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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)

Maria Luisa Palmese Partner
New York, NY 1.212.908.6444

Overview

Maria Luisa Palmese has over 20 years’ experience representing clients in patent litigation, patent prosecution, and trademark and design protection matters. She maintains a global practice focused on assisting companies with their U.S. IP matters. Her focus is to efficiently and effectively create and maximize value through IP.

A skilled litigator, Ms. Palmese has represented her clients in both jury and bench trials in some of the busiest patent jurisdictions in the United States, including the Southern District of New York, the District of New Jersey, Northern District of Illinois, and the District of Delaware. She is adept at litigating complex intellectual property disputes across a range of subject matter, including chemicals, and chemical processes, pharmaceuticals, vaccines, cosmetics, polymers and other materials.

Ms. Palmese also maintains a counseling, patent prosecution, opinion and due diligence practice. In this capacity she counsels small- and medium-sized businesses in a variety of industries, including the chemical, pharmaceutical, food , cosmetics, and agricultural industries, as well as the design, fashion and entertainment industries.

Ms. Palmese is bilingual in Italian, and fluent in French and Spanish. She also has an elementary knowledge of German and Russian.

Representative Experience

  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Procter & Gamble’s osteoporosis drug Actonel® Monthly (risedronate monthly administration). Warner Chilcott Co. et al. v. Teva Pharmaceuticals USA et al. (D. Del. C.A. No. 08-627) (favorable decision on summary judgment affirmed on appeal)
  • Applied Materials in an interference relating to patents on wafer substrates for making integrated circuits. Rozbicki v. Chiang (Int. No. 105,898) (favorable decision affirmed on appeal)
  • Teva in patent infringement litigations involving Teva’s generic equivalents to Gilead's HIV antiretroviral drug Viread®, Truvada® and Atripla® (tenofovir and emtricitabine). Gilead Sciences v. Teva Pharmaceuticals USA (S.D. N.Y. 08-CV-10838 and 10-CV-1796) (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Bristol Myer’s H.I.V. protease inhibitor drug Reyataz®, (atazanavir). The case settled in 2012. Bristol Myers et al. v. Teva Pharmaceuticals USA (D. Del. 09-CV-00910) (settled)
  • Premium Latin Music v. Ferrante Productions s.r.l. et al. (S.D.N.Y. 09-CV-8547) as lead counsel for Ferrante Productions and Planet Records in a litigation on a contractual dispute regarding a latin music license. (settled)
  • Mayimba Music, Inc. et al. v. Planet Records US, LLC (S.D.N.Y 10-CV-5926) as lead counsel for Planet Records in a copyright dispute (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Otsuka’s antipsychotic drug Abilify®. (aripiprazole) Otsuka Pharm. Co. v. Sandoz et al. (D.N.J.07-CV-01000) (unfavorable decision after bench trial)
  • Infosint in a patent infringement lawsuit involving Infosint’s patents on a chemical process for making citalopram (the active pharmaceutical ingredient in the antidepressants Celexa® and Lexapro®. Infosint v. Lundbeck et al.(S.D.N.Y. 06-CV-2869) (favorable jury verdict of 15 million to Infosint set aside)
  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Procter & Gamble’s osteoporosis drug Actonel® and Actonel® Weekly (risedronate). Procter & Gamble v. Teva Pharmaceuticals USA (D. Del. C.A. No. 04-940) (unfavorable decision after bench trial) and Merck v. Teva Pharmaceuticals USA (D. Del. C.A. No. 04-940) (settled)
  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Abbott Lab’s antibiotic Biaxin XL® (clarithromycin extended release) Abbott Laboratories v. Andrx Pharmaceuticals et al. (N.D. Ill. 05 CV 1490) (favorable appeal reversing unfavorable decision after preliminary injuction hearing)
  • De Simone v. Vesely (D.D.C. 02CV01650), as lead counsel for the Vesely heirs, in an inventorship dispute involving patents on probiotic compositions (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Merck’s osteoporosis drug Fosomax® Weekly (alendronate weekly administration). Merck & Co. v. Teva Pharmaceuticals USA (D. Del. C.A. No. 01-048) (favorable appeal reversing unfavorable decision after bench trial)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Merck’s osteoporosis drug Fosomax® (alendronate). Merck & Co. v. Teva Pharmaceuticals USA et al.(D. Del. C.A. No. 00-035) (unfavorable decision after bench trial)
  • Aventis Pharma and its predecessors in a series of patent infringement litigations involving a process for manufacturing Eli Lilly’s antibiotic drug Ceclor® (cefaclor). Eli Lilly and Co. v. American Cyanamid Co. et al. (S.D. Ind. NO. IP 95-536C) (favorable decision after preliminary injunction hearing affirmed on appeal)
  • Estee Lauder in Revlon Consumer Products Corp. v. Estee Lauder Companies. et al. (S.D.N.Y. 00 CV 5960) in a patent litigation relating to Revlon patent on water in silicone make-up emulsions. (favorable decision on summary judgment)
  • Alliant in patent litigation involving rocket motor insulation Cordant Technologies v. Alliant Techsystems (D. Del. 95-706). (favorable decision after bench trial)
  • Geneva in patent infringement litigation involving Geneva’s generic equivalent to Abbott’s Hytrin® (terazosin) Abbott Laboratories v. Geneva Pharmaceuticals (N.D. Ill. 95-C-6657) (favorable decision on summary judgment)
  • Warner Lambert in patent infringement litigation brought by Hoechst involving the first drug approved for Alzheimer’s disease in the U.S. Cognex® (tacrine) Hoechst v. Warner Lambert (D. Del. ) (settled)

Experience

  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Procter & Gamble’s osteoporosis drug Actonel® Monthly (risedronate monthly administration). Warner Chilcott Co. et al. v. Teva Pharmaceuticals USA et al. (D. Del. C.A. No. 08-627) (favorable decision on summary judgment affirmed on appeal)
  • Applied Materials in an interference relating to patents on wafer substrates for making integrated circuits. Rozbicki v. Chiang (Int. No. 105,898) (favorable decision affirmed on appeal)
  • Teva in patent infringement litigations involving Teva’s generic equivalents to Gilead's HIV antiretroviral drug Viread®, Truvada® and Atripla® (tenofovir and emtricitabine). Gilead Sciences v. Teva Pharmaceuticals USA (S.D. N.Y. 08-CV-10838 and 10-CV-1796) (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Bristol Myer’s H.I.V. protease inhibitor drug Reyataz®, (atazanavir). The case settled in 2012. Bristol Myers et al. v. Teva Pharmaceuticals USA (D. Del. 09-CV-00910) (settled)
  • Premium Latin Music v. Ferrante Productions s.r.l. et al. (S.D.N.Y. 09-CV-8547) as lead counsel for Ferrante Productions and Planet Records in a litigation on a contractual dispute regarding a latin music license. (settled)
  • Mayimba Music, Inc. et al. v. Planet Records US, LLC (S.D.N.Y 10-CV-5926) as lead counsel for Planet Records in a copyright dispute (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Otsuka’s antipsychotic drug Abilify®. (aripiprazole) Otsuka Pharm. Co. v. Sandoz et al. (D.N.J.07-CV-01000) (unfavorable decision after bench trial)
  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Procter & Gamble’s osteoporosis drug Actonel® and Actonel® Weekly (risedronate). Procter & Gamble v. Teva Pharmaceuticals USA (D. Del. C.A. No. 04-940) (unfavorable decision after bench trial) and Merck v. Teva Pharmaceuticals USA (D. Del. C.A. No. 04-940) (settled)
  • Teva in a patent infringement litigation involving Teva’s generic equivalent to Abbott Lab’s antibiotic Biaxin XL® (clarithromycin extended release) Abbott Laboratories v. Andrx Pharmaceuticals et al. (N.D. Ill. 05 CV 1490) (favorable appeal reversing unfavorable decision after preliminary injuction hearing)
  • De Simone v. Vesely (D.D.C. 02CV01650), as lead counsel for the Vesely heirs, in an inventorship dispute involving patents on probiotic compositions (settled)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Merck’s osteoporosis drug Fosomax® Weekly (alendronate weekly administration). Merck & Co. v. Teva Pharmaceuticals USA (D. Del. C.A. No. 01-048) (favorable appeal reversing unfavorable decision after bench trial)
  • Teva in patent infringement litigation involving Teva’s generic equivalent to Merck’s osteoporosis drug Fosomax® (alendronate). Merck & Co. v. Teva Pharmaceuticals USA et al.(D. Del. C.A. No. 00-035) (unfavorable decision after bench trial)
  • Aventis Pharma and its predecessors in a series of patent infringement litigations involving a process for manufacturing Eli Lilly’s antibiotic drug Ceclor® (cefaclor). Eli Lilly and Co. v. American Cyanamid Co. et al. (S.D. Ind. NO. IP 95-536C) (favorable decision after preliminary injunction hearing affirmed on appeal)
  • Estee Lauder in Revlon Consumer Products Corp. v. Estee Lauder Companies. et al. (S.D.N.Y. 00 CV 5960) in a patent litigation relating to Revlon patent on water in silicone make-up emulsions. (favorable decision on summary judgment)
  • Alliant in patent litigation involving rocket motor insulation Cordant Technologies v. Alliant Techsystems (D. Del. 95-706). (favorable decision after bench trial)
  • Geneva in patent infringement litigation involving Geneva’s generic equivalent to Abbott’s Hytrin® (terazosin) Abbott Laboratories v. Geneva Pharmaceuticals (N.D. Ill. 95-C-6657) (favorable decision on summary judgment)
  • Warner Lambert in patent infringement litigation brought by Hoechst involving the first drug approved for Alzheimer’s disease in the U.S. Cognex® (tacrine) Hoechst v. Warner Lambert (D. Del. ) (settled)
  • Infosint S.A., v. H. Lundbeck A/S et al. Read More
  • Merck & Co., Inc. v. Teva Pharmaceuticals, Inc. Read More
  • View All

Insights and News

Events

Credentials

Education

  • Munich Intellectual Property Law Center, LL.M., 2004
  • Columbia University, J.D., 1990
  • Massachusetts Institute of Technology, Chemistry, S.B., 1987
  • Massachusetts Institute of Technology, Humanities and Science (French Language and Literature), S.B., 1987

Bar and Court Admissions

  • 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

  • MARQUES (The Association of European Trademark Owners)
  • Federal Circuit Bar Association
  • International Association for the Protection of Intellectual Property
  • International Bar Association
  • International Intellectual Property Association
  • New York City Bar Association
  • Sigma Xi

 

Languages

  • Italian
  • French
  • Spanish