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.

The user is asking for key legal developments and outcomes for a patent infringement litigation. The provided case details, however, refer to an Inter Partes Review (IPR) proceeding (IPR2025-01089) before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation directly. It is common for IPRs to be filed in response to district court infringement lawsuits. Therefore, I will first identify if an underlying patent infringement litigation exists and then detail its developments along with the IPR.

Parallel District Court Patent Infringement Litigation

Longhorn Automotive Group LLC filed a patent infringement lawsuit against Nissan Motor Co., Ltd. in the U.S. District Court for the Eastern District of Texas. The case number for this litigation is 2:24-cv-00397-JRG, filed on May 31, 2024. In this lawsuit, Longhorn Automotive Group asserted five patents, including US Patent No. 7,513,238, which is the subject of the IPR. The asserted patents cover various technologies, including engine, headlight, remote control, and driver assistance technology, with the '238 patent specifically relating to directly injecting internal combustion engines. Longhorn's complaint alleges that over 20 Nissan vehicle models infringe these patents.

Inter Partes Review (IPR) Proceedings (IPR2025-01089)

Filing:

• Nissan Motor Co., Ltd. filed the Inter Partes Review petition (IPR2025-01089) against US Patent 7,513,238 on June 3, 2025. This was in response to the infringement lawsuit filed by Longhorn Automotive Group LLC.

Discretionary Denial and Outcome:

• The PTAB did not institute a trial in IPR2025-01089, issuing a Decision Denying Inter Partes Review on October 17, 2025.
• The denial was procedural and based on a discretionary decision, primarily influenced by the "Fintiv factors" and the "settled expectations" doctrine, which considers the status of parallel district court litigation.
• Longhorn Automotive Group LLC, the patent owner, filed a request for discretionary denial (Paper 6, "DD Req."), arguing against institution. Nissan, the petitioner, opposed this request.
• The PTAB's decision noted that the challenged patent (US 7,513,238) had been in force for sixteen years, creating "strong settled expectations" for the patent owner.
• A key factor in the discretionary denial was the ongoing parallel district court litigation (2:24-cv-00397-JRG). The Patent Owner had already provided two sets of infringement contentions, and a Markman hearing was scheduled in the district court case before the due date for the IPR institution decision. This indicated that the district court litigation was progressing.
• The PTAB also considered the totality of the evidence and arguments, concluding that an IPR was not an appropriate use of Board resources given the circumstances.
• Following the denial of institution, Nissan Motor Co., Ltd. requested a refund of post-institution fees totaling $28,125.00 on October 17, 2025, as no trial was instituted.

Effect on Litigation

Given the PTAB's discretionary denial of institution for IPR2025-01089, the underlying patent infringement litigation (Longhorn Automotive Group LLC v. Nissan Motor Co., Ltd., 2:24-cv-00397-JRG) would proceed without the IPR directly challenging the validity of US Patent 7,513,238 at the PTAB. The denial means Nissan cannot rely on a PTAB invalidity finding for this specific patent in the district court case. Nissan will need to pursue its invalidity arguments in the Eastern District of Texas.

Further details on the district court litigation (e.g., specific pre-trial motions, claim construction outcomes, discovery milestones, trial events, or final disposition) are not available from the provided search results beyond the initial filing and the scheduling of a Markman hearing. The current posture is that the IPR was not instituted, and the infringement litigation is ongoing in the District Court for the Eastern District of Texas.

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.