  • Toyota, as lead counsel in five inter partes review proceedings. Toyota’s petitions granted on all 50 combined claims across the five proceedings for which review was requested.
  • Toyota in multiple ongoing cases originally involving 24 patents. Multiple patents dismissed before claim construction. 3 of the remaining cases are currently stayed pending resolution of 12 inter partes review petitions filed by Toyota, all of which were instituted by the Patent Trial and Appeal Board.American Vehicular Sciences v. Toyota (E.D. Tex).
  • Elpida (current subsidiary of Micron Technology) in an eight patent semiconductor memory litigation involving district court actions and an ITC investigation, which was successfully settled after summary determination briefing and prior to a hearing. Intellectual Ventures v. Elpida (D. Del., W.D. Wash., ITC).
  • Toyota in a litigation relating to vehicle telematics, which has been successfully stayed pending inter partes reexamination. In all three reexaminations, all asserted claims stand rejected. Fernandez v. Toyota (C.D. Cal.). 
  • Airbus in a litigation relating to fuel tank inerting systems, which was successfully stayed pending inter partes reexaminations of all asserted claims.  Mr. Berkowitz argued an appeal of one of the reexaminations before the Patent Trial and Appeal Board, wherein the Board affirmed the rejection of all asserted claims. Firepass v. Airbus (E.D.N.Y.). 
  • GE Healthcare (GEH) in a 38-day false advertising trial wherein the court rejected plaintiff Bracco’s $4 billion damages claim against GEH and held that Bracco had itself engaged in false advertising. Bracco Diagnostics v. Amersham Health (D.N.J.).
  • Guidance Endodontics in multi-patent Section 337 investigation concerning endodontic instruments that settled favorably. In the Matter of Certain Endodontic Instruments (ITC).
  • Trans Video Electronics, Ltd. v. Sony Electronics Inc., et al. Read More
  • Paice LLP v. Toyota Motors Corp et al. Read More
  • View All

Credentials

Education

  • Temple University, J.D., cum laude, dean's list, 2005
  • The Pennsylvania State University, Industrial Engineering, B.S., 2002

Bar and Court Admissions

  • New York
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • Registered Patent Attorney: U.S. Patent and Trademark Office