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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)

Mark A. Chapman Partner
New York, NY 1.212.908.6308

Overview

Mark Chapman focuses his practice on representing domestic and foreign high-technology clients in patent infringement and related litigation, as well as opinions, licensing and transactions. He has experience with all phases of patent infringement litigation, through trial and appeal. Mr. Chapman also has experience with both inter partes and ex parte patent office reexamination proceedings. He has also coordinated and supported foreign patent litigation and related patent office proceedings, including trials and appeals, working closely with patent litigation counsel in Canada, the United Kingdom, the Netherlands, Germany, France and Italy.

Mr. Chapman's technical background is in engineering physics and his patent experience has involved a wide variety of technologies, including stereoscopic imaging, automotive systems (GPS, acceleration sensors, collision-warning systems, window pinch systems), Blu-ray and DVD players, coronary stents, coated dental floss, endodontic instruments, exercise equipment, high-throughput experimentation techniques, digital check imaging systems, industrial combustion burners, interactive lottery systems, online poker systems, mass spectrometers, optical fiber, video surveillance systems, and wrist-watch designs.

Prior to joining Kenyon, he practiced transactional corporate and securities law at Sullivan & Cromwell in New York. He has also served as a law clerk to the Honourable Mr. Justice John C. Major of the Supreme Court of Canada in Ottawa.

Representative Experience

  • Sony in a patent litigation regarding interactive video technology. Secured the rejection of hundreds of claims in patent office reexaminations, as well as two favorable Markman decisions for two distinct patent families.  MONKEYMedia v. Buena Vista Home Entertainment (W.D. Tex.)
  • Bosch in a patent litigation regarding video surveillance technology. Secured a dismissal for lack of standing that led to a favorable settlement. Criminal Activity Surveillance v. ADT Security Services et al. (E.D. Tex.)
  • Deutsche Telekom and foreign T-Mobile mobile carriers in a patent litigation regarding international paging technology. Secured a dismissal for lack of personal jurisdiction, which was affirmed on appeal.Technology Patents v. T-Mobile (UK) et al. (D. Md.)
  • Sony defendants in ITC case against HumanEyes Technologies regarding 3D camera technology. HumanEyes terminated the case at the end of fact discovery. In re Certain Cameras and Mobile Devices (ITC)
  • Bosch, as supplier, in an ITC case against Beacon Navigation regarding GPS navigation system technology in automobiles. Beacon terminated the case during fact discovery. In re Certain Automotive GPS Navigation Systems (ITC)
  • Bosch in patent litigations regarding automotive acceleration and angular sensor technology in automobiles. Secured a favorable Markman decision which led to a favorable settlement. Wacoh v. Robert Bosch (E.D. Mich.) and Wacoh v. Analog Devices et al. (D. Del.)
  • Janam in a patent litigation regarding mobile wireless technology. Defeated a motion for a preliminary injunction. Symbol Technologies v. Janam Technologies (D. Del.) 
  • Sony in a patent litigation regarding biometric security technology. Secured an early dismissal based on improper joinder. Innovative Biometric Technology v. Lenovo (United States) et al. (S.D. Fla.)
  • Cartier in a declaratory judgment action challenging patent regarding watch design technology. Secured a favorable settlement. Cartier v. Wing Hon Metal Manufactory (D.D.C.)
  • Guidance Endodontics in an ITC case against Dentsply regarding endodontic drill technology. Secured a favorable settlement. In re Certain Endodontic Instruments (ITC)

Select Publications

  • "The RAND Modified Hypothetical Negotiation," Intellectual Property Strategist, June 2013.
  • "Microsoft v. AT&T," Intellectual Property Strategist, July 2007.

Experience

  • Bosch in patent litigation regarding video surveillance technology. Criminal Activity Surveillance v. ADT Security Services et al. (E.D. Tex.)
  • Deutsche Telekom and foreign T-Mobile mobile carriers in patent litigation regarding international paging technology. Secured a dismissal for lack of personal jurisdiction, which was affirmed on appeal. Technology Patents v. T-Mobile (UK) et al. (D. Md.)
  • Sony defendants in ITC case against HumanEyes Technologies regarding 3D camera technology. HumanEyes terminated the case at the end of fact discovery. In re Certain Cameras and Mobile Devices (ITC)
  • Bosch, as supplier, in ITC case against Beacon Navigation regarding GPS navigation system technology in automobiles. Beacon terminated the case during fact discovery. In re Certain Automotive GPS Navigation Systems (ITC)
  • Bosch in patent litigations regarding automotive acceleration and angular sensor technology in automobiles. Secured favorable Markman decision which led to favorable settlement. Wacoh v. Robert Bosch (E.D. Mich.) and Wacoh v. Analog Devices et al. (D. Del.)
  • Janam in patent litigation regarding mobile wireless technology. Defeated motion for a preliminary injunction. Symbol Technologies v. Janam Technologies (D. Del.)
  • Represented Sony in patent litigation regarding biometric security technology. Secured dismissal from litigation based on improper joinder. Innovative Biometric Technology v. Lenovo (United States) et al. (S.D. Fla.)
  • Cartier in declaratory judgment action challenging patent regarding watch design technology. Secured favorable settlement. Cartier v. Wing Hon Metal Manufactory (D.D.C.)
  • Guidance Endodontics in ITC case against Dentsply regarding endodontic drill technology. Secured favorable settlement. In re Certain Endodontic Instruments (ITC)
  • Lottotron, Inc. v. GTECH Corp. Read More
  • Medtronic Vascular, Inc., et al. v. Boston Scientific Corporation, Medinol Ltd., et al. Read More
  • Applera Corp. v. Micromass UK, Ltd. Read More
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Insights and News

Events

Credentials

Education

  • McGill University, LL.B. and B.C.L., with Great Distinction, 1995, Dean's List; Senior Editor, McGill Law Journal
  • Queen's University, Engineering Physics, B.S., First Class Honours, 1991, Dean's List

Bar and Court Admissions

  • New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Supreme Court
  • Ontario

Professional Organizations

  • New York Intellectual Property Law Association, Amicus Curiae Committee
  • Intellectual Property Owners Association, Canadian Practice Committee

Languages

  • French