Litigation
AutoConnect Holdings LLC v. Hyundai Motor America et al.
active and pending2:24-cv-00802
- Filed
- 2024-10-18
Patents at issue (1)
Plaintiffs (1)
Summary
This case is currently active and pending.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
Case Overview and Background
Party Analysis and Accused Technology
This patent infringement case pits AutoConnect Holdings LLC against a group of affiliated automotive giants: Hyundai Motor America, Hyundai Motor Company, Kia Corporation, Kia America, Inc., and Genesis Motor America, LLC. The plaintiff, AutoConnect Holdings, is a non-practicing entity (NPE), also known as a patent assertion entity, meaning it acquires patents to generate revenue through licensing and litigation rather than producing its own products. Public records indicate the entity was formed in Delaware in 2015 and has acquired a portfolio of over 90 U.S. patents related to vehicle technologies, many of which originated with inventor Christopher P. Ricci. The defendants are major global automotive manufacturers (operating companies) that produce and sell the Hyundai, Kia, and Genesis vehicle lines in the United States.
The lawsuit alleges that the defendants' "connected car" services and related hardware infringe on AutoConnect's patent rights. Specifically, the complaint targets telematics systems like Hyundai Blue Link, Kia Connect, and Genesis Connected Services. These services provide features that allow vehicle owners to interact with their cars remotely via smartphone apps, such as locking and unlocking doors, starting the engine, and receiving vehicle status notifications. The core of the dispute revolves around the technology that enables communication and control between a user's device (e.g., a smartphone) and the vehicle's onboard network and control systems.
Asserted Patent and Procedural Posture
The single patent asserted in this case is U.S. Patent No. 9,290,153, titled "Vehicle-based multimode discovery." This patent generally covers methods and systems for controlling a communication device's access to a vehicle's onboard network. The technology described involves discovering and managing how devices connect and interact with in-car systems. This lawsuit is part of a broader litigation campaign by AutoConnect, which has filed similar suits against other major automakers, including Toyota, General Motors, and Ford, asserting various patents from its portfolio.
The case was filed in the U.S. District Court for the Eastern District of Texas (EDTX), a venue long known for its experience with and plaintiff-friendly reputation in patent litigation. The district's specialized local patent rules, relatively fast trial schedules, and history of large verdicts have historically made it an attractive forum for patent holders. Although the Supreme Court's 2017 decision in TC Heartland limited where patent suits could be filed, the EDTX has seen a resurgence and was the top district for NPE litigation in the first quarter of 2026. The case's notability stems from its place within a large-scale NPE assertion campaign targeting the highly competitive and technologically advancing connected vehicle industry. Furthermore, the validity of the '153 patent is being challenged in parallel proceedings; Unified Patents, an organization that works to deter NPE assertions, filed an ex parte reexamination request against the patent at the U.S. Patent and Trademark Office on April 14, 2026.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Key Legal Developments and Outcome
As of today's date, 2026-05-03, the case is in its early stages, primarily revolving around initial pleadings and a motion to dismiss. A significant parallel challenge to the asserted patent's validity has also been initiated at the U.S. Patent and Trademark Office (USPTO).
Chronological Developments:
2024-10-18: Complaint Filed
AutoConnect Holdings LLC filed its complaint against Hyundai Motor America, Hyundai Motor Company, Kia Corporation, Kia America, Inc., and Genesis Motor America, LLC, alleging infringement of U.S. Patent No. 9,290,153. The complaint accuses the defendants' connected vehicle platforms—Hyundai Blue Link, Kia Connect, and Genesis Connected Services—of infringing the patent. The technology at issue involves remote access and control of vehicle functions via user devices like smartphones (Dkt. 1).2025-01-21: Defendants' Answer and Counterclaims
The Hyundai and Kia defendants filed a consolidated answer to the complaint. They denied the infringement allegations and asserted several affirmative defenses. Concurrently, they filed counterclaims seeking a declaratory judgment that they do not infringe the '153 patent and that the patent is invalid for failing to meet the requirements of patentability under 35 U.S.C. §§ 101 (patentable subject matter), 102 (novelty), 103 (obviousness), and 112 (written description and enablement) (Dkt. 15).2025-02-11: Plaintiff's Answer to Counterclaims
AutoConnect Holdings filed its answer to the defendants' counterclaims, denying the allegations of non-infringement and invalidity and maintaining that the '153 patent is valid and infringed (Dkt. 18).2025-03-04: Defendants' Motion to Dismiss
The defendants filed a motion to dismiss AutoConnect's complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). The motion argues that the claims of the '153 patent are invalid under 35 U.S.C. § 101 because they are directed to an abstract idea—receiving, processing, and transmitting information to control a vehicle system—without an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The defendants contend that the patent's claims merely describe the use of generic computer components to perform routine and conventional activities (Dkt. 25). This motion is currently pending before the court.2026-04-14: Parallel USPTO Proceeding Initiated
Unified Patents, an organization that challenges patents asserted by non-practicing entities, filed a request for ex parte reexamination of the '153 patent at the USPTO. This proceeding, distinct from an inter partes review (IPR), requests that the patent office reexamine the patent's validity based on prior art. Unified Patents asserts that substantial new questions of patentability exist regarding the claims of the '153 patent. The outcome of this reexamination could significantly impact the district court litigation. If the USPTO cancels or amends the patent claims, it could render AutoConnect's infringement allegations moot.
Current Posture and Next Steps
The litigation is currently active and pending in the Eastern District of Texas. The most immediate and significant event is the court's forthcoming ruling on the defendants' motion to dismiss on § 101 grounds. Should the case survive this motion, the parties will proceed with discovery and the claim construction (Markman) process to define the scope of the patent's claims.
The parallel ex parte reexamination at the USPTO adds a critical layer of uncertainty for the plaintiff. The defendants may file a motion to stay the district court case pending the outcome of the reexamination, arguing that it could simplify or resolve the issues in the litigation. As of early May 2026, no such motion has been filed, and the court has not yet ruled on the pending motion to dismiss.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Avantech Law
- William R. Woodford · lead counsel
- Todd S. Werner · lead counsel
- Jason M. Zucchi · lead counsel
- Miller Fair Henry
- Andrea L. Fair · local counsel
- Garrett Parish · local counsel
As of May 6, 2026, the counsel of record for plaintiff AutoConnect Holdings LLC in this case includes attorneys from the national intellectual property firm Avantech Law, LLP, and the East Texas-based trial firm Miller Fair Henry PLLC.
While direct docket access via web search is limited, filings in numerous parallel cases filed by AutoConnect against other automotive manufacturers consistently show attorneys from these two firms leading the litigation. The following list is based on their appearances and roles in these highly similar, contemporaneous cases.
Lead Counsel
Name: William R. Woodford
- Role: Lead Counsel
- Firm: Avantech Law, LLP (Minneapolis, MN)
- Note: A founding partner of Avantech, Woodford is a veteran IP trial lawyer known for leading high-stakes patent litigation, including a landmark Supreme Court case on enhanced damages.
Name: Todd S. Werner
- Role: Lead Counsel
- Firm: Avantech Law, LLP (Minneapolis, MN)
- Note: A founding partner of Avantech, Werner has nearly two decades of experience in high-stakes patent litigation across the country, with a background in biochemistry.
Name: Jason M. Zucchi
- Role: Lead Counsel
- Firm: Avantech Law, LLP (Minneapolis, MN)
- Note: Zucchi is an experienced IP trial lawyer who has successfully litigated patent infringement and trade secret cases for clients ranging from startups to Fortune 100 companies.
Local Counsel
Name: Andrea L. Fair
- Role: Local Counsel
- Firm: Miller Fair Henry PLLC (Longview, TX)
- Note: A name partner at the firm, Fair is a highly regarded East Texas trial lawyer who frequently serves as local counsel in major patent infringement cases, securing multiple nine-figure verdicts.
Name: Garrett Parish
- Role: Local Counsel
- Firm: Miller Fair Henry PLLC (Longview, TX)
- Note: Parish, a partner at the firm, focuses on intellectual property and complex commercial litigation and has been involved in more than a dozen trials in the Eastern District of Texas.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Morgan, Lewis & Bockius
- J. Kevin Fee · Lead Counsel
- Rick L. Rambo · Of Counsel
- Gillam & Smith
- Melissa R. Smith · Local Counsel
- Andrew T. "Tom" Gorham · Local Counsel
Counsel for Defendants Hyundai, Kia, and Genesis
Based on a review of court filings and legal directories, the defendants—Hyundai Motor America, Hyundai Motor Company, Kia Corporation, Kia America, Inc., and Genesis Motor America, LLC—have retained a team from the law firms Morgan, Lewis & Bockius LLP and Gillam & Smith LLP to lead their defense.
Morgan, Lewis & Bockius LLP
As lead counsel, the defendants are represented by attorneys from Morgan, Lewis & Bockius, a global law firm with a substantial intellectual property and patent litigation practice. The firm has represented Hyundai entities in other intellectual property matters.
J. Kevin Fee (Lead Counsel)
- Firm & Office: Morgan, Lewis & Bockius LLP, Houston, TX.
- Notable Experience: Mr. Fee is a seasoned patent litigator with extensive experience in the Eastern District of Texas, representing technology clients in complex infringement cases. His practice often involves technologies in the telecommunications and software sectors. (Information is based on general industry knowledge and is not available in the provided search results.)
Rick L. Rambo (Of Counsel)
- Firm & Office: Morgan, Lewis & Bockius LLP, Houston, TX.
- Notable Experience: Mr. Rambo's practice focuses on patent and trade secret litigation across a variety of technical fields, including software and electronics, with significant experience in federal courts throughout Texas. (Information is based on general industry knowledge and is not available in the provided search results.)
Gillam & Smith LLP
Serving as local counsel in the Eastern District of Texas is Gillam & Smith LLP, a firm well-known for its deep experience and frequent appearances in East Texas patent litigation.
Melissa R. Smith (Local Counsel)
- Firm & Office: Gillam & Smith LLP, Marshall, TX.
- Notable Experience: Ms. Smith is a highly respected East Texas trial lawyer who has served as local counsel in over three thousand patent cases and has tried numerous patent cases to verdict for both plaintiffs and defendants. She is recognized as a "go-to" lawyer for intellectual property matters by numerous Fortune 500 companies.
Andrew T. "Tom" Gorham (Local Counsel)
- Firm & Office: Gillam & Smith LLP, Marshall, TX.
- Notable Experience: Mr. Gorham has spent the majority of his career litigating patent cases in the Eastern District of Texas, having previously clerked for two former chief judges of the district.
In-House Counsel
While in-house counsel typically direct litigation strategy, they have not formally appeared on the docket. The legal department for Hyundai Motor North America is led by Jason Erb, Senior Vice President, Chief Legal and Compliance Officer, who has experience overseeing intellectual property litigation for the company.