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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)

David J. Kaplan Associate
New York, NY 1.212.908.6846

Overview

David Kaplan has nearly a decade of experience with intellectual property matters with a specific focus on patent litigation in a broad array of forums including U.S. district courts, the International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, and in trials before the Patent Trial and Appeal Board (PTAB).  

Mr. Kaplan has handled all phases of patent litigation for both patent owners and accused infringers for a wide range of technologies that include automotive systems, cable television and DOCSIS standards, wireless communication, graphical user interfaces, GPS devices, DVD and Blu-ray technology, fitness machines and methods, and medical devices.  He focuses on litigation strategy and management, with particular emphasis on an early identification and analysis of key issues and appropriate allocation of resources.

He is also experienced with licensing issues and in counseling clients on the interplay between litigation and trial proceedings before the PTAB.  Mr. Kaplan has been involved in more than one dozen reexaminations and inter partes reviews before the PTAB, and has represented both patent owners and petitioners in those proceedings. Mr. Kaplan has represented firm clients including Volkswagen, Sony, Lenovo, Olympus, and Toyota, among others.

While earning his undergraduate degree, Mr. Kaplan gained technical experience in mechanical and electrical engineering, and earned accolades for his work on aircraft propulsion and design.

Representative Experience

  • C-Cation Technologies in a patent infringement case concerning cable television systems and DOCSIS.  Case settled after favorable claim construction ruling.  C-Cation Technologies v. Comcast (E.D.Tex.) 
  • C-Cation, Inc. and C-Cation Technologies in a breach of contract case related to an earlier settlement agreement.  Case settled after motion for summary judgment granted in part.  Comcast v. C-Cation, Inc. (S.D.N.Y.) 
  • Volkswagen AG, Audi AG, and Volkswagen Group of America, Inc. in an action concerning tire pressure monitoring systems. Successfully moved for dismissal for lack of standing with respect to two patents in the district court; the court of appeals affirmed. Successfully moved for non-infringement with respect to third patent in the district court; the court of appeals subsequently agreed with the Volkswagen companies that plaintiff MHL lacked standing with respect to the third patent as well. MHL Tek v. Nissan Motor Co. et al. (E.D. Tex.) 
  • Janam in patent litigation regarding mobile wireless technology. Defeated motion for a preliminary injunction.  Symbol Technologies v. Janam Technologies (D. Del.) 
  • GE Healthcare in a false advertising case concerning x-ray diagnostic contrast agents. District court found in favor of GE Healthcare after 39 day trial on its false advertising counterclaim. Bracco Diagnostics v. Amersham Health (D.N.J.) 
  • Integrity Data, Inc. in a patent infringement case relating to night vision systems.  Case settled after motion for summary judgment filed.  Tactical Solutions v. OFUS Corp. et al. (D. Col.)

Select Publications

  • "Patent Office Begins Six-Month Glossary Pilot Program," New York Intellectual Property Law Association's (NYIPLA) Bulletin, August/September 2014. 

Experience

  • C-Cation Technologies in a patent infringement case concerning cable television systems and DOCSIS.  Case settled after favorable claim construction ruling.  C-Cation Technologies v. Comcast (E.D.Tex.) 
  • C-Cation, Inc. and C-Cation Technologies in a breach of contract case related to an earlier settlement agreement.  Case settled after motion for summary judgment granted in part.  Comcast v. C-Cation, Inc. (S.D.N.Y.) 
  • Volkswagen AG, Audi AG, and Volkswagen Group of America, Inc. in an action concerning tire pressure monitoring systems. Successfully moved for dismissal for lack of standing with respect to two patents in the district court; the court of appeals affirmed. Successfully moved for non-infringement with respect to third patent in the district court; the court of appeals subsequently agreed with the Volkswagen companies that plaintiff MHL lacked standing with respect to the third patent as well. MHL Tek v. Nissan Motor Co. et al. (E.D. Tex.) 
  • Janam in patent litigation regarding mobile wireless technology. Defeated motion for a preliminary injunction.  Symbol Technologies v. Janam Technologies (D. Del.) 
  • GE Healthcare in a false advertising case concerning x-ray diagnostic contrast agents. District court found in favor of GE Healthcare after 39 day trial on its false advertising counterclaim. Bracco Diagnostics v. Amersham Health (D.N.J.) 
  • Integrity Data, Inc. in a patent infringement case relating to night vision systems.  Case settled after motion for summary judgment filed.  Tactical Solutions v. OFUS Corp. et al. (D. Col.)

Insights and News

Credentials

Education

  • Rutgers University, J.D., 2006, Rutgers Computer and Technology Law Journal
  • University of Michigan, Aerospace Engineering, B.S.E., 2003

Bar and Court Admissions

  • New Jersey
  • New York
  • U.S. District Court for the District of Colorado
  • U.S. District Court for the District of New Jersey
  • 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
  • Registered Patent Attorney: U.S. Patent and Trademark Office

Professional Organizations

  • New York Intellectual Property Law Association (NYIPLA), member of the patent law committee and patent litigation committee