Highlight Image
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)

Robert L. Hails, Jr. Partner
Washington, DC 1.202.220.4235

Overview

Robert Hails has over twenty years of experience representing clients in patent matters, chiefly in the areas of patent enforcement and procurement. He represents clients against various non-practicing entities, both in litigation and beforehand, to respond to monetization efforts from such entities. He has experience arguing Markman hearings and taking witness testimony at trial.

Mr. Hails manages large scale portfolio reviews, often including hundreds of patents, to evaluate risks and opportunities for our clients. His experience spans a wide variety of electrical engineering disciplines, including communications, computer architectures, integrated circuit designs, pixel design, optical displays, and image and audio coding systems. He also has substantial experience reviewing communication standards and evaluating claims that patents are standards-essential.

Mr. Hails represents clients before the U.S. Patent and Trademark Office, and he argued the firm’s first inter partes review. He advises clients regarding development of patent development programs designed to identify and protect technologies that provide competitive advantages in the marketplace. For large corporate clients, Mr. Hails regularly manages teams of prosecuting attorneys. He also drafts patent applications and represents clients to secure patent rights for inventions.

In addition, Mr. Hails regularly presents at client seminars regarding patent portfolio development.

Representative Litigation Experience

  • Skyllzone in district court litigation, enforcing a patent involving an on-line fantasy game. Skyllzone, LLC v. BDL Penn Enterprises (S.D.N.Y.)
  • Sony in district court litigation, defending its digital cameras over infringement claims involving pixel designs. L-3 Communications Corp. v. Sony Corp. (D. Del.)
  • Hewlett-Packard in ITC proceedings defending its computers, laptops, and printers over infringement claims involving flash memory card interfaces. Certain Computers and Computer Peripheral Devices, 337-TA-841

Representative Prosecution Experience

  • Hewlett-Packard in a successful USPTO inter partes review of a patent involving flash memory controllers. Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR 2013-00217
  • Managing Kenyon prosecution efforts for Analog Devices, Apple, and SAP

Representative Enforcement Experience

  • Represents clients to respond to monetization efforts from Alliacense, TPL Group, Personal Audio, Wi-LAN, Avistar, Xerox, NCR, IBM and Discovision

Experience


Litigation Experience

  • Skyllzone in district court litigation, enforcing a patent involving an on-line fantasy game. Skyllzone, LLC v. BDL Penn Enterprises (S.D.N.Y.)
  • Sony in district court litigation, defending its digital cameras over infringement claims involving pixel designs. L-3 Communications Corp. v. Sony Corp. (D. Del.)
  • Hewlett-Packard in ITC proceedings defending its computers, laptops, and printers over infringement claims involving flash memory card interfaces. Certain Computers and Computer Peripheral Devices, 337-TA-841

Prosecution Experience

  • Hewlett-Packard in a successful USPTO inter partes review of a patent involving flash memory controllers. Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR 2013-00217
  • Managing Kenyon prosecution efforts for Analog Devices, Apple, and SAP

Enforcement Experience

  • Represents clients to respond to monetization efforts from Alliacense, TPL Group, Personal Audio, Wi-LAN, Avistar, Xerox, NCR, IBM and Discovision



Credentials

Education

  • George Washington University Law School, J.D., with honors, 1993
  • University of Maryland, Electrical Engineering, B.S., 1990

Bar and Court Admissions

  • District of Columbia
  • Virginia
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Eastern District of Virginia
  • U.S. Court of Appeals for the Federal Circuit
  • Registered Patent Attorney: U.S. Patent and Trademark Office