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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)

Paul T. Qualey Partner
Washington, DC 1.202.220.4398

Overview

Paul Qualey has experience in a variety of areas of intellectual property law with a particular emphasis on patent litigation at the trial and appellate court level. Mr. Qualey has represented both plaintiffs and defendants in patent infringement cases involving a broad range of technologies in the software, telecommunications, automotive and construction industries. His clients have included Lenovo, Sony, GAF Materials Corp., and DaimlerChrysler, among others.

Mr. Qualey has also prosecuted patent applications in the software, information technology and telecommunications fields for a variety of large and small companies and is registered to practice before the U.S. Patent and Trademark Office. He also has experience in intellectual property licensing and due diligence, and has counseled and prepared opinions for clients regarding patent infringement and validity.

Prior to joining Kenyon, Mr. Qualey spent four years doing software development and systems integration for a variety of commercial and government entities. Mr. Qualey is a former assistant editor for American Lawyer Media’s Patent Strategy & Management newsletter and has authored articles for a variety of publications.

Representative Experience

  • Sony in a patent litigation that was successfully transferred from the Eastern District of Texas to the Northern District of California. The court entered a stipulated summary judgment of non-infringement following a favorable Markman decision, which was upheld on appeal at the Federal Circuit. Optimum Power Solutions v. Sony Electronics (N.D. Cal., Fed. Cir.)
  • Sony in a series of ITC investigations and patent litigations against LG Electronics directed to telecommunications standards, cell phone features, Blu-ray DVD technology and televisions and computer monitors, as well as advising on multiple cases in Germany, the UK, the Netherlands, Spain and Korea.  Resulted in a favorable settlement on behalf of Sony. In Re Certain Mobile Telephones and Modems, Sony Corporation v. LG Electronics U.S.A. Inc. et al. and LG Electronics, Inc. v. Sony Corporation et al. (S.D. Cal., C.D. Cal., ITC)
  • Sony in an ITC investigation brought by Complainant Technology Properties Limited alleging that certain Sony products infringed patents related to flash memory card readers. Administrative Law Judge granted Sony’s motion to terminate the investigation. In Re Certain Digital Photo Frames and Image Display Devices and Components Thereof (ITC)
  • Sony in a patent infringement suit filed against it by Illinois Computer Research, LLC.  With a motion by Sony for summary judgment of non-infringement pending, ICR dismissed its claims against Sony with prejudice. Illinois Computer Research LLC v. Harpo Productions Inc., et al. (N.D. Ill.)
  • Sony in a patent litigation brought by Agere Systems related to technology used in Sony’s Blu-ray Disc players, PlayStation3, VAIO computers and other Sony products containing Blu-ray disc drives. Obtained summary judgment of invalidity on behalf of Sony. Agere Systems Inc. v. Sony Corporation et al. (E.D. Tex.)
  • The Knot against patent infringement allegations relating to its online registry tools. Case resolved upon merger of the companies. WeddingChannel.com v. The Knot (S.D.N.Y.)
  • DaimlerChrysler in patent litigation related to side view mirrors on Mercedes-Benz automobiles. Secured summary judgment and affirmance at Federal Circuit of no patent infringement and dismissal of unjust enrichment claims. Taylor v. DaimlerChrysler AG (E.D. Mich., Fed. Cir.)

Experience

  • Sony in a patent litigation that was successfully transferred from the Eastern District of Texas to the Northern District of California. The court entered a stipulated summary judgment of non-infringement following a favorable Markman decision, which was upheld on appeal at the Federal Circuit. Optimum Power Solutions v. Sony Electronics (N.D. Cal., Fed. Cir.)
  • Sony in an ITC investigation brought by Complainant Technology Properties Limited alleging that certain Sony products infringed patents related to flash memory card readers. Administrative Law Judge granted Sony’s motion to terminate the investigation. In Re Certain Digital Photo Frames and Image Display Devices and Components Thereof (ITC)
  • The Knot against patent infringement allegations relating to its online registry tools. Case resolved upon merger of the companies. WeddingChannel.com v. The Knot (S.D.N.Y.)
  • DaimlerChrysler in patent litigation related to side view mirrors on Mercedes-Benz automobiles. Secured summary judgment and affirmance at Federal Circuit of no patent infringement and dismissal of unjust enrichment claims. Taylor v. DaimlerChrysler AG (E.D. Mich., Fed. Cir.)
  • Sony Corporation v. LG Electronics U.S.A. Inc. et al.; LG Electronics, Inc. v. Sony Corporation et al. Read More
  • Illinois Computer Research LLC v. Harpo Productions Inc., et al. Read More
  • Agere Systems Inc. v. Sony Corporation et al. Read More
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Credentials

Education

  • George Washington University Law School, J.D., with honors, 2000, AIPLA Quarterly Journal, Staff Member
  • University of Maryland at College Park, Economics, B.A., 1994
  • University of Maryland at College Park, Electrical Engineering, B.S., cum laude, 1994, Phi Beta KappaTau Beta PiEta Kappa Nu

Bar and Court Admissions

  • District of Columbia
  • New York
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Western District of Tennessee
  • U.S. Court of Appeals for the Federal Circuit
  • Registered Patent Attorney: U.S. Patent and Trademark Office