PTAB

IPR2024-00981

Kia Corporation v. Emerging Automotive LLC

1. Case Identification

2. Patent Overview

  • Title: Server-Based Generation and Management of Electronic Vehicle Keys
  • Brief Description: The ’188 patent describes a server-centric method for generating and managing temporary electronic keys (e-keys) for vehicles. The system receives a request from a user account to create an e-key for a recipient, assigns conditions of use to the e-key, transmits it electronically, and monitors vehicle usage for violations of the set conditions.

3. Grounds for Unpatentability

Ground 1: Obviousness over Kleve - Claims 1-9 and 11-20 are obvious under 35 U.S.C. §103 over Kleve.

  • Prior Art Relied Upon: Kleve (Application # 2014/0129053).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Kleve, which discloses a system for vehicle rentals between owners and temporary users, teaches all limitations of the claims. Kleve’s system uses a server to receive a request from a Vehicle Owner's user profile to generate a time-limited "virtual key" (the claimed e-key) for a Temporary User's "nomadic device." The petition asserted that Kleve discloses setting conditions of use (e.g., rental period, speed, geographic location), transmitting the key, monitoring vehicle data (e.g., GPS, speed) to identify violations, and notifying the owner of such violations.
    • Motivation to Combine (for single reference): The petition asserted that to the extent Kleve does not explicitly disclose every detail, any modifications would have been obvious. For example, it would have been obvious to have the key-generation request made via the owner's user account to leverage existing vehicle and rental agreement data, thereby increasing security, reliability, and user satisfaction.
    • Expectation of Success: A person of ordinary skill in the art (POSITA) would have had a reasonable expectation of success in making any such modifications, as the underlying functions represented well-known, conventional methods for building server-based reservation and access control systems.

Ground 2: Obviousness over Kleve and Sekiyama - Claims 1-9 and 11-20 are obvious over Kleve in view of Sekiyama.

  • Prior Art Relied Upon: Kleve (Application # 2014/0129053) and Sekiyama (JP2010126949A).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in case Kleve is found not to teach server-side e-key generation. Sekiyama was cited for its explicit teaching of a "center server" that generates an e-key to perform "door lock locking/unlocking" and grant "engine start permission." Sekiyama also discloses a server-based "vehicle status monitoring unit" that analyzes data from the vehicle.
    • Motivation to Combine: A POSITA would combine Kleve's rental framework with Sekiyama's explicit server-side key generation to achieve the well-known benefits of centralized e-key management, including enhanced security and reliability. The combination was asserted to be natural as both references originate from major automotive companies (Ford and Toyota, respectively) and address the same technical problem.
    • Expectation of Success: A POSITA would have expected success in this combination because Kleve already provides the basic framework for transmitting a key to a user, and modifying this system to have the server generate the key, as taught by Sekiyama, would have been a predictable and straightforward integration.

Ground 4: Obviousness over Zaid and Harris - Claims 1, 3, 5-7, 9, 11-16, and 18-20 are obvious over Zaid in view of Harris.

  • Prior Art Relied Upon: Zaid (Application # 2011/0112969A1) and Harris (Application # 2011/0312273A1).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this combination as a distinct alternative for invalidity. Zaid was argued to teach a vehicle sharing system where a central server books a reservation and transmits it as an encrypted message (the e-key) to a user's mobile device. Harris was introduced to supplement Zaid by teaching a server that generates a unique, code-based key (e.g., "a 2048 byte number") after authenticating a user, which is then used to access and start the vehicle.
    • Motivation to Combine: A POSITA would combine Zaid's rental system with Harris's authentication and code-based key teachings to improve both security and efficiency. Requiring user authentication (from Harris) before issuing a key ensures the recipient is authorized, and using a simple code for vehicle access is more efficient and faster than decrypting an entire reservation file (from Zaid).
    • Expectation of Success: The combination was a predictable implementation of known technologies. Providing user authentication and using key codes were standard practices in secure access control systems, and a POSITA would have been able to implement them with a reasonable expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Kleve or Zaid/Harris with Mottla (Application # 2011/0060480A1) to teach GUI features like an "unlock icon," and with Patenaude (Application # 2006/0136106) to teach learning user entertainment preferences. These arguments relied on motivations to add well-known, desirable functionality.

4. Key Claim Construction Positions

  • Priority Date and "Electronic Key": Petitioner dedicated a substantial portion of its argument to establishing that the ’188 patent is not entitled to a priority date earlier than October 25, 2013, the filing date of the ’638 application. The petition asserted that the critical claim term "electronic key" (or "e-key") lacks written description support in all earlier parent applications. It was argued that these prior applications concerned different technologies, such as EV charging or user profile transfers, and that the ’638 application was the first to introduce the figures, descriptions, and concepts of generating and using e-keys for vehicle access. This position is critical to the petition, as it establishes that Kleve, Zaid, and Harris qualify as prior art.

5. Arguments Regarding Discretionary Denial

  • Fintiv Factors: Petitioner argued against discretionary denial under §314(a), stating the IPR was filed less than eight months after the complaint in the parallel district court litigation. It was emphasized that discovery in that case was in its earliest stages, no depositions or claim construction had occurred, and the scheduled trial date is only four months before the statutory deadline for a Final Written Decision (FWD). Petitioner also noted that this IPR challenges seven claims not asserted in the parallel litigation, weighing against denial.
  • §325(d) Factors: Petitioner argued that denial under §325(d) would be improper because the primary references asserted were not considered during prosecution. Although Zaid was submitted in an Information Disclosure Statement (IDS) that contained 364 other references, Petitioner argued there is no evidence the Examiner substantively reviewed it. The petition asserted it presents new, non-cumulative arguments and mappings that were not before the Examiner.

6. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-20 of Patent 9,365,188 as unpatentable.