Unified Patents LLC v. Engle Grange LLC

1. Case Identification

• Case #: IPR2020-01334
• Patent #: 8,548,645
• Filed: August 25, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Engle Grange, LLC
• Challenged Claims: 1

2. Patent Overview

• Title: Two-Step Keyless Start System
• Brief Description: The ’645 patent describes a "two step keyless start system" for a vehicle. The system authenticates a coded key fob a first time to permit engine start and a second time upon depression of the brake pedal before allowing the transmission to be shifted into a drive gear, thereby preventing theft of a running vehicle.

3. Grounds for Unpatentability

Ground 1: Anticipation by Cha - Claim 1 is anticipated by Cha under 35 U.S.C. §102.

• Prior Art Relied Upon: Cha (Korean Patent KR10-0901292).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cha discloses every element of claim 1. Cha describes a "shift lock control system" that performs a first fob key authentication to enable engine start. Petitioner asserted that Cha’s process flowcharts demonstrate a second, distinct authentication check that occurs after the engine is running, specifically when the driver depresses the brake pedal to shift the transmission lever into gear. The system decides whether to operate a shift lock solenoid based on the outcome of this second authentication, only releasing the lock if the fob is still present and authenticated. This directly maps to the claimed two-step authentication process designed to prevent a running car from being driven away without a key fob.

Ground 2: Obviousness over McCullough and DeBono - Claim 1 is obvious over McCullough in view of DeBono under 35 U.S.C. §103.

• Prior Art Relied Upon: McCullough (Application # 2010/0255953) and DeBono (Patent 6,927,671).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that McCullough discloses a standard keyless start system that authenticates a key fob's presence in an "authorization zone" to start the engine, satisfying the first authentication step. However, McCullough’s system does not re-authenticate before shifting gears, leaving a running vehicle vulnerable. DeBono was argued to remedy this deficiency by teaching an anti-theft system that performs an authentication check every time a driver attempts to shift into gear, even after the engine has started. DeBono explicitly discloses that this check is triggered by a brake sensor and deactivates a shift lock only upon successful authentication.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine McCullough and DeBono to improve the anti-theft capabilities of McCullough’s system. DeBono’s teaching of a second authentication check when shifting into gear directly addresses the security gap in McCullough’s system where an unauthorized user could drive away a running vehicle. Petitioner also argued that DeBono’s biometric authentication was known to be interchangeable with McCullough’s key fob authentication for vehicle security systems.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved implementing a known security technique (a second authentication check) into a known system to achieve a predictable result: enhanced vehicle security. The modification required would be minimal.

Ground 3: Obviousness over Chung and Suzuki - Claim 1 is obvious over Chung in view of Suzuki under §103.

• Prior Art Relied Upon: Chung (Application # 2009/0151412) and Suzuki (Application # 2003/0137195).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Chung discloses a conventional smart key system that performs key fob authentication to start a vehicle, fulfilling the requirements of the claim preamble and the first authentication step. Suzuki was argued to address the specific problem of vehicle theft after an engine has been left running. Suzuki explicitly teaches locking the transmission's select lever and preventing shifting unless a key is present and authenticated, even while the engine is running.
  • Motivation to Combine: A POSITA would have been motivated to incorporate Suzuki’s anti-theft logic into Chung’s more modern key fob-based system to enhance its security. While Suzuki describes a physical key, a POSITA would have found it obvious to apply its security principle—requiring key presence authentication before allowing a gear shift in a running vehicle—to the key fob system of Chung. This combination would predictably result in an improved system that authenticates a fob not only at engine start but also again before allowing the vehicle to be driven.
  • Expectation of Success: The combination represented the application of a known anti-theft technique (locking the shifter without key presence) to an existing system (Chung's keyless entry) to solve a known problem (theft of a running car). This would have been a straightforward modification with a high expectation of success.

• Additional Grounds: Petitioner asserted that claim 1 is also obvious over Cha in view of Chung, arguing Chung provides additional detail on conventional smart key and shift lock systems known to a POSITA.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be inappropriate. Although the examiner considered Chung during prosecution, the Petition presented Chung in new combinations with Suzuki and other references, raising arguments substantially different from those previously considered.
• Petitioner also noted that the related district court litigation was in its very early stages, implying that a discretionary denial under Fintiv would be improper as it would not conserve judicial or party resources.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claim 1 of the ’645 patent as unpatentable.