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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)

Daniel G. Shanley Partner
Washington, DC 1.202.220.4420

Overview

Daniel Shanley focuses his practice on electro-mechanical patent matters. His practice includes preparing and prosecuting U.S., P.C.T. and foreign utility and design patent applications; patent office post-grant proceedings; strategic counseling and due diligence; managing complex patent prosecution dockets; conducting studies of patent validity and infringement; performing freedom-to-operate studies; and assisting with intellectual property licensing and litigation. He has expertise in a variety of fields, including automotive, medical devices, oil and gas, electronics, marine engines, turbines and consumer products. Mr. Shanley’s clients have included Toyota, ExxonMobil, Kinetic Concepts Inc., University of Tennessee Research Foundation, and VF Corporation, among others.

Mr. Shanley’s prior experience includes working as an electro-mechanical engineer for the Department of the Navy, serving as an officer in the United States Naval Reserve, and, while attending law school, working as a patent examiner at the U.S. Patent and Trademark Office in the mechanical arts.

Representative Experience

  • Toyota in prosecuting numerous patent applications before the U.S. Patent and Trademark Office.  In 2013, Toyota was awarded over 200 patents through Kenyon.
  • ExxonMobil, the world’s largest publicly traded international oil and gas company, in prosecution matters.  Prepared and prosecuted patent applications directed to the optimization of oil refining processes and logistical tools for assisting in petroleum product transportation.  Also provided strategic patent counsel to ExxonMobil in connection with opinion matters.
  • Kinetic Concepts Inc. (KCI) with strategic patent advice, patent opinions, and counseling related to its Negative Pressure Wound Therapy technology. 
  • University of Tennessee Research Foundation (UTRF) in preparing and prosecuting numerous U.S. and international patent applications related to various electro-mechanical technologies. Also provided strategic patent advice related to UTRF’s intellectual property portfolio. 
  • The North Face (a VF Corporation brand) in a confidential design patent matter.
  • Ingenious Designs (IDL), a consumer products company and subsidiary of HSN, in design patent protection strategies. Also prosecuted and procured numerous U.S. and foreign design patents on behalf of IDL.

Experience

  • Toyota in prosecuting numerous patent applications before the U.S. Patent and Trademark Office.  In 2013, Toyota was awarded over 200 patents through Kenyon.
  • ExxonMobil, the world’s largest publicly traded international oil and gas company, in prosecution matters.  Prepared and prosecuted patent applications directed to the optimization of oil refining processes and logistical tools for assisting in petroleum product transportation.  Also provided strategic patent counsel to ExxonMobil in connection with opinion matters.
  • Kinetic Concepts Inc. (KCI) with strategic patent advice, patent opinions, and counseling related to its Negative Pressure Wound Therapy technology. 
  • University of Tennessee Research Foundation (UTRF) in preparing and prosecuting numerous U.S. and international patent applications related to various electro-mechanical technologies. Also provided strategic patent advice related to UTRF’s intellectual property portfolio. 
  • The North Face (a VF Corporation brand) in a confidential design patent matter.
  • Ingenious Designs (IDL), a consumer products company and subsidiary of HSN, in design patent protection strategies. Also prosecuted and procured numerous U.S. and foreign design patents on behalf of IDL.

Credentials

Education

  • George Washington University Law School, J.D., 2003
  • U.S. Merchant Marine Academy, B.S.M.E., 1996

Bar and Court Admissions

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

Professional Organizations

  • American Bar Association
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association, member of the Industrial Designs Committee