Engle Grange LLC v. Ford Motor Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Engle Grange, LLC (Texas)
  • Defendant: Ford Motor Company and Ford Global Technologies, LLC (Delaware)
  • Plaintiff’s Counsel: PHILLIPS MCLAUGHLIN & HALL, PA
• Case Identification: 1:20-cv-00569, D. Del., 04/27/2020
• Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendants are organized and/or exist under the laws of the State of Delaware and therefore reside in the district.
• Core Dispute: Plaintiff alleges that automobiles sold by Ford equipped with its "Intelligent Access with Push-Button Start" system infringe patents related to a two-step authentication process for keyless vehicle operation.
• Technical Context: The technology concerns vehicle security systems designed to prevent a car that has been started with a keyless fob from being driven away if the fob is no longer inside the vehicle.
• Key Procedural History: The complaint alleges that the inventor presented the technology to Ford in January 2014 for potential licensing, but discussions were not successful. This event predates the issuance of the '021 and '397 patents and is cited to support allegations of willful infringement. Subsequent to the filing of this complaint, the sole asserted claim of the '645 patent (Claim 1) was cancelled in an inter partes review proceeding (IPR2020-01334), a fact which may be dispositive for the infringement count related to that patent.

Case Timeline

Date	Event
2009-08-17	Priority Date for '645, '021, and '397 Patents
2013-10-01	U.S. Patent No. 8,548,645 Issued
2014-01-01	Alleged Presentation of Technology to Ford (approx. date)
2018-09-18	U.S. Patent No. 10,077,021 Issued
2019-10-15	U.S. Patent No. 10,442,397 Issued
2019-11-26	Asserted Patents Assigned to Engle Grange, LLC
2020-04-27	Complaint Filed
2020-08-25	IPR Filed Against '645 Patent
2023-11-08	IPR Certificate Issued Cancelling Claim 1 of '645 Patent

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 10,442,397 - "TWO STEP SMART KEY START SYSTEM", issued October 15, 2019

The Invention Explained

• Problem Addressed: The patent describes how conventional keyless ignition systems create security and convenience risks, as a vehicle can be started and subsequently driven away even if the key fob is inadvertently or intentionally removed from the passenger compartment, with visual warnings being easily missed by the driver (’397 Patent, col. 1:21-48).
• The Patented Solution: The invention proposes a "two-step detection authentication process" as a fail-safe (’397 Patent, col. 2:8-14). A first authentication confirms the key fob's presence to enable the engine to start. A second, distinct authentication is then required to enable the vehicle's movement (e.g., to shift into gear), which re-confirms the fob is still present at the moment the driver intends to move the vehicle (’397 Patent, col. 2:20-34). If the second check fails, a transmission lever lock remains engaged, preventing movement (’397 Patent, col. 3:9-16).
• Technical Importance: This approach aims to close a security loophole in first-generation keyless systems by linking key fob presence not just to engine start, but directly to the ability to put the car in motion (’397 Patent, col. 2:8-14).

Key Claims at a Glance

• The complaint asserts independent claims 17 and 25 (Compl. ¶41, 46).
• Independent Claim 17 requires:
  • a mobile device with an electronic code, a processor, and a vehicle movement activator
  • the processor performs a "primary authentication" of the code "before the vehicle is started"
  • the processor performs a "secondary authentication" of the code "when a vehicle operator attempts to cause the vehicle to move"
  • the processor enables operation of the vehicle movement activator only "following the secondary authentication"
• Independent Claim 25 is structurally similar, reciting "a key code" instead of a "mobile device" and requiring the secondary authentication "before movement of the vehicle from a stationary position."
• The complaint also asserts dependent claims 18, 19, 22, 23, 24, 26, 27, and 30 (Compl. ¶50).

U.S. Patent No. 8,548,645 - "TWO STEP KEYLESS START SYSTEM", issued October 1, 2013

The Invention Explained

• Problem Addressed: The patent identifies the same problem as its continuation patents: the risk of a vehicle being driven away without the key fob after the engine has been started, citing scenarios involving valets or a driver simply forgetting the fob (’645 Patent, col. 1:26-52).
• The Patented Solution: The patent claims an improvement to a smart key system comprising a "two step key fob authentication" (’645 Patent, col. 4:10-12). A first authentication occurs "at the time said engine is started." A second authentication occurs "whenever said brake pedal is depressed," which is a precondition for releasing a transmission lever lock actuator to allow the vehicle to be shifted into gear (’645 Patent, col. 4:12-21).
• Technical Importance: The invention is described as a "fail-safe feature" that ensures the key fob is present not only for starting but also for enabling vehicle movement, preventing inadvertent or unauthorized driving (’645 Patent, col. 2:1-4).

Key Claims at a Glance

• The complaint asserts only independent Claim 1 (Compl. ¶34). As noted, this claim was later cancelled in an inter partes review.
• Independent Claim 1 (as filed in the complaint) requires:
  • A smart key system for an automobile with specified components (engine, transmission, key fob, controller, lever lock, etc.).
  • An improvement wherein a "two step key fob authentication is required."
  • The controller authenticates the key fob "at the time said engine is started."
  • The controller "again attempts to detects and authenticate" the key fob "whenever said brake pedal is depressed."
  • The transmission lever lock is released "only if" the key fob is detected and authenticated in the second step.
• The complaint does not reserve the right to assert other claims from the ’645 Patent.

U.S. Patent No. 10,077,021 - "TWO STEP SMART KEY START SYSTEM", issued September 18, 2018

• Patent Identification: U.S. Patent No. 10,077,021, "TWO STEP SMART KEY START SYSTEM", issued September 18, 2018 (Compl. ¶17).
• Technology Synopsis: This patent, part of the same family, also discloses a system to prevent a vehicle from being driven if the key fob is not present after starting (’021 Patent, col. 1:21-34). The invention uses a two-step authentication: a first check to enable the vehicle starter, and a second check, triggered by an action such as activation of the brake system, to enable the "vehicle movement selector" (’021 Patent, col. 4:60-65).
• Asserted Claims: Independent claims 4, 15, and 20 (Compl. ¶69, 74, 79).
• Accused Features: Ford's Intelligent Access system is accused of infringing by performing a first authentication to start the engine and a second authentication, prior to allowing the driver to shift out of park, to enable the vehicle's gear shift (Compl. ¶28-30).

III. The Accused Instrumentality

Product Identification

• The accused instrumentalities are Ford automobiles equipped with the "Ford Intelligent Access with Push-Button Start" system, with the complaint specifically naming the Mustang, Fusion, Explorer, and Expedition models (Compl. ¶24-25, 50).

Functionality and Market Context

• The complaint alleges the accused system uses radio frequencies to detect a key fob and allows a driver to start the engine via a push-button (Compl. ¶25).
• It is alleged to perform two distinct wireless authentications. The first occurs when the driver "depresses the brake pedal and operates the push button start" to turn on the engine (Compl. ¶28). The second is alleged to occur "after the vehicle has been started when the driver attempts to shift out of park" (Compl. ¶29).
• According to the complaint, the system is designed such that if the key fob is not detected during this second authentication, the processor "will not enable operation of the gear shift," thereby preventing the vehicle from moving (Compl. ¶30).
• No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

’397 Patent Infringement Allegations

Claim Element (from Independent Claim 17)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a mobile device comprising an electronic code;	The Intelligent Access key fob contains a code.	¶26	col. 5:40-41
a processor configured to authenticate the electronic code;	A processor or controller in the vehicle authenticates the code from the key fob.	¶26	col. 3:9-11
a vehicle movement activator,	The vehicles are equipped with a "vehicle movement activator," or gear shift.	¶27	col. 5:42
wherein the processor is configured to perform a primary authentication of the electronic code of the mobile device before the vehicle is started...	The first authentication occurs when the driver depresses the brake pedal and operates the push button start.	¶28	col. 5:46-49
...and a secondary authentication of the electronic code of the mobile device within the vehicle when a vehicle operator attempts to cause the vehicle to move from a stationary position,	The second authentication occurs after the vehicle has started and prior to allowing the operator to engage “Drive” or “Reverse.”	¶29	col. 5:49-54
wherein the processor is configured to enable operation of the vehicle movement activator following the secondary authentication...	If the key is present, the processor will enable operation of the gear shift following the second authentication.	¶30	col. 5:55-59

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the alleged "first authentication," which occurs "when the driver... operates the push button start" (Compl. ¶28), meets the claim limitation requiring the authentication to occur "before the vehicle is started." The timing appears simultaneous rather than sequential.
  • Technical Questions: Does an "attempt to shift out of park" (Compl. ¶29) equate to an "attempt to cause the vehicle to move from a stationary position" as required by the claim? The parties may dispute whether these actions are technically and legally synonymous.

’645 Patent Infringement Allegations

Claim Element (from Independent Claim 1)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
A smart key system for an automobile having an engine, transmission, and brake pedal including a coded key fob...and a smart key system controller...	The accused products are automobiles with keyless entry systems, including an engine, transmission, brake system, key fob, and a processor or controller.	¶25-27	col. 4:1-6
...the improvement wherein a two step key fob authentication is required...	The accused vehicles "perform at least two wireless authentications of the mobile key's code after the driver enters the vehicle."	¶28	col. 4:10-12
...in which said smart key controller detects and authenticates the presence of a key fob at the time said engine is started...	A first authentication occurs "when the driver depresses the brake pedal and operates the push button start."	¶28	col. 4:12-14
...and again attempts to detects and authenticate the presence of the coded key fob...whenever said brake pedal is depressed...	A "second authentication occurs after the vehicle has been started when the driver attempts to shift out of park."	¶29	col. 4:15-18
...which only if said coded key fob is detected and authenticated causes operation of said transmission lever lock actuator to release said lock lever...	If the key is in the car during the second authentication, "the processor will enable operation of the gear shift."	¶30	col. 4:18-21
...said smart key controller preventing operation of said transmission lever lock actuator...in the absence of detection and authentication of said key fob...	"If the Intelligent Access key is not in the car during the second authentication, the processor or controller will not enable operation of the gear shift."	¶30	col. 4:21-26

• Identified Points of Contention:
  • Procedural Questions: The primary issue is the cancellation of Claim 1 by the USPTO. As this is the only asserted claim from the ’645 patent, Count II of the complaint may be rendered moot.
  • Technical Questions: Independent of the claim cancellation, a potential mismatch exists between the claim's trigger for the second authentication and the alleged infringing action. The claim requires the check "whenever said brake pedal is depressed," whereas the complaint alleges it occurs "when the driver attempts to shift out of park" (Compl. ¶29). These are distinct events that may not always coincide, raising a question about literal infringement.

V. Key Claim Terms for Construction

For the ’397 Patent

• The Term: "before the vehicle is started" (from Claim 17)

• Context and Importance: This term defines the timing of the first authentication relative to the engine start. The infringement analysis may turn on whether the accused system's authentication, which allegedly occurs "when the driver...operates the push button start" (Compl. ¶28), satisfies this temporal requirement. Practitioners may focus on this term because a simultaneous action may not be considered "before."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not provide an explicit definition, which may support an argument for a plain and ordinary meaning where "before" encompasses the entire sequence of actions that initiate the start-up process.
  • Evidence for a Narrower Interpretation: The summary of the invention states that "after the presence of the key fob initially authenticated, the ignition button or switch is activated for keyless starting" (’397 Patent, col. 2:21-23). This language suggests a sequential, two-step process where authentication is completed prior to the activation of the starting mechanism, supporting a stricter, non-simultaneous reading.

• The Term: "vehicle movement activator" (from Claim 17)

• Context and Importance: This term identifies the component that is disabled if the second authentication fails. The complaint equates this term with a "gear shift" (Compl. ¶27). The construction will determine if the claims are limited to traditional shifters or can read on other modern drive selection interfaces.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term itself is general and could be argued to cover any user-operated control that puts the vehicle into a drive mode, not just a mechanical lever.
  • Evidence for a Narrower Interpretation: The detailed description repeatedly refers to a "transmission shift lever 12" and a corresponding "transmission lever lock 22" (’397 Patent, col. 3:11-16; Fig. 1). A defendant could argue the claims should be limited to the specific embodiments disclosed.

For the ’645 Patent

• The Term: "whenever said brake pedal is depressed" (from Claim 1)
• Context and Importance: This phrase specifies the exact trigger for the critical second authentication. Its construction is central to the infringement analysis, as the complaint alleges a different trigger: an "attempt to shift out of park" (Compl. ¶29). This analysis is presented in the context of the complaint as filed, notwithstanding the subsequent cancellation of Claim 1.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A plaintiff might argue that, in most automatic vehicles, depressing the brake is a necessary prerequisite to shifting out of park, making the two actions functionally inseparable for the purpose of the claim.
  • Evidence for a Narrower Interpretation: The claim language is unambiguous. The specification describes a "sensor 26 which detects the pressing of the brake pedal 24" sending a signal to the controller (’645 Patent, col. 3:14-17; Fig. 2). This suggests the invention is triggered specifically by the brake pedal action itself, not by an action on the transmission lever, which could be a separate event.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement against Ford. The factual basis for this allegation is that Ford manufactures and sells the accused vehicles with instructions and technical support that allegedly "promote and demonstrate" the infringing use (Compl. ¶38, 56, 66). The complaint further alleges that the accused products cannot be operated in a manner that does not infringe and were intentionally designed as such (Compl. ¶38, 56, 66).
• Willful Infringement: The complaint alleges willful infringement based on pre-suit knowledge. The specific basis is the allegation that the inventor, Donna Long, presented the technology of the ’645 Patent to Ford and engaged in licensing discussions in or around January 2014, thereby putting Ford on notice of the technology (Compl. ¶22-23, 33, 37).

VII. Analyst’s Conclusion: Key Questions for the Case

• A dispositive threshold issue for Count II will be the procedural impact of the inter partes review. Given that the sole asserted claim of the '645 patent has now been formally cancelled by the USPTO, the court will have to address the continued viability of that specific infringement count.
• A central legal question will be one of claim construction and timing. Can the phrase "before the vehicle is started" in the '397 and '021 patents be construed to cover an authentication that allegedly occurs simultaneously with the action that starts the vehicle? The resolution of this temporal language will be critical to the infringement analysis.
• A key evidentiary question will be one of technical operation. The case may turn on evidence establishing the precise sequence of events in the accused Ford systems. Specifically, what is the actual trigger for the second authentication—is it an attempt to shift the gear selector as alleged, or is it triggered by the brake pedal depression, and does that distinction create a material mismatch with the language of the asserted claims?