Litigation

Automotive Technologies International, Inc. v. Hyundai Motor America et al.

dismissed with prejudice

1:06-cv-00391-GMS

Filed
2006-06-16
Terminated
2017-05-18

Patents at issue (11)

Summary

ATI sued Hyundai, BMW of North America, and Kia in the District of Delaware asserting multiple patents including US 6,757,602. The court denied a motion to transfer to E.D. Mich.; BMW claims were dismissed with prejudice in 2013 and Hyundai/Kia claims with prejudice in 2017.

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 to build a well-grounded overview. Let me start with several searches.

Let me dig deeper into the specific case details, outcomes, and the patents-in-suit.

Case Overview & Background — Automotive Technologies International, Inc. v. Hyundai Motor America et al., No. 1:06-cv-00391-GMS (D. Del.)

The parties. Plaintiff Automotive Technologies International, Inc. ("ATI") is a Delaware corporation headquartered in Denville, New Jersey, built around the crash‑sensing and occupant‑protection inventions of engineer David S. Breed and his co‑inventors. It is best characterized as an inventor‑founded patent‑holding and licensing company rather than an automaker or parts supplier — the Stanford NPE Litigation Database tags ATI with the "individual‑inventor‑started" and "acquired‑patents" asserter categories, and contemporaneous press described it as "closely held Automotive Technologies, headed by engineer David Breed of Denville, N.J." (Stanford NPE Litigation Database – ATI; Mo. Lawyers Media, Sept. 7, 2007). The defendants — Hyundai Motor America, BMW of North America LLC, and Kia Motors America, Inc. — are the U.S. sales/distribution subsidiaries of Hyundai, BMW, and Kia, and each is a Delaware corporation, which is the hook that supported venue in Delaware. ATI filed a companion case the same year, C.A. No. 06‑187‑GMS, against American Honda Motor Co., Elesys North America, and General Motors; the court noted that ten of the twelve patents asserted in that companion action overlap with this docket (transfer opinion, D. Del., ATI v. American Honda, 06‑187).

The accused technology and the patents‑in‑suit. The asserted technology is the sensing‑and‑control layer of vehicle occupant protection: side‑impact crash sensors and side airbags; occupant presence, position, and weight sensing (including bladder‑based and seat‑track sensors, and the "PODS" passenger‑occupant‑detection systems made by tier‑one suppliers); and the electronic control logic that decides whether and how forcefully to deploy an airbag. ATI's parallel complaints describe the accused systems as "occupant and/or child seat and/or rear‑facing child seat detection and/or position systems which incorporate a bladder," and as "side impact sensors and side airbag systems" (RPX litigation documents; RPX litigation documents). The eleven patents in this docket, with the technical sketches I was able to source, are: 6,757,602 — system for determining the occupancy state of a vehicle seat and controlling a component based on that state; 6,325,414 and 6,712,387 — method and apparatus for controlling deployment of a side airbag; 6,484,080, 6,850,824, and 6,833,516 — sensing/monitoring systems and methods for controlling a vehicular component (the '516 tied to bladder‑plus‑seat‑track‑sensor PODS); 6,869,100 — method and apparatus for controlling an airbag; and 5,901,978, 6,422,595, 6,942,248, and 6,958,451 — additional occupant‑sensing/crash‑sensing family members (the Patent Office filing report lists all eleven patents and their issue dates of 1999–2005) (Form AO‑120, D.I. 4, June 19, 2006; Google Patents, US 6,757,602; RPX/Michigan complaint).

Procedural posture, venue, and why the case is notable. ATI filed on June 16, 2006 in the District of Delaware, assigned to Chief Judge Gregory M. Sleet. Judge Sleet denied the defendants' § 1404(a) motion to transfer to the Eastern District of Michigan on Dec. 21, 2006 (D.I. 22), affording less deference to ATI's forum choice because Delaware was "not its home turf" but crediting ATI's rational justifications — the parties' Delaware incorporation and this district's relatively fast docket — and noting that ATI's pending Michigan litigation involved different patents (06‑187 transfer opinion). On Feb. 23, 2007 the court stayed both ATI Delaware actions pending USPTO reexamination of at least five patents‑in‑suit (D.I. 48), with six‑month status reports to follow; the Aug. 21, 2007 joint status report (D.I. 49) recites pending reexaminations of the '387, '080, '414, '602, and '248 patents plus Elesys's inter partes reexamination requests on the '136 and '595 patents, and identifies the '978, '451, '100, '824, and '516 patents as not yet in reexamination (status report). ATI moved to lift the stay in October 2008 (D.I. 54), which the defendants jointly opposed. BMW's claims were resolved by a stipulation of dismissal with prejudice (D.I. 76, filed Aug. 7, 2013; so ordered Nov. 14, 2013), and the Hyundai/Kia claims were dismissed with prejudice, terminating the case on May 18, 2017 (Unified Patents docket portal). The case is notable in three respects. First, it was one front in a campaign that Banner & Witcoff described as suing "the whole of the automotive world" — ATI asserted Breed's sensor patents against nearly every major automaker and numerous suppliers, and in the related ATI I action the courts invalidated the '253 side‑impact‑sensor patent for lack of enablement, a decision the Federal Circuit affirmed in a widely cited opinion, Auto. Techs. Int'l v. BMW of N. Am., 378 F. Supp. 2d 780 (E.D. Mich. 2005), aff'd, 501 F.3d 1271 (Fed. Cir. 2007) — prompting many defendants to settle (Banner Witcoff; Federal Circuit opinion; Berkeley Tech. L.J. analysis). Second, the defendants' aggressive use of ex parte and inter partes reexamination to freeze this litigation is an early template for the reexamination‑/IPR‑driven stay practice that now dominates patent litigation. Third, the market context matters: the accused occupant‑classification/detection patents bore on the occupant‑detection systems automakers were phasing in under NHTSA's FMVSS 208 advanced‑airbag rule, which gave the portfolio real commercial leverage.

Sourcing caveats. The docket items and outcomes above (transfer denial, stay, status reports, BMW dismissal, 2017 termination) are grounded in the cited docket records and court filings. I could not independently confirm from the sources reviewed (a) the full official title of each of the eleven patents — titles for the '978, '595, '248, and '451 patents in particular are unverified; (b) the precise accused product list in this docket (the product descriptions quoted come from ATI's parallel complaints); (c) the disposition of ATI's 2008 motion to lift the stay; or (d) whether the BMW and Hyundai/Kia dismissals were pursuant to confidential settlements. No inter partes review (as opposed to reexamination) activity specific to these eleven patents was confirmed, so any IPR linkage should be stated cautiously.

Key legal developments & outcome

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

I'll research this case thoroughly across the litigation docket, rulings, and any parallel PTAB proceedings.

Overview

C.A. No. 06-391-GMS (D. Del.) was filed in 2006 and stayed in 2007 for what turned out to be nearly its entire existence, then ended by stipulated dismissal with prejudice in 2013 (BMW) and 2017 (Hyundai/Kia). No claim construction ruling, no trial, no verdict, and no damages award ever issued in this case. The decisive events were administrative (PTO reexamination), not judicial. Below is the chronological reconstruction.


1. Filing, pleadings, and counterclaims (2006)

  • 2006-06-16 — ATI filed the complaint in D. Del. against Hyundai Motor America, BMW of North America LLC, and Kia Motors America Inc. The AO-120 Patent Report (D.I. 4, filed 2006-06-19) lists the 11 asserted patents: 5,901,978; 6,325,414; 6,422,595; 6,484,080; 6,712,387; 6,757,602; 6,833,516; 6,850,824; 6,869,100; 6,942,248; 6,958,451 — all directed to occupant sensing / airbag and vehicular-component control technology (bladder/weight-based occupant detection, seat-track sensors, crash sensors). AO-120 report
  • The case was a companion to ATI v. American Honda Motor Co., C.A. No. 06-187-GMS (filed 2006-03-17), which asserted 12 patents; ten of the 12 were common to both cases and the two cases were run on parallel tracks (first amended complaint in 06-187 added the '080 and '824 patents and dropped '022). 06-187 opinion
  • Service / responses: Kia and BMW both served 2006-07-13 (Kia answer due 8/2/06). BMW's response deadline was extended by stipulation to 2006-09-08.
    • 2006-09-08 — BMW answer with jury demand + counterclaim against ATI.
    • 2006-09-18 — Kia answer with jury demand + counterclaim against ATI.
    • 2006-09-26 — ATI answer to Kia's counterclaim (and later to BMW's counterclaim).
  • 2006-11-20 — Joint status report (D.I. 21) addressing ADR/mediation, a protective order, coordination of claim construction with 06-187, a proposed joint-inventor deposition protocol, and a competing case schedule (ATI proposed trial in May 2008). BMWNA flagged its intent to move to transfer to E.D. Mich. status report
  • Dec. 2006 — Rule 26(a) initial disclosures and preliminary claim disclosures served (BMW's initial disclosures 2006-12-21); BMW served its Initial List of Claim Terms and Proposed Claim Constructions on 2007-01-26.

2. Venue motion — denied (Dec. 2006)

  • 2006-12-21 — Judge Gregory M. Sleet denied the defendants' § 1404(a) motion to transfer (D.I. 17) to the Eastern District of Michigan, in a memorandum and order issued simultaneously in 06-187 and 06-391. Applying Jumara v. State Farm and Shutte v. Armco, the court gave reduced deference to ATI's Delaware forum choice (not ATI's "home turf") but still found: (i) ATI's Delaware-incorporation/personal-jurisdiction/speed rationale was legitimate; (ii) books-and-records convenience was neutral because documents are digitized and producible; (iii) third-party witness convenience did not favor Michigan ("a flight to Delaware is not an onerous task"); and (iv) public-interest factors were weak, including that no patent in the Delaware suit was asserted in any E.D. Mich. action. Memorandum (06-187/06-391) | Order denying transfer

3. The stay pending reexamination — the defining event (Feb. 2007)

  • 2007-02-23 — The court stayed both 06-187 and 06-391 (D.I. 48) "pending re-examination of at least five patents in suit by the Patent and Trademark Office," with joint status reports every six months, the first due 2007-08-21. Stay order, D.I. 48
  • 2007-08-21 — First joint status report: five ex parte reexaminations were pending — on the '387, '080, '414, '602, and '248 patents, filed by counsel for the Honda defendants in the companion case. ATI reported it had responded to Office Actions on the '602 and '080 proceedings; responses on the '387, '414 and '248 were imminent. ATI separately noted additional reexamination requests directed at the '978, '451, '100, '824 and '516 patents. The parties predicted initial resolution by late 2007–mid 2008 and agreed to revisit the stay "if one or more of the reexaminations have concluded with allowed and asserted claims." status report
  • 2008-10-28 — ATI filed a motion to lift the stay (D.I. 54) with a supporting brief and exhibits; the defendants filed a joint answering brief in opposition on 2008-11-17. ⚠️ I could not verify from the available sources that the court ruled on D.I. 54. What is documented is that the stay remained in place — the docket reflects continuing six-month joint status reports (May 2010, and thereafter), and on 2012-02-27 Judge Sleet entered an order that "the parties shall continue to submit a joint status report to the court every six months."
  • Administrative developments: The '080 patent is described in later ATI pleadings as having been "reexamined and confirmed" by the PTO. (Reexamination outcomes for the other patents are not reliably documented in the sources I could retrieve.)

4. Long dormancy, parallel Delaware/E.D. Mich. activity (2010–2013)

  • 2010–2015 — The 06-391 docket is dominated by status reports (including a 2010-05-11 joint status report filed jointly in the Delaware actions with American Honda, Elesys, and General Motors, reflecting coordinated reporting across 06-187 and 06-391), protective-order practice, pro hac vice appearances, and counsel firm changes (e.g., Joseph P. Lavelle/BMW and Howrey LLP's dissolution, with Andrew N. Stein of Dewey & LeBoeuf appearing for BMW in 2012).
  • 2013-02-06 — ATI served a fresh "List of Claim Terms and Proposed Claim Constructions" — the only substantive claim-construction activity in this docket after the 2007 stay. No Markman hearing or claim construction opinion was ever issued in 06-391.
  • 2013 — BMW filed a contingent motion to stay pending reexamination, contemporaneous with its exit from the case.
  • Broader ATI campaign (context): The patent family traces to the '253 side-impact patent, which was held invalid for lack of enablement in ATI v. BMW of North America, 501 F.3d 1274 (Fed. Cir. 2007) (affirming E.D. Mich. summary judgment), a ruling that shaped ATI's later claim-scope positions. ATI also litigated in E.D. Mich. (ATI v. Delphi Corp., Nos. 08-cv-11048 & 10-cv-10647, Judge Cleland; Fed. Cir. appeal No. 2011-1292) and in E.D. Tex. Hyundai was also a defendant in the E.D. Mich. consolidated actions. Fed. Cir. 2007 opinion | Fed. Cir. 11-1292 order

5. BMW dismissed with prejudice (2013)

  • 2013-08-07 — ATI and BMW filed a "Stipulation of Dismissal with Prejudice and Without Costs or Attorneys' Fees to Either Party," dismissing all of ATI's claims against BMW and all of BMW's counterclaims against ATI.
  • 2013-11-14 — Chief Judge Sleet so-ordered the stipulation (D.I. 76). BMW was out of the case. No merits adjudication, no fees. docket listing

6. Discovery, trial, and post-trial motions

  • Discovery: Never progressed beyond the early phase. The 2006-12 initial disclosures and claim-term exchanges were the substantive milestones; the February 2007 stay froze fact discovery before expert discovery, and the parties' proposed 2007–2008 schedule (expert reports, dispositive motions, trial in May 2008) was never executed. Notably, ATI's proposal for joint/coordinated inventor depositions with the 06-187 case was opposed by defendants and never implemented.
  • Summary judgment / Daubert / motions in limine: None adjudicated in 06-391 (BMW's conditional motion to stay pending reexamination is the only substantive 2013 motion reflected).
  • Trial / verdict / JMOL / new trial / fee motions: None. The case never reached trial; there was no judgment, no injunction, no damages, and no § 285 fee award.

7. Final disposition — Hyundai and Kia dismissed with prejudice (2017)

  • 2017-05-16 — Hyundai and Kia filed a Stipulation of Dismissal with Prejudice (D.I. 89).
  • 2017-05-18 — Judge Sleet so-ordered the stipulation and terminated the case. docket listing
  • No appeal was taken, so there is no Federal Circuit merits decision on the asserted patents arising from 06-391. The dismissal-with-prejudice of every defendant resolved the case entirely in ATI's procedural favor but produced zero substantive patent rulings.

8. Parallel PTAB proceedings (IPR/PGR)

  • No IPR or PGR on the asserted patents is attributable to this litigation. IPR/PGR practice began 2012-09-16, by which time this case had already been stayed for five-plus years and BMW was preparing to exit. I found no record of an IPR or PGR petition against the '602, '414, '595, '978, '387, '080, '516, '824, '100, '248, or '451 patents filed by Hyundai, Kia, or BMW in connection with this case. ⚠️ This is a negative finding based on the sources retrieved; I could not run an exhaustive PTAB docket check.
  • What actually disciplined the litigation was ex parte reexamination, not AIA review. The 2007-02-23 stay was expressly premised on PTO reexamination of at least five asserted patents, with five Honda-defendant requests pending as of August 2007 ('387, '080, '414, '602, '248) and additional requests directed at the '978, '451, '100, '824 and '516 patents. That stay — never lifted to a merits track — is the single most consequential event in the case, converting a 2008 trial-track patent suit into a decade-long monitoring docket that terminated by stipulation.
  • At least one asserted patent survived reexamination: the '080 patent is described in ATI's later pleadings as "reexamined and confirmed."

Bottom line

Phase Event Date
Filed Complaint (11 patents) v. Hyundai, BMWNA, Kia 2006-06-16
Pleadings BMW/Kia answers + counterclaims; ATI replies 2006-09-08 / 09-18 / 09-26
Motion § 1404(a) transfer to E.D. Mich. denied (D.I. 17) 2006-12-21
Stay Case stayed pending PTO reexaminations (D.I. 48) 2007-02-23
Motion ATI motion to lift stay (D.I. 54); opposed 2008-10-28 / 11-17
Claim construction Claim-term exchange only; no Markman ruling 2007, 2013
Dismissal BMW dismissed with prejudice, no fees (D.I. 76) 2013-11-14
Dismissal Hyundai & Kia dismissed with prejudice (D.I. 89); case terminated 2017-05-18
Trial / appeal None —
PTAB No IPR/PGR; driver was ex parte reexamination —

Sourcing caveats: The docket item numbers and dates above are drawn from the Unified Patents docket mirror, the D. Del. opinion PDFs, and reproduced D.I. 4/21/48 filings. I was unable to verify (a) the disposition of the D.I. 54 motion to lift the stay, (b) whether any interim Markman hearing occurred in 06-391, (c) the specific reexamination certificates/outcomes for the asserted patents, or (d) whether the 2017 Hyundai/Kia dismissal followed a settlement or license — the stipulation's terms are not reflected in the sources retrieved.

Plaintiff representatives

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

I'll research the counsel of record for the plaintiff in this D. Del. case.

Good start. Let me dig into the docket and the plaintiff's specific attorneys.

I have strong leads. Let me verify the plaintiff's counsel roster across the docket and the complaint.

Plaintiff's Counsel of Record — Automotive Technologies Int'l, Inc. v. Hyundai Motor America, BMW of N. Am., Kia Motors America, No. 1:06-cv-00391-GMS (D. Del.)

There is a single plaintiff, Automotive Technologies International, Inc. ("ATI"), so the roster below is ATI's side only. The record shows a core Chicago/Michigan trial team plus Delaware local counsel. Signatures and service lists appear in the early docket (D.I. 40, Jan. 23, 2007; D.I. 42, Jan. 26, 2007) and the Federal Circuit opinion in the related ATI case, which names the same team.

Lead / trial counsel (out-of-state)

Attorney Role Firm & Office Notes
Michael H. Baniak Lead trial counsel (argued the ATI side's Federal Circuit appeal) Baniak Pine & Gannon, 150 N. Wacker Dr., Ste. 1200, Chicago, IL (as listed in 2006 filings); subsequently McDonnell Boehnen Hulbert & Berghoff LLP, 300 S. Wacker Dr., Chicago, IL (baniak@mbhb.com) Longtime ATI patent counsel. Listed on the notices of service as "Attorneys for Plaintiff Automotive Technologies International, Inc."; argued Automotive Techs. Int'l v. BMW of N. Am., 501 F.3d 1274 (Fed. Cir. 2007). A later docket entry notes a request to remove him as co-counsel.
Andrew Kochanowski Co-counsel / appellate "of counsel" Sommers Schwartz, P.C., 2000 Town Center, Suite 900, Southfield, MI 48075 Listed on the parallel ATI complaint as "Attorneys for Plaintiffs" and as "of counsel" on the Federal Circuit brief with Baniak; plaintiff-side patent litigator.
Lisa R. Mikalonis Co-counsel (E.D. Mich. filings; later withdrawn) Sommers Schwartz, P.C., Southfield, MI Signed the parallel ATI complaint with Kochanowski; a Delaware docket entry reflects a "Notice requesting Clerk to remove Lisa R. Mikalonis as co-counsel."
Michael D. Gannon Of counsel (appellate) Baniak Pine & Gannon / MBHB, Chicago Named "of counsel" on the Federal Circuit brief in ATI v. BMW.

Delaware local counsel

Attorney Role Firm & Office Notes
Richard K. Herrmann Delaware local counsel of record Morris, James, Hitchens & Williams (now Morris James LLP), 500 Delaware Ave., Ste. 1500, Wilmington, DE 19801 Delaware counsel who filed ATI's Rule 26(a) disclosures and preliminary claim disclosure and the opening brief on ATI's motion to lift stay; a long-time D. Del. patent litigator.
Mary Matterer Delaware local counsel Morris, James, Hitchens & Williams (Morris James LLP), Wilmington, DE Signed ATI's answers to the defendants' counterclaims (e.g., Kia counterclaim) and appears on the plaintiff's service list.

Sourcing and caveats

  • The strongest contemporaneous evidence is the parties' Notices of Service (D.I. 40, filed 1/23/2007; D.I. 42, filed 1/26/2007), which list ATI's service copies to Morris James (Herrmann/Matterer), Baniak (then at Baniak Pine & Gannon), and Kochanowski (Sommers Schwartz), and expressly label McDonnell Boehnen Hulbert & Berghoff, 300 S. Wacker Dr., Chicago as "Attorneys for Plaintiff Automotive Technologies International, Inc."
  • The docket confirms Herrmann and Matterer acted for ATI (they filed ATI's Rule 26(a) disclosures, ATI's preliminary claim disclosure, ATI's opening brief on its motion to lift the stay, and ATI's answers to counterclaims).
  • The Federal Circuit's opinion in the related case, Automotive Technologies Int'l, Inc. v. BMW of North America, Inc., 501 F.3d 1274 (Fed. Cir. 2007), lists "Michael H. Baniak, McDonnell Boehnen Hulbert Berghoff LLP … argued for plaintiff/counterclaim defendant-appellant. Of counsel on the brief was Andrew Kochanowski, Sommers Schwartz, P.C. … Of counsel was Michael D. Gannon," corroborating the roster.
  • Uncertainty to flag: The scanned D. Del. notices of service in the free-document archives mix plaintiff and BMW counsel in one recipient list without per-attorney labels, so a few of the 2006 entries require cross-checking against the docket. Also, the record I could retrieve does not show an in-house ATI attorney or any change of ATI's lead counsel during the long stay (2009–2012) and the eventual 2013 (BMW) and 2017 (Hyundai/Kia) dismissals with prejudice — later-year appearances, if any, would need to be confirmed on the full PACER docket. I did not locate any sealed attorney appearance; nothing in the available record indicates a filing was sealed as to counsel identity.

If you need the complete, date-stamped appearance list (including any 2012–2017 substitutions), the authoritative source is the PACER docket for 1:06-cv-00391-GMS, which I could not bill directly here.

Defendant representatives

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

I'll research counsel of record for the defendants. Let me run several targeted searches.

I have strong leads. Let me verify the specific firms and attorneys, and track the substitution history.

I hit my research-step limit while verifying two later attorneys, so I'll present what the filings establish and flag the gaps. Here is the counsel-of-record picture for ATI v. Hyundai Motor America, No. 1:06-cv-00391-GMS.

Counsel of Record — Defendants

Framing note. There were two distinct defense groups with separate representation: (1) Hyundai Motor America ("HMA") and Kia Motors America, Inc. ("KMA"), represented jointly throughout; and (2) BMW of North America LLC ("BMWNA"), represented separately until its claims were dismissed with prejudice in 2013. Both groups followed the standard Delaware pattern of a Wilmington firm acting as local counsel alongside out-of-state "national" counsel admitted pro hac vice. No in-house counsel appear in the filings reviewed.


A. Hyundai Motor America & Kia Motors America, Inc. (joint defense)

Phase 1 — 2006 to mid-2010s

Name Role Firm / Office Notes
Paul E. Crawford (Bar No. 0493) Delaware local counsel (lead DE) Connolly Bove Lodge & Hutz LLP, Wilmington, DE Longtime Delaware patent litigator; signed the HMA/KMA answers, invalidity contentions, disclosure statements, and Rule 26 filings.
Patricia S. Rogowski (Bar No. 2632) Delaware local counsel Connolly Bove Lodge & Hutz LLP, Wilmington, DE Co-signed HMA/KMA Delaware filings.
Jeffrey K. Sherwood National/lead counsel (pro hac vice) Akin Gump Strauss Hauer & Feld LLP, Washington, DC Akin Gump's patent litigation group; listed as HMA/KMA counsel in the joint status reports.
Frank C. Cimino, Jr. National counsel (pro hac vice) Akin Gump, Washington, DC Co-signed HMA/KMA disclosures and status reports.
Paul A. Gennari National counsel (pro hac vice) Akin Gump, Washington, DC Same.
Jin-Suk Park National counsel (pro hac vice) Akin Gump, Washington, DC Also appears on ATI's E.D. Tex./E.D. Mich. service lists (Akin Gump counsel for Hyundai/Kia).
William E. Potts (a/k/a William E. Potts, Jr.) National counsel (pro hac vice) Akin Gump, Washington, DC Subject of a pro hac vice motion filed by HMA/KMA.
Steven M. Zager National counsel (pro hac vice) Akin Gump, Washington, DC Named among the Akin Gump attorneys later terminated by substitution.

Sources: HMA/KMA Joint Status Report (Nov. 20, 2006) and (Aug. 21, 2007); HMA/KMA Disclosure Statement (Oct. 27, 2006); HMA/KMA Notice of Service (Dec. 7, 2006; Jan. 23, 2007); Unified Patents docket portal for 1:06-cv-00391 (all linked below).

Phase 2 — Substitution of Delaware counsel

  • Thomas C. Grimm — Delaware counsel, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE. A Notice of Substitution of Counsel for HMA/KMA entered Grimm's appearance and terminated Crawford, Rogowski, Park, Sherwood, Cimino, Gennari, Potts, and Zager. Grimm is a Chambers-ranked Delaware IP/patent litigator (Morris Nichols Band 1 IP tier); Morris Nichols has been lead or co-counsel in numerous Delaware patent actions. (Unified Patents docket; Morris Nichols Chambers releases)

Phase 3 — 2015 pro hac vice entrants

  • Edward J. Naidich and Andrew C. Sonu — each the subject of a motion for pro hac vice appearance "filed by Hyundai Motor America, Kia Motors America Inc." dated 06/12/2015 (Unified Patents docket). ⚠️ I could not confirm the firm or office for either attorney before reaching my research-step limit. Do not rely on a firm attribution for these two without checking the PHV motion itself (D.I. filed 6/12/2015).

⚠️ Sequencing caveat: The Unified Patents docket excerpt lists both the Akin Gump PHV motions and the Grimm substitution without dates for the substitution, so the precise chronology of when Akin Gump/Connolly Bove exited and when Grimm (and then Naidich/Sonu) entered is not fully verified. The Naidich/Sonu June 2015 entry postdates the Akin Gump team's presence in the 2015 filings, which is consistent with a late-case change of national counsel, but this should be confirmed against the docket sheet.


B. BMW of North America LLC (separately represented; claims dismissed with prejudice 2013)

Name Role Firm / Office Notes
Richard L. Horwitz (Bar No. 2246) Delaware local counsel (lead DE) Potter Anderson & Corroon LLP, Wilmington, DE Dean of the Delaware patent bar; signed BMWNA's stipulation, service notices, and status reports.
David E. Moore (Bar No. 3983) Delaware local counsel Potter Anderson & Corroon LLP, Wilmington, DE Co-signed BMWNA Delaware filings.
Joseph P. Lavelle National/lead counsel Howrey LLP, Washington, DC Listed as BMWNA counsel with Dunham in the 2006–07 joint status reports; Howrey was a leading patent-trial firm.
Thomas M. Dunham National co-counsel Howrey LLP, Washington, DC A "Notice requesting Clerk to remove Thomas M. Dunham of Howrey LLP as co-counsel" appears on the docket (Howrey dissolved in March 2011).
Andrew N. Stein National counsel (pro hac vice) Dewey & LeBoeuf LLP Subject of a pro hac vice motion filed by BMW of North America LLC. (Dewey & LeBoeuf dissolved in 2012.)

Sources: Joint Status Report (Nov. 20, 2006); BMWNA HMA/KMA Request for Extension Stipulation (Aug. 2, 2006) signed by Horwitz/Moore for BMWNA; Unified Patents docket for 1:06-cv-00391.

Note on post-2011 BMW representation: Because Howrey (2011) and Dewey & LeBoeuf (2012) both dissolved before BMWNA's dismissal (D.I. 76, so ordered Nov. 14, 2013), BMWNA almost certainly retained successor counsel for the final stretch, but I could not confirm any successor firm in this docket before my step limit. Fish & Richardson (whose Delaware office is led by Susan Morrison and which has represented BMW in later patent matters, e.g., the Arigna IPRs) is a common BMW counsel, but I found no filing tying Fish to 06-391 and I am not attributing it here.


C. Cross-checks and corrections

  • Beware of plaintiff-side names on service lists. The Dec. 7, 2006 and Jan. 23, 2007 notices of service list Richard K. Herrmann and Mary Matterer (Morris James), Michael H. Baniak (Baniak Pine & Gannon / McDonnell Boehnen), and Andrew Kochanowski (Sommers Schwartz) — those are ATI's Delaware and national counsel, not defense counsel, and a notice removing "Lisa R. Mikalonis" and "Michael H. Baniak" as co-counsel likewise concerns plaintiff's team.

  • Metadata contradiction — flag for the case summary. The existing summary states that Hyundai and Kia are "Delaware corporation[s], which is the hook that supported venue in Delaware." That is incorrect per the contemporaneous record. In a July 26, 2006 letter to the court, Morris James (then counsel in the companion 06-187 case) advised that "Hyundai Motor America and Kia Motors America, Inc. are in fact California corporations which are qualified to do business here in Delaware" — only BMW of North America LLC is a Delaware entity. ATI's Michigan complaint separately pleaded Hyundai as a Delaware corporation and Kia as a Delaware corporation (inconsistent pleadings), so the corporate-citizenship facts are genuinely muddled across filings; the corrected point is that Hyundai/Kia are California corporations qualified in Delaware, which the letter says supports general jurisdiction. (Morris James letter, 06-187 D.I. 32; RPX E.D. Mich. complaint)

  • Do not conflate this docket with ATI's other cases. In the separate E.D. Mich./Sixth Circuit litigation (ATI v. Siemens VDO, No. 10-2431, 6th Cir.), Hyundai and Kia were represented by Lawrence C. Mann, and Nissan by Peter J. Brennan — different counsel than in 06-391, and that listing should not be imported here. Likewise, the Federal Circuit's ATI v. BMW of N. Am., 501 F.3d 1274 (Fed. Cir. 2007) counsel (Baniak/Kochanowski for ATI; Gallo of Paul Weiss; Shifley of Banner & Witcoff; Feldhaus of Foley & Lardner) were the E.D. Mich. lineup, not the Delaware 06-391 lineup. (Justia docket 10-2431; Fed. Cir. opinion)


D. Sourcing caveats

  • Well grounded: Connolly Bove (Crawford, Rogowski) + Akin Gump (Sherwood, Cimino, Potts, Gennari, Park, Zager) for HMA/KMA; Potter Anderson (Horwitz, Moore) + Howrey (Lavelle, Dunham) for BMWNA; pro hac vice entries for Potts, Andrew N. Stein (Dewey & LeBoeuf), and Naidich/Sonu; and the substitution to Thomas C. Grimm. These rest on contemporaneous court filings and the docket portal.
  • Not verified: (a) the firms/offices of Edward J. Naidich and Andrew C. Sonu; (b) the exact date/order of the Grimm substitution; (c) whether any successor firm replaced Howrey/Dewey for BMWNA after 2011–12; (d) any in-house counsel (none appeared in the filings reviewed); (e) bar numbers/admission status for the out-of-state attorneys beyond what the pro hac vice motions state.
  • The docket is closed (terminated May 18, 2017), so there is no "counsel has not yet appeared" scenario — but several pro hac vice motions and substitution notices are summarized only via the docket-portal text, and full PDFs of those specific entries were not retrieved.