DCT

2:24-cv-00802

AutoConnect Holdings LLC v. Toyota Motor Corp

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00802, E.D. Tex., 10/03/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant's U.S. subsidiaries maintain their principal places of business in Plano, Texas, within the district. Venue over the foreign parent, Toyota Motor Corporation, is alleged under the alien venue rule.
  • Core Dispute: Plaintiff alleges that Defendant’s vehicles and in-vehicle multimedia systems infringe eleven patents related to automotive technologies, including user recognition, user profile management, and device integration.
  • Technical Context: The technology at issue involves modern in-vehicle infotainment, connectivity, and personalization systems, which are increasingly central to the user experience and a key competitive differentiator in the automotive market.
  • Key Procedural History: The complaint details pre-suit communications beginning in December 2023, when Plaintiff allegedly sent Defendant notice of its patent portfolio along with infringement claim charts for most of the now-asserted patents. Plaintiff alleges that Defendant and its suppliers reviewed the materials but ultimately declined to engage in substantive licensing discussions, leading to an impasse and this lawsuit. This alleged history forms the basis for Plaintiff's claims of willful infringement.

Case Timeline

Date Event
2011-11-16 Earliest Priority Date for ’034, ’491, ’786, ’560, ’764 Patents
2013-04-15 Earliest Priority Date for ’697, ’186, ’296, ’153, ’931, ’243 Patents
2014-07-29 U.S. Patent No. 8,793,034 Issues
2015-04-28 U.S. Patent No. 9,020,491 Issues
2015-04-28 U.S. Patent No. 9,020,697 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
2016-03-22 U.S. Patent No. 9,290,153 Issues
2018-01-01 Alleged Launch of Accused 2019 Model Year Vehicles
2020-12-08 U.S. Patent No. 10,862,764 Issues
2021-11-02 U.S. Patent No. 11,163,931 Issues
2022-01-01 Alleged Launch of Accused 2023 Model Year Vehicles
2023-12-01 Plaintiff alleges it first contacted Defendant regarding infringement
2024-07-16 U.S. Patent No. 12,039,243 Issues
2024-10-03 Complaint Filing Date

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

U.S. Patent No. 8,793,034 - "Feature Recognition for Configuring a Vehicle Console and Associated Devices"

  • Patent Identification: U.S. Patent No. 8,793,034, entitled “Feature Recognition for Configuring a Vehicle Console and Associated Devices,” issued on July 29, 2014 (the "’034 Patent"). (Compl. ¶18).

The Invention Explained

  • Problem Addressed: The patent’s background section describes that vehicle manufacturers have historically focused on safety and efficiency, adding comfort features as an afterthought rather than building a vehicle around user comfort to create an integrated "vehicle ecosystem." (’034 Patent, col. 2:38-62).
  • The Patented Solution: The invention provides a method and system to automatically create a personalized in-vehicle environment. It uses sensors to detect and identify a person within the vehicle, determines if settings should be stored for that person, and then stores those settings, thereby building a user-specific profile to configure the vehicle's features. (’034 Patent, Abstract; col. 4:39-44). The process is illustrated in the flowchart of Figure 9.
  • Technical Importance: This technology represents a shift toward dynamic, user-aware vehicle interiors that automatically adapt to occupants, a key trend in modern automotive design aimed at enhancing the user experience. (Compl. ¶2).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 9, and 14. (Compl. ¶51).
  • Claim 1 (Method):
    • Automatically determining a person is within a vehicle;
    • Automatically identifying the person;
    • Determining if there is a setting to be stored for the person; and
    • Storing the setting.
  • Claim 9 (System):
    • One or more sensors; and
    • A vehicle control system with a processor and memory, where the processor is operable to perform the steps of claim 1.
  • Claim 14 (Non-transitory medium):
    • A non-transitory computer-readable medium storing instructions that, when executed, cause a processor to perform the steps of claim 1.

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

  • Patent Identification: U.S. Patent No. 9,020,491, entitled “Sharing Applications/Media Between Car and Phone (Hydroid),” issued on April 28, 2015 (the "’491 Patent"). (Compl. ¶19).

The Invention Explained

  • Problem Addressed: The complaint does not detail the problem described in the patent, but the infringement allegations targeting Apple CarPlay and Android Auto suggest the patent addresses the technical challenge of seamlessly integrating a user's mobile device with a vehicle's infotainment system. (Compl. ¶69).
  • The Patented Solution: The complaint alleges the invention relates to technology that enables sharing and control of applications and media between a phone and a vehicle. This suggests a system for establishing a communication link that allows the vehicle's head unit to display and manage content from a connected mobile device. (Compl. ¶¶19, 69).
  • Technical Importance: This technology is foundational to modern "phone projection" platforms, which have become a highly demanded, near-standard feature for new vehicles, allowing drivers to use familiar apps for navigation, music, and communication through the car's built-in display.

Key Claims at a Glance

  • The complaint asserts exemplary claims 11 and 16. (Compl. ¶70).
  • The complaint does not provide the language of the asserted independent claims.

U.S. Patent No. 9,020,697 - "Vehicle-Based Multimode Discovery"

  • Patent Identification: U.S. Patent No. 9,020,697, "Vehicle-Based Multimode Discovery," issued April 28, 2015. (Compl. ¶20).
  • Technology Synopsis: The patent relates to methods for discovering and interacting with devices or systems in and around a vehicle, enabling features based on device presence and location. The technology appears to support functions like digital keys that use a mobile device's proximity to authenticate and control vehicle access. (Compl. ¶¶88-89).
  • Asserted Claims: Claims 1, 8, and 15 are asserted. (Compl. ¶89).
  • Accused Features: The complaint alleges that Toyota's "Digital Key" feature, which allows a smartphone to function as a vehicle key, infringes the ’697 Patent. (Compl. ¶88).

U.S. Patent No. 9,116,786 - "On Board Vehicle Networking Module"

  • Patent Identification: U.S. Patent No. 9,116,786, "On Board Vehicle Networking Module," issued August 25, 2015. (Compl. ¶21).
  • Technology Synopsis: The patent appears to relate to an on-board networking module that facilitates communication and data sharing between a vehicle's internal systems and external devices, such as smartphones running applications like Apple CarPlay and Android Auto. (Compl. ¶107).
  • Asserted Claims: Claim 23 is asserted. (Compl. ¶108).
  • Accused Features: The complaint alleges that Toyota vehicles enabling Apple CarPlay and/or Android Auto, which rely on in-vehicle networking to function, infringe the ’786 Patent. (Compl. ¶107).

U.S. Patent No. 9,123,186 - "Remote Control of Associated Vehicle Devices"

  • Patent Identification: U.S. Patent No. 9,123,186, "Remote Control of Associated Vehicle Devices," issued September 1, 2015. (Compl. ¶22).
  • Technology Synopsis: The technology relates to remotely controlling vehicle functions, likely using a mobile application that communicates with the vehicle's systems. The allegations suggest this covers features like digital keys, where a mobile device can lock, unlock, or start a vehicle. (Compl. ¶126).
  • Asserted Claims: Claims 1, 8, and 15 are asserted. (Compl. ¶127).
  • Accused Features: The complaint accuses Toyota's "Digital Key" feature, which allows for remote vehicle control via a mobile app, of infringing the ’186 Patent. (Compl. ¶126).

U.S. Patent No. 9,140,560 - "In-Cloud Connection for Car Multimedia"

  • Patent Identification: U.S. Patent No. 9,140,560, "In-Cloud Connection for Car Multimedia," issued September 22, 2015. (Compl. ¶23).
  • Technology Synopsis: The patent appears to concern technology for connecting a vehicle's multimedia system to cloud-based services, enabling features that rely on an internet connection, such as those provided through Apple CarPlay and Android Auto. (Compl. ¶144).
  • Asserted Claims: Claims 11 and 16 are asserted. (Compl. ¶145).
  • Accused Features: Toyota vehicles that enable Apple CarPlay and/or Android Auto, which connect to cloud services for content and functionality, are accused of infringing the ’560 Patent. (Compl. ¶144).

U.S. Patent No. 9,147,296 - "Customization of Vehicle Controls and Settings Based on User Profile Data"

  • Patent Identification: U.S. Patent No. 9,147,296, "Customization of Vehicle Controls and Settings Based on User Profile Data," issued September 29, 2015. (Compl. ¶24).
  • Technology Synopsis: The patent relates to customizing vehicle settings based on stored user profile data. This allows a vehicle to automatically adjust features like seat position, climate, and infotainment preferences for a recognized user. (Compl. ¶163).
  • Asserted Claims: Claims 1, 7, 8, and 14 are asserted. (Compl. ¶164).
  • Accused Features: The complaint accuses Toyota's "User Profiles" feature, which enables vehicle personalization, of infringing the ’296 Patent. (Compl. ¶163).

U.S. Patent No. 9,290,153 - "Vehicle-Based Multimode Discovery"

  • Patent Identification: U.S. Patent No. 9,290,153, "Vehicle-Based Multimode Discovery," issued March 22, 2016. (Compl. ¶25).
  • Technology Synopsis: This patent, like the ’697 patent, appears to relate to the discovery of devices in and around a vehicle for enabling integrated features. The allegations suggest it covers the underlying technology for phone projection systems that discover and connect to a user's smartphone. (Compl. ¶182).
  • Asserted Claims: Claims 1 and 12 are asserted. (Compl. ¶183).
  • Accused Features: Toyota vehicles equipped with Apple CarPlay and/or Android Auto are accused of infringing the ’153 Patent. (Compl. ¶182).

U.S. Patent No. 10,862,764 - "Universal Console Chassis for the Car"

  • Patent Identification: U.S. Patent No. 10,862,764, "Universal Console Chassis for the Car," issued December 8, 2020. (Compl. ¶26).
  • Technology Synopsis: The patent appears to describe a universal hardware architecture or "chassis" for a vehicle's center console that allows for modular and configurable integration of different electronic components, potentially including those required for phone projection systems like Apple CarPlay and Android Auto. (Compl. ¶201; ’764 Patent, Abstract).
  • Asserted Claims: Claim 1 is asserted. (Compl. ¶202).
  • Accused Features: Toyota vehicles that enable Apple CarPlay and/or Android Auto are accused of infringing the ’764 Patent, suggesting their console hardware embodies the claimed universal chassis design. (Compl. ¶201).

U.S. Patent No. 11,163,931 - "Access and Portability of User Profiles Stored as Templates"

  • Patent Identification: U.S. Patent No. 11,163,931, "Access and Portability of User Profiles Stored as Templates," issued November 2, 2021. (Compl. ¶27).
  • Technology Synopsis: The patent relates to systems for accessing and managing portable user profiles that can govern vehicle functions. The technology allows a user's preferences to be stored as a template and applied to different vehicles or contexts, a concept central to features like digital keys. (’931 Patent, Abstract; Compl. ¶220).
  • Asserted Claims: Claim 1 is asserted. (Compl. ¶221).
  • Accused Features: The complaint accuses Toyota's "Digital Key" feature of infringing the ’931 Patent. (Compl. ¶220).

U.S. Patent No. 12,039,243 - "Access and Portability of User Profiles Stored as Templates"

  • Patent Identification: U.S. Patent No. 12,039,243, "Access and Portability of User Profiles Stored as Templates," issued July 16, 2024. (Compl. ¶28).
  • Technology Synopsis: This patent is part of the same family as the ’931 Patent and likewise relates to accessing and using portable user profiles stored as templates. This technology underpins systems that allow user preferences to be recognized and applied, such as through a User Profile feature linked to a digital key or other identifier. (’243 Patent, Abstract; Compl. ¶239).
  • Asserted Claims: Claims 1 and 11 are asserted. (Compl. ¶240).
  • Accused Features: The complaint alleges that Toyota's "User Profiles" feature infringes the ’243 Patent. (Compl. ¶239).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Toyota and Lexus vehicles, in-vehicle multimedia systems, and associated hardware and software components that enable certain features. (Compl. ¶¶50, 69, 88, 107, 126, 144, 163, 182, 201, 220, 239). The specific features accused of infringement are:
    • Face Identification (in models from 2023-present) (Compl. ¶50).
    • Apple CarPlay and/or Android Auto (in models from 2019-present) (Compl. ¶69).
    • Toyota's Digital Key feature (in models from 2022-present) (Compl. ¶88).
    • User Profiles feature (in models from 2022-present) (Compl. ¶163).

Functionality and Market Context

  • The accused functionalities represent key user-facing technologies in modern vehicles. The "Face Identification" and "User Profiles" features allow a vehicle to recognize a driver and automatically adjust settings such as seat position, climate control, and infotainment preferences. (Compl. ¶¶50, 163). "Apple CarPlay" and "Android Auto" are phone projection systems that allow a user's smartphone interface to be displayed and controlled through the vehicle's main screen, providing access to popular navigation and media apps. (Compl. ¶69). The "Digital Key" feature allows a smartphone to replace a traditional key fob for locking, unlocking, and starting the vehicle. (Compl. ¶88). These features are heavily marketed and have become significant factors in consumer purchasing decisions.

IV. Analysis of Infringement Allegations

The complaint states that representative claim charts are attached as exhibits (e.g., Exhibit A3, B3); however, these exhibits were not provided. The infringement theory is therefore summarized from the body of the complaint.

No probative visual evidence provided in complaint.

’034 Patent Infringement Allegations

The complaint alleges that Toyota's vehicles equipped with face identification directly infringe claims 1, 9, and 14. (Compl. ¶¶50-51). The narrative theory suggests that the accused system performs the claimed method by using in-vehicle cameras and software to "enable face identification" which constitutes "automatically identifying the person." (Compl. ¶50). It is further alleged that this identification leads to the configuration of the vehicle based on that user's preferences, which is purported to meet the claim elements of determining that a setting should be stored and "storing the setting." (Compl. ¶51).

’491 Patent Infringement Allegations

The complaint alleges that Toyota vehicles equipped with Apple CarPlay and/or Android Auto directly infringe claims 11 and 16. (Compl. ¶¶69-70). The infringement theory is based on these systems creating a link between a user's phone and the car's multimedia system to enable the sharing and control of applications and media, which purportedly practices the patented invention. (Compl. ¶69).

Identified Points of Contention:

  • Scope Questions: For the ’034 Patent, a central dispute may arise over the meaning of "storing the setting." The infringement analysis may turn on whether the accused Face Identification feature performs an affirmative act of storing or updating a setting after identifying the user, as the claim requires, or whether it merely loads a pre-existing profile without performing a "storing" step as claimed.
  • Technical Questions: A key evidentiary question for the ’034 Patent will be what technical operations the accused Toyota systems actually perform upon identifying a face. For the numerous patents asserted against Apple CarPlay and Android Auto (e.g., ’491, ’786, ’560, ’153, ’764), a recurring question will be whether the specific technical implementation of those third-party platforms in Toyota vehicles meets the precise limitations of each asserted patent's claims.

V. Key Claim Terms for Construction

The Term: "storing the setting" (from ’034 Patent, Claim 1)

  • Context and Importance: The infringement case for the ’034 Patent may depend on the construction of this term. Practitioners may focus on this term because the accused "Face Identification" feature is described as enabling a user profile, which typically involves loading or retrieving settings. The plaintiff’s case requires that this operation also meets the claim limitation of "storing" a setting.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent’s abstract describes a method to "automatically determine a person is within a vehicle; automatically identify the person; determine if there is a setting to be stored for the person; and store the setting." (’034 Patent, Abstract). An argument could be made that in the context of creating a persistent "vehicle ecosystem," any act that confirms or updates a user's profile which is then saved for future use could be considered "storing."
    • Evidence for a Narrower Interpretation: Claim 1 recites "storing the setting" as a distinct step that occurs after "identifying the person." This sequential language may support a narrower construction requiring a discrete write/save operation that is separate from and subsequent to the act of identification, rather than simply loading a profile that was stored at a prior time. The patent's flowchart in Figure 9 depicts "Store the setting" as a distinct step (928) that follows identification (912) and characterization (920).

The Term: "automatically identifying the person" (from ’034 Patent, Claim 1)

  • Context and Importance: The complaint equates this term with "face identification." (Compl. ¶50). The dispute will likely center on whether facial recognition alone satisfies this limitation, or if "identifying the person" requires a more comprehensive process of linking that biometric data to a specific, named user profile with associated settings.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a process where the system first determines a person is present and then identifies them, which aligns with the general operation of a biometric identification system. (’034 Patent, col. 4:39-44). This may support a construction where any reliable method of distinguishing one person from another, such as facial recognition, constitutes "identifying."
    • Evidence for a Narrower Interpretation: The claim limitation is followed by the step of "determining if there is a setting to be stored for the person." This linkage suggests that "identifying" may require more than just recognizing a face; it may need to be construed as the complete act of associating that biometric data with a user profile for whom settings can be stored.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges induced infringement across all asserted patents, stating that Toyota provides customers with instructions, manuals, tutorials, and promotional materials that encourage and instruct them on how to use the accused features in an infringing manner. (Compl. ¶¶53-54, 72-73). The complaint also alleges contributory infringement, arguing that Toyota provides key software components (e.g., for Face ID, Digital Key) that are not staple articles of commerce and constitute a material part of the inventions. (Compl. ¶¶57, 76).

Willful Infringement

  • The complaint alleges willful infringement based on both pre-suit and post-suit knowledge. Pre-suit knowledge is alleged based on Toyota having encountered the asserted patent families "at least 60 times" during the prosecution of its own patents since 2016. (Compl. ¶55). Post-suit knowledge is established by the detailed notice letter and claim charts Plaintiff sent to Toyota in December 2023. (Compl. ¶56).

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

  • A core issue will be one of functional scope: Does the operation of Toyota’s accused features, such as a "Face Identification" system that primarily loads a pre-existing user profile, map to the specific claim language of the asserted patents, which in the case of the ’034 patent requires a step of "storing the setting"? The resolution may depend on whether routine profile-loading operations can be construed as meeting claim limitations that recite affirmative data-writing steps.
  • A second central question will be one of patent thicket and redundancy: With eleven patents asserted against a handful of common automotive technologies (e.g., User Profiles, Digital Key, CarPlay/Android Auto), how will the parties and the court delineate the distinct contribution and alleged infringement of each patent? This raises the possibility of challenges based on claim differentiation and the difficulty in apportioning damages across a large and technologically overlapping patent portfolio.
  • A key evidentiary question will be the strength of the willfulness claim: Can Plaintiff establish that Toyota’s alleged encounters with the patent families during its own patent prosecution constituted the requisite knowledge for pre-suit willfulness, or will the willfulness inquiry be effectively limited to Toyota's conduct after it received explicit notice in December 2023?