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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)

Sheila Mortazavi Partner
New York, NY 1.212.908.6346

Overview

Sheila Mortazavi’s practice covers all facets of intellectual property litigation and counseling, with a particular emphasis on patent infringement litigation across a wide range of technologies. 

Ms. Mortazavi has handled all phases of litigation before federal and state courts, the International Trade Commission, and arbitration panels, including pre-trial investigation, fact and expert discovery, motion practice, trial, and appellate practice.  She advises clients on litigation strategy in complex patent cases, and has successfully represented both plaintiffs and defendants in cases involving consumer electronics, computer hardware and software, telecommunications, electrical connectors, automotive components, medical devices and pharmaceuticals.  She has also represented clients in unfair competition and trademark matters. 

In addition to litigation, Ms. Mortazavi counsels clients on procurement and transfer of intellectual property rights, negotiation of licenses and other agreements, and evaluation of the scope, validity and enforceability of intellectual property rights.

Ms. Mortazavi is a member of the firm’s diversity committee.  She was named a “Rising Star” in intellectual property by Super Lawyers 2013 for the New York Metro area.

Representative Experience 

  • C-Cation in a case relating to load balancing features involving the DOCSIS standard. C-Cation Technologies v. Comcast et al. (E.D. Tex.)
  • Avaya and Sony in patent litigations relating to predictive text features. Defended Avaya and Sony against claims of patent infringement. Data Carriers v. Avaya and Data Carriers v. Sony Computer Entertainment America et al. (D. Del.)
  • Sony in a patent litigation relating to video and audio encoding.  Defended Sony against claims of patent infringement. Mediostream v. Acer America et al. (N.D. Cal.)
  • Sony in patent litigations in which Kenyon defended Sony against claims of patent infringement relating to 3D technology. HumanEyes Technologies v. Sony et al. and In the Matter of Certain Cameras and Mobile Devices (D. Del., ITC)
  • Tris Pharma, as trial counsel, at preliminary injunction hearing involving trade secret and unfair competition claims. UCB Manufacturing v. Tris Pharma et al. (N.J. state court)
  • GE Healthcare in a false advertising case concerning x-ray contrast agents. District court found in favor of GE Healthcare after trial on its false advertising counterclaim. Bracco Diagnostics v. Amersham Health (D.N.J.) 
  • Sony in patent litigation relating to handheld electronic communication devices. Obtained dismissal with prejudice of patent infringement claims against Sony. Wireless Agents v. Amoi Electronics et al. (W.D. Tex.)
  • FCI in patent litigation relating to electrical connectors. Obtained favorable jury verdict for FCI on its patent infringement claims. FCI v. Hon Hai Precision Industry et al. (N.D. Cal.)

Experience

  • C-Cation in a case relating to load balancing features involving the DOCSIS standard. C-Cation Technologies v. Comcast et al. (E.D. Tex.)
  • Avaya and Sony in patent litigations relating to predictive text features. Defended Avaya and Sony against claims of patent infringement. Data Carriers v. Avaya and Data Carriers v. Sony Computer Entertainment America et al. (D. Del.)
  • Sony in a patent litigation relating to video and audio encoding.  Defended Sony against claims of patent infringement. Mediostream v. Acer America et al. (N.D. Cal.)
  • Sony in patent litigations in which Kenyon defended Sony against claims of patent infringement relating to 3D technology. HumanEyes Technologies v. Sony et al. and In the Matter of Certain Cameras and Mobile Devices (D. Del., ITC)
  • Tris Pharma, as trial counsel, at preliminary injunction hearing involving trade secret and unfair competition claims. UCB Manufacturing v. Tris Pharma et al. (N.J. state court)
  • GE Healthcare in a false advertising case concerning x-ray contrast agents. District court found in favor of GE Healthcare after trial on its false advertising counterclaim. Bracco Diagnostics v. Amersham Health (D.N.J.) 

  • Kenyon Defeats Inter Partes Review for C-Cation Technologies Read More
  • Eli Lilly and Co. v. Sicor Pharmaceuticals, Inc., Sicor, Inc., Teva Pharmaceutical Industries LTD., and Teva Pharmaceuticals USA, Inc. Read More
  • Sony Corporation v. LG Electronics U.S.A. Inc. et al.; LG Electronics, Inc. v. Sony Corporation et al. Read More
  • Wireless Agents, LLC v. Amoi Electronics, Inc. et al. Read More
  • FCI USA, Inc. v. Hon Hai Precision Industry Co., Ltd. Read More
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Credentials

Education

  • George Washington University Law School, J.D., with honors, 1999, Member, The George Washington University Law Review
  • University of Maryland, Mechanical Engineering, B.S., cum laude, 1995, President, Pi Tau SigmaTau Beta Pi

Bar and Court Admissions

  • New York
  • 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

  • American Bar Association
  • American Intellectual Property Law Association
  • Iranian American Bar Association - NY Chapter, board of directors
  • New York Intellectual Property Law Association

 

Languages

  • Farsi