DCT

2:23-cv-00434

Emerging Automotive LLC v. Toyota Motor North America

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00434, E.D. Tex., 09/20/2023
  • Venue Allegations: Venue is alleged in the Eastern District of Texas based on Defendants having a regular and established place of business in Plano, Texas, including a corporate headquarters with 4,000 employees.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with Remote Connect and/or Digital Key technology infringe five patents related to cloud-based systems for assigning electronic keys for vehicle access and for transferring user profiles between vehicles.
  • Technical Context: The technology at issue involves using cloud servers and mobile devices to manage and grant temporary, privileged digital access to vehicles, replacing or supplementing traditional physical keys.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of three of the five asserted patents ('188, '268, '244 patents) based on Defendant's identification of these patents in its own separate patent application filings with the U.S. Patent and Trademark Office, which may be relevant to the plaintiff's claims of willful infringement.

Case Timeline

Date Event
2011-04-22 Earliest Priority Date for all Asserted Patents
2015-10-27 U.S. Patent No. 9,171,268 Issued
2016-06-14 U.S. Patent No. 9,365,188 Issued
2018-04-04 Defendant allegedly identified ’188 Patent to USPTO
2019-09-10 U.S. Patent No. 10,407,026 Issued
2020-12-08 Defendant allegedly identified ’268 Patent to USPTO
2022-07-26 U.S. Patent No. 11,396,244 Issued
2023-01-03 Defendant allegedly identified ’244 Patent to USPTO
2023-04-03 Defendant allegedly discussed ’244 Patent in a USPTO filing
2023-08-29 U.S. Patent No. 11,738,659 Issued
2023-09-20 Complaint Filed

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

U.S. Patent No. 10,407,026 - “Vehicles And Cloud Systems For Assigning Temporary E-Keys To Access Use Of A Vehicle”

  • Patent Identification: U.S. Patent No. 10,407,026, titled “Vehicles And Cloud Systems For Assigning Temporary E-Keys To Access Use Of A Vehicle,” issued September 10, 2019. (Compl. ¶10).

The Invention Explained

  • Problem Addressed: The patent background describes a context of advancing technology for wireless interfacing and networking with vehicles, implying a need for systems that leverage these new capabilities beyond traditional vehicle operation. (’026 Patent, col. 1:63-2:5).
  • The Patented Solution: The invention describes a vehicle system that communicates with a cloud server and a mobile device to manage access. A mobile device obtains a "unique access code" from the server and sends a request with this code to the vehicle. The vehicle, after receiving authentication from the server, provides the mobile device with an "electronic key" (e-key) that enables unlocking and starting the vehicle according to privileges associated with the access code. (’026 Patent, Abstract; col. 2:27-52).
  • Technical Importance: This technology provides a framework for digital key sharing and management, which is a foundational element of modern car-sharing platforms and connected vehicle services. (’026 Patent, col. 1:53-57).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1. (Compl. ¶11).
  • Claim 1 is a system claim directed to a vehicle comprising:
    • Vehicle electronics.
    • Subsystems for enabling unlocking and starting.
    • Communications circuitry programmable to communicate with a cloud server and a mobile device.
    • The communications circuitry is configured to receive a request from the mobile device containing a "unique access code" obtained from the server.
    • The vehicle is configured to authenticate the request via information from the server.
    • If authentic, the vehicle's electronics instruct the subsystems to enable unlocking and starting consistent with privileges defined for the unique access code.

U.S. Patent No. 11,738,659 - “Vehicles And Cloud Systems For Sharing E-Keys To Access And Use Vehicles”

  • Patent Identification: U.S. Patent No. 11,738,659, titled “Vehicles And Cloud Systems For Sharing E-Keys To Access And Use Vehicles,” issued August 29, 2023. (Compl. ¶22).

The Invention Explained

  • Problem Addressed: Similar to the ’026 Patent, this patent addresses the need for methods to securely grant temporary and privileged access to vehicles using cloud-based systems. (’659 Patent, col. 1:63-2:5).
  • The Patented Solution: The invention claims a method and system for providing vehicle access where a server sends an access code to a portable device. A key step is the server receiving data from the device "indicative that the portable device is located outside of the vehicle or proximate thereto" before sending a validation to the vehicle, which then sends an electronic key to the device. (’659 Patent, col. 51:11-37). This process adds a server-side proximity check to the access-granting workflow.
  • Technical Importance: This approach introduces a server-managed location or proximity verification step, which may enhance the security of remotely-granted digital keys by ensuring the user's device is near the vehicle before access is finalized. (’659 Patent, col. 2:16-25).

Key Claims at a Glance

  • The complaint asserts at least independent claims 1 and 18. (Compl. ¶23).
  • Claim 1 is a method claim for providing vehicle access, comprising the steps of:
    • A server sending an access code to a portable device.
    • The server receiving data from the device indicating its proximity to the vehicle.
    • The server sending a validation to the vehicle based on the access code.
    • The vehicle sending an electronic key to the portable device upon receiving the validation.
  • Claim 18 is a system claim reciting a server and a vehicle configured to perform the steps of the method of claim 1.

U.S. Patent No. 9,365,188 - “Methods and Systems For Using Cloud Services To Assign E-Keys To Access Vehicles”

  • Patent Identification: U.S. Patent No. 9,365,188, titled “Methods and Systems For Using Cloud Services To Assign E-Keys To Access Vehicles,” issued June 14, 2016. (Compl. ¶34).
  • Technology Synopsis: This patent describes methods for sharing electronic keys (e-Keys). The technology centers on a server receiving a request to generate an e-Key, generating the key with specific use conditions, and transmitting it to a recipient's device for use with a vehicle. (’188 Patent, Abstract).
  • Asserted Claims: At least independent claim 16. (The complaint states claim 1, but claim 1 is canceled; claim 16 is the first independent claim). (Compl. ¶35).
  • Accused Features: The complaint accuses "servers that enable use of Toyota and Lexus-branded vehicles via electronic keys," specifically those that support the Remote Connect and/or Digital Key functionality. (Compl. ¶35).

U.S. Patent No. 9,171,268 - “Methods and Systems For Setting And Transferring User Profiles To Vehicles And Temporary Sharing of User Profiles To Shared-Use Vehicles”

  • Patent Identification: U.S. Patent No. 9,171,268, titled “Methods and Systems For Setting And Transferring User Profiles To Vehicles And Temporary Sharing of User Profiles To Shared-Use Vehicles,” issued October 27, 2015. (Compl. ¶46).
  • Technology Synopsis: This patent shifts focus from vehicle access to vehicle personalization. It describes methods for a cloud service to locate a shared-use vehicle, receive a user's selection, and transfer that user's profile (e.g., seat and mirror settings, radio presets) to the selected vehicle so settings are automatically applied upon arrival. (’268 Patent, Abstract).
  • Asserted Claims: At least independent claim 10. (Compl. ¶47).
  • Accused Features: The complaint accuses "servers that are associated with receiving, maintaining, and/or storing User Profile information and/or communicating User Profile and/or setting information" for Toyota and Lexus vehicles. (Compl. ¶47).

U.S. Patent No. 11,396,244 - “Methods For Transferring User Profiles Between Vehicles Using Cloud Services”

  • Patent Identification: U.S. Patent No. 11,396,244, titled “Methods For Transferring User Profiles Between Vehicles Using Cloud Services,” issued July 26, 2022. (Compl. ¶58).
  • Technology Synopsis: This patent also describes technology for managing user profiles via a cloud service. The claimed method involves a server receiving a request to access a user profile, verifying the user, and transferring settings from that profile to a vehicle to customize its use. (’244 Patent, Abstract).
  • Asserted Claims: At least independent claim 1. (Compl. ¶59).
  • Accused Features: The complaint again targets "servers that are associated with receiving, maintaining, and/or storing User Profile information" for Toyota and Lexus vehicles. (Compl. ¶59).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Toyota and Lexus-branded vehicles equipped with "Remote Connect and/or Digital Key" services, and the "Accused Server Instrumentalities" that support these services. (Compl. ¶¶ 11, 35, 47, 59).

Functionality and Market Context

  • The complaint alleges these services allow a user's mobile device to function as an electronic key for the vehicle. (Compl. ¶11). The functionality is allegedly controlled via cloud-based servers operated by Defendant. (Compl. ¶35). The complaint also alleges that these systems manage and transfer user profile information to remotely program vehicles based on user preferences. (Compl. ¶47).
  • The complaint cites Defendant's support websites and instructional videos, which allegedly encourage customers to use, manage, and control these functionalities, as evidence of their operation. (Compl. ¶¶ 14, 50, 62).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

U.S. Patent No. 10,407,026 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A vehicle configured to communicate with a server of a cloud system to enable access to use the vehicle via one or more electronic keys... Toyota and Lexus vehicles with Remote Connect and/or Digital Key are alleged to communicate with Toyota’s cloud servers to enable use via an electronic key. ¶11 col. 2:27-31
communications circuitry... programmable to communicate with the server of the cloud system and communicate with a mobile device; The accused vehicles’ communication systems are alleged to be programmed to interact with both Toyota's cloud servers and a user's mobile device app. ¶11 col. 2:35-39
wherein the communications circuitry... is configured to receive a request from the mobile device for unlocking of the vehicle, the request from the mobile device including a unique access code obtained by the mobile device from the server... The user’s mobile device app allegedly receives a digital key or access code from Toyota’s servers and sends a request containing this code to the vehicle to initiate unlocking. ¶11 col. 2:39-43
the vehicle is configured to receive information from the server to authenticate the request by the mobile device... The vehicle allegedly communicates with Toyota’s servers to authenticate the request sent from the user's mobile device before granting access. ¶11 col. 2:44-46
and if the request is authentic... the electronics of the vehicle instructs the subsystem of the vehicle to enable unlocking... and enable starting... consistent with the privileges of the unique access code. Upon successful authentication, the vehicle's electronics allegedly permit the unlocking of doors and starting of the engine, as enabled by the Digital Key or Remote Connect service. ¶11 col. 2:47-52

U.S. Patent No. 11,738,659 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A method for providing access to a vehicle, the method comprising: sending, by a server, an access code for the vehicle to a portable device... Toyota's servers allegedly send an access code, representing a digital key, to a user's portable device running the Toyota app. ¶¶ 23, 35 col. 51:11-14
receiving, by the server, data from the portable device that is indicative that the portable device is located outside of the vehicle or proximate thereto; Toyota’s servers allegedly receive data (such as GPS location) from the user's device that indicates it is near the target vehicle before proceeding. ¶23 col. 51:18-22
sending, by the server, validation to the vehicle that the access code received by the vehicle was sent to the portable device; Toyota's servers allegedly send a validation message to the vehicle, confirming the legitimacy of the access code and the device's proximity. ¶23 col. 51:23-26
and then the vehicle is configured to send an electronic key to the portable device upon receiving the validation... The accused vehicle, after receiving server validation, allegedly sends the final electronic key to the user's device, enabling its use to operate the vehicle. ¶23 col. 51:27-30

Identified Points of Contention

  • Architectural Questions: A potential point of contention for the ’659 patent is whether the accused system performs the specific, server-side proximity check recited in claim 1. The analysis may turn on whether Toyota's servers receive and process location data from the user's device as a precondition for sending the final validation to the vehicle, or if proximity checks are handled locally between the device and the vehicle without server involvement in that specific step.
  • Scope Questions: For the ’026 patent, a question may arise regarding the claim term "unique access code." The dispute could center on whether the digital token or credential used in Toyota's system meets the patent’s definition of "unique," which may be construed by the court to require, for example, a one-time-use property or a specific cryptographic structure.

V. Key Claim Terms for Construction

  • The Term: "unique access code" (from ’026 Patent, claim 1)

  • Context and Importance: This term is fundamental to the security and operation of the claimed vehicle access system. The infringement analysis for the ’026 patent may depend on whether the digital credentials used by Toyota's Digital Key system are construed to be "unique" as taught by the patent.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the code as being associated with privileges and used for authentication, without necessarily limiting its format. It is described as being generated for a request and configured with privileges. (’026 Patent, col. 46:60-64).
    • Evidence for a Narrower Interpretation: The patent repeatedly describes the server "generating" a unique code for each request, and Figure 34 explicitly illustrates the "Generating of Unique Codes" (752) where a server generates "Unique Code 1," "Unique Code 2," etc., for different users or sessions. This may suggest that the code is intended to be newly created for each transaction or user, rather than a persistent identifier. (’026 Patent, Fig. 34).

  • The Term: "data from the portable device that is indicative that the portable device is located... proximate thereto" (from ’659 Patent, claim 1)

  • Context and Importance: This limitation defines a key validation step in the claimed method. Infringement of the ’659 patent will likely require evidence that Toyota's servers receive and act upon this specific type of proximity data from the user's device before validating an e-key.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The claim language is broad, covering any data that is "indicative" of proximity. This could encompass GPS coordinates sent from the device to the server, which the server then compares to the vehicle's known location. The specification states the server receives "data from the portable device that is indicative that the portable device is located outside of the vehicle or proximate thereto." (’659 Patent, col. 2:18-20).
    • Evidence for a Narrower Interpretation: While the claim language is broad, a defendant may argue that this step requires an active, server-initiated challenge-response to confirm real-time proximity, rather than relying on potentially stale GPS data. However, the specification does not appear to impose such a specific requirement, leaving the term open to construction based on its plain and ordinary meaning.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement for all asserted patents, stating that Defendant provides instructional materials, including websites and videos, that allegedly direct its customers to use the accused Remote Connect and Digital Key features in an infringing manner. (Compl. ¶¶ 14, 26, 38, 50, 62). The complaint also pleads contributory infringement, alleging the infringing components are not staple articles of commerce. (Compl. ¶¶ 16, 28, 40, 52, 64).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents. For the ’188, ’268, and ’244 patents, this is based on alleged pre-suit knowledge stemming from Defendant's own filings with the USPTO that cited these patents. (Compl. ¶¶ 39, 51, 63). For the ’026 and ’659 patents, the allegation is based on knowledge obtained, at a minimum, from the filing of the complaint itself. (Compl. ¶¶ 15, 27).

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

  • A core issue will be one of architectural proof: can Plaintiff demonstrate that Toyota's accused system performs the specific, multi-step communication sequence recited in the claims? In particular for the ’659 patent, a key evidentiary question will be whether Toyota's servers conduct a proximity check based on data received from the user's device as a distinct step before sending a validation message to the vehicle.
  • The case will also turn on claim construction: the dispute will likely center on the scope of terms such as "unique access code" from the ’026 patent and "User Profile" from the ’268 and ’244 patents. The outcome may depend on whether the court construes these terms broadly to cover the general digital credentials and settings used in Toyota's system, or narrowly to require specific structural or functional properties described in the patents' specifications.