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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 M. Richter, Jr. Partner
New York, NY 1.212.908.6121

Overview

Paul Richter has been practicing all aspects of intellectual property law at Kenyon for over 20 years.

Mr. Richter focuses on litigating patent, trade secret, and trademark cases as lead counsel in various federal courts, both at the trial and appellate levels.  He also practices before the ITC.  His patent litigation experience extends to many different practice areas, with particular emphasis in the biotechnology, pharmaceutical, chemical, medical device, and hand-held electronics industries. 

Mr. Richter also has extensive experience representing Kenyon clients before the USPTO.  He regularly handles complex inter partes matters before the USPTO, such as IPRs, reexaminations, and interferences; and argues cases before the USPTO Board of Appeals.

He also strategically guides his clients in creating, prosecuting and developing global patent portfolios across a variety of industries.  He works with foreign associates to develop and defend his clients’ foreign patent rights, including in opposition proceedings before the European Patent Office.

Mr. Richter’s practice further includes counseling his clients and providing them with opinions regarding patent infringement, validity, and enforceability issues. He is actively involved in the negotiation and licensing of intellectual property rights.

Prior to joining Kenyon, Mr. Richter worked as a chemical engineer, where he carried out research and development activities in the high explosives industry.

Representative Experience

  • Boston Scientific in a patent infringement law suit involving drug-eluting stents.  Successfully obtained a finding of summary judgment in favor of Boston Scientific in a case involving potentially several hundreds of millions of dollars in damages. Judge Robinson held that Johnson & Johnson's four patents were invalid. Boston Scientific Corp. and Boston Scientific Scimed v. Johnson & Johnson and Cordis Corp. (D. Del.)
  • Barnes & Noble in defending its NOOK eReader products from claims of patent infringement made by Microsoft in the ITC concerning various hardware and software patents. Certain Handheld Electronic Computing Devices, Related Software and Components Thereof (ITC) 
  • Enzo Diagnostics against Digene Corporation in a patent infringement lawsuit involving Digene’s diagnostic test for Human Papilloma Virus, resulting in a favorable settlement for our client following a successful Markman hearing and resulting order from the Court. Enzo Life Sciences v. Digene Corp. (D. Del.)
  • Bionx against Linvatec in an appeal to the Federal Circuit. Successfully argued appeal to the Federal Circuit of the S.D.N.Y. Court’s order of summary judgment of non-infringement in medical device case, obtaining reversal of that order and resulting in favorable settlement of litigation. (S.D.N.Y., Fed. Cir.)
  • Sterilox Technologies against Sterilex in a trademark case where plaintiff sought a preliminary injunction in the field of sterilized water solutions. Successfully argued case to the district court hearing and obtained an order denying the preliminary injunction. The Sterilex Corporation v. Sterilox Technologies, Inc. (D. Md.)

Experience

  • Barnes & Noble in defending its NOOK eReader products from claims of patent infringement made by Microsoft in the ITC concerning various hardware and software patents. Certain Handheld Electronic Computing Devices, Related Software and Components Thereof (ITC) 
  • Enzo Diagnostics against Digene Corporation in a patent infringement lawsuit involving Digene’s diagnostic test for Human Papilloma Virus, resulting in a favorable settlement for our client following a successful Markman hearing and resulting order from the Court. Enzo Life Sciences v. Digene Corp. (D. Del.)
  • Bionx against Linvatec in an appeal to the Federal Circuit. Successfully argued appeal to the Federal Circuit of the S.D.N.Y. Court’s order of summary judgment of non-infringement in medical device case, obtaining reversal of that order and resulting in favorable settlement of litigation. (S.D.N.Y., Fed. Cir.)
  • Sterilox Technologies against Sterilex in a trademark case where plaintiff sought a preliminary injunction in the field of sterilized water solutions. Successfully argued case to the district court hearing and obtained an order denying the preliminary injunction. The Sterilex Corporation v. Sterilox Technologies, Inc. (D. Md.)
  • Boston Scientific Scimed v. Cordis Corporation Read More
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Credentials

Education

  • George Washington University Law School, J.D., 1992
  • Tufts University, Chemical Engineering, B.S., cum laude, 1986

Bar and Court Admissions

  • District of Columbia
  • Massachusetts
  • New York
  • Registered Patent Attorney: U.S. Patent and Trademark Office

Professional Organizations

  • New Jersey Intellectual Property Law Association
  • New York Intellectual Property Law Association