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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)

Brian S. Mudge Partner
Washington, DC 1.202.220.4214

Overview

Brian Mudge assists clients with a broad variety of intellectual property litigation, acquisition and counseling matters concerning patents, trademarks, copyrights and trade secrets. He has provided opinions regarding the scope and validity of patents and trademarks, has defended against claims of infringement of intellectual property rights, and has assisted clients in evaluating, acquiring and enforcing patent portfolios. He has prosecuted patent applications and has handled patent post-grant proceedings before the U.S. Patent and Trademark Office, including inter partes review and reexamination cases. He has counseled clients in trademark selection, assisted clients in protecting works of authorship, and assisted in the protection and licensing of proprietary technology.

Mr. Mudge has experience in a wide variety of business and technology sectors, including Internet and information technology, e-commerce, computer hardware and software, telecommunications, image and signal processing, Internet advertising, financial services, interactive entertainment, chemically-sensitive semiconductors, and DNA sequencing hardware and software. His experience also includes entertainment law issues involving motion picture, music and publicity rights and new uses.

Prior to becoming a lawyer, Mr. Mudge worked for RCA Corporation, where he was involved in research and development of image processing technology and commercial broadcast television products. 

Representative Experience

  • j2 Cloud Services and Advanced Messaging Technologies in which he successfully defended against two petitions for inter partes review of a patent.
  • AT&T in which he successfully defended client against trademark infringement claims by winning a ruling on summary judgment that “you have mail” is generic. America Online v. AT&T (E.D.V.A.)
  • D. E. Shaw & Co. in which he successfully obtained injunction against foreign hedge fund’s use of infringing fund name. D. E. Shaw & Co. v. Razor Investment Management (S.D.N.Y.)
  • Electronic Arts in which he defended against allegations of trade secret misappropriation. Delphine Software Int’l, SARL v. Electronic Arts (S.D.N.Y.)
  • Home Shopping Network, Ingenious Designs and Joy Mangano which he successfully defended against allegations of patent infringement. Pearson v. Mangano (W.D. Tenn.)
  • Disney in which he successfully defended against summary judgment while obtaining a finding that the motion picture “Fantasia” was a work for hire and not a work of joint authorship. Philadelphia Orchestra Assn. v. Walt Disney Co. (E.D. Pa.)/li>
  • Sightsound in which he helped a patent owner successfully enforce its patents covering music downloading. Sightsound.com v. N2K (W.D. Pa.)
  • BNP Paribas and CooperNeff Advisors in which he helped overturn a TRO and defeat a preliminary injunction motion in a case involving copyrights and trade secrets. Zimmer v. CooperNeff Advisors (E.D. Pa.)

Select Publications

  • “Covered Business Method Patents: One Year On,” Intellectual Property Magazine, January 2014.
  • Commil USA v. Cisco: Expanding Defenses to Inducing Infringement, IP Strategist, December 2013.
  • “A Madness to the Method,” IP Strategist, August 2010.

Experience

  • AT&T in which he successfully defended client against trademark infringement claims by winning a ruling on summary judgment that “you have mail” is generic. America Online v. AT&T (E.D.V.A.)
  • D. E. Shaw & Co. in D. E. Shaw & Co. v. Razor Investment Management (S.D.N.Y.)
  • Electronic Arts in Delphine Software Int’l, SARL v. Electronic Arts (S.D.N.Y.) 
  • Home Shopping Network, Ingenious Designs and Joy Mangano in Pearson v. Mangano (W.D. Tenn.) 
  • Disney in which he successfully defended against summary judgment while obtaining a finding that the motion picture “Fantasia” was a work for hire and not a work of joint authorship. Philadelphia Orchestra Assn. v. Walt Disney Co. (E.D. Pa.) 
  • Kenyon Defeats Inter Partes Review for j2 Cloud Services Read More
  • Zimmer v. CooperNeff Advisors, Inc. Read More
  • Sightsound.com, Inc. v. N2K, Inc., CDNow, Inc. & CDnow Online, Inc. Read More
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Credentials

Education

  • University of Pennsylvania, J.D., cum laude, 1991, Order of the CoifMoot Court Board
  • University of Pennsylvania, Systems Engineering, M.S., 1984
  • University of Pennsylvania, Electrical Engineering, B.S., magna cum laude, 1979, Tau Beta Pi, Eta Kappa NuHexagon Senior SocietyDean's List

Bar and Court Admissions

  • District of Columbia
  • New Jersey
  • Pennsylvania
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of Pennsylvania
  • 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