PTAB

IPR2024-01167

Kia Corp v. Emerging Automotive LLC

Key Events

Petition

petition

Title: Vehicle Access and Monitoring Using Electronic Keys
Brief Description: The ’659 patent describes a vehicle sub-system for managing vehicle access using electronic keys ("eKeys"). The system allows a vehicle owner to generate and send eKeys to users' mobile devices, with associated privilege settings that can limit vehicle use and track actions taken.

Prior Art Relied Upon: Kleve (Application # 2014/0129053) and Hatton (Patent 9,002,536).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Kleve discloses the core limitations of the challenged claims, including a vehicle rental system with an on-board computer that processes instructions for using a "virtual key." Kleve’s system sends this key to a user's mobile device to unlock and start the vehicle, allows an owner to set privilege restrictions (e.g., speed, location), and tracks vehicle usage against those restrictions. Hatton was cited for its teaching of using encrypted data and secure wireless communication between a mobile device and a vehicle’s electronic key system.
- Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Hatton's encryption and secure communication teachings with Kleve's vehicle rental system to improve security. This would prevent unauthorized access and stop users from tampering with usage restrictions. The motivation was described as particularly strong since both Kleve and Hatton are Ford patents directed to analogous electronic key systems.
- Expectation of Success: Petitioner asserted that applying well-known encryption techniques to Kleve's system would have been a straightforward and routine modification with a high expectation of success.

Prior Art Relied Upon: Mikan (Application # 2008/0150683).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Mikan discloses a vehicle security system using electronic keys embedded in wireless devices (e.g., cell phones) that communicate with an on-board control unit. Mikan teaches that "vehicle operation policies" function as privilege settings to limit key functionality, such as restricting access to the trunk, setting maximum speeds, or defining geographic boundaries. The system monitors vehicle use for conformance with these policies, logs relevant data, and can send notifications if a violation occurs, allegedly meeting the limitations of the independent claims.
- Motivation to Combine (for obviousness): For elements not explicitly disclosed, Petitioner argued it would have been obvious to transmit Mikan's "vehicle operation policy" as additional coded data along with its secure identifier. The motivation was to prevent a secondary user from tampering with the use restrictions associated with their electronic key.
- Expectation of Success: A POSITA would have had a reasonable expectation of success because the policy could be encoded and transmitted using the same encryption and wireless communication techniques already implemented in Mikan's system.

Prior Art Relied Upon: Mikan (Application # 2008/0150683) and Xiao (Patent 8,737,913).
Core Argument for this Ground:
- Prior Art Mapping: This ground used Mikan as the primary reference for its electronic key system with customizable privilege policies. Petitioner combined this with Xiao, which discloses a wireless automobile key service where users must register and create accounts. These accounts store user profiles, operator authentication information, and specific permissions for vehicle use.
- Motivation to Combine: A POSITA would combine Xiao's user account structure with Mikan's electronic key system to improve accountability, organization, and security. Requiring user accounts would allow owners and system administrators to verify user identities before issuing an electronic key and to better track information about users, vehicles, and key usage.
- Expectation of Success: Adding user account functionality to a system like Mikan's was presented as a routine application of well-known software and user interface techniques that were conventional at the time.
Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Kleve and Hatton with Sekiyama (Japanese Application # 2010-126949) to add restrictions on door/trunk access (Claim 2); combining Mikan with Sekiyama for key sharing features (Claims 6-7); and combining Mikan, Xiao, and Sekiyama for restricted privilege settings for a shared user (Claim 19).

Petitioner argued that discretionary denial under Fintiv is not warranted. The parallel district court case is in its early stages, with a trial date of July 21, 2025, which is well after the statutory deadline for a Final Written Decision (FWD). Petitioner asserted it acted diligently and noted the petition challenges claim 19, which is not asserted in the litigation, creating non-overlapping issues.
Denial under 35 U.S.C. §325(d) was also argued to be inappropriate. Petitioner stated that none of the asserted references were considered by the examiner during prosecution. While Mikan was cited in a pending ex parte reexamination, it was used there as a secondary reference for fewer claims and on different grounds. The Kleve-based grounds do not overlap with the reexamination art at all.

Petitioner requests institution of an inter partes review and cancellation of claims 1-21 of Patent 11,738,659 as unpatentable.