Nissan Motor Co., Ltd. v. Longhorn Automotive Group LLC

Nissan Motor Co., Ltd. v. Longhorn Automotive Group LLC involves an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB), where Nissan, a global automobile manufacturer, challenged U.S. Patent No. 7,513,238 owned by Longhorn Automotive Group LLC. Longhorn Automotive Group LLC is identified as a Non-Practicing Entity (NPE) and an entity of Alpha Alpha Intellectual Partners LLC, actively asserting patents against major players in the automotive industry, including Nissan, Volkswagen, Mazda, Hyundai, Mitsubishi, and Volvo. The patent at issue, U.S. Patent No. 7,513,238, is titled "Piston for direct-injection internal combustion engine" and technically describes a piston design featuring a combustion chamber recess with a central elevation and a curved transition to optimize fuel injection and spread within the engine.

This IPR was filed by Nissan on June 3, 2025, but was ultimately not instituted due to procedural reasons, rather than a decision on the merits of patentability. The PTAB, a specialized tribunal within the U.S. Patent and Trademark Office (USPTO), offers a potentially faster and less expensive alternative to district court litigation for challenging patent validity. However, the Board frequently exercises its discretion to deny IPR petitions on procedural grounds, particularly when there is parallel district court litigation or other administrative considerations, often under the framework of the Fintiv factors. Since March 2025, the USPTO Director, in consultation with PTAB judges, directly handles determinations regarding discretionary denials, leading to a notable increase in such non-merits-based dismissals.

The case is notable as it highlights the ongoing patent assertion campaign by Longhorn Automotive Group LLC, an NPE, against prominent automotive manufacturers. The IPR proceeding by Nissan was likely a defensive measure in response to a related patent infringement lawsuit filed by Longhorn Automotive Group LLC against Nissan in district court (e.g., Longhorn Automotive Group LLC v. Nissan Motor Co., Ltd., 2:24-cv-00397 in the Eastern District of Texas, where other Longhorn patents were asserted against Nissan's driver assistance systems and headlights). The procedural denial of this IPR means that Nissan was unable to obtain a PTAB review of the patent's validity, emphasizing the strategic importance of understanding and navigating the PTAB's discretionary denial practices, especially in the context of concurrent district court litigation in forums known for fast-moving patent cases.

I'll research this case thoroughly, starting with the IPR proceeding and the parallel district court litigation.

I have strong initial data. Let me dig deeper into the institution/denial decision, the district court litigation status, and related PTAB proceedings.

Nissan Motor Co., Ltd., the petitioner in IPR2025-01089, was represented by attorneys from Foley & Lardner and Gillam & Smith.

Here is the identified counsel:

• Pavan K. Agarwal

  • Role: Counsel (likely lead or key counsel)
  • Firm: Foley & Lardner LLP
  • Office Location: While specific office location for this case isn't provided, Foley & Lardner has numerous offices across the US and internationally, with a strong IP presence.
  • Relevant Experience: Agarwal is noted for representing Nissan in parallel automotive patent infringement complaints in the Eastern District of Texas against Longhorn Automotive, which were defeated.

• Richard Spencer Montei

  • Role: Counsel
  • Firm: Foley & Lardner LLP
  • Office Location: Similar to Agarwal, Foley & Lardner has multiple offices.
  • Relevant Experience: Montei also represented Nissan in defeating parallel automotive patent infringement complaints in the Eastern District of Texas against Longhorn Automotive.

• Melissa Richards Smith

  • Role: Counsel (likely local counsel given her firm's focus)
  • Firm: Gillam & Smith LLP
  • Office Location: Gillam & Smith LLP is based in Tyler, Texas.
  • Relevant Experience: Smith represented both Nissan and Hyundai in defeating parallel automotive patent infringement complaints in the Eastern District of Texas brought by Longhorn Automotive.

Counsel of Record for Longhorn Automotive Group LLC (Defendant in IPR, Plaintiff in District Court)

In the IPR proceeding (IPR2025-01089), Longhorn Automotive Group LLC is the Patent Owner (defendant). In the parallel district court litigation (2:24-cv-00397-JRG), Longhorn is the plaintiff. The following attorneys have been identified as representing Longhorn Automotive Group LLC in these matters:

• Vincent J. Rubino, III
  • Role: Counsel of Record in the IPR (IPR2025-01089).
  • Firm: Fabricant LLP (firm inferred from email domain in IPR filing).
  • Note: Served as counsel of record for Longhorn in the IPR.
• Peter Lambrianakos
  • Role: Counsel of Record in the IPR (IPR2025-01089).
  • Firm: Fabricant LLP (firm inferred from email domain in IPR filing).
  • Note: Served as counsel of record for Longhorn in the IPR.
• Enrique W. Iturralde
  • Role: Counsel in the IPR (IPR2025-01089).
  • Firm: Fabricant LLP (firm inferred from email domain in IPR filing).
  • Note: Served as counsel in the IPR.
• Michael Mondelli, III
  • Role: Counsel for Longhorn Automotive in district court litigation (2:24-cv-00397).
  • Firm: Rubino Law LLC.
• John Andrew Rubino
  • Role: Counsel for Longhorn Automotive in district court litigation (2:24-cv-00397).
  • Firm: Rubino Law LLC.
• Alfred Ross Fabricant
  • Role: Counsel for Longhorn Automotive in district court litigation (2:24-cv-00397).
  • Firm: Fabricant.

Counsel of Record for Nissan Motor Co., Ltd. (Petitioner in IPR, Defendant in District Court)

Nissan Motor Co., Ltd. is the Petitioner in the IPR proceeding (IPR2025-01089) and the defendant in the parallel district court litigation (2:24-cv-00397-JRG).

• Pavan K. Agarwal
  • Role: Lead Counsel for Nissan in the IPR (IPR2025-01089) and counsel in the district court litigation (2:24-cv-00397).
  • Firm: Foley & Lardner LLP, Washington, D.C.
  • Note: Has decades of experience advising clients on business impacts of patents, with a practice centered on patent law and trade secret law, and concentration on patent litigation and licensing. He has extensive experience representing manufacturing and high-tech clients in various federal districts, the ITC, and PTAB proceedings, particularly in electronics and automotive technology.
• Richard Spencer Montei
  • Role: Counsel for Nissan in the district court litigation (2:24-cv-00397).
  • Firm: Foley & Lardner LLP.
• Melissa R. Smith
  • Role: Local Counsel for Nissan in the district court litigation (2:24-cv-00397).
  • Firm: Gillam & Smith LLP, Marshall, Texas.
  • Note: A partner at Gillam & Smith, she tries lawsuits in state and federal courts of the Eastern District of Texas for both plaintiffs and defendants. She has served as local counsel for visiting lawyers in over three thousand patent cases and has been recognized as a "go-to" lawyer by numerous Fortune 500 companies in intellectual property. She has achieved defense verdicts in patent cases resulting in non-infringement and invalidity findings.
• T. Cy Walker
  • Role: Back-up Counsel for Nissan in the IPR (IPR2025-01089).
  • Firm: Fish & Richardson PC.
  • Note: Fish & Richardson is a leading intellectual property law firm with extensive experience in patent litigation, handling more patent cases in District Courts, the Federal Circuit, the ITC, and the PTAB than any other national firm.
• Chad E. Davis
  • Role: Back-up Counsel for Nissan in the IPR (IPR2025-01089).
  • Firm: Morgan, Lewis & Bockius LLP, Boston, Massachusetts. (Previously with Dechert LLP).
  • Note: Advises on intellectual property strategy, focusing on patent counseling and portfolio development, with a background in chemistry. He has experience in global patent portfolio strategy, patent prosecution, IP due diligence, infringement and validity analyses, and post-grant proceedings.
• Michael E. Jones
  • Role: Back-up Counsel for Nissan in the IPR (IPR2025-01089).
  • Firm: Potter Minton, Tyler, Texas.
  • Note: Tries lawsuits in state and federal courts, emphasizing intellectual property litigation, oil and gas litigation, and commercial litigation. He has been designated as a "go to" lawyer for numerous Fortune 500 companies in intellectual property litigation.
• Sidney Calvin Capshaw
  • Role: Back-up Counsel for Nissan in the IPR (IPR2025-01089).
  • Firm: Capshaw DeRieux, LLP, Longview, Texas.
  • Note: His practice principally involves commercial litigation, patent litigation, federal court litigation, products liability, and employment law. He has been recognized as a "Super Lawyer" in Business Litigation Law.
• Elizabeth L. DeRieux
  • Role: Back-up Counsel for Nissan in the IPR (IPR2025-01089).
  • Firm: Capshaw DeRieux, LLP, Longview, Texas.
  • Note: Has a broad federal practice including commercial litigation, intellectual property, antitrust, and employment discrimination. Her background in appellate law informs her practice.