DCT

1:24-cv-01327

AutoConnect Holdings LLC v. Ford Motor Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:24-cv-01327, D. Del., 12/06/2024
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware as Defendant Ford Motor Co is a Delaware corporation and therefore resides in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicle infotainment, connectivity, and personalization systems infringe a portfolio of thirteen patents related to in-vehicle networking, user profile management, and device integration.
  • Technical Context: The technology concerns the integration of mobile devices, cloud services, and user profiles with a vehicle's native systems to create a personalized and connected user experience, a central focus of the modern automotive market.
  • Key Procedural History: The complaint details pre-suit communications beginning in December 2023, when Plaintiff sent a letter to Ford identifying the asserted patents and including claim charts. Subsequent communications over several months, including a telephone conference, failed to resolve the dispute, with Ford ultimately asserting non-infringement without detailed explanation. This history may be relevant to allegations of willful infringement.

Case Timeline

Date Event
2011-11-16 Earliest Priority Date (’491, ’560 Patents)
2013-03-14 Earliest Priority Date (’786, ’100 Patents)
2013-08-09 Earliest Priority Date (’367 Patent)
2014-04-15 Earliest Priority Date (’697, ’239, ’186, ’296, ’297 Patents)
2015-04-13 Earliest Priority Date (’153 Patent)
2015-04-28 U.S. Patent No. 9,020,491 Issues
2015-04-28 U.S. Patent No. 9,020,697 Issues
2015-07-14 U.S. Patent No. 9,082,239 Issues
2015-08-04 U.S. Patent No. 9,098,367 Issues
2015-08-25 U.S. Patent No. 9,116,786 Issues
2015-09-01 U.S. Patent No. 9,123,186 Issues
2015-09-22 U.S. Patent No. 9,140,560 Issues
2015-09-29 U.S. Patent No. 9,147,296 Issues
2015-09-29 U.S. Patent No. 9,147,297 Issues
2015-10-27 U.S. Patent No. 9,173,100 Issues
2016-03-22 U.S. Patent No. 9,290,153 Issues
~2016-01-01 Alleged Launch of '491, '786, '560, '100, '153, ’764 Accused Instrumentalities (2017 Model Year)
2019-01-08 Earliest Priority Date ('764 Patent)
~2019-01-01 Alleged Launch of '697, '186, '296, '297, ’931 Accused Instrumentalities (2020 Model Year)
2020-12-08 U.S. Patent No. 10,862,764 Issues
2021-04-16 Earliest Priority Date ('931 Patent)
2021-11-02 U.S. Patent No. 11,163,931 Issues
2023-12-01 Plaintiff sends notice letter with claim charts to Defendant
~2023-01-01 Alleged Launch of '239 (C5), '367 Accused Instrumentalities (2024 Model Year)
2024-01-01 Defendant confirms receipt of Plaintiff's letter
2024-05-01 Defendant provides formal response asserting non-infringement
2024-06-01 Plaintiff responds to Defendant's May 2024 letter
2024-07-01 Defendant provides final response, considers matter closed
2024-12-06 Complaint Filed

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

U.S. Patent No. 9,020,491 - "Sharing Applications/Media Between Car and Phone (Hydroid)," Issued April 28, 2015

The Invention Explained

  • Problem Addressed: The patent describes the challenge of integrating the features and capabilities of travelers' mobile devices with their vehicles to create a more intuitive and connected experience, noting that vehicles often include a series of separate, non-integrated devices (’491 Patent, col. 3:11-22).
  • The Patented Solution: The invention proposes a vehicle ecosystem that establishes a "universal bus" or hotspot, allowing for the sharing of applications, data, and multimedia between a vehicle and one or more mobile devices (’491 Patent, col. 9:44-54). This system can determine the capabilities of a connected device and create a communication link to allow control of the device's functions through the vehicle's own user interface (’491 Patent, col. 9:55-67).
  • Technical Importance: This approach addresses the consumer demand for seamless integration of personal electronics, like smartphones, with in-car infotainment systems, a key competitive area in the automotive industry.

Key Claims at a Glance

  • The complaint asserts independent claim 11 (Compl. ¶44).
  • Claim 11 describes a vehicle system comprising:
    • an in-vehicle communication system;
    • a mobile device;
    • a processor in communication with the in-vehicle communication system and the mobile device;
    • a universal bus established by the processor for communication between the in-vehicle communication system and the mobile device;
    • wherein the processor determines a function of the mobile device and provides access to the function through the in-vehicle communication system.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶43).

U.S. Patent No. 9,020,697 - "Vehicle-Based Multimode Discovery," Issued April 28, 2015

The Invention Explained

  • Problem Addressed: The patent addresses the need for a vehicle to securely and efficiently identify and connect with various user devices that may employ different communication protocols, to provide access to vehicle functions (’697 Patent, col. 2:45-50).
  • The Patented Solution: The invention is a method for a vehicle to discover a mobile device using "multimode discovery," which involves multiple communication modes (e.g., Bluetooth, Wi-Fi, NFC). Once a device is discovered, the system determines its location or zone within the vehicle and, based on rules, provides the device with access to control certain vehicle operations (’697 Patent, col. 4:1-24; Fig. 20).
  • Technical Importance: This technology is foundational for features like digital keys, where a vehicle must securely recognize a specific user's device and grant it privileged access to functions like unlocking doors and starting the engine.

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 8 (Compl. ¶66).
  • Claim 1 describes a method comprising:
    • a microprocessor executable device discovery daemon attempting to connect to a network and/or communication subsystem of a vehicle;
    • in response, the device discovery daemon determines whether the computational device is located within a predetermined area and/or zone of the vehicle;
    • and permitting the computational device to access the network and/or communication subsystem based on the determination.
  • Claim 8 describes a vehicle comprising:
    • a microprocessor executable device discovery daemon;
    • the daemon determining that a computational device is attempting to connect to a network;
    • the daemon determining if the device is within a predetermined area/zone;
    • and applying rules to permit or deny access.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶65).

Multi-Patent Capsule: U.S. Patent No. 9,082,239

  • Patent Identification: "Intelligent Vehicle for Assisting Vehicle Occupants," Issued July 14, 2015 (Compl. ¶17).
  • Technology Synopsis: The patent describes systems and methods for a vehicle to provide assistance to an occupant. This involves a microprocessor that maintains user profile information and performs an action to assist the occupant based on vehicle-related information and the user profile (’239 Patent, Abstract).
  • Asserted Claims: Claims 1, 8, and 15 are asserted (Compl. ¶88).
  • Accused Features: Ford’s "Intelligent Suggestions" and "Ford Digital Experience" features are accused of infringement (Compl. ¶87).

Multi-Patent Capsule: U.S. Patent No. 9,098,367

  • Patent Identification: "Self-configuring Vehicle Console Application Store," Issued August 4, 2015 (Compl. ¶18).
  • Technology Synopsis: The patent is directed to an on-board vehicle application store. The store contains applications that are provided to the operator based on information related to the vehicle's state, configuration, type, and/or occupants (’367 Patent, Abstract).
  • Asserted Claims: Claims 1, 10, and 17 are asserted (Compl. ¶110).
  • Accused Features: The "Ford Digital Experience" is accused of infringement (Compl. ¶109).

Multi-Patent Capsule: U.S. Patent No. 9,116,786

  • Patent Identification: "On Board Vehicle Networking Module," Issued August 25, 2015 (Compl. ¶19).
  • Technology Synopsis: The patent describes a remote control module for a vehicle that can receive a command from a vehicle owner to configure, alter, or determine the state of a vehicle component after the owner is authenticated. The system allows for remote configuration of various vehicle functions (’786 Patent, Abstract).
  • Asserted Claims: Claim 23 is asserted (Compl. ¶132).
  • Accused Features: Ford vehicles equipped with Apple CarPlay and/or Android Auto are accused of infringement (Compl. ¶131).

Multi-Patent Capsule: U.S. Patent No. 9,123,186

  • Patent Identification: "Remote Control of Associated Vehicle Devices," Issued September 1, 2015 (Compl. ¶20).
  • Technology Synopsis: The invention relates to a system for controlling vehicle access and operations based on a user profile. The system can determine if a vehicle occupant is authorized for a particular task or function and then grant or deny access accordingly (’186 Patent, Abstract).
  • Asserted Claims: Claims 1, 8, and 15 are asserted (Compl. ¶154).
  • Accused Features: Ford’s "Phone As A Key" feature is accused of infringement (Compl. ¶153).

Multi-Patent Capsule: U.S. Patent No. 9,140,560

  • Patent Identification: "In-Cloud Connection for Car Multimedia," Issued September 22, 2015 (Compl. ¶21).
  • Technology Synopsis: This patent describes a system for creating a universal bus and hotspot within a vehicle where applications, data, and multimedia can be shared between the vehicle and other connected devices, with a connection to cloud-based resources (’560 Patent, Abstract).
  • Asserted Claims: Claims 11 and 16 are asserted (Compl. ¶175).
  • Accused Features: Ford vehicles equipped with Apple CarPlay and/or Android Auto are accused of infringement (Compl. ¶174).

Multi-Patent Capsule: U.S. Patent No. 9,147,296

  • Patent Identification: "Customization of Vehicle Controls and Settings Based on User Profile Data," Issued September 29, 2015 (Compl. ¶22).
  • Technology Synopsis: The patent covers systems for providing various outputs based on a user profile and determined context. The outputs can change the configuration of a vehicle, device, or system, and can include comfort and interface settings adjusted based on user profile information (’296 Patent, Abstract).
  • Asserted Claims: Claims 7, 8, and 14 are asserted (Compl. ¶197).
  • Accused Features: Ford's "Personal Profiles" feature is accused of infringement (Compl. ¶196).

Multi-Patent Capsule: U.S. Patent No. 9,147,297

  • Patent Identification: "Infotainment System Based on User Profile," Issued September 29, 2015 (Compl. ¶23).
  • Technology Synopsis: This invention relates to adjusting a vehicle's infotainment system based on a user profile. The system detects a user profile and at least one infotainment system, and then adjusts the system's configuration based on information in the profile (’297 Patent, Abstract).
  • Asserted Claims: Claims 1, 9, and 15 are asserted (Compl. ¶219).
  • Accused Features: Ford's "user device profiles" feature is accused of infringement (Compl. ¶218).

Multi-Patent Capsule: U.S. Patent No. 9,173,100

  • Patent Identification: "On board Vehicle Network Security," Issued October 27, 2015 (Compl. ¶24).
  • Technology Synopsis: The patent describes a network controller that can isolate on-board computational components in a vehicle's wireless network from a security breach. It can isolate affected components from unaffected ones to contain the breach (’100 Patent, Abstract).
  • Asserted Claims: Claims 1, 9, and 17 are asserted (Compl. ¶241).
  • Accused Features: Security measures in Ford vehicles are accused of infringement (Compl. ¶240).

Multi-Patent Capsule: U.S. Patent No. 9,290,153

  • Patent Identification: "Vehicle-Based Multimode Discovery," Issued March 22, 2016 (Compl. ¶25).
  • Technology Synopsis: This patent, related to the ’697 patent, describes a system for device discovery based on a device's location. A "device discovery daemon" determines if a device is within a predetermined area and applies rules to permit or deny network access (’153 Patent, Abstract).
  • Asserted Claims: Claims 1, 11, and 12 are asserted (Compl. ¶263).
  • Accused Features: Ford vehicles equipped with Apple CarPlay and/or Android Auto are accused of infringement (Compl. ¶262).

Multi-Patent Capsule: U.S. Patent No. 10,862,764

  • Patent Identification: "Universal Console Chassis for the Car," Issued December 8, 2020 (Compl. ¶26).
  • Technology Synopsis: The patent discloses a universal chassis for a vehicle's head unit that can accept different modules with a common form factor. This allows for configurable functionality by inserting different modules into the chassis with ease (’764 Patent, Abstract).
  • Asserted Claims: Claim 1 is asserted (Compl. ¶285).
  • Accused Features: Ford vehicles equipped with Apple CarPlay and/or Android Auto are accused of infringement (Compl. ¶284).

Multi-Patent Capsule: U.S. Patent No. 11,163,931

  • Patent Identification: "Access and Portability of User Profiles Stored as Templates," Issued November 2, 2021 (Compl. ¶27).
  • Technology Synopsis: This patent describes a system to access and edit user profiles that govern vehicle functions. The system uses biometric or device identification to verify a user's authority to access profiles stored in the vehicle, the cloud, or a communications device (’931 Patent, Abstract).
  • Asserted Claims: Claim 1 is asserted (Compl. ¶304).
  • Accused Features: Ford's "Phone As A Key" feature is accused of infringement (Compl. ¶303).

III. The Accused Instrumentality

  • Product Identification: The accused instrumentalities are various hardware and software systems in Ford and Lincoln vehicles, including those that enable "Apple CarPlay and/or Android Auto," "Phone As A Key," "Ford Intelligent Suggestions," "Ford Digital Experience," and "Personal Profiles" (Compl. ¶¶43, 65, 87, 109, 196).
  • Functionality and Market Context: The complaint alleges that these features provide core connectivity and personalization functions in modern Ford vehicles. The Apple CarPlay and Android Auto features allow a vehicle's in-dash screen to display and control a connected smartphone's applications (Compl. ¶43). The "Phone As A Key" feature enables a driver's smartphone to function as a vehicle key, providing access and starting capabilities through a mobile application (Compl. ¶65). The "Intelligent Suggestions" and "Personal Profiles" features learn user preferences and automatically adjust vehicle settings, such as climate control and infotainment options, based on recognizing the user or their device (Compl. ¶¶87, 196). These functionalities are central to the connected-car experience marketed to consumers.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

As the complaint references claim-chart exhibits that were not attached to the filing, the infringement allegations for the lead patents are summarized below in prose.

'491 Patent Infringement Allegations

The complaint alleges that Ford vehicles from the 2017 model year to the present equipped with Apple CarPlay and/or Android Auto infringe at least claim 11 of the ’491 patent (Compl. ¶¶43-44). The infringement theory suggests that the vehicle's head unit (an "in-vehicle communication system") and a connected smartphone (a "mobile device") are linked by a processor that establishes a "universal bus" for communication. Through this connection, the vehicle's system allegedly "determines a function of the mobile device" (e.g., its ability to run navigation or media apps) and provides access to that function through the vehicle's own display and controls, thereby mapping to the elements of the claim (Compl. ¶43).

  • Identified Points of Contention:
    • Scope Questions: A potential dispute may arise over whether the proprietary communication links established by Apple CarPlay and Android Auto meet the claim limitation of a "universal bus." The construction of "universal" will be a central issue, raising the question of whether it requires an open or device-agnostic protocol versus the specific, closed ecosystems of Apple and Google.
    • Technical Questions: A key question for the court may be how the accused system "determines a function of the mobile device." The analysis will examine whether the system performs a specific act of determination as required by the claim, or if it merely acts as a passive terminal for a pre-determined interface projected by the phone.

'697 Patent Infringement Allegations

The complaint alleges that Ford vehicles from the 2020 model year to the present equipped with the "Phone As A Key" feature infringe at least claims 1, 8, and 15 of the ’697 patent (Compl. ¶¶65-66). The theory posits that the vehicle's systems ("device discovery daemon") detect and connect with a driver's smartphone ("computational device"). This process allegedly involves "multimode discovery." Based on this discovery, the system determines the device is within a "predetermined area" (e.g., inside or near the vehicle) and, by applying rules, permits the device to access and control vehicle functions such as unlocking doors (Compl. ¶65).

  • Identified Points of Contention:
    • Scope Questions: The case may turn on the construction of "discovering...via a multimode discovery." Ford may argue that the initial, deliberate Bluetooth pairing process for "Phone As A Key" is not "discovery" in the sense of an ongoing search, and that subsequent interactions rely on a single communication mode (e.g., BLE), not "multimode" discovery.
    • Technical Questions: An evidentiary question will be what distinct communication modes are used for the "discovery" process as alleged. The complaint does not specify the multiple modes involved in the accused "Phone As A Key" feature's operation, which will be a necessary element of proof for infringement.

V. Key Claim Terms for Construction

For the ’491 Patent:

  • The Term: "universal bus" (from claim 11)
  • Context and Importance: This term is the central feature of the claimed invention. The outcome of the case may depend on whether the proprietary software links used by Apple CarPlay and Android Auto can be considered "universal." Practitioners may focus on this term because its scope will determine if the patent applies to these widely adopted but closed-ecosystem technologies.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification's description of a "subsystem that transfers information and/or data between various components" could support a broad, functional definition not tied to a specific hardware or protocol standard (’491 Patent, col. 4:11-14).
    • Evidence for a Narrower Interpretation: The patent’s discussion of creating a "hotspot" and sharing resources among various devices could suggest an open, IP-based network architecture, potentially distinguishing it from the more limited, point-to-point projection of the accused systems (’491 Patent, col. 9:44-50).

For the ’697 Patent:

  • The Term: "discovering...via a multimode discovery" (from claim 1)
  • Context and Importance: Infringement of the ’697 patent hinges on whether the accused "Phone As A Key" feature performs "multimode discovery." Ford's defense may argue its system uses a single, persistent connection (e.g., BLE) after initial pairing, which does not constitute ongoing "discovery" using multiple modes.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes using multiple communication methods like Bluetooth, NFC, and Wi-Fi for device discovery, which could support an interpretation where any two methods used in the process of establishing a connection qualify (’697 Patent, Abstract).
    • Evidence for a Narrower Interpretation: The detailed description may disclose specific interactions between different modes (e.g., using NFC to initiate a Wi-Fi connection) that are not present in the accused system, potentially supporting a narrower construction that requires a particular interplay between the modes (’697 Patent, col. 25:1-15).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement by Ford supplying vehicles along with instructions, manuals, videos, and website materials that allegedly instruct and encourage customers to use the accused features (e.g., connecting a phone for Apple CarPlay, setting up Phone As A Key) in an infringing manner (Compl. ¶¶47, 69). It further alleges contributory infringement by asserting that Ford provides essential software components for these features that are not staple articles of commerce and are especially made for infringing use (Compl. ¶¶53, 75).
  • Willful Infringement: Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges Ford had knowledge through its wholly-owned IP subsidiary, Ford Global Technologies, which encountered the asserted patents and related family members during the prosecution of its own patent applications, with some encounters dating back to 2015 (Compl. ¶¶51, 70, 73). Willfulness is also alleged based on Ford's receipt of Plaintiff's December 2023 notice letter and claim charts, and its continued alleged infringement after receiving notice (Compl. ¶¶52, 74).

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

  • A core issue will be one of definitional scope: can claim terms rooted in the concept of open and flexible vehicle ecosystems, such as "universal bus" ('491 patent) and "multimode discovery" ('697 patent), be construed to read on the widely adopted but proprietary, single-purpose functionalities of Apple CarPlay, Android Auto, and Ford's Phone As A Key?
  • A key evidentiary question will be one of pre-suit knowledge: can Plaintiff demonstrate that knowledge of the asserted patents, allegedly obtained by Ford's patent-prosecuting subsidiary years prior to any direct contact, should be imputed to Ford as a corporate entity, thereby supporting the claim for willful infringement?
  • A central technical question will be one of operative functionality: does the complaint and subsequent discovery provide sufficient evidence that the accused systems perform the specific, multi-step processes required by the claims (e.g., "determining a function" of a mobile device, or using multiple distinct communication "modes" for discovery), or is there a fundamental mismatch in their technical operation compared to what the patents describe?