YuryKalish Ph.D.

Associate

Washington + 1.202.879.3616

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Dr. Yury Kalish is a patent attorney who applies his legal and industry experience to strategically and efficiently support clients in a wide range of technologies. His practice focuses on intellectual property law including patent litigation, patent prosecution, and IP counseling. Yury works on patent infringement actions in federal district courts and the ITC, inter partes reviews (IPR) at the USPTO, prosecution of U.S. and foreign patent applications, and IP portfolio due diligence.

Yury has worked on matters for NXP, Cree, SK Innnovation, Qualcomm, SAP, and others in the broad range of technologies including semiconductors, telecommunication, automotive, LEDs, medical devices, and software. He helped draft one of the first successful venue transfer motions after In re Heartland, which moved the case into the client's home district.

Prior to joining Jones Day, Yury worked in the automotive industry in Detroit, Michigan and in the federal government. He was a technology development manager at the U.S. Department of Energy and an engineering group manager at Daimler Trucks North America. Yury's Ph.D. dissertation focused on design and development of high-voltage multilayer ceramic piezoelectric actuators. He is a named inventor on three U.S. patents and an author or coauthor of several technical papers on diesel engines, advanced materials, and electronic controls. This background allows Yury to understand clients' business goals, engineering development processes, and product portfolios in support of patent litigation and prosecution matters.

Experience

  • Home Depot wins ITC trial in patent litigation relating to filament LED technologyJones Day successfully defended The Home Depot, Inc. before the International Trade Commission (ITC) against multi-patent litigation asserted by The Regents of the University of California.
  • NXP defends patent infringement claims brought by competitor MediaTek at ITCJones Day represents NXP Semiconductors N.V. et al. as defendants/respondents in a patent infringement dispute brought by competitor MediaTek Inc. et al. before the International Trade Commission (ITC) and the United States District Court for the Central District of California.
  • NXP enforces semiconductor patents against MediaTek at ITCJones Day represents NXP Semiconductors N.V. et al. as plaintiff/complainant in a patent infringement dispute against competitor MediaTek Inc. et al. before the International Trade Commission (ITC) and the United States District Court for the Central District of California.
  • Cohesity disposes of six-patent litigation brought by adverse competitor CommvaultJones Day successfully represented Cohesity Inc. ("Cohesity") and obtained dismissal in a six-patent, competitor suit filed by Commvault Systems in April 21, 2020.
  • Velodyne defeats trade secret misappropriation claims at ITC and District CourtJones Day successfully defended leading lidar developer Velodyne Lidar USA, Inc. against trade secret misappropriation claims in the International Trade Commission and U.S. District Court for the Northern District of California, resulting in Complainant voluntarily withdrawing its Complaint and terminating the ITC investigation, and dismissing its district court claims with prejudice.
  • Owens Corning successfully defends ITC action involving roofing underlayment productsJones Day represented Owens Corning, Owens Corning Roofing & Asphalt, LLC, and InterWrap Corp. ("Owens Corning") in multi-venue litigation relating to synthetic roof underlayment patents asserted by Kirsch Research & Development, LLC ("Kirsch").
  • Wolfspeed wins non-infringement jury verdict against patent infringement claims relating to its LED light bulb businessOn behalf of Wolfspeed, Inc. (f.k.a. Cree, Inc.), Jones Day won a jury verdict of non-infringement in defending against a wide-ranging complaint originally brought in Arizona federal court by OptoLum, Inc. in 2016 concerning Cree's LED light bulb business.
  • SK Innovation defeats request to exclude lithium-ion battery technology in ITC dispute with LG ChemJones Day clients SK Innovation Co., Ltd. and SK Battery America, Inc., following an evidentiary hearing in December 2020, prevailed against LG Chem et al. in a patent infringement dispute before the International Trade Commission (ITC) involving lithium-ion battery technology used in electric vehicles.
  • NXP sues Impinj for infringing six patents relating to RFID and wafer-layout technologyJones Day is representing NXP USA, Inc. and NXP B.V. in their enforcement of six radio frequency identification ("RFID") and wafer-layout patents against Impinj, Inc.
  • NXP whittles down competitor's infringement suit involving RFID technology from 26 to four patentsJones Day is defending NXP USA, Inc. in a lawsuit brought by its competitor Impinj, Inc. alleging infringement of 26 patents relating to different aspects of radio frequency identification ("RFID") technology.
  • JTC acquires NES Financial for up to $116 millionJones Day advised JTC PLC in the acquisition of NES Financial, a technology-enabled provider of specialist fund administration and treasury services recognized on the San Francisco Business Times top Bay Area fintech list, for up to $116 million.
  • NXP files 16 IPR petitions challenging claims of 14 Impinj RFID patentsJones Day is representing NXP USA, Inc. in 16 petitions for inter partes review (IPR) and post grant review (PGR) at the United States Patent Office's Patent Trial and Appeal Board.
  • HyTech Power develops patent strategy, enters into joint venture for automobiles with Joe Clark, co-founder of Aviation PartnersJones Day is assisting HyTech Power LLC in the development of their global patent strategy directed to engine performance and emissions abatement technology for off-road vehicles and on-road vehicles, which has led to a new joint venture with Joe Clark, the co-founder of Aviation Partners, Inc.
  • NEC Display Solutions successfully defends against attempt to bar importation of LED displaysJones Day successfully defended NEC Display Solutions (both the Japanese parent and a U.S. subsidiary) against allegations brought by Ultravision Technologies, LLC ("Ultravision") that certain of NEC Display Solutions' modular LED display panels and related components infringe two patents allegedly owned by Ultravision.
  • Google invalidates 177 patent infringement claims relating to voice assistant technologyJones Day successfully defended Google LLC against patent infringement claims in a case relating to early research by SRI that allegedly led to the Siri voice assistant.
  • Cabell cleared to acquire St. Mary's following dismissal of FTC antitrust lawsuit to block transactionAfter a nearly two-year fight with the U.S. Federal Trade Commission, Cabell Huntington Hospital, Inc. has overcome all regulatory hurdles to its acquisition of St. Mary’s Medical Center, Inc., clearing the way to combine Huntington, West Virginia’s only two health systems.
  • TDK acquires InvenSense for $1.3 billionJones Day advised TDK Corporation in its $1.3 billion acquisition of InvenSense, Inc.
  • Qualcomm resolves worldwide Chinese litigationJones Day represented Qualcomm Incorporated as complainant in an ITC action against a Chinese phone manufacturer and several distributors asserting five patents concerning radio frequency transceivers, device structures, packaging, structures, and camera phone operation.
  • Kiss Products obtains consent judgment on patent and contract claims against Pretty WomanJones Day successfully represented Kiss Nail Products, Inc. in an action for patent infringement and breach of contract against Pretty Woman, LLC and its founder and CEO, John Manzione, relating to artificial nail products.
  • SAP establishes diverse patent portfolio directed to software and database innovationsJones Day represents a leading enterprise software and database developer SAP SE in managing patent portfolios directed to diverse innovations including database technologies, mobility, UX, cloud computing, and big data.
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    November 2019 Blog

    Defaulting Respondent Left Holding the Bag, ITC Blog

    October 2019 Blog

    IPR Goes Forward Despite Late Stage Parallel ITC Investigation, ITC Blog

    September 2019 Blog

    ITC’s Trademark Decisions May Have Preclusive Effect, After All, ITC Blog

    August 2019 Blog

    The ITC Swears In Two New Commissioners, ITC Blog

    June 2019 Commentary

    Alice's Last Birthday? Highlights from the Senate Hearings to Abrogate Alice v. CLS

    June 2019 Blog

    Ground Rules Preclude New Rebuttal Expert Opinions, ITC Blog

    May 2019 Blog

    ITC’s Trademark Decisions Are Not Entitled To Preclusive Effect, ITC Blog

    May 2019 Blog

    Federal Circuit Asserts Jurisdiction to Review ITC’s Non-Institution Decision, ITC Blog

    April 2019 Blog

    Commission Defers to PTAB’s Invalidation of a Single Claim in an Otherwise Blanket Affirmance of the ALJ’s Initial Determination, ITC Blog

    March 2019 Blog

    Journal Article by an Expert Is Excluded As Improper Expert Testimony or Declaration, ITC Blog
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