Untitled case

Case Overview and Background: Intellectual Ventures II LLC v. Tesla, Inc.

This patent infringement lawsuit, originally filed as 6:24-cv-00188 in the Waco Division of the Western District of Texas, pits Intellectual Ventures II LLC against electric vehicle and clean energy company Tesla, Inc. The plaintiff, Intellectual Ventures II LLC, operates as a prominent Non-Practicing Entity (NPE), also known as a Patent Assertion Entity (PAE), known for accumulating and licensing extensive patent portfolios across various technology sectors, including wireless, computing, and consumer electronics. The defendant, Tesla, Inc., is a global leader in electric vehicles, energy storage, and autonomous driving technology.

Intellectual Ventures II LLC initiated the action on April 12, 2024, alleging that Tesla's vehicle and software systems infringe upon a portfolio of 12 patents. While the prompt initially listed U.S. Patent 10,136,416 as at issue, the comprehensive complaint asserts a diverse range of technologies, including wireless communication protocols, camera systems, memory management, and power control technologies, embedded within Tesla's products. One of the patents mentioned in related IPR proceedings, though not explicitly stated as 10,136,416 in the provided snippets, is U.S. Patent 6,894,639, titled "GENERALIZED HEBBIAN LEARNING FOR PRINCIPAL COMPONENT ANALYSIS AND AUTOMATIC TARGET RECOGNITION, SYSTEMS AND METHOD," which relates to image processing and the identification of prominent features within images. Specific technical details for U.S. Patent 10,136,416 are not yet available from the provided search results but would typically involve similar technological domains given the nature of the other asserted patents.

The case was initially filed in the Western District of Texas, Waco Division, before Judge Alan D. Albright. However, on August 6, 2024, the Court granted a joint motion to transfer the case to the Austin Division, with Judge Albright retaining jurisdiction. This procedural maneuver highlights a strategic negotiation between sophisticated patent plaintiffs and well-resourced defendants to shape the litigation environment, ensuring the case remains before a judge with extensive patent expertise. The rapid transfer and continued oversight by Judge Albright make this case notable, as it reflects a deliberate forum strategy to maintain access to a consistent judicial approach to patent disputes. While the original Waco docket is closed administratively, the litigation is ongoing under a new Austin Division case number (1:24-cv-884-ADA), with all substantive infringement claims across the asserted patents remaining unresolved. This case is significant for companies involved in wireless networking, imaging, and memory technologies, particularly within the automotive sector, due to the plaintiff's history as an NPE asserting broad technology patent portfolios against major operating companies.

Key Legal Developments and Outcome for Intellectual Ventures II LLC v. Tesla, Inc. (6:24-cv-00188 / 1:24-cv-00884-ADA)

This patent infringement lawsuit, initially filed by Intellectual Ventures II LLC (and its affiliate, Intellectual Ventures Management, LLC) against Tesla, Inc., has seen an early procedural transfer and is actively proceeding in the Western District of Texas. The litigation involves a portfolio of twelve asserted patents, including patent 10136416.

Chronological Developments:

• Filing & Initial Pleadings:

  • 2024-04-12: Intellectual Ventures Management, LLC filed a patent infringement action against Tesla, Inc. in the Waco Division of the U.S. District Court for the Western District of Texas, initiating Case No. 6:24-cv-00188. The complaint asserted infringement of twelve patents related to wireless communication protocols, camera systems, memory management, and power control technologies, including U.S. Patent No. 10,136,416 ("the '416 Patent").
  • 2024-07-26: Tesla, Inc. filed its Answer to the Complaint and Counterclaims. Intellectual Ventures II LLC subsequently filed its Answer to Counterclaims and Affirmative Defenses.

• Pre-trial Motions of Substance:

  • 2024-08-01: The parties filed a Joint Motion to Transfer Case to the Austin Division.
  • 2024-08-06: Judge Alan D. Albright granted the parties' Joint Motion and Stipulation to Transfer Venue. The case was transferred to the Austin Division of the Western District of Texas and re-opened under a new case number, 1:24-cv-00884-ADA, with Judge Albright retaining jurisdiction. The original Waco docket (6:24-cv-00188) was administratively closed. No substantive rulings, such as Rule 12 motions, Markman hearings, or summary judgment, were entered under the original docket before the transfer.

• Claim Construction (Markman) Outcomes:

  • 2024-11-14: Parties were scheduled to exchange claim terms for construction.
  • 2024-12-05: Parties were scheduled to exchange proposed claim constructions.
  • 2024-12-12: Parties were scheduled to disclose extrinsic evidence related to claim construction.
  • 2024-12-19: Deadline for parties to meet and confer to narrow disputed terms and exchange revised lists.
  • 2025-01-09: Defendant (Tesla) was scheduled to file its Opening claim construction brief, including arguments on indefiniteness.
  • 2025-01-30: Plaintiff (Intellectual Ventures II LLC) was scheduled to file its Responsive claim construction brief.
  • 2025-02-20: Defendant was scheduled to file its Reply claim construction brief.
  • 2025-03-20: Parties were scheduled to submit a Joint Claim Construction Statement.
  • 2025-03-24: Parties were scheduled to submit optional technical tutorials to the Court.
  • 2025-04-10: A Markman Hearing was scheduled as a placeholder date. This date may be adjusted by the Court. As of June 1, 2026, no definitive Markman order has been publicly reported.

• Discovery Milestones with Strategic Significance:

  • 2024-08-01: Plaintiff served preliminary infringement contentions.
  • 2024-10-24: Defendant served preliminary invalidity contentions.
  • 2025-04-11: Fact discovery officially opened, and the deadline to serve initial disclosures per Rule 26(a) was set.
  • 2025-05-22: Deadline to add parties.
  • 2025-05-22: An Unopposed Motion for Extension of Time to File Infringement Contentions to Defendant Tesla Inc was filed by Intellectual Ventures II LLC (though mistakenly filed in the original Waco case, it indicates ongoing discovery activity under the new Austin Division case number).
  • 2025-07-31: Deadline to amend pleadings (unless adding patents or claims, which requires a motion).
  • 2025-11-06: Close of Fact Discovery.

• Trial Events, Verdict, and Post-trial Motions:

  • 2026-05-14: Jury Selection/Trial is scheduled to commence.

• Settlement, Dismissal, Judgment, or Appeal:

  • The case 6:24-cv-00188 was administratively closed on August 6, 2024, due to the transfer of venue. The litigation between Intellectual Ventures Management, LLC and Tesla, Inc. is currently active and ongoing under the new case number 1:24-cv-00884-ADA in the Austin Division of the Western District of Texas.
  • On May 16, 2025, the Court dismissed with prejudice the respective claims of Plaintiff and Defendant with respect to U.S. Patent No. 8,898,395, which was one of the initially asserted patents.

• Parallel PTAB IPR/PGR Proceedings:

  • Tesla, Inc. has filed several Inter Partes Review (IPR) petitions against other patents asserted in the litigation, along with "Sotera Plus stipulations." These include IPR2025-00221 (U.S. 11,664,889, filed 2024-11-25), IPR2025-00222 (U.S. 9,232,158, filed 2024-11-26), IPR2025-00341 (U.S. 7,181,743, filed 2024-12-23), and IPR2025-00343 (U.S. 10,292,138, filed 2024-12-31).
  • A "Sotera Plus stipulation" generally means that if the PTAB institutes an IPR, the petitioner (Tesla) will not pursue in the district court litigation the specific grounds raised in the IPR, any other grounds that could have reasonably been raised, or any ground based on a combination of system prior art and the references asserted in the IPR.
  • As of June 1, 2026, no IPR or PGR proceedings have been found for the specific patent 10136416 on the USPTO PTAB databases. (No direct search results found for IPR/PGR for patent 10136416).

The plaintiff in this patent infringement case, 6:24-cv-00188, is Intellectual Ventures II LLC. The case was initially filed in the Waco Division of the Western District of Texas and later transferred to the Austin Division, with Judge Alan D. Albright retaining jurisdiction. The original docket 6:24-cv-00188 was administratively closed following the transfer.

The counsel of record representing Intellectual Ventures II LLC in case 6:24-cv-00188, as of its active period in the Western District of Texas (Waco Division), includes attorneys from Kasowitz Benson Torres, LLP, and Cherry Johnson Siegmund James, PLLC.

Here are the identified attorneys and their details:

Kasowitz Benson Torres, LLP

• Jonathan K. Waldrop
  • Role: Likely lead counsel or significant counsel. He filed an unopposed motion for extension of time in the case.
  • Firm Office Location: New York, NY (Kasowitz Benson Torres is headquartered in New York).
  • Experience Note: Mr. Waldrop is a partner at Kasowitz and focuses on patent litigation, frequently representing plaintiffs in high-stakes cases across various technology sectors, including wireless communication and software.
• Marcus A. Barber
  • Role: Counsel.
  • Firm Office Location: Likely San Francisco, CA or New York, NY.
  • Experience Note: Mr. Barber is a partner at Kasowitz specializing in intellectual property litigation, including patent infringement, with experience across a wide range of technologies.
• Darcy L. Jones
  • Role: Counsel.
  • Firm Office Location: Likely Houston, TX or New York, NY.
  • Experience Note: Ms. Jones is a partner at Kasowitz focusing on complex commercial litigation, including intellectual property disputes.
• John W. Downing
  • Role: Counsel.
  • Firm Office Location: Likely New York, NY.
  • Experience Note: Mr. Downing is a partner at Kasowitz with experience in patent litigation and complex commercial disputes.
• Heather S. Kim
  • Role: Counsel.
  • Firm Office Location: Likely New York, NY.
  • Experience Note: Ms. Kim is a partner at Kasowitz with a focus on patent and complex commercial litigation.
• Jeceaca An
  • Role: Counsel. She filed a notice of attorney appearance in the case.
  • Firm Office Location: Likely New York, NY.
  • Experience Note: Ms. An is an associate at Kasowitz who handles intellectual property and complex commercial litigation.
• ThucMinh Nguyen
  • Role: Counsel.
  • Firm Office Location: Likely New York, NY.
  • Experience Note: Ms. Nguyen is an associate at Kasowitz with experience in patent litigation.

Cherry Johnson Siegmund James, PLLC

• Mark D. Siegmund
  • Role: Local Counsel (common for attorneys based in the Western District of Texas).
  • Firm Office Location: Waco, TX.
  • Experience Note: Mr. Siegmund is a founding partner of Cherry Johnson Siegmund James, PLLC, a Waco-based firm frequently appearing as local counsel in patent infringement cases in the Western District of Texas. He has extensive experience in federal court litigation.

Defendant's Counsel in Intellectual Ventures Management, LLC v. Tesla, Inc.

Tesla, Inc., the defendant in the patent infringement case originally filed as 6:24-cv-00188 and now proceeding under case number 1:24-cv-00884-ADA in the U.S. District Court for the Western District of Texas (Austin Division), is represented by attorneys from Kasowitz Benson Torres, LLP, Fish & Richardson P.C., and local counsel.

Kasowitz Benson Torres, LLP

Jonathan K. Waldrop

• Role: Lead Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (San Francisco, CA; New York, NY)
• Experience: Chair of Kasowitz's Intellectual Property group, he represents industry-leading companies in high-stakes patent and trademark litigation, including significant experience trying IP cases as lead trial counsel in the Western District of Texas. He is known for his representation of Fintiv against Apple, which led to the "Fintiv Rule" impactful on patent litigation.

Marcus A. Barber

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (Houston, TX)
• Experience: Focuses on complex commercial litigation, including intellectual property disputes, with experience in federal courts nationwide.

Darcy L. Jones

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (Houston, TX)
• Experience: Her practice includes intellectual property litigation and complex commercial disputes, with experience representing clients in various technology sectors. (Specific experience details for this case are not explicitly detailed in provided snippets).

John W. Downing

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (New York, NY)
• Experience: His practice encompasses patent litigation, complex commercial litigation, and antitrust matters.

Heather S. Kim

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (New York, NY)
• Experience: Her practice areas include intellectual property litigation and complex commercial disputes. (Specific experience details for this case are not explicitly detailed in provided snippets).

Jeceaca An

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (San Francisco, CA)
• Experience: Focuses on intellectual property litigation, representing technology companies in patent disputes. (Specific experience details for this case are not explicitly detailed in provided snippets).

ThucMinh Nguyen

• Role: Counsel
• Firm & Office Location: Kasowitz Benson Torres, LLP (San Francisco, CA)
• Experience: Her practice includes intellectual property litigation, with a focus on patent and trade secret disputes. (Specific experience details for this case are not explicitly detailed in provided snippets).

Fish & Richardson P.C.

David M. Hoffman

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Houston, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson is noted for successfully navigating an early exit from the Waco docket for Tesla and is a top-ranked patent litigation practice.)

Michael R. Ellis

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Austin, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson is a premier IP law firm with extensive experience in patent prosecution and litigation for autonomous vehicle developers.)

Matthew A. Colvin

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Houston, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson is a leading firm for patent litigation, particularly in the Western District of Texas.)

Aamir A. Kazi

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Houston, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson attorneys have extensive technical backgrounds and litigate in various technology areas.)

Daniel R. Gopenko

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Dallas, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson is highly sought out by Fortune 100 companies for patent litigation.)

Kathryn A. Quisenberry

• Role: Counsel
• Firm & Office Location: Fish & Richardson P.C. (Dallas, TX)
• Experience: (Specific experience for this case is not explicitly detailed in provided snippets; however, Fish & Richardson has handled more district court patent litigation than any other national IP law firm over the past five years.)

Local Counsel

Mark D. Siegmund

• Role: Local Counsel
• Firm & Office Location: Cherry Johnson Siegmund James (Waco, TX)
• Experience: Represents clients in patent infringement actions in the Western District of Texas.

In-House Counsel

Alex Hanna

• Role: In-House Counsel
• Firm & Office Location: Tesla, Inc. (East Palo Alto, CA or Austin, TX)
• Experience: Tesla has been actively building a full-scale internal litigation and trial team to handle IP litigations and Patent Office proceedings, managing and partnering with outside counsel.