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 Cree, Hologic, 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. Yury is a regular contributor to the Firm's ITC Blog.

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

  • Owens Corning successfully defends ITC action involving roofing underlayment productsJones Day is representing 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").
  • NXP whittles down competitor's infringement suit involving RFID technology from 26 to four patentsJones Day is lead counsel 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.
  • Home Depot defends multi-patent litigation relating to filament LED technologyJones Day is defending The Home Depot, Inc. in multi-patent litigation asserted by The Regents of the University of California in the International Trade Commission and Central District of California.
  • 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 14 IPR petitions challenging claims of 12 Impinj RFID patentsJones Day is representing NXP Semiconductors N.V. in 14 petitions for inter partes review ("IPR") at the United States Patent Office's Patent Trial and Appeal Board.
  • NXP sues Impinj for infringing eight patents relating to RFID and wafer-layout technologyJones Day is representing NXP Semiconductors N.V. in its enforcement of eight radio frequency identification ("RFID") and wafer-layout patents against Impinj, Inc.
  • 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.
  • Cree defends against patent infringement claims relating to its LED light bulb businessJones Day is representing Cree, Inc. in defending against a wide ranging complaint originally brought in D. Arizona by OptoLum, Inc. concerning Cree's LED light bulb business.
  • 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.
  • Draeger establishes global patent portfolio directed to diverse medical devices and safety equipmentJones Day represents medical device manufacturer Draeger Medical Systems, Inc. in managing global patent portfolios relating to patient monitors (both hardware and related software), physiological sensors, incubators, and breathing apparatus.
  • Cree files IPR petition challenging U.S. Patent Nos. 6,373,188 and RE41,685Jones Day represented Cree, Inc. in filing an IPR petition challenging U.S. Patent Nos. 6,373,188 entitled "Efficient Solid-State Light Emitting Device with Excited Phosphors for Producing a Visible Light Output" and RE41,685 entitled "Light Source with Non-White and Phosphor-based White LED Devices, and LCD Assembly."
  • Cree defends claims of infringement based on Honeywell patents directed to white LEDsJones Day defended Cree, Inc. from patent infringement claims brought by Honeywell Inc. in New Jersey concerning two patents directed to white LEDs, one of which had been re-issued by the USPTO in light of Cree's products.
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    November 2019 Blogs

    Defaulting Respondent Left Holding the Bag, ITC Blog

    October 2019 Blogs

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

    September 2019 Blogs

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

    August 2019 Blogs

    The ITC Swears In Two New Commissioners, ITC Blog

    June 2019 Commentaries

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

    June 2019 Blogs

    Ground Rules Preclude New Rebuttal Expert Opinions, ITC Blog

    May 2019 Blogs

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

    May 2019 Blogs

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

    April 2019 Blogs

    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 Blogs

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

    Additional Publications

    Publications Prior to Jones Day

    2012
    Daubert to the Rescue: Ensuring Reliability of Scientific and Technical Evidence in Rulemaking, 10 Geo. J.L. & Pub. Pol’y 539 (Summer 2012).

    2010
    Emerging Energy Technologies for the Ground Vehicle Fleet, Military Vehicles Exposition and Conference.

    2009
    U.S. Patent No. 7,628,139, Fuel Injector with Dual Piezo-Electric Actuator.

    Adaptive PCCI Combustion Using Micro-Variable Circular-Orifice (MVCO) Fuel Injector, Soc’y of Auto. Eng’rs 2009-01-1528.

    Model-Based Control of Diesel Engines for Fuel Efficiency Optimization, Soc’y of Auto. Eng’rs 2009-01-0727.

    Heavy-Duty Diesel Combustion Optimization Using Multi-Objective Genetic Algorithm and Multi-Dimensional Modeling, Soc’y of Auto. Eng’rs 2009-01-0716.

    Demonstrating and Validating a Next Generation Model- Based Controller for Fuel Efficient, Low Emissions Diesel Engines, Directions in Energy-Efficiency and Emissions Research Conference.

    Integrated Powertrain and Vehicle Technologies for Fuel Efficiency Improvement and CO2 Reduction, Directions in Energy-Efficiency and Emissions Research Conference.

    High Efficiency Clean Combustion for Heavy-Duty Engine, Directions in Energy-Efficiency and Emissions Research Conference.

    2008
    U.S. Patent No. 7,343,736, Flexible Exhaust Emission Aftertreatment System for Compression Cycle Diesel Engines.

    High Efficiency Clean Combustion for Heavy-Duty Diesel Engine, Diesel Engine-Efficiency and Emissions Research.

    2007
    U.S. Patent No. 7,213,553, Internal EGR for an Internal Combustion Engine.

    Stress Analysis of Multilayer Piezoelectric Actuators for Diesel Fuel Injection Subjected to Square Pulse Voltage Excitation, in 6527 Industrial and Commercial Applications of Smart Structures Technologies 65270T.1.

    Next Generation Diesel Engine Control, Diesel Engine-Efficiency and Emissions Workshop.

    Heavy-Duty Engine Combustion Optimization Heavy-Duty Engine Combustion Optimization for High Thermal Efficiency Targeting EPA 2010 Emissions, Diesel Engine-Efficiency and Emissions Workshop.

    2006
    21st Century Truck Partnership – Engine Team Perspective, Soc’y of Auto. Eng’rs Gov’t Indus. Meeting.

    2000
    Smart Materials for Fuel Injection Actuation, Diesel Engine-Efficiency and Emissions Research Workshop.

    1999
    Development of an Equivalent Force Method and an Application in Simulating the Radiated Noise from an Operating Diesel Engine, 6 Shock and Vibration 113.

    1998
    Tribology and Dynamics of Ceramic Valves for Heavy Duty Diesel Engines, 72nd Am. Chem. Soc’y Colloid and Surface Science Symposium.

    1997
    Simulation of the Noise Radiated from the Operating Diesel Engine, 24 Am. Soc’y Mech. Eng’rs Noise Control and Acoustics Division 279.

    1996
    Cost Effective Machining and Inspection of Structural Ceramics, CRADA final report No. Y-1292-0088, Y/AMT-387.

    1992
    Engine Testing of Ceramic Cam-Roller Followers, ORNL/Sub-90-SF985/1.

     

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