Litigation

Automotive Technologies International, Inc. v. American Honda Motor Co., Inc. et al.

closed

1:06-cv-00187-GMS

Filed
2006-03-17

Patents at issue (13)

Summary

ATI sued American Honda, Elesys, and GM in the District of Delaware asserting multiple patents including US 6,757,602. The court denied a motion to transfer to E.D. Mich. on Dec. 21, 2006; final disposition was not verified.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources to build a verified overview. Let me start with broad searches.

Let me dig deeper into the patents, the parties' identities, and the case outcome.

Case Overview: Automotive Technologies International, Inc. v. American Honda Motor Co., Inc., et al., No. 1:06-cv-00187-GMS (D. Del.)

Parties. The plaintiff, Automotive Technologies International, Inc. ("ATI"), is a Delaware corporation headquartered in Denville, New Jersey, founded in 1998 by inventor David S. Breed, a prolific automotive-safety engineer who holds or has assigned hundreds of patents (ATI's Rule 7.1 disclosure states it has no parent and no publicly held 10% owner). On the NPE/PAE spectrum, ATI is best characterized as an inventor-controlled patent-holding/monetization entity rather than an operating manufacturer: it does not make cars or components, and it built a decades-long assertion program against nearly every major automaker and their Tier-1 suppliers. RPX describes ATI as "formed by Breed, 'a highly respected scientist in the field of automotive safety,'" and later reports note that ATI's portfolio was assigned in April 2012 to American Vehicular Sciences LLC, an Acacia Research subsidiary that filed dozens of suits (e.g., against BMW, Toyota, Hyundai, Kia, Honda) — evidence of the portfolio's continuation as a PAE campaign. The defendants here are three very different entities: American Honda Motor Co., Inc. (the U.S. sales/manufacturing arm of Honda), Elesys North America Inc. (a Georgia corporation; a Tier-1 supplier of occupant-sensing/airbag electronics, later folded into Nidec Elesys), and General Motors Corporation (the OEM). TS Tech USA Corporation (a Honda seat supplier) moved to intervene (D.I. 42), which is why the Unified Patents docket lists the case as "ATI v. TS Tech Co. Ltd. et al." Counsel of record reflect the split: ATI was represented by Morris James (Richard K. Herrmann), Sommers Schwartz (Andrew Kochanowski), and Baniak Pine & Gannon/McDonnell Boehnen (Michael H. Baniak); defendants by Morris Nichols Arsht & Tunnell (Thomas C. Grimm, Benjamin J. Schladweiler) with Brinks Hofer Gilson & Lione as of counsel, and the automakers' shared Michigan-based defense team.

Accused technology and asserted patents. ATI alleged that Honda, Elesys, and GM infringed by making/selling vehicles and supplied components embodying ATI's seat- and occupant-sensing inventions — i.e., "smart airbag" occupant classification/weight-sensing and crash-sensor control systems, the technology that proliferated across the industry after NHTSA's advanced-airbag (FMVSS 208) occupant-detection requirements. The original March 17, 2006 complaint asserted 11 patents, all described by the court as "generally related to technology in automobile seats"; the May 3, 2006 First Amended Complaint added U.S. Patent Nos. 6,484,080 and 6,850,824 and dropped 6,950,022, leaving 12 patents-in-suit: 5,901,978; 6,242,701; 6,325,414; 6,397,136; 6,422,595; 6,869,100; 6,757,602; 6,712,387; 6,942,248; 6,958,451; 6,484,080; and 6,850,824. One-line sketches, grouped by family (where I could verify titles/abstracts): occupant weight/seat-occupancy sensing — 6,242,701 ("Weight sensor for determining the weight of an occupant of a seat," bladder-based), 6,958,451 ("Apparatus and method for measuring weight of an occupying item of a seat"), and 6,757,602 ("System for determining the occupancy state of a seat in a vehicle and controlling a component based thereon"); sensor-based occupant-protection control — 6,869,100 and 6,484,080 (control systems using electronic sensors and pattern-recognition/diagnosis of vehicle state to control occupant protection), and 6,850,824 ("Method and apparatus for controlling a vehicular component"). I was not able to independently verify the titles/scope of the remaining patents (5,901,978; 6,325,414; 6,397,136; 6,422,595; 6,712,387; 6,942,248) from the sources reached; they are consistently described in court filings as related seat/occupant-sensing and protection-control patents, but I flag that as unconfirmed rather than assert specifics.

Procedural posture, venue, and significance. Filed March 17, 2006 in the District of Delaware before Judge Gregory M. Sleet (the "GMS" in the case number), this is one of the docket's many patent cases. Venue mattered immediately: defendants moved under 28 U.S.C. § 1404(a) to transfer to the Eastern District of Michigan (the automakers' home forum, and where ATI was litigating parallel cases), and the court denied transfer on December 21, 2006 (D.I. 56), applying Third Circuit Jumara/Shutte precedent and deferring to ATI's choice of forum — a notable venue ruling favoring the plaintiff. ATI simultaneously filed a related case, ATI v. Hyundai/BMW of North America/Kia, C.A. No. 06-391-GMS (June 16, 2006), sharing ten of the twelve patents. On January 23, 2007, the defendants jointly moved to stay pending ex parte reexamination of five patents; Judge Sleet stayed both cases on February 23, 2007 pending PTO reexamination, ordering six-month joint status reports. By the Feb. 21, 2008 status report, eight patents were in reexamination — 6,712,387; 6,325,414; 6,942,248; 6,484,080; 6,757,602; 6,422,595; 6,397,136; and 5,901,978 — with the parties disputing whether to lift the stay once early reexamination certificates issued. The case metadata lists the matter as closed, though the exact terminal docket event was not verified from the sources reached. The case is notable for three reasons: (1) it exemplifies the NPE/serial-assertion pattern in the automotive sector, with ATI (and later Acacia's American Vehicular Sciences) monetizing a sprawling Breed portfolio against OEMs and suppliers; (2) it illustrates the era's stay-pending-reexamination strategy, where defendants used the PTO to pause litigation over the same patents; and (3) it sits atop a significant legal backdrop — the Federal Circuit's September 6, 2007 decision in ATI v. BMW of North America, 501 F.3d 1274 (Fed. Cir. 2007), affirming that ATI's foundational side-impact-sensor patent (U.S. 5,231,253) was invalid for lack of enablement, a ruling widely covered as "automakers win patent case appeal." That enablement loss, combined with the reexamination stay here, framed the market context: ATI's broad "smart airbag" claims were under sustained validity attack even as the underlying occupant-sensing technology became standard equipment across the industry. Caveat: because the case was stayed for years and later closed, the specific settlement/dismissal terms and the final reexamination outcomes are not confirmed in the sources I could reach, so any statement about ultimate liability or the fate of individual claims should be treated as unverified.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case thoroughly using web searches across the sources you mentioned.

Let me dig deeper into the docket, the stay/lift-stay proceedings, and the related E.D. Michigan case.

Let me research the final disposition of the Delaware case and the reexamination/IPR appeals.

I've gathered substantial material. Here's the chronological account of this litigation, with a clear flag where the record is incomplete.


ATI v. American Honda Motor Co. — Key Legal Developments

C.A. No. 1:06-cv-00187-GMS (D. Del.), Judge Gregory M. Sleet

1. Filing & initial pleadings

2006-03-17 — Complaint filed. Automotive Technologies International, Inc. ("ATI"), a Delaware corporation headed by inventor David S. Breed, filed suit against American Honda Motor Co., Elesys North America Inc., and General Motors Corp., alleging infringement of eleven patents generally directed to automobile-seat occupant sensing and side-impact airbag/occupant-protection technology: U.S. Pat. Nos. 5,901,978; 6,242,701; 6,325,414; 6,397,136; 6,422,595; 6,869,100; 6,757,602; 6,712,387; 6,942,248; 6,950,022; and 6,958,451. Plaintiff's Rule 7.1 disclosure stated ATI had no parent and no publicly held corporation owned 10%+.

2006-05-03 — First Amended Complaint. ATI added U.S. Pat. Nos. 6,484,080 and 6,850,824 and withdrew U.S. Pat. No. 6,950,022, leaving twelve asserted patents.

  • Source: D. Del. opinion (06-187.pdf).

2006-06-16 — Related Delaware action. ATI filed a companion suit, ATI v. Hyundai Motor America, BMW of North America LLC, and Kia Motors America, C.A. No. 06-391-GMS. Ten of the twelve patents in 06-187 were also asserted there.

Counterclaims. Defendants (GM's counterclaims are the ones captured in the record I located) sought declaratory judgments of non-infringement and invalidity (35 U.S.C. §§ 102, 103, 112) as to the patents-in-suit ('978, '136, '595, '100, '602, '248, '080, '824), plus a declaration that the case is "exceptional" under 35 U.S.C. § 285 with a claim for fees and costs. ATI answered on 2006-07-03, denying invalidity/unenforceability.

  • Source: D.I. 32-33 area, "Plaintiff's Answers to General Motors Corporation's Counterclaims," filed 2006-07-03.

(Note: the case metadata lists 13 patents including the withdrawn '022; the live asserted set after the FAC was 12.)

2. Venue fight — motion to transfer (denied)

2006-06 — Defendants' § 1404(a) motion to transfer to the E.D. Mich. Motion at D.I. 17; opening brief 2006-06-07; ATI's answering brief 2006-06-21; reply 2006-06-28. TS Tech USA Corp. moved to intervene (motion at D.I. 42, opening brief filed Oct. 2006), reflecting that TS Tech (the seat supplier) had a direct stake — indeed the Unified Patents docket captions the case as ATI v. TS Tech Co. Ltd. et al.

2006-12-21 — Transfer denied. Judge Sleet denied the motions to transfer both 06-187 and 06-391 to E.D. Mich. Applying the Third Circuit's Jumara v. State Farm multi-factor test, the court gave less deference to ATI's forum choice (Delaware was not ATI's home turf) but accepted ATI's "rational and legitimate" reasons (one defendant incorporated in Delaware, personal jurisdiction over all parties, faster docket, no markedly more convenient forum). The court found the location of books/records and non-party witness convenience factors did not favor transfer, and that public-interest factors did not weigh strongly toward Michigan.

  • Source: D. Del. opinion 06-187.pdf (Dec. 21, 2006).

3. Discovery milestones

Discovery was only in its early stages before the case was stayed. The significant, documented activity is a burst of third-party subpoenas issued by Defendants/TS Tech in January 2007 — to Andrew J. Varga, Wilbur E. Duvall, Jeffrey L. Morin, Wendell C. Johnson, and (notably) David S. Breed himself — and Defendants' motion for leave to file a First Amended Answer (filed 2007-02-16). These reflect defense efforts to develop prior-art/inventorship (swear-behind) and inequitable-conduct evidence.

4. Stay pending reexamination

2007-01-23 — Defendants' Joint Motion to Stay pending reexamination of five patents-in-suit (D.I. 65). ATI opposed (response filed 2007-02-09, D.I. 70), but candidly acknowledged "the weight of authority seems to be heavily in favor of a stay," and proposed a limited-duration stay with periodic status conferences. Reply brief filed 2007-02-16.

2007-02-23 — Case stayed. Judge Sleet entered an Order (D.I. 77) staying both 06-187 and 06-391 pending PTO reexamination of at least five patents-in-suit, directing the parties to file joint status reports every six months (first due 2007-08-21).

  • Source: D.I. 77 (Order Staying Case, filed 2007-02-23).

Six-month status reports:

  • 2007-08-21 (D.I. 79): Five Honda-initiated reexaminations pending ('387, '080, '414, '602, '248). ATI disclosed that Elesys filed inter partes reexamination requests on 2007-08-17 for the '136 and '595 patents, covering "each claim currently asserted by ATI"; Defendants signaled ~3 more requests coming.
  • 2008-02-21 (D.I. 80): Eight patents in reexamination — '387, '414, '248, '080, '602, '595, '136, '978. ATI said it expected two reexamination certificates soon and would move to lift the stay; Defendants opposed reopening. The report also noted ATI's expansion of parallel litigation: joining Hyundai/Kia into ATI v. Siemens FCO, No. 2:06-15756 (E.D. Mich.) on 2007-10-19, and a new Texas suit (E.D. Tex. No. 2:08-57) filed 2008-02-11 asserting '824, '100 and '5,516/'833,516-family patents.
  • Sources: D.I. 79, D.I. 80.

5. Motion to lift stay (unresolved in the record I can verify)

2008-10-28 — ATI moved to lift the stay (D.I. 82), anticipating reexamination certificates from each patent family. Defendants filed a Joint Answering Brief in Opposition, with ATI's reply deadline set for 2008-12-01. I could not verify the court's disposition of this motion from available sources.

  • Source: Unified Patents docket.

6. Claim construction (Markman)

No Markman ruling issued in the Delaware case. The stay was entered (Feb. 2007) before claim construction, and ATI's own stay opposition conceded there was "hardly any chance of something occurring that would potentially influence the Court's Markman consideration." Claim construction in ATI's overlapping campaign occurred instead in the E.D. Michigan action, where the court issued a claim-construction order on 2008-11-11 (construing, e.g., '379, '038, '824 terms), followed by a denial of ATI's motion for reconsideration in ATI v. Siemens VDO, 669 F. Supp. 2d 836 (E.D. Mich. 2009).

  • Sources: ATI stay response (D.I. 70, 2007-02-09); ATI v. Siemens VDO, 669 F. Supp. 2d 836 (E.D. Mich. 2009).

7. Trial, verdict, post-trial motions

None. The Delaware action never reached trial or judgment on the merits; it was consumed by the venue motion and the reexamination stay.

8. Final disposition / present posture

The case is closed, but I was unable to verify the specific closing event or date (e.g., stipulated dismissal, settlement/license, or dismissal following reexamination). One aggregator lists "Closed 12/21/06," but that date coincides with the transfer-denial opinion and appears to be a data artifact rather than an actual closing date, since docket activity continued into 2009. The last verifiable activity is the late-2008 briefing on the motion to lift the stay. Treat the exact disposition as unconfirmed. Given ATI's pattern in this campaign (a licensing/assertion model by an individual-inventor NPE), a negotiated resolution is plausible, but I cannot source that.

9. Parallel PTO proceedings and their effect

The reexaminations drove the litigation:

  • Honda defendants initiated ex parte reexaminations of at least five patents, later eight ('387, '414, '248, '080, '602, '595, '136, '978). Elesys initiated inter partes reexaminations (2007-08-17) on the '136 and '595 patents.
  • PTAB/Board appeals (per brianroffe.com's PTO-proceedings index): Elesys North America, Inc. v. ATI, Appeal No. 2013-000150 (PTAB 2012) (inter partes reexamination), in which the Board AFFIRMED the examiner's § 102/§ 103 rejections over White/Kaji, Mattes/Kaji, Spies, Nishitake/Breed/Mattes; and several Ex parte ATI appeals: 2011-010681 (merged inter partes and ex parte reexamination), 2012-008490, and 2013-008246 (PTAB 2014).
  • Sources: D.I. 79, D.I. 80; brianroffe.com/pto-proceedings; Elesys N. Am., Inc. v. ATI (PTAB) opinion reproduced at case-law.vlex.com.

Net effect: The reexamination filings took the Delaware case off the merits track entirely, converting it into a long-running administrative contest. ATI's patents in this family fared poorly in the PTO, which in turn undercut the litigation.

10. Related decisions that shaped the campaign (context)

These are not part of 06-187 but are essential to the patents' fate:

  • Fed. Cir. 2007-09-06 — ATI v. BMW of North America, 501 F.3d 1274: affirmed summary judgment that U.S. 5,231,253 (the '253 side-impact predecessor) was invalid for lack of enablement under § 112 ¶1.
  • E.D. Mich. 2009-10-30 — ATI v. Siemens VDO, 669 F. Supp. 2d 836: held the '379, '038 and '202 patents invalid (anticipated/obvious over U.S. 5,566,974 to Mazur) and the '824 patent invalid (U.S. 5,439,249 to Steffens); the court later granted Defendants' motion for attorney fees (Judge Cleland), while declining to find the case "exceptional" as to certain patents.

Bottom line

The Delaware case's arc was: broad multi-patent complaint (2006-03-17) → venue fight won by ATI (transfer denied 2006-12-21) → early third-party discovery (Jan.–Feb. 2007) → joint defense reexamination motion → case stayed (2007-02-23) → eight patents into reexamination → ATI moved to lift the stay (2008-10-28) → case closed without any Markman or merits ruling (date/terms unverified). The decisive legal developments for the asserted technology happened in the PTO reexaminations/PTAB appeals and the Federal Circuit, not in Judge Sleet's court.

Caveats on sourcing: I verified the complaint dates, patent lists, transfer denial, stay order, and status reports directly from D. Del. opinion and docket-derived documents. The final disposition event and date are not confirmed, and I did not independently pull a PACER docket sheet or an IPR/PGR docket for this specific case (the PTAB activity I found is inter partes/ex parte reexamination appeals from the 2007–2010 era, not AIA IPRs). No Law360/Reuters article specific to the Delaware closure surfaced in my searches.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research plaintiff-side counsel thoroughly, building on the firm names flagged in the prior overview. Let me run multiple searches.

Good progress. Let me pull the docket details and firm/attorney backgrounds.

Plaintiff-Side Counsel of Record — ATI v. American Honda Motor Co., et al., No. 1:06-cv-00187-GMS (D. Del.)

Sourcing caveat. I could not reach PACER directly; the roster below is reconstructed from docket-derived documents mirrored on third-party sites (findforms.com reproductions of filed papers, the Unified Patents litigation portal docket for 1:06-cv-00187, and the ex parte AI-Lab docket mirror), plus opinions from ATI's related litigation. Where a name appears only in related ATI cases rather than on this Delaware docket, I say so explicitly. No in-house counsel for ATI appears anywhere in the filings I reviewed.

Confirmed counsel of record on the Delaware docket

Attorney Role (as reflected in filings) Firm / office Admission in this case
Richard K. Herrmann Delaware local counsel of record; signed virtually every ATI filing here (stipulations, notices of service, discovery notices, pro hac vice motions, letters to Judge Sleet, the motion to lift stay) Morris, James, Hitchens & Williams LLP (now Morris James LLP), 222 Delaware Avenue, 10th Floor, Wilmington, DE 19801 Member of the Delaware bar; appears with Delaware I.D. No. 405 (one early 2006 stipulation shows "#2696," likely a transcription artifact — see caveat below)
Andrew Kochanowski Lead/out-of-state trial counsel for ATI (Sommers Schwartz's principal ATI litigator across the portfolio) Sommers, Schwartz, P.C. (now Sommers Schwartz, P.C.), 2000 Town Center Drive, Suite 900, Southfield, MI 48075 Admitted pro hac vice by order dated April 27, 2006 (Michigan Bar No. P55117)
Michael H. Baniak Patent counsel for ATI (prosecution-side/patent-law specialist supporting the infringement case) Baniak Pine & Gannon, 150 N. Wacker Drive, Suite 1200, Chicago, IL 60606; later McDonnell Boehnen Hulbert & Berghoff LLP, 300 S. Wacker Drive, Chicago, IL 60606 Admitted pro hac vice by order on the motion at D.I. 31 (filed July 21, 2006)

Corroborating filings:

  • D.I. 2 — ATI's Rule 7.1 Disclosure Statement (filed March 17, 2006, the complaint date) carries the signature blocks of Andrew Kochanowski (Sommers Schwartz) and Michael H. Baniak (Baniak Pine & Gannon) as "Attorneys for Plaintiff," identifying them as the original out-of-state/patent counsel of record. (findforms.com mirror of D.I. 2.)
  • April 27, 2006 — Motion and order for admission pro hac vice of Andrew Kochanowski of Sommers, Schwartz, P.C. "[t]o represent Plaintiff Automotive Technologies International, Inc.," signed by Richard K. Herrmann as local counsel; the order granted the motion. (findforms.com mirror.)
  • D.I. 31 (July 21, 2006) — Motion and order for admission pro hac vice of Michael H. Baniak of Baniak Pine & Gannon, likewise granted; certification states he is admitted in Ohio and Illinois.
  • Sept. 1, 2006 Notice of Service and numerous letters to Judge Sleet (e.g., re TS Tech intervention, re the motion to transfer, re claim construction) are all signed by Richard K. Herrmann, confirming him as the Delaware attorney of record. (Unified Patents portal docket for 1:06-cv-00187.)
  • D.I. 82 / 12-01-2008 reply — ATI's Motion to Lift Stay and its reply brief are attributed on the docket to Herrmann's electronic signature (the substantive papers behind them appear to be the Sommers Schwartz/ATI team's work).

Court/opinion confirmation of the team's roles in the ATI portfolio

  • In ATI v. Siemens VDO Automotive Corp. (E.D. Mich., Case No. 06-15756), a companion ATI case sharing the same side, the complaint caption and filings are signed by Andrew Kochanowski (P55117) and Lisa R. Mikalonis (P39485) of Sommers Schwartz, Southfield, MI. (RPX Insight litigation-document mirror.)
  • In ATI v. Delphi Corp., 776 F. Supp. 2d 469, 474 (E.D. Mich. 2011), the court's counsel list names "Henri O. Harmon, Andrew Kochanowski, Lisa R. Mikalonis, Sommers Schwartz, P.C., Southfield, MI" for ATI, alongside Houston counsel. This confirms Kochanowski's and Sommers Schwartz's role as ATI's core litigation team, though Harmon and Mikalonis are not verified as appearing on the Delaware 06-187 docket — they appear in the Michigan matters.
  • Detroit Legal News (March 13, 2008) reports Lisa Rycus Mikalonis joined Sommers Schwartz as a shareholder, "a commercial litigator and media attorney, focusing on patent litigation" — useful background on the ATI team member who handled the parallel Michigan suits.

Notable experience notes

  • Andrew Kochanowski (Sommers Schwartz) — ATI's most visible patent litigator; he is the attorney the press identified as "ATI's attorney" when ATI lost the Delphi airbag-patent summary-judgment fight (Law.com/Am Law Litigation Daily: "Kenyon & Kenyon Wins Airbag Patent Fight for Delphi"). He signed ATI's briefs in the E.D. Mich. side-impact and Delphi matters and was ATI's out-of-state anchor here.
  • Michael H. Baniak (Baniak Pine & Gannon) — patent specialist; contemporaneous records show the same firm/boutique representing other patent plaintiffs (e.g., Friskit, Inc. in N.D. Cal.), consistent with a patent-prosecution/-litigation practice. He later appears with McDonnell Boehnen Hulbert & Berghoff on ATI's behalf in E.D. Mich. papers dated Oct. 28, 2010.
  • Richard K. Herrmann (Morris James) — Delaware IP-bar regular; his name appears as local counsel throughout the ATI Delaware filings and is the signature on ATI's letters to Judge Sleet and its motion to lift the reexamination stay.

Flags, qualifications, and contradictions

  1. No in-house counsel identified. ATI's founder/CEO David S. Breed is the inventor-principal but does not appear as counsel of record; no ATI in-house attorney appears in the filings I could reach.
  2. D.I. numbering is partially uncertain. The Baniak PHV motion is confirmed as D.I. 31; I could not verify the exact docket number of the Kochanowski PHV motion (April 27, 2006) or the AI-Lab docket's apparent "Closed (12/21/06)" date. That closure date conflicts with the docket showing live activity into 2009 (Judge Sleet's 9/15/09 memorandum and order on ATI's motion to lift the stay), so it appears to be a metadata error rather than the true termination date. Treated as unverified.
  3. Bar-number discrepancy. The April 6, 2006 stipulation reproduces Herrmann's signature with "(#2696)," while the 2006 pro hac vice motions show him signing with "I.D. No. 405." Since both bear the same name and address (Morris James, 222 Delaware Ave.), this is most likely a transcription artifact on the third-party form site; I flag it rather than assert a single number as authoritative.
  4. Counsel named only in sibling cases. Edward W. Goldstein and Matthew J.M. Prebeg (Houston firms) and Gary E. Hood (Baniak Pine & Gannon) appear on ATI pleadings in the E.D. Mich. litigation (Siemens VDO / Justia-mirrored filing), not in a document tied to the Delaware 06-187 docket that I could reach. They are not confirmed here.
  5. No sealed-appearance issue identified. Every ATI appearance I found is an open filing (pro hac vice motions and notices of service); I saw no indication that plaintiff's counsel information was sealed. The limitation is access to PACER, not sealing.

Bottom line: ATI's plaintiff-side team on this docket consisted of Delaware local counsel Richard K. Herrmann (Morris James), lead out-of-state counsel Andrew Kochanowski (Sommers Schwartz), and patent counsel Michael H. Baniak (Baniak Pine & Gannon), with Lisa R. Mikalonis and Henri O. Harmon (both Sommers Schwartz) forming the wider ATI litigation team in the parallel Michigan cases.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research defense counsel of record from the docket and firm sources.

Good data. Let me pin down the full defense team, including any Michigan counsel and Elesys/GM-specific representation.

Let me look at the full docket and check whether each defendant had separate counsel.

Defense counsel of record — ATI v. American Honda Motor Co., No. 1:06-cv-00187-GMS (D. Del.)

Sourcing note. This is built from docket-derived filings (signature blocks, "OF COUNSEL" designations, motions for pro hac vice) accessible via the Unified Patents docket index for 1:06-cv-00187 and RECAP-mirrored PDFs (findforms.com reproductions of the ECF documents), plus firm/industry directories. I could not pull the live PACER docket sheet's "attorneys" tab (paywalled), so I cannot exclude an attorney who entered an appearance but never signed a substantive filing. The defendants litigated this case as a joint defense group — Honda, Elesys, and GM filed the transfer motion, the stay motion, the subpoenas, and the pro hac vice motion collectively — and I found no separate, defendant-specific counsel (e.g., a standalone Elesys or GM firm) appearing on this docket. That is itself a finding: no firm other than those below is verified for any individual defendant here.

Also note: TS Tech USA Corporation was a successful intervenor-defendant (D.I. 42, Oct. 2, 2006), not a named defendant, and its counsel is listed separately because it appears throughout the docket alongside the named defendants.


Delaware / local counsel — Morris, Nichols, Arsht & Tunnell LLP (1201 N. Market St., Wilmington, DE 19899)

Attorney Role Notes
Thomas C. Grimm (Del. Bar #1098) Lead Delaware counsel of record for Honda, Elesys, and GM Signed the June 7, 2006 motion to transfer (D.I. 17), the Oct. 25, 2006 notice of non-objection to TS Tech's intervention, the Feb. 15, 2007 discovery-conference letter to Judge Sleet, and the notices of subpoena naming all three defendants. Longtime Morris Nichols IP partner; Band 1 in Chambers USA (IP) and repeatedly listed in IAM Patent 1000 for Delaware patent litigation.
Benjamin J. Schladweiler (Del. Bar #4601) Delaware counsel / local counsel Appears on the Oct. 2, 2006 TS Tech intervention motion, the Oct. 25, 2006 non-objection notice "Attorneys for Defendants," and the January 2007 third-party subpoena notices (Duvall, Varga, Morin, Breed, Johnson) filed jointly by TS Tech and the three defendants. Partner in Morris Nichols' IP litigation group.
Rodger D. Smith II (Del. Bar #3778) Delaware counsel (appearance inferred from ECF) The Unified Patents docket index shows the June 28, 2006 defendants' reply brief on the transfer motion as electronically filed by "(Smith, Rodger)." Since ECF filing requires attorney-of-record status, this indicates Smith was on the defense team. He is a Morris Nichols IP partner, IAM Patent 1000-listed; flag: I did not retrieve a signed Smith filing in this case, so treat this appearance as high-confidence but docket-index-derived rather than signature-verified.

Lead trial counsel ("of counsel") — Brinks Hofer Gilson & Lione (NBC Tower, Suite 3600, 455 N. Cityfront Plaza Dr., Chicago, IL 60611; with an Ann Arbor, Michigan office)

The defendants' June 7, 2006 transfer motion and January 23, 2007 stay motion both carry the identical "OF COUNSEL" block naming these four Brinks attorneys, and the docket shows a motion for pro hac vice appearance of Timothy Q. Delaney, Ralph J. Gabric, Miyoung Shin, and Rickard DeMille filed by Honda, Elesys, and GM.

Attorney Role Notes
Timothy Q. Delaney Lead trial counsel / of counsel (pro hac vice) for all three defendants Brinks IP litigator; Illinois Super Lawyers (IP litigation, 2014 listing). He is the Brinks contact copied on defense correspondence to the court (e.g., cc list on Grimm's Feb. 15, 2007 letter). The transfer brief's footnote that "Defendants' lead counsel has an office in Ann Arbor, Michigan" is best read as referring to Brinks.
Ralph J. Gabric Of counsel (pro hac vice) Brinks IP litigation partner; was copied on plaintiff's Dec. 12, 2006 letter to Judge Sleet. Later part of the Brinks team in FLIR Systems v. Leak Surveys (IPR2014-00411 / -00434).
Rickard (Rickard K.) DeMille Of counsel (pro hac vice) Brinks IP litigator; co-counsel with Gabric in the FLIR Systems IPRs (2014) and in related USPTO proceedings for FLIR.
Miyoung Shin Of counsel (pro hac vice) Brinks attorney; least publicly documented of the four. Flag: beyond the pro hac vice motion and the "OF COUNSEL" signature blocks, I found little independent public detail on her role or later patent-litigation matters.

Because the pro hac vice motion and every signature block were filed jointly on behalf of all three named defendants, the record does not differentiate which Brinks attorney represented which defendant — I found no evidence of separate Elesys- or GM-specific trial counsel on this docket. (The Honigman Miller attorneys that surface for GM in my searches appear in unrelated GM matters, not in this case.)

Counsel for intervenor-defendant TS Tech USA Corporation (not a named defendant)

  • Thomas C. Grimm and Benjamin J. Schladweiler, Morris Nichols (same Wilmington address) — local counsel for intervenor TS Tech (signed the Oct. 2, 2006 motion to intervene, D.I. 42).
  • James D. Curphey and Ryan P. Sherman, Porter, Wright, Morris & Arthur LLP, 41 South High Street, Columbus, OH 43215 — of counsel for TS Tech, named in the intervention motion's "OF COUNSEL" block.

Caveats and one flag on the prior summary

  • No sealed/unavailable-appearance issue indicated — counsel appear openly on the docket; the limitation is my inability to pull the PACER attorney list, not sealing.
  • Flag: the earlier case overview described the defendants as represented by "the automakers' shared Michigan-based defense team." The verified record shows the lead defense team was Chicago-based Brinks Hofer Gilson & Lione with an Ann Arbor, Michigan office, plus Wilmington local counsel at Morris Nichols. I found no separate Michigan-headquartered firm (e.g., Honigman, Dickinson Wright, Harness Dickey) appearing on this docket, so that phrase should be read as a reference to Brinks' Ann Arbor office rather than to a distinct Michigan firm.
  • The earlier summary's plaintiff-side names (Richard K. Herrmann and Mary B. Matterer of Morris James; Andrew Kochanowski of Sommers Schwartz; Michael H. Baniak) are consistent with the filings I reviewed here; those are adverse counsel and outside this task.