DCT
2:23-cv-00437
Emerging Automotive LLC v. Kia Corp
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Emerging Automotive LLC (California)
- Defendant: Toyota Motor North America Inc., Toyota Motor Sales, U.S.A., Inc., and Toyota Motor Corporation (California/Japan)
- Plaintiff’s Counsel: Bunsow De Mory LLP; Ward, Smith & Hill, PLLC
- Case Identification: Emerging Automotive LLC v. Toyota Motor North America, 2:23-cv-00434, E.D. Tex., 09/26/2024
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendants maintain a regular and established place of business in Plano, Texas, where they employ approximately 4000 people.
- Core Dispute: Plaintiff alleges that Defendant’s Toyota and Lexus vehicles equipped with Remote Connect and/or Digital Key, and associated cloud servers, infringe four U.S. patents related to cloud-based vehicle access, electronic key management, and user profile transfer.
- Technical Context: The technology concerns connected vehicle systems that allow users to access and control vehicles via mobile devices and to personalize vehicle settings through cloud-stored user profiles.
- Key Procedural History: The complaint alleges that Toyota had pre-suit knowledge of the ’188 patent as of April 4, 2018, and the ’268 patent as of December 8, 2020, based on citations made during Toyota's own patent prosecution activities. For the ’268 patent, the complaint details prosecution history where the applicant allegedly distinguished prior art by adding a "compatibility check" limitation, a feature Plaintiff contends is central to its novelty.
Case Timeline
| Date | Event |
|---|---|
| 2011-04-22 | Earliest Priority Date for Asserted Patents |
| 2015-10-27 | U.S. Patent No. 9,171,268 Issues |
| 2016-06-14 | U.S. Patent No. 9,365,188 Issues |
| 2018-04-04 | Complaint alleges Toyota had knowledge of ’188 Patent |
| 2019-09-10 | U.S. Patent No. 10,407,026 Issues |
| 2020-12-08 | Complaint alleges Toyota had knowledge of ’268 Patent |
| 2023-08-29 | U.S. Patent No. 11,738,659 Issues |
| 2024-09-26 | 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"
The Invention Explained
- Problem Addressed: The patent addresses the need for more advanced and flexible ways to control vehicle access beyond traditional physical keys, in an era of increasing wireless interfacing and networking with vehicles (’026 Patent, col. 1:60-2:8).
- The Patented Solution: The invention describes a system where a vehicle communicates with a cloud server to manage access. A user can request access for a mobile device, and the server generates a unique access code with specific privileges (e.g., time limits). The vehicle receives this request from the mobile device, authenticates it with the server, and if valid, enables an "electronic key" on the mobile device to unlock and start the vehicle according to the defined privileges (’026 Patent, Abstract; col. 2:26-51; Fig. 1).
- Technical Importance: This technology provides a framework for temporary, remote, and privilege-limited vehicle access, which is foundational for car-sharing services, valet functions, and parental controls in connected vehicles (’026 Patent, col. 5:16-22).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶11).
- Claim 1 breaks down into the following essential elements:
- A vehicle with electronics and subsystems for unlocking and starting.
- Communications circuitry to communicate with a server and a mobile device.
- The vehicle is configured to receive an unlocking request from the mobile device containing a unique access code.
- This unique access code is associated with pre-defined privileges for vehicle use.
- The vehicle communicates with the server to authenticate the request.
- If the request is authentic, the mobile device is enabled with an electronic key to unlock and start the vehicle consistent with the defined privileges.
U.S. Patent No. 11,738,659 - "Vehicles And Cloud Systems For Sharing E-Keys To Access And Use Vehicles"
The Invention Explained
- Problem Addressed: The patent addresses similar problems as the ’026 Patent, focusing on methods for generating and sharing electronic keys for vehicle access via cloud-based processing systems (’659 Patent, col. 1:65-2:4).
- The Patented Solution: The invention describes a method executed by a server for assigning e-keys. The server receives a request that identifies a recipient and defines privileges, generates a unique access code, encrypts it, and sends it to the recipient's device. The vehicle is configured to decrypt this code and grant access according to the embedded privileges, enabling shared use of the vehicle (’659 Patent, Abstract; col. 3:1-54).
- Technical Importance: This server-centric method provides a secure and manageable way to issue and control digital vehicle keys, centralizing the logic for creating and defining the scope of temporary access for third parties (’659 Patent, col. 5:23-31).
Key Claims at a Glance
- The complaint asserts at least independent claim 1 (Compl. ¶23).
- Claim 1 breaks down into the following essential elements:
- A method, executed by a server, for assigning e-keys.
- Receiving a request to generate e-keys for a recipient, where the request defines privileges of use.
- Generating an access code and encrypting it to create encrypted e-keys.
- Sending the encrypted e-keys to the recipient's device.
- The encrypted e-keys are configured for wireless transfer to the vehicle.
- The encrypted e-keys are configured to be decrypted by the vehicle, with the access code then being associated with the recipient's device ID.
- The access code functions as the e-key, providing access to the vehicle according to the defined privileges.
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, issued June 14, 2016 (Compl. ¶34).
- Technology Synopsis: This patent focuses on the server-side method for providing vehicle access. The server sends an access code to a portable device, validates that the device is near the vehicle, and then sends an electronic key to the device based on that validation (’188 Patent, Abstract).
- Asserted Claims: At least independent claim 1 (Compl. ¶35).
- Accused Features: The complaint accuses servers that "implement, support, and/or direct the Remote Connect and/or Digital Key functionality" of Toyota and Lexus vehicles (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, issued October 27, 2015 (Compl. ¶46).
- Technology Synopsis: This patent describes a system for transferring portable user profiles between vehicles. A server receives a user's profile settings, performs a "compatibility check" to determine which settings are applicable to a selected vehicle, and sends the compatible settings to that vehicle for automatic configuration (Compl. ¶¶ 47, 49, 55-56).
- Asserted Claims: At least independent claim 10 (Compl. ¶76).
- Accused Features: The complaint accuses servers "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. ¶76).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are identified as Toyota and Lexus vehicles equipped with "Remote Connect and/or Digital Key" systems, as well as the associated "Accused Server Instrumentalities" that support these functions (Compl. ¶¶ 11, 23, 35, 76).
Functionality and Market Context
The complaint alleges that these systems allow vehicle owners to use an electronic key, such as on a smartphone, to access and operate their vehicles (Compl. ¶11). The complaint also describes a "User Profile" feature, which it alleges is stored in the cloud and allows a driver's personalized settings (e.g., for media, climate, or display preferences) to be transferred and automatically applied when moving between different compatible Toyota vehicles (Compl. ¶¶ 74-75). The complaint quotes Toyota's marketing materials, which allegedly tout these user profile features as "game-changing" and "essential" for a personalized experience that moves from vehicle to vehicle (Compl. ¶¶ 74-75).
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... the vehicle includes electronics and a subsystem... for enabling unlocking of the vehicle... and a subsystem... for enabling starting of the vehicle | The complaint alleges Toyota and Lexus vehicles (Accused Instrumentalities) are configured with electronics and systems that enable remote unlocking and starting via an electronic key (Compl. ¶11). | ¶11 | col. 2:26-32 |
| communications circuitry... programmable to communicate with the server of the cloud system and communicate with a mobile device | The Accused Instrumentalities allegedly include communications systems that interact with both cloud servers and a user's mobile device (e.g., a smartphone with the Toyota app) to enable Remote Connect and Digital Key features (Compl. ¶11). | ¶11 | col. 2:32-38 |
| the communications circuitry... is configured to receive a request from the mobile device for unlocking... the request... including a unique access code obtained by the mobile device from the server | The complaint alleges the Accused Instrumentalities operate by receiving a request from a user's mobile device, which contains data functioning as an electronic key to unlock the vehicle (Compl. ¶11). | ¶11 | col. 2:38-43 |
| the unique access code is associated with privileges for use of the vehicle, the privileges are defined for the unique access code | The complaint's theory requires that the electronic key functionality is associated with specific privileges that control how the vehicle can be used (Compl. ¶11). | ¶11 | col. 2:43-46 |
| the vehicle is configured to receive information from the server to authenticate the request by the mobile device | The infringement theory alleges that the vehicle communicates with a server to authenticate the access request originating from the user's mobile device (Compl. ¶11). | ¶11 | col. 2:46-49 |
| if the request is authentic, the mobile device is provided with data to enable an electronic key to use the vehicle, and the electronics of the vehicle instructs the subsystem... to enable unlocking... and enable starting... consistent with the privileges | The complaint alleges that upon successful authentication, the Digital Key or Remote Connect system instructs the vehicle's subsystems to unlock and/or start, in accordance with the permissions granted to that electronic key (Compl. ¶11). | ¶11 | col. 2:49-51 |
Identified Points of Contention
- Scope Questions: A central question may be whether the data token or signal used by Toyota's "Digital Key" system constitutes a "unique access code" as contemplated by the patent. The defense may argue its system uses a standard secure token that is not "unique" in the patented sense, or that privileges are not "defined for the unique access code" itself but are managed separately at the account level.
- Technical Questions: The infringement analysis could turn on the specific sequence of operations. For example, does the accused Toyota vehicle itself "receive information from the server to authenticate the request," as claimed, or does the authentication occur primarily between the mobile device and the server, with the vehicle simply receiving a final command?
U.S. Patent No. 11,738,659 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method, executed by a processor of a server... for assigning electronic keys (e-keys) to enable access and use of a vehicle | The complaint accuses Toyota's servers ("Accused Server Instrumentalities") of performing a method to assign electronic keys for use with its vehicles (Compl. ¶23). | ¶23 | col. 7:35-39 |
| receiving, at the server, a request to generate e-keys for a vehicle associated with a user account, the request identifying a recipient and metadata defining privileges of use | The infringement theory alleges that Toyota's servers receive requests to generate a Digital Key for a third party, with the request defining the privileges for that key (Compl. ¶23). | ¶23 | col. 7:39-43 |
| generating an access code for the request... encrypting the access code... to generate encrypted e-keys and sending the encrypted e-keys to a device of the recipient | The complaint alleges Toyota's servers generate and securely transmit data that functions as an e-key to the recipient's mobile device (Compl. ¶23). | ¶23 | col. 7:43-48 |
| the encrypted e-keys are configured for wireless transfer to the vehicle from the device... and... to be decrypted by the vehicle | The Digital Key system allegedly requires the e-key on the mobile device to be transferred wirelessly to the vehicle, where the vehicle's electronics process it to grant access (Compl. ¶23). | ¶23 | col. 7:48-51 |
| the access code is transmitted to the device of the recipient from the vehicle, such that the vehicle provides access for use to the device when the access code is used | The complaint alleges that after the vehicle processes the e-key, the user's mobile device is enabled to operate the vehicle's functions (Compl. ¶23). | ¶23 | col. 7:54-58 |
Identified Points of Contention
- Scope Questions: Practitioners may focus on whether Toyota's system performs all the recited server-side steps. For instance, does the server "generate an access code" and "encrypt" it in the specific manner described, or does it utilize a different security architecture for provisioning digital keys?
- Technical Questions: A key evidentiary issue may be the data flow. Does the "access code" get transmitted back from the vehicle to the mobile device after decryption, as the claim recites, or does the mobile device receive a different form of confirmation or token? A mismatch in this specific data transaction could be a point of non-infringement.
V. Key Claim Terms for Construction
For the ’026 Patent
- The Term: "unique access code"
- Context and Importance: This term is the core of the claimed security mechanism. Its definition will determine whether Toyota's digital key/token technology falls within the claim scope. Practitioners may focus on this term because if it is construed narrowly to require more than a standard cryptographic token, it could present a challenge to the infringement allegation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the code as enabling access and being associated with privileges, which could support a construction covering any digital token that serves this function (’026 Patent, Abstract; col. 2:43-46).
- Evidence for a Narrower Interpretation: Figure 34 and the accompanying text describe a server "Generating of Unique Codes" (e.g., "Unique Code 1," "Unique Code 2") for different users and sessions, which might support an argument that the code must be newly generated for each specific grant of access rather than being a persistent key (’026 Patent, Fig. 34; col. 6:20-25).
For the ’659 Patent
- The Term: "metadata defining privileges of use"
- Context and Importance: The infringement case for this server-side method patent depends on showing that Toyota's servers process a "request... identifying a recipient and metadata defining privileges." The construction of this term will be critical to determine what information must be included in the initial request sent to the server.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification lists examples of privileges such as "geographic restriction," "speed restriction," and "time frame of use," suggesting "metadata" could be any data that conveys these limitations (’659 Patent, col. 4:60-64).
- Evidence for a Narrower Interpretation: The description of templates (e.g., "child template," "valet attendant template") suggests the "metadata" might require a structured set of predefined privilege categories rather than ad-hoc rules, potentially narrowing the claim scope (’659 Patent, col. 5:18-22).
VI. Other Allegations
Indirect Infringement
The complaint alleges Toyota induces infringement by providing instructions, websites, and demonstration videos that allegedly encourage and direct customers on how to use the accused Remote Connect and Digital Key functionalities in an infringing manner (Compl. ¶¶ 14, 26, 38, 79).
Willful Infringement
The complaint alleges willful infringement for all asserted patents. For the ’026 and ’659 patents, the allegation is based on knowledge acquired at least as of the filing of the complaint (Compl. ¶¶ 19, 31). For the ’188 patent, willfulness is alleged based on pre-suit knowledge since at least April 4, 2018, when Toyota allegedly identified the patent in a filing with the USPTO (Compl. ¶39). For the ’268 patent, willfulness is alleged based on pre-suit knowledge since at least December 8, 2020, from a similar USPTO filing (Compl. ¶80).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical operation: does the accused Toyota system's architecture for authenticating and enabling a digital key mirror the specific multi-step process recited in the claims, particularly the claimed interaction where the vehicle itself communicates with the server for authentication before enabling the key?
- A second central question will be one of definitional scope and prosecution history: can the term "compatibility check" in the ’268 patent family be construed broadly enough to read on Toyota's user profile system, or will arguments Toyota made during its own patent prosecution, as alleged in the complaint, limit how it can define functionally similar features in its accused products?
- Finally, a key evidentiary question will be one of pre-suit knowledge: what specific information did Toyota possess regarding the ’188 and ’268 patents from its own patent prosecution activities, and does that information rise to the level required to support a finding of pre-suit willful infringement?