Untitled case

Case Overview and Background: PGR2025-00041

This Post-Grant Review (PGR) case, PGR2025-00041, before the Patent Trial and Appeal Board (PTAB), involves Petitioner Toyota Motor Corporation challenging U.S. Patent No. 12,039,243, owned by AutoConnect Holdings LLC. Toyota Motor Corporation is a prominent multinational automotive manufacturer, known for its wide range of vehicles, including hybrid and electric models, and its involvement in automotive parts manufacturing and related services. AutoConnect Holdings LLC, on the other hand, operates as a patent assertion entity (PAE) or non-practicing entity (NPE), having acquired a portfolio of patents related to automotive technologies. The company's business model is described as "leasing of intellectual property and similar products," and it has accumulated a portfolio of nearly 100 U.S. patents and pending applications, primarily through acquisitions from entities like Flex.

U.S. Patent No. 12,039,243 generally relates to various aspects of network-connected vehicles and vehicle control systems. While a detailed, single-line technical sketch of this specific patent's claims is not explicitly available in the search results, AutoConnect's asserted patents in related district court litigations broadly cover features such as support for digital keys, face identification, user profiles, and integration with platforms like Apple CarPlay and Google Android Auto within automobiles and in-vehicle multimedia systems. The accused products, services, or technologies in the broader infringement litigation initiated by AutoConnect Holdings LLC against Toyota (and other automakers like General Motors and Ford) encompass a wide array of automobiles, vehicle systems (e.g., in-vehicle multimedia systems), mobile applications, and associated hardware and software components.

This PGR is currently in the "instituted" phase at the PTAB. The PTAB provides an alternative forum to district courts for challenging the validity of patents. The procedural posture is notable due to the ongoing parallel district court litigations where AutoConnect Holdings LLC is asserting its patent portfolio against major automotive manufacturers. This pattern highlights an NPE's strategic assertion against a significant industry player, focusing on core connected car technologies. The outcome of this PGR, and others in AutoConnect's portfolio, could significantly impact the automotive industry's landscape concerning intellectual property rights in connected vehicle features and systems.

Key Legal Developments and Outcome for PGR2025-00041

This Post-Grant Review (PGR) case, PGR2025-00041, before the Patent Trial and Appeal Board (PTAB), involves U.S. Patent No. 12,039,243. The Petitioner is Merck Sharp & Dohme LLC, and the Patent Owner is Halozyme, Inc.. The PGR is part of a broader dispute concerning Halozyme's proprietary Modified Human Hyaluronidase PH20 Enzyme (MDASE) technology, which Halozyme asserts is infringed by Merck's subcutaneous (SC) formulation of Keytruda.

Chronological Legal Developments:

Parallel District Court Litigation Filing:

• 2025-04-24: Halozyme, Inc. filed a patent infringement lawsuit against Merck Sharp & Dohme Corp. in the U.S. District Court for the District of New Jersey, captioned Halozyme, Inc. v. Merck Sharp & Dohme Corp., Case No. 2:25-cv-03179. Halozyme's complaint alleges that Merck's proposed subcutaneous formulation of Keytruda infringes 15 of its patents, including those related to the MDASE technology. Halozyme claims Merck's infringement is willful and seeks damages and injunctive relief.

PGR Filing & Institution:

• 2025-06-17: Merck Sharp & Dohme LLC filed the petition for Post-Grant Review (PGR) against U.S. Patent No. 12,039,243, designated as PGR2025-00041. This petition was part of a series of PGRs initiated by Merck challenging Halozyme's MDASE-related patents.
• 2025-12-16: The PTAB instituted the Post-Grant Review for PGR2025-00041. The institution decision occurred within the typical six-month timeframe following the petition's filing. Since October 20, 2025, the USPTO Director, in consultation with PTAB judges, has taken personal authority over all institution decisions for IPR and PGR proceedings.

Post-Institution Developments & Outcome:

• General Context: PGR petitions are "favored" in discretionary denial considerations by the PTAB.
• Final Written Decision (FWD) Deadline: The PTAB is generally required to issue a final written decision within 12 months of institution, with a possible six-month extension for good cause. Given the institution date of December 16, 2025, the statutory deadline for a Final Written Decision would typically be around December 16, 2026.
• Present Posture (as of 2026-06-15): The PGR is ongoing. A final written decision has not yet been issued, but is anticipated by the end of 2026.

No specific information regarding pre-trial motions of substance (other than the institution decision itself), claim construction outcomes, discovery milestones, or trial events within PGR2025-00041 beyond the institution has been identified in the available public records. The case remains active at the PTAB, running in parallel with the district court infringement litigation.

Outcome:
The ultimate outcome for PGR2025-00041, a Final Written Decision, is still pending.

The counsel of record representing the petitioner, Merck Sharp & Dohme LLC, in PGR2025-00041 are:

• Jeffrey P. Kushan

  • Role: Lead Counsel
  • Firm: Sidley Austin LLP
  • Office Location: Washington, D.C.
  • Experience: Serves as a global coordinator of Sidley's national IP Litigation practice, focusing on patent litigation, patent appeals, and contested proceedings before the Patent Trial and Appeal Board (PTAB). He has been lead counsel in over 225 PTAB proceedings and has extensive experience in complex, high-stakes patent litigation involving cancer biologics, biosimilar and generic drug products under the BPCIA and Hatch-Waxman Act. [cite: 1 in previous turn, 5 in previous turn, 9 in previous turn, 10 in previous turn]

• Mark Stewart

  • Role: Back-up Counsel (In-house)
  • Firm: Merck Sharp & Dohme LLC
  • Office Location: Rahway, New Jersey
  • Experience: Serves as Vice President, Global Intellectual Property Litigation for Merck Sharp & Dohme LLC. [cite: 2 in previous turn, 4 in previous turn, 6 in previous turn]

• Sue Wang

  • Role: Back-up Counsel
  • Firm: Sidley Austin LLP
  • Office Location: San Francisco, CA
  • Experience: A trial lawyer who represents clients across the life sciences industry in high-stakes intellectual property and complex commercial disputes, including precedent-setting cases against generic, biosimilar, and innovator competitors. [cite: 2, 13 in previous turn, 16 in previous turn]

• Leif E. Peterson, II

  • Role: Back-up Counsel
  • Firm: Sidley Austin LLP
  • Office Location: Chicago, IL
  • Experience: Represents both plaintiffs and defendants in complex patent litigation, including with respect to infringement, validity, damages, FRAND licensing, breach of contract, and antitrust issues across various technologies, including pharmaceuticals. He has been recognized as a "Rising Star" for intellectual property litigation. [cite: 2, 12 in previous turn]

• Amit Bhatla

  • Role: Back-up Counsel
  • Firm: Sidley Austin LLP
  • Office Location: Washington, D.C.
  • Experience: Focuses his practice on high-stakes patent litigation, with capabilities in IP litigation, biotechnology, and pharmaceuticals, including Patent Trial and Appeal Board Proceedings. [cite: 2, 14 in previous turn, 17 in previous turn]

• Christine M. Engen

  • Role: Back-up Counsel
  • Firm: Sidley Austin LLP
  • Office Location: Washington, D.C.
  • Experience: Focuses her practice on patent litigation, leveraging her background in biology and chemistry, and includes Patent Trial and Appeal Board Proceedings.

• Katherine A. Helm, Ph.D.

  • Role: Back-up Counsel
  • Firm: Dechert LLP
  • Office Location: New York, NY
  • Experience: Co-chair of Dechert's global intellectual property practice and a first-chair lead counsel. She represents innovator pharmaceutical and biotechnology companies in high-stakes patent litigation, including district court litigation, Federal Circuit appeals, and PTAB proceedings, leveraging her Ph.D. in neuroscience. [cite: 2, 3 in previous turn, 4 in previous turn, 6 in previous turn, 7 in previous turn, 8 in previous turn, 11 in previous turn]

• Brian M. Goldberg

  • Role: Back-up Counsel
  • Firm: Dechert LLP
  • Office Location: Philadelphia, PA
  • Experience: Focuses his practice on intellectual property with an emphasis on patent litigation, particularly in life sciences. He has successfully litigated patent cases through trials and parallel PTAB proceedings, with extensive experience in Hatch-Waxman Act ANDA infringement actions. [cite: 2 in previous turn, 2, 5 in previous turn, 6 in previous turn]

The counsel of record representing Halozyme Inc., the Patent Owner (defendant) in PGR2025-00041, are as follows:

• Eldora L. Ellison, Ph.D.

  • Role: Attorney for Patent Owner (likely lead counsel or a primary counsel)
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC, Washington, DC
  • Experience Note: Dr. Ellison is a registered patent attorney and frequently appears before the PTAB in post-grant proceedings.

• R. Wilson Powers III

  • Role: Counsel
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC (office location likely Washington, DC given the firm's primary office and other listed attorneys)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• Jennifer Meyer Chagnon

  • Role: Counsel
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC (office location likely Washington, DC)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• David H. Holman

  • Role: Counsel
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC (office location likely Washington, DC)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• Tyler C. Liu

  • Role: Counsel
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC (office location likely Washington, DC)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings, and a Declaration of Tyler C. Liu was filed in a related case.

• Louis P. Panzica, Jr.

  • Role: Counsel
  • Firm: Sterne, Kessler, Goldstein & Fox PLLC (office location likely Washington, DC)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• Zachariah Summers

  • Role: Back-up Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP (office location not specified in the provided context, but he is a member of the New York and California Bars).
  • Experience Note: Experienced litigator practicing law since 2008, serving as back-up counsel for Patent Owner Halozyme Inc. in multiple related PGR proceedings and has experience appearing pro hac vice before the PTAB.

• Lauren N. Martin

  • Role: Counsel
  • Firm: Quinn Emanuel Urquhart & Sullivan, LLP (office location not specified in the provided context)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• David J. Kappos

  • Role: Counsel
  • Firm: Cravath (likely Cravath, Swaine & Moore LLP, office location not specified in the provided context)
  • Experience Note: Appears as counsel for Patent Owner in related PGR proceedings.

• Aubrey Haddach

  • Role: In-house Counsel
  • Firm: Halozyme, Inc.
  • Experience Note: In-house counsel for the Patent Owner.

• Joshua A. Mack

  • Role: In-house Counsel
  • Firm: Halozyme, Inc.
  • Experience Note: In-house counsel for the Patent Owner.

• Mark H. Snyder

  • Role: In-house Counsel
  • Firm: Halozyme, Inc.
  • Experience Note: In-house counsel for the Patent Owner.