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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)

Rose Cordero Prey Partner
New York, NY 1.212.908.6405

Overview

Rose Cordero Prey’s practice focuses on patent litigation and licensing in the mechanical and electrical arts. With over 10 years of experience in IP litigation, she has represented both plaintiffs and defendants in patent infringement cases involving a wide range of technologies, including smartphone software; semiconductor fabrication and circuitry; laser diodes; wireless communication; automotive systems; ceiling grid systems; computer and television display technology; security systems; online banking; and memory card readers. Ms. Prey has extensive experience in federal courts and before the International Trade Commission. She has represented firm clients including Sony, Hewlett-Packard, Robert Bosch, USG Interiors, and Volkswagen, as well as smaller companies, in patent infringement and related litigation.

Ms. Prey has received recognition from Super Lawyers, including being named a “Super Lawyer Rising Star” in 2014 and a “Top 40 under 40 Intellectual Property Lawyer” in New York state for 2015. In addition, she is also an editor of Kenyon’s CAFC Blog (www.cafcblog.com), reviewing the latest IP decisions at the Federal Circuit.

Ms. Prey has been involved in many pro bono activities, which include her role as Guardian ad Litem, mediator, and member of the Craven Bench of the Holderness Moot Court Bench. At Kenyon, Ms. Prey has participated in a capital appeal through the ABA Death Penalty Representation Project and the Office of the Capital Defender in Northern Virginia.

While pursuing her undergraduate degree, Ms. Prey researched laser welding at the Center for Research and Education in Optics and Lasers at the University of Central Florida as part of a Research Experience for Undergraduates sponsored by the National Science Foundation. Ms. Prey also has experience as both an apprentice electrician and a mediator.

Representative Experience

  • Robert Bosch in enforcement proceedings concerning windshield wiper blades against numerous respondents. Achieved successful settlement of claims after favorable claim construction ruling. In the Matter of Certain Windshield Wiper Blades (ITC)
  • Hewlett-Packard Co. and defended its computers, laptops and printers from claims of patent infringement made by Technology Properties Limited, LLC, concerning patents directed to memory card readers.  Finding of no infringement of any of the four patents asserted against HP and that TPL failed to prove it meets the domestic industry requirement of Section 337. In the Matter of Certain Computers and Computer Peripheral Devices, and Components Thereof, and Products Containing Same (ITC)
  • Elpida Memory, Inc. and Elpida Memory (USA) Inc. and numerous downstream customers against Intellectual Ventures in complex Section 337 investigation involving DRAM devices. In the Matter of Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (ITC)
  • USG in patent infringement, trademark infringement and false advertising action related to ceiling grid systems. USG Interiors, Inc. v. ACA Quality Building Products, LLC (S.D.N.Y.)
  • Sony in patent litigation related to V-chip and parental control technology. Won summary judgment of non-infringement. Sony Electronics Inc. v. Guardian Media Technologies, Ltd. (S.D. Cal.)
  • Sony in complex multi-patent litigation related to semiconductors, laser diode technology, and wireless communication technology. Won summary judgment of invalidity eliminating vast portion of alleged damages. Agere Systems, Inc. v. Sony Corporation et al. (E.D. Tex.)

Experience

  • Robert Bosch in enforcement proceedings concerning windshield wiper blades against numerous respondents. Achieved successful settlement of claims after favorable claim construction ruling. In the Matter of Certain Windshield Wiper Blades (ITC)
  • Hewlett-Packard Co. and defended its computers, laptops and printers from claims of patent infringement made by Technology Properties Limited, LLC, concerning patents directed to memory card readers.  Finding of no infringement of any of the four patents asserted against HP and that TPL failed to prove it meets the domestic industry requirement of Section 337. In the Matter of Certain Computers and Computer Peripheral Devices, and Components Thereof, and Products Containing Same (ITC)
  • Elpida Memory, Inc. and Elpida Memory (USA) Inc. and numerous downstream customers against Intellectual Ventures in complex Section 337 investigation involving DRAM devices. In the Matter of Certain Dynamic Random Access Memory and NAND Flash Memory Devices and Products Containing Same (ITC)
  • USG in patent infringement, trademark infringement and false advertising action related to ceiling grid systems. USG Interiors, Inc. v. ACA Quality Building Products, LLC (S.D.N.Y.)
  • Sony in patent litigation related to V-chip and parental control technology. Won summary judgment of non-infringement. Sony Electronics Inc. v. Guardian Media Technologies, Ltd. (S.D. Cal.)
  • Sony in complex multi-patent litigation related to semiconductors, laser diode technology, and wireless communication technology. Won summary judgment of invalidity eliminating vast portion of alleged damages. Agere Systems, Inc. v. Sony Corporation et al. (E.D. Tex.)

Credentials

Education

  • University of North Carolina at Chapel Hill, J.D., 2004
  • Elon University, Mathematics, B.S., magna cum laude, 2001, President's List, Dean's List, Phi Kappa Phi, Kappa Mu Epsilon, Omicron Delta Kappa

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

Professional Organizations

  • Federal Circuit Bar Association
  • Hispanic National Bar Association
  • New York Intellectual Property Association
  • IPO's Litigation Committee