Kia Corp v. Emerging Automotive LLC

1. Case Identification

• Case #: IPR2024-00981
• Patent #: 9,365,188
• Filed: May 29, 2024
• Petitioner(s): Kia Corp., Toyota Motor Corp.
• Patent Owner(s): Emerging Automotive LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Method and System for Defining N-keys for Use with a Vehicle
• Brief Description: The ’188 patent discloses a server-based method for generating and managing electronic keys (e-keys). The system allows a primary user to request an e-key for a recipient, associate specific conditions of use with that e-key, transmit it electronically, and subsequently monitor vehicle usage to detect violations of the pre-set conditions.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 and 11-20 are obvious over Kleve

• Prior Art Relied Upon: Kleve (Application # 2014/0129053).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kleve, which describes a peer-to-peer vehicle rental system, discloses every limitation of the independent claims. Kleve teaches a server that receives a request from a vehicle owner (a "user") via a user account to generate a "virtual key" (an "e-key") for a temporary driver (a "recipient"). The request includes conditions of use, such as rental period, speed limits, and geographic restrictions, which are negotiated via the owner’s user profile. The server then generates the virtual key, assigns the conditions, transmits it to the recipient's mobile device, and sends data to the vehicle to enable its use. Kleve further discloses that the vehicle monitors use data (e.g., GPS location, speed) and transmits it back to the server, which can identify a violation of the conditions.
  • Motivation to Combine (for §103 grounds): Not applicable as this is a single-reference ground. Petitioner contended that Kleve alone anticipates or, alternatively, renders obvious the challenged claims.
  • Expectation of Success (for §103 grounds): Not applicable.

Ground 2: 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 # 2011/0112969), Harris (Application # 2011/0312273).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Zaid discloses a vehicle rental system where owners list vehicles via social media accounts, and a central server generates and transmits an encrypted reservation (the "e-key") to a renter's device. To the extent Zaid does not explicitly teach certain authentication or key-generation details, Harris supplies them. Harris teaches a server that distributes unique, code-based e-keys for vehicle access only after authenticating a user's credentials. The combination of Zaid's rental framework with Harris's authentication and code-based key system meets the limitations of receiving a request from a user account, generating a key with conditions (e.g., a time-limited "one ride" key), and transmitting it for vehicle use.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Harris’s robust authentication and code-based key generation with Zaid’s rental system to improve security and efficiency. Requiring user authentication (from Harris) ensures the key recipient is authorized, and using a simple code-based key is more efficient for the vehicle to process than decrypting an entire reservation file (from Zaid).
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as incorporating user authentication and code-based keys were well-known and standard practices for improving security in remote access systems.

Ground 3: Claims 1-9 and 11-20 are obvious over Kleve in view of Sekiyama

• Prior Art Relied Upon: Kleve (Application # 2014/0129053), Sekiyama (JP Publication # 2010126949A).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. If the Board were to find that Kleve does not explicitly teach that the server generates the e-key, Sekiyama remedies this. Sekiyama expressly discloses a "center server" that generates and outputs an electronic key for vehicle door locking/unlocking and engine start permission.
  • Motivation to Combine (for §103 grounds): A POSITA would combine these references to gain the known benefits of centralizing e-key generation, which enhances security and reliability. By having the server that manages the rental agreement also generate the key, it can confirm all necessary information (owner identity, recipient identity, rental terms) before issuing access, a clear improvement over a system where the key might be generated elsewhere.
  • Expectation of Success (for §103 grounds): Success would be reasonably expected because both references operate in the same field of electronic key systems, and Kleve already discloses the necessary server architecture to which Sekiyama's server-side key generation could be easily applied.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Kleve and/or Zaid/Harris with Mottla (Application # 2011/0060480) to teach graphical user interface icons and notifications for certain claims, and with Patenaude (Application # 2006/0136106) to teach learning user patterns for claim 17.

4. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: A central contention is that the ’188 patent is not entitled to a priority date earlier than October 25, 2013. Petitioner argued that the parent applications in the priority chain lack written description support for the claimed "electronic key" or "e-key" concepts. This new matter was allegedly introduced for the first time in the ’638 application filed on that date, making prior art published before then, such as Zaid and Harris, available against the challenged claims.

5. Arguments Regarding Discretionary Denial

• Fintiv Factors: Petitioner argued that discretionary denial under Fintiv is unwarranted. The co-pending district court litigation is in a very early stage, with fact discovery just beginning and no claim construction scheduled. The trial date is set for July 21, 2025, which is only about four months before the statutory deadline for a Final Written Decision (FWD), weighing against denial.
• §325(d) Factors: Petitioner argued the asserted prior art is not cumulative of art considered during prosecution. Although Zaid was submitted in a large Information Disclosure Statement (IDS), there is no evidence the examiner substantively considered it. The petition allegedly presents the art in new combinations and with new arguments not previously before the Office.

6. Relief Requested

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