DCT

2:23-cv-00437

Emerging Automotive LLC v. Kia Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00434, E.D. Tex., 09/05/2024
  • 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, within the district.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicles equipped with Remote Connect and/or Digital Key functionalities, and the associated cloud-based servers, infringe five U.S. patents related to assigning electronic keys for vehicle access and transferring personalized user profiles between vehicles.
  • Technical Context: The dispute centers on cloud-connected automotive systems that enable digital vehicle access and user experience personalization, a technology domain of increasing significance in the modern automotive market.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit knowledge of at least three of the asserted patents by having cited them during the prosecution of its own patent applications. Specifically, knowledge of the ’188 patent is alleged as of April 4, 2018; the ’268 patent as of December 8, 2020; and the ’244 patent as of January 3, 2023. The complaint also details the prosecution histories of the ’268 and ’244 patents, emphasizing claim amendments made to overcome prior art, which may become central to claim construction.

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 Defendant allegedly identifies ’188 Patent in a USPTO filing
2019-09-10 U.S. Patent No. 10,407,026 Issues
2020-12-08 Defendant allegedly identifies ’268 Patent in a USPTO filing
2022-07-26 U.S. Patent No. 11,396,244 Issues
2023-01-03 Defendant allegedly identifies ’244 Patent in a USPTO filing
2023-08-29 U.S. Patent No. 11,738,659 Issues
2024-09-05 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” (issued September 10, 2019)

The Invention Explained

  • Problem Addressed: The patent addresses the need for improved wireless interfacing and networking with vehicles, moving beyond traditional physical keys to more flexible, digitally managed access systems (Compl. ¶10; ’026 Patent, col. 1:56-2:4).
  • The Patented Solution: The invention describes a cloud-based system where a server generates and sends a "unique access code" to a user's mobile device. This code functions as a temporary electronic key ("e-key"). The vehicle's onboard electronics receive a request from the mobile device containing this code, authenticate the request with the server, and then grant access (e.g., unlocking doors, enabling start) consistent with predefined privileges associated with that specific code (’026 Patent, Abstract; col. 2:25-52).
  • Technical Importance: The technology enables vehicle access to be managed remotely, shared temporarily with different users (e.g., valets, family members), and controlled with specific, granular permissions, detaching access rights from a physical object (’026 Patent, col. 17:1-8).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶11).
  • The essential elements of claim 1 include:
    • A vehicle with electronics and subsystems for unlocking and starting.
    • Communications circuitry to communicate with a cloud server and a mobile device.
    • The circuitry is configured to receive an unlocking request from the mobile device, where the request includes a "unique access code" obtained by the mobile device from the server.
    • The unique access code is associated with predefined privileges for vehicle use.
    • The vehicle is configured to receive information from the server to authenticate the request.
    • If the request is authentic, the vehicle provides data to the mobile device to enable an electronic key and instructs its subsystems to permit unlocking and starting consistent with the code's privileges (’026 Patent, col. 52:1-51).

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

The Invention Explained

  • Problem Addressed: The patent addresses the management of vehicle access in an increasingly connected environment, particularly for sharing access with various users under defined rules (Compl. ¶22).
  • The Patented solution: The invention is described as a system for sharing electronic keys to access and use vehicles, managed by cloud-based systems. This allows for vehicle access to be granted and controlled remotely through digital credentials associated with specific user privileges, similar to the system described in the related ’026 Patent (Compl. ¶23).
  • Technical Importance: This technology facilitates vehicle sharing and fleet management by replacing physical keys with secure, configurable, and remotely manageable digital e-keys (Compl. ¶23).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶23).
  • The complaint does not provide the text of the asserted claims for the ’659 Patent.

U.S. Patent No. 9,365,188 - “Methods and Systems For Using Cloud Services To Assign E-Keys To Access Vehicles” (issued June 14, 2016)

  • Technology Synopsis: The patent describes methods for a cloud server to assign electronic keys to users to access and drive vehicles. This system moves access control from the vehicle itself to a centralized, remote server (Compl. ¶34-¶35).
  • Asserted Claims: At least claim 1 (Compl. ¶35).
  • Accused Features: The complaint accuses servers that implement, support, and/or direct 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” (issued October 27, 2015)

  • Technology Synopsis: The patent is directed to securely and automatically transferring user profile settings (e.g., seat position, radio presets) between different vehicles. A key technical feature is a server-side "compatibility check" that determines if a user's preferred settings are compatible with a target vehicle's available features before the profile is transferred (Compl. ¶47, ¶49, ¶55).
  • Asserted Claims: At least claim 10 (Compl. ¶76).
  • Accused Features: The complaint accuses servers associated with receiving, maintaining, storing, and/or communicating User Profile information for Toyota and Lexus vehicles (Compl. ¶76).

U.S. Patent No. 11,396,244 - “Methods For Transferring User Profiles Between Vehicles Using Cloud Services” (issued July 26, 2022)

  • Technology Synopsis: The patent describes transferring user profiles using cloud services, with a focus on security and access control. The invention includes a server-side verification of a user's right to access the profile itself (not just the vehicle) and the ability for an administrator to restrict certain settings for specific users, such as a teenage driver (Compl. ¶91, ¶94, ¶97). Figure 2 of the patent, reproduced in the complaint, illustrates a user hierarchy with an "Administrator" parent and a "Child" user with different roles and editable permissions (Compl. p. 34, Fig. 2).
  • Asserted Claims: At least claim 1 (Compl. ¶117).
  • Accused Features: The complaint accuses servers associated with managing User Profile information and settings for remote programming of Toyota and Lexus vehicles (Compl. ¶117).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Toyota and Lexus-branded vehicles equipped with "Remote Connect and/or Digital Key" functionalities, as well as the associated cloud-based servers that support these features ("Accused Server Instrumentalities") (Compl. ¶11, ¶35).

Functionality and Market Context

The accused functionalities allow a vehicle owner to use a smart device, such as a phone, as a digital key to access and operate the vehicle (Compl. ¶11, ¶74). The system also enables the creation of cloud-stored "User Profiles," which save a driver's personalized settings for features like climate control and media preferences. These profiles are described as being transferrable, allowing a driver to apply their settings to any compatible Toyota or Lexus vehicle (Compl. ¶75, ¶116). The complaint cites Defendant's marketing materials, which allegedly describe these features as "game-changing" (Compl. ¶74, ¶115).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided. The narrative infringement allegations are summarized below.

  • '026 Patent Infringement Allegations: The complaint alleges that Toyota's vehicles with Remote Connect and/or Digital Key directly infringe at least claim 1 of the ’026 Patent. The theory appears to be that the vehicle's systems (electronics, communication circuitry) are configured to receive an unlocking and/or starting request from a user's mobile device, where that request is enabled by a server-based authentication process that functions as the claimed "unique access code" and "electronic key" system (Compl. ¶11-¶12).
  • '659 Patent Infringement Allegations: The complaint alleges that the same accused instrumentalities directly infringe at least claim 1 of the ’659 Patent. The narrative infringement theory is parallel to that for the ’026 Patent, focusing on the cloud-based system for sharing electronic keys that control vehicle access and use (Compl. ¶23-¶24).

Identified Points of Contention

  • Scope Questions: The complaint's detailed discussion of the prosecution histories for the ’268 and ’244 patents suggests that the scope of terms added to overcome prior art will be central points of contention. Key questions may include:
    • Does Toyota’s system perform a "compatibility check" as recited in the ’268 Patent, or does it simply transfer settings without the specific pre-transfer verification step that Plaintiff alleges was critical to patentability? (Compl. ¶55).
    • Does Toyota's system "verify the user for accessing the profile" ('244 Patent) in a manner distinct from simply verifying a user for vehicle access, as Plaintiff argued was a key distinction over the prior art? (Compl. ¶107).
  • Technical Questions: A primary technical question will concern the actual implementation of Toyota's Digital Key security architecture. What evidence does the complaint provide that Toyota's system uses a server-generated "unique access code" for each access transaction, as required by the ’026 Patent, versus an alternative authentication method such as a persistent digital certificate or a token generated on the user's device? Figure 4 of the patent, reproduced in the complaint, depicts a detailed settings menu with "User editable" and "Admin or restricted" categories, raising the evidentiary question of whether the accused Toyota system implements this specific type of granular, role-based restriction on settings (Compl. p. 36, Fig. 4).

V. Key Claim Terms for Construction

The Term: "compatibility check" (’268 Patent)

  • Context and Importance: This term was allegedly added to the claims of the ’268 Patent during prosecution to overcome a prior art rejection (Compl. ¶55). Its construction will be critical to determining infringement, as the dispute may turn on whether Toyota's system performs a check that meets this specific limitation. Practitioners may focus on this term because its definition was central to the patent's allowance.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term itself could be argued to cover any process that prevents an incompatible setting (e.g., for a feature the car lacks) from being applied, even if it is a simple error-handling routine.
    • Evidence for a Narrower Interpretation: The complaint cites prosecution history where the applicant distinguished prior art by arguing for a specific check performed by the server before transferring the profile (Compl. ¶55, ¶60-¶61). Specification examples cited in the complaint, such as filtering third-party apps based on vehicle compatibility, may support a narrower construction requiring an active, pre-transfer screening process (Compl. ¶59).

The Term: "verify the user for accessing the profile" (’244 Patent)

  • Context and Importance: The complaint alleges this limitation was added and argued during prosecution to distinguish the invention from prior art that only verified a user for accessing the vehicle (Compl. ¶107). The case may hinge on whether Toyota's authentication is for the vehicle generally or for the cloud-stored profile specifically.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A defendant may argue that any login process that gives a user access to their cloud-based services, which includes the profile, meets this limitation.
    • Evidence for a Narrower Interpretation: The complaint highlights prosecution history where the applicant emphasized that this verification is for the profile itself, which contains settings, and is distinct from merely granting access to the car (Compl. ¶99, ¶107). Patent Figure 2, reproduced in the complaint, shows an administrator-child user hierarchy, which supports a construction requiring a distinct authentication step to determine a user's permissions related to profile data (Compl. p. 34, Fig. 2).

VI. Other Allegations

  • Indirect Infringement: For all five patents, the complaint alleges induced infringement based on Defendant's instructional materials, including websites, videos, and demonstrations, which allegedly instruct and encourage customers to use the accused Remote Connect and Digital Key features in an infringing manner (Compl. ¶14, ¶26, ¶38, ¶79, ¶120).
  • Willful Infringement: The complaint alleges willful infringement for all asserted patents based on Defendant’s knowledge since at least the filing of the complaint. For the ’188, ’268, and ’244 patents, the complaint alleges pre-suit knowledge based on Defendant having cited these patents to the USPTO during the prosecution of its own patent applications, strengthening the basis for the willfulness allegation (Compl. ¶39, ¶80, ¶121).

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

  • A core issue will be one of definitional scope: can the claim terms “compatibility check” (’268 Patent) and “verify the user for accessing the profile” (’244 Patent)—both added to overcome prior art during prosecution—be construed to read on the functionality of Toyota’s User Profile system? The outcome will likely depend on a detailed analysis of the prosecution history to determine the precise meaning and scope afforded to these claim-defining phrases.
  • A key evidentiary question will be one of technical implementation: does Toyota’s Digital Key architecture operate by using a server-generated “unique access code” for each transaction as required by the ’026 patent family, or does it employ a fundamentally different security and authentication method that falls outside the literal scope of the claims?