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)

Thomas R. Makin Partner
New York, NY 1.212.908.6144

Overview

Tom Makin focuses his practice on patent litigation, in federal court and before the International Trade Commission. He also participates in patent review proceedings before the Patent and Trademark Office, and counsels clients regarding both substantive patent law and patent valuation and licensing issues.

Mr. Makin represents plaintiffs and defendants across a wide range of technological fields: vehicular safety and propulsion systems, LEDs, smartphone applications, rechargeable batteries, imaging systems, medical devices, and semiconductor fabrication and circuitry.

He has been recognized for excellence in practice from a number of legal publications, including the 2015 editions of The Legal 500 United States and IAM Patent 1000 – The World’s Leading Patent Practitioners. IAM Patent 1000 notes that “Thomas Makin is the subject of effusive praise: ‘His knowledge of case law is something to behold and he has a great imagination, always willing to look at things in different ways and come up with new ideas. He takes the time to understand your patents (and other intellectual property), and does things when he says he’s going to do them. He exhibits real mental fortitude.’”

Mr. Makin’s clients include Toyota, Micron, Nichia, Olympus, Nippon Steel, Airbus, Fan Vision Entertainment, and Fresh Direct.

Recent Representative Experience

  • Mr. Makin represented Toyota, as lead counsel, in multiple cases originally filed on 24 vehicular safety patents in the Eastern District of Texas. Toyota won transfer on mandamus to the Eastern District of Michigan, a stay pending resolution of 12 inter partes review petitions that ultimately resulted in the cancellation or withdrawal of significant patent claims, and voluntary dismissal with prejudice by plaintiff. American Vehicular Sciences v. Toyota et al. (E.D. Tex., E.D. Mich.)
  • Mr. Makin represented Elpida (a Micron subsidiary) in an 8 patent semiconductor litigation involving district court actions and an ITC investigation. Elpida achieved a successful settlement after summary determination briefing. Intellectual Ventures v. Elpida et al. (D. Del., W.D. Wash., ITC)
  • Mr. Makin represented Toyota in a litigation relating to vehicle telematics, and Airbus in a litigation relating to fuel tank inerting systems. The clients were granted stays pending inter partes reexamination. All asserted claims, in both litigations, stand rejected, pending appeal. Fernandez v. Toyota (C.D. Cal.); Firepass v Airbus (E.D.N.Y.)

Experience

  • Mr. Makin represented Toyota, as lead counsel, in multiple cases originally filed on 24 vehicular safety patents in the Eastern District of Texas.  Toyota won transfer on mandamus to the Eastern District of Michigan, a stay pending resolution of 12 inter partes review petitions that ultimately resulted in the cancellation or withdrawal of significant patent claims, and voluntary dismissal with prejudice by plaintiff. American Vehicular Sciences v. Toyota et al. (E.D. Tex., E.D. Mich.)
  • Mr. Makin represented Elpida (a Micron subsidiary) in an 8 patent semiconductor litigation involving district court actions and an ITC investigation.  Elpida achieved a successful settlement after summary determination briefing.  Intellectual Ventures v. Elpida et al. (D. Del., W.D. Wash., ITC)
  • Mr. Makin represented Toyota in a litigation relating to vehicle telematics, and Airbus in a litigation relating to fuel tank inerting systems.  The clients were granted stays pending inter partes reexamination.  All asserted claims, in both litigations, stand rejected, pending appeal.  Fernandez v. Toyota (C.D. Cal.); Firepass v Airbus (E.D.N.Y.)
  • Samy Gharb v. Rockwell Automation et al. Read More
  • Agere Systems Inc. v. Sony Corporation et al. Read More
  • Harold G. Abbey v. Bill Ussery Motors, Inc. et al. Read More
  • Paice LLP v. Toyota Motors Corp et al. Read More
  • Leapfrog Enterprises v. Fisher-Price, Inc. Read More
  • Soundview Technologies, Inc. v. Sony Electronics Inc. Read More
  • View All

Credentials

Education

  • Columbia Law School, J.D., 2000, James Kent & Harlan Fisk Stone Scholar; Staff Editor, Columbia - VLA Journal of Law & the Arts; Technical Editor, Columbia Science and Technology Law Review
  • Swarthmore College, Engineering, B.S., 1997, Tau Beta Pi, engineering honor society
  • Swarthmore College, History, B.A., 1997, Editor in Chief, Common Sense

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
  • U.S. Court of Appeals for the Federal Circuit

Professional Organizations

  • International Association for the Protection of Intellectual Property (AIPPI)
  • American Society of Mechanical Engineers (ASME)
  • Sigma Xi, the Scientific Research Society