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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 is a partner who focuses his practice on representing domestic and foreign high-technology and medical device clients in patent infringement and related litigation, as well as opinions, licensing and transactions.  Mr. Chapman has experience with all phases of patent infringement litigation, including bench and jury trials in district courts and several appeals to the Federal Circuit.  He also has experience with contentious proceedings in the patent office, including inter partes review and inter partes and ex parte reexamination proceedings.  He also has 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.  

Over the course of his career at Kenyon, Mr. Chapman has represented many of the firm’s largest clients, including Airbus, Bosch, Boston Scientific, Medinol, Olympus, Sony and Toyota, as well as many smaller technology companies.  

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

Mr. Chapman is also active in Kenyon’s management, as a member of the firm’s Management Committee, Associates Committee and Pension Committee. 

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

Representative Experience

  • Represents Toyota in patent litigations regarding automotive airbag systems and blind-spot monitoring systems, as well as related inter partes review proceedings.
  • Represents an Airbus subsidiary in patent litigation regarding electrical connector systems in aircraft.
  • Represents an alliance of inventor groups pro bono in a recent Supreme Court amicus curiae brief regarding laches in patent cases.
  • Represented Sony in a patent litigation regarding interactive video technology. Secured the rejection of hundreds of patent claims in patent office reexaminations, as well as two favorable Markman decisions for two distinct patent families, which led to a favorable settlement.  
  • Represented Sony in an ITC case and related Federal Circuit appeal of IPR proceedings against HumanEyes Technologies regarding 3D camera technology.  The Federal Circuit affirmed the successful IPR decisions. 
  • Represented Bosch in a patent litigation regarding video surveillance technology. Secured a dismissal for lack of standing that led to a favorable settlement. 
  • Represented Bosch in patent litigations regarding automotive acceleration and angular sensor systems. Secured a favorable Markman decision which led to a favorable settlement.
  • Represented 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. 
  • Represented Medinol in a patent litigation regarding coronary stents and a related Federal Circuit appeal.

Select Publications and Speaking Engagements

  • Keurig Perks Up the Topic: Canadian and U.S. Perspectives on Patent Exhaustion,” 2014 Intellectual Property Institute of Canada Annual Meeting, Halifax, Nova Scotia, October 2014
  • “The RAND Modified Hypothetical Negotiation,” Intellectual Property Strategist, June 2013.
  • “Microsoft v. AT&T,” Intellectual Property Strategist, July 2007.



Experience

  • Represents Toyota in patent litigations regarding automotive airbag systems and blind-spot monitoring systems, as well as related inter partes review proceedings.
  • Represents an Airbus subsidiary in patent litigation regarding electrical connector systems in aircraft.
  • Represents an alliance of inventor groups pro bono in a recent Supreme Court amicus curiae brief regarding laches in patent cases.
  • Represented Sony in a patent litigation regarding interactive video technology. Secured the rejection of hundreds of patent claims in patent office reexaminations, as well as two favorable Markman decisions for two distinct patent families, which led to a favorable settlement.  
  • Represented Sony in an ITC case and related Federal Circuit appeal of IPR proceedings against HumanEyes Technologies regarding 3D camera technology.  The Federal Circuit affirmed the successful IPR decisions. 
  • Represented Bosch in a patent litigation regarding video surveillance technology. Secured a dismissal for lack of standing that led to a favorable settlement. 
  • Represented Bosch in patent litigations regarding automotive acceleration and angular sensor systems. Secured a favorable Markman decision which led to a favorable settlement.
  • Represented 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. 
  • Represented Medinol in a patent litigation regarding coronary stents and a related Federal Circuit appeal.
  • 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
  • View All

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 State
  • 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
  • Law Society of Upper Canada (Ontario Bar) (non-practicing)

Professional Organizations

  • New York Intellectual Property Law Association, Amicus Curiae Committee

Languages

  • French (proficient)