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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)

Gerard A. Messina Partner
New York, NY 1.212.908.6447

Overview

Gerard Messina focuses his practice on prosecuting patents and counseling clients on patent strategy. He successfully manages the patent portfolios of numerous domestic and foreign companies, and provides high-quality drafting and prosecuting of domestic, international and foreign national patent applications, for clients such as Robert Bosch and Analog Devices. He also counsels companies of all sizes on the validity and infringement of patents, including performing patent portfolio reviews and providing opinions to protect their products and services.

Mr. Messina has extensive experience in a wide range of technologies, including electronic control systems, computer hardware and software, semiconductors, sensors, optics, telecommunications, and financial systems.

He has received recognition for his prosecution work from The Legal 500 United States in the area of “patent prosecution: utility and design patents,” in which he is "recommended for his expertise within the electrical, mechanical and computer technologies.” He also authors articles and is a regular speaker on patent matters, both in the United States and abroad.

In addition to his practice, Mr. Messina is the chair of the Associates Committee and co-chair of the Patent Prosecution/Opinion Practice Group.

Select Publications

  • “The America Invents Act and its Foreign Counterparts: Comparing the Meaning and Implications of Prior Art Across the United States, European and Japanese Patent Law Systems,” Bloomberg BNA’s Patent, Trademark & Copyright Journal, February 21, 2014.

Representative Experience

  • Rebranding The Washington Post Company to Graham Holdings Company Read More
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Credentials

Education

  • University of Wisconsin-Madison, J.D., cum laude, 1990
  • Stony Brook University, Electrical Engineering and Computer Science, B.E., magna cum laude, 1986

Bar and Court Admissions

  • New York
  • Wisconsin
  • Registered Patent Attorney: U.S. Patent and Trademark Office

Professional Organizations

  • American Bar Association
  • American Intellectual Property Law Association
  • Institute of Electrical and Electronics Engineers
  • New York Intellectual Property Law Association