Litigation
AutoConnect Holdings LLC v. Toyota Motor Engineering & Manufacturing North America Inc. et al.
Open/Active2:24-cv-00802
- Filed
- 2024-10-03
Patents at issue (1)
Plaintiffs (1)
Summary
A district court case filed by AutoConnect Holdings LLC against multiple Toyota entities, alleging infringement related to Toyota's Digital Key, face identification, User Profiles, Apple CarPlay, and Google Android Auto platforms. This case involves patent 9020697 and 10 other patents.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
The patent infringement case, AutoConnect Holdings LLC v. Toyota Motor Engineering & Manufacturing North America Inc. et al., involves AutoConnect Holdings LLC, identified as a non-practicing entity (NPE) or patent assertion entity (PAE), asserting patents against Toyota Motor Corporation and its North American subsidiaries (Toyota Motor Engineering & Manufacturing North America Inc., Toyota Motor North America Inc., and Toyota Motor Sales, U.S.A Inc.), which are operating companies in the automotive industry. AutoConnect Holdings LLC was formed in Delaware in 2015 and has since acquired a portfolio of nearly 100 U.S. patents and pending applications related to vehicle technologies, many of which name Christopher P. Ricci as an inventor. Toyota is accused of infringing these patents through a wide array of its automobiles, vehicle systems (including in-vehicle multimedia systems), mobile applications, and related hardware and software components. The specific accused features include Toyota's Digital Key, face identification, and User Profiles, as well as its support for Apple CarPlay and Google Android Auto platforms.
The litigation currently asserts 11 patents, including U.S. Patent No. 9,020,697. Other asserted patents cover various aspects of network-connected vehicles: U.S. Patent No. 8,793,034 relates to vehicles and systems enabling face identification; U.S. Patent Nos. 9,020,491, 9,140,560, 9,290,153, 10,862,764, and 9,116,786 are directed to components supporting Android Auto and/or Apple CarPlay; U.S. Patent Nos. 9,020,697, 9,123,186, and 11,163,931 pertain to components enabling Toyota's Digital Key feature; and U.S. Patent Nos. 9,147,296 and 12,039,243 concern components enabling User Profiles in Toyota vehicles. For example, U.S. Patent No. 10,862,764 is directed to a vehicle control system incorporating multiple devices and sensors, allowing a device like a phone to communicate with the vehicle control system and leverage its computing capability. U.S. Patent No. 9,290,153 relates to device discovery methods for controlling access of communication devices to an on-board vehicle network. U.S. Patent No. 9,098,367, though not explicitly listed among the 11, is also owned and asserted by AutoConnect Holdings and is directed to an application store on board a vehicle.
The case was filed in the Eastern District of Texas (Marshall Division), case number 2:24-cv-00802, and is assigned to Chief Judge Rodney Gilstrap, with Magistrate Judge Roy S. Payne referred for certain matters. The Eastern District of Texas has long been recognized as a prominent venue for patent litigation due to its reputation for handling patent cases quickly, though its characterization as uniformly "plaintiff-friendly" has been debated. This case is notable as part of a broader pattern of patent assertions by AutoConnect Holdings, an NPE that has also sued other major automotive manufacturers like General Motors and Ford. Toyota has initiated Post-Grant Review (PGR) proceedings against at least U.S. Patent No. 12,039,243 at the Patent Trial and Appeal Board (PTAB), indicating a multi-front challenge to the asserted patents. Unified Patents has also filed ex parte reexamination proceedings against several AutoConnect patents, including 9,098,367, 10,862,764, and 9,290,153, citing them as NPE-owned patents of questionable validity.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
The case AutoConnect Holdings LLC v. Toyota Motor Engineering & Manufacturing North America Inc. et al. (2:24-cv-00802) was filed in the Eastern District of Texas on October 3, 2024. This litigation is part of a broader effort by AutoConnect Holdings, which asserts 11 patents from its portfolio against Toyota, relating to features like Digital Key, face identification, User Profiles, Apple CarPlay, and Google Android Auto platforms in Toyota vehicles. Toyota is accused of willful infringement, with AutoConnect claiming it first contacted Toyota about its patent portfolio in December 2023.
Here's a chronological breakdown of key legal developments:
1. Filing & Initial Pleadings:
- Complaint Filed (2024-10-03): AutoConnect Holdings LLC filed its complaint in the Eastern District of Texas, initiating the patent infringement lawsuit against multiple Toyota entities. The complaint asserts infringement of 11 patents, including U.S. Patent No. 9,020,697.
2. Pre-trial Motions of Substance:
- Docket Control Order (2025-02-06): A Docket Control Order was signed by District Judge Rodney Gilstrap. An amended docket control order was filed on February 13, 2025.
- Invalidity Contentions (2025-04-01): Toyota served its initial invalidity contentions on April 1, 2025.
- Motion to Dismiss (related case): While no specific motion to dismiss by Toyota in this case is detailed in the snippets, a related case AutoConnect Holdings LLC v. Ford Motor Company (1:24-cv-01327) saw Ford file a motion to dismiss claims related to seven of the thirteen asserted patents, which was denied in September 2025. This suggests similar procedural challenges might be expected or have occurred in the Toyota case, though the denial for Ford indicates the claims were not easily dismissed.
3. Claim Construction (Markman):
- Markman Hearing Scheduled: A Markman hearing for this case was scheduled for December 11, 2025, before Magistrate Judge Roy S. Payne. Subsequent information from other docket entries suggests that the parties were preparing for post-Markman developments, such as the mention of "new references after the conclusion of Markman" in November 2025.
4. Discovery Milestones:
- Toyota Invalidity Contentions (2025-04-01): Toyota's invalidity contentions, including asserted prior art, were served on AutoConnect Holdings.
5. Trial Events, Verdict, and Post-trial Motions:
- Jury Selection Scheduled (2026-07-20): Jury selection in the case is scheduled for July 20, 2026, at 9:00 AM before District Judge Rodney Gilstrap. This indicates the case is actively proceeding towards trial.
6. Settlement, Dismissal, Judgment, or Appeal:
- The case is currently active and proceeding towards trial in July 2026. There has been no reported settlement, dismissal, or judgment yet.
7. Parallel PTAB IPR/PGR Proceedings:
Several Inter Partes Review (IPR) proceedings have been initiated against AutoConnect Holdings' patents, including U.S. Patent No. 9,020,697.
- Unified Patents Crowdsourcing for Prior Art (2025-02-26): Unified Patents announced a crowdsourcing contest for prior art against AutoConnect Holdings' vehicle ecosystem patents, including U.S. Patent No. 9,020,697, offering cash prizes. Dinesh Swami was identified as a winner for submitting prior art related to the '697 patent.
- Ford IPRs against AutoConnect Holdings (2026-01-16): Ford Motor Company, a defendant in a separate but related litigation by AutoConnect Holdings, filed multiple IPR petitions challenging AutoConnect's patents. On January 16, 2026, the PTAB instituted two IPR proceedings (IPR2025-01342 and IPR2025-01383) against AutoConnect Holdings, and denied a request for discretionary denial in a third (IPR2025-01524). These IPRs challenged patents related to infotainment systems asserted in district court.
- IPR2025-01342 (Patent 9,020,697): This IPR, filed by Ford Motor Company against AutoConnect Holdings LLC, specifically targets U.S. Patent No. 9,020,697. The PTAB initially instituted this IPR.
- Director Review and Vacation of Institution (2026-05-12): On May 12, 2026, the Director of the USPTO vacated the institution of IPR2025-01342 concerning U.S. Patent No. 9,020,697. The decision was designated as "informative" on May 13, 2026. The Director's decision to vacate institution was based on the petitioner (Ford) advancing indefiniteness arguments in district court after institution without sufficient justification for inconsistency with its Board position. Ford only stipulated to withdraw its district court arguments after AutoConnect Holdings brought the inconsistency to the Office's attention. This decision significantly impacts the challenge to Patent 9,020,697.
- Ex Parte Reexamination for other patents:
- U.S. Patent 9,098,367 (2025-07-24): Unified Patents filed an ex parte reexamination against U.S. Patent 9,098,367 (related to vehicle application stores), which was granted by the Central Reexamination Unit (CRU), finding substantial new questions of patentability.
- U.S. Patent 9,290,153 (2026-04-14): Unified Patents filed an ex parte reexamination proceeding against U.S. Patent 9,290,153 (related to device discovery methods for in-vehicle networks), which has been asserted against GM, Toyota, and Ford.
In summary, the case is actively litigated in the Eastern District of Texas, with a jury trial scheduled for July 2026. While there have been attempts to challenge AutoConnect's patents at the PTAB, the IPR against the primary patent (9,020,697) was recently vacated, indicating its validity remains a central issue for the district court.
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 · counsel
- Shelleaha L. Jonas · counsel
- Kathryn A. Quisenberry · counsel
- Julianne Thomsen · counsel
- Miller Fair Henry
- Andrea L. Fair · local counsel
- Garrett Parish · local counsel
Counsel of Record for AutoConnect Holdings LLC
Plaintiff AutoConnect Holdings LLC is represented by a team of attorneys primarily from Avantech Law, LLP, with local counsel support from Miller Fair Henry PLLC. The counsel of record appearing for the plaintiff in AutoConnect Holdings LLC v. Toyota Motor Engineering & Manufacturing North America Inc. et al. (2:24-cv-00802, Eastern District of Texas) include:
Avantech Law, LLP
- William R. Woodford
- Role: Lead Counsel, Partner & Founder.
- Firm and Office Location: Avantech Law, LLP, Minneapolis, MN.
- Relevant Patent Litigation Experience: Mr. Woodford is a trial lawyer specializing in complex intellectual property litigation with over two decades of experience. He secured a $31 million jury verdict as lead trial counsel in a patent infringement case involving advanced tire pressure monitoring systems and handled a trial resulting in a $235 million jury verdict for infringement related to methods of treating heart failure patients. He also served as lead appellate counsel in a landmark U.S. Supreme Court case setting the standard for enhanced damages in patent cases.
- Todd S. Werner
- Role: Lead Counsel, Partner & Founder.
- Firm and Office Location: Avantech Law, LLP, Minneapolis, MN.
- Relevant Patent Litigation Experience: Mr. Werner focuses on patent disputes, particularly in ANDA litigation, leveraging his biochemistry background. He successfully led efforts to defeat a patent covering Biogen's Tecfidera® product and helped win an award of over $1.3 million in attorney fees in a related federal court proceeding. He has also been involved in numerous inter partes review (IPR) proceedings.
- Jason M. Zucchi
- Role: Counsel, Partner.
- Firm and Office Location: Avantech Law, LLP, Minneapolis, MN.
- Relevant Patent Litigation Experience: Mr. Zucchi is a trial lawyer with nearly two decades of experience in complex intellectual property litigation, including patent infringement and trade secret cases, resulting in substantial damages awards for clients. He has represented clients ranging from Fortune 100 companies to startups in federal and state courts nationwide.
- Shelleaha L. Jonas
- Role: Counsel, Partner.
- Firm and Office Location: Avantech Law, LLP, Minneapolis, MN.
- Relevant Patent Litigation Experience: Ms. Jonas, a licensed pharmacist, focuses on patent litigation, including federal district court cases and inter partes reviews before the USPTO, across various technologies such as pharmaceuticals and medical devices.
- Kathryn A. Quisenberry
- Role: Counsel, Partner.
- Firm and Office Location: Avantech Law, LLP, Houston, TX.
- Relevant Patent Litigation Experience: Ms. Quisenberry is a trial attorney specializing in complex patent litigation in U.S. District Courts and before the International Trade Commission (ITC). She played a key role in securing a $43 million jury verdict plus attorneys' fees for The Chamberlain Group LLC in the Eastern District of Texas.
- Julianne Thomsen, Ph.D.
- Role: Counsel, Associate.
- Firm and Office Location: Avantech Law, LLP, New York, NY.
- Relevant Patent Litigation Experience: Dr. Thomsen is a litigation associate focusing on complex patent and trade secret cases, particularly in life sciences due to her Ph.D. in Chemistry. She was a core member of a team that secured a $1.25 billion settlement for ViiV Healthcare and was instrumental in winning a $273 million jury verdict for Ravgen.
Miller Fair Henry PLLC
- Andrea L. Fair
- Role: Local Counsel, Partner.
- Firm and Office Location: Miller Fair Henry PLLC, Longview, TX.
- Relevant Patent Litigation Experience: Ms. Fair focuses on intellectual property litigation and has been recognized by Texas Super Lawyers for her expertise. She participated as local counsel in trials in the Eastern District of Texas, including those that returned significant damages against technology companies for patent infringement, such as a $121.95 million jury verdict for AlmondNet Inc. against Amazon.
- Garrett Parish
- Role: Local Counsel, Partner.
- Firm and Office Location: Miller Fair Henry PLLC, Longview, TX.
- Relevant Patent Litigation Experience: Mr. Parish specializes in intellectual property and complex commercial litigation in East Texas, with extensive experience in patent trials. He assisted in securing an $11.5 million verdict for Ollnova Technologies Ltd. for patent infringement.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Alston & Bird
- Theodore Stevenson · Lead Counsel
- Jacob W. Young · Lead Counsel
- Michael Newton · Lead Counsel
- Winston & Strawn
- Brett Johnson · Lead Counsel
- William Logan · Lead Counsel
The defendants in AutoConnect Holdings LLC v. Toyota Motor Engineering & Manufacturing North America Inc. et al. (2:24-cv-00802) are represented by counsel from Alston & Bird LLP and Winston & Strawn LLP.
Here is a breakdown of the identified counsel:
Alston & Bird LLP (Dallas, TX office)
- Theodore Stevenson (Lead Counsel)
- Firm & Office: Alston & Bird LLP, Dallas, TX.
- Experience Note: Highly regarded patent litigator with significant experience representing clients before the U.S. District Court for the Eastern District of Texas and is a first-chair trial lawyer.
- Jacob W. Young (Lead Counsel)
- Firm & Office: Alston & Bird LLP, Dallas, TX.
- Experience Note: Represents technology-driven companies in high-stakes patent disputes across federal district courts and the ITC, with particular insight into wireless communications and complex device technologies, and regularly works on cases in the Eastern and Western Districts of Texas.
- Michael Newton (Lead Counsel)
- Firm & Office: Alston & Bird LLP.
- Experience Note: Frequently called upon by clients in highly technical industries to litigate complex patent disputes.
Winston & Strawn LLP (Dallas, TX office)
- Brett Johnson (Lead Counsel)
- Firm & Office: Winston & Strawn LLP, Dallas, TX.
- Experience Note: Managing Partner of Winston's Dallas office and co-chair of the firm's Litigation Department, focusing his trial practice on intellectual property and complex commercial litigation, including for clients in the automotive industry such as Toyota. He has appeared in nearly 40 patent cases in the Eastern District of Texas in the past ten years.
- William Logan (Lead Counsel)
- Firm & Office: Winston & Strawn LLP.
- Experience Note: A trial lawyer and former software developer and electrical engineer who represents technology companies in high-stakes civil disputes, with an emphasis on patent and trade secrets matters, and regularly litigates in the Eastern and Western Districts of Texas.
In-House Counsel (Toyota Motor North America Inc.)
While the following individuals hold significant legal roles at Toyota Motor North America, their direct role as "counsel of record" in this specific district court patent litigation is less clear from the provided search results compared to the external litigation firms. Their roles are primarily executive and oversight.
- Chris Yang (Chief Legal Officer, Toyota Motor North America)
- Role: Chief Legal Officer; also Senior Vice President for enterprise strategy and solutions, deputy chief compliance officer, and deputy chief risk officer for Toyota's North American business.
- Experience Note: Oversees the North American arm's legal, compliance, and audit functions, having served in various legal leadership roles at Toyota North America since 2011.
- Elizabeth Gibson (Group Vice President and General Counsel, Toyota Motor North America)
- Role: Group Vice President and General Counsel.
- Experience Note: Oversees Toyota's legal department, setting legal direction and strategy, and providing guidance on complex legal challenges, risk mitigation, and intellectual property.