Volkswagen Group Of America Inc. v. Longhorn Automotive Group LLC

Volkswagen Group Of America Inc. initiated an Inter Partes Review (IPR2025-01064) before the Patent Trial and Appeal Board (PTAB) of the USPTO, challenging the validity of US Patent 8265353, owned by Longhorn Automotive Group LLC. Volkswagen Group Of America Inc. is a major operating company and a wholly-owned subsidiary of Volkswagen AG, one of the world's leading automobile manufacturers, importing, distributing, and manufacturing vehicles under brands such as Volkswagen, Audi, Bentley, Lamborghini, and Bugatti in the US. In contrast, Longhorn Automotive Group LLC has been identified as a Non-Practicing Entity (NPE) and an entity of Alpha Alpha Intellectual Partners LLC, actively asserting patents, often those acquired from Intellectual Ventures LLC (IV), against various automotive manufacturers. The IPR was filed in response to an underlying patent infringement lawsuit where Longhorn Automotive Group LLC accused Volkswagen of infringing the patent. The alleged infringing technology likely pertains to features found in Volkswagen's automotive products, as Longhorn has broadly asserted patents related to auto manufacturing and supplies, including driver assistance systems and headlights, against several carmakers.

The sole patent at issue in this IPR is US Patent 8265353, titled "Forming an image of a mobile object." This patent generally describes a method for creating an image of a moving object by utilizing two different imaging techniques and two independent sensor systems to capture both images and movement data, which are then combined to form a final image. The procedural posture of the case involves an IPR petition filed at the PTAB, which was initially denied institution by the Director based on discretionary factors, likely under the Fintiv framework. Volkswagen subsequently challenged this non-institution decision by filing a petition for a writ of mandamus at the Federal Circuit, arguing constitutional grounds related to the Director's discretion. However, the IPR proceeding was eventually terminated on April 2, 2026, due to a settlement between the parties.

This case is notable due to Longhorn Automotive Group LLC's pattern of asserting patents against numerous established automotive companies, characteristic of an NPE strategy targeting an entire industry. Furthermore, the case highlighted the contentious issue of discretionary denials at the PTAB, where institution of an IPR can be denied even if the merits of the patent challenge appear strong, particularly when parallel district court litigation is ongoing. Volkswagen's challenge to the discretionary denial at the Federal Circuit underscores the significance of these PTAB policies and their impact on patent litigation strategy, making the settlement a resolution that sidestepped a potentially landmark ruling on PTAB discretion.

The case Volkswagen Group Of America Inc. v. Longhorn Automotive Group LLC, IPR2025-01064, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the USPTO, initiated by Volkswagen Group of America Inc. challenging U.S. Patent No. 8,265,353, owned by Longhorn Automotive Group LLC. This IPR was filed in the context of a parallel patent infringement lawsuit. The IPR ultimately settled and was terminated.

Key Legal Developments and Outcome:

1. District Court Litigation (Underlying Infringement Case):

• 2024-11-15: Longhorn Automotive Group LLC filed a patent infringement lawsuit against Volkswagen AG (and others, including Volkswagen Group of America Inc.) in the U.S. District Court for the Eastern District of Texas, Case No. 2:24-cv-00933. This lawsuit asserted multiple patents, including U.S. Patent No. 8,265,353, which subsequently became the subject of the IPR.

2. IPR Filing & Initial Pleadings:

• 2025-05-30: Volkswagen Group of America Inc. filed a Petition for Inter Partes Review (IPR2025-01064) challenging the patentability of U.S. Patent No. 8,265,353.
• 2025-08-25: Patent Owner Longhorn Automotive Group LLC filed a request for discretionary denial of the IPR petition.
• 2025-09-23: Petitioner Volkswagen Group of America Inc. filed an opposition to Longhorn's request for discretionary denial.

3. Pre-Institution Phase:

• 2025-10-10: The Director of the USPTO issued a Discretionary Decision referring the Petition to the Board, effectively denying Longhorn's request for discretionary denial and allowing the Board to consider institution on the merits.
• 2025-12-07: The PTAB issued a Decision Granting Institution of Inter Partes Review, initiating the trial phase for U.S. Patent No. 8,265,353. (One source indicates 2025-12-08 for institution.)

4. Parallel Federal Circuit Mandamus Petition (Distinct from IPR2025-01064 Outcome):

• Separately, Volkswagen Group of America Inc. filed a petition for a writ of mandamus at the Federal Circuit, seeking to vacate a non-institution decision by the USPTO Director relating to a Longhorn Automotive Group LLC patent. This pertained to an earlier instance where the Director had exercised discretion to deny institution of an IPR, which Volkswagen argued was an unconstitutional delegation of legislative power. The Federal Circuit denied Volkswagen's mandamus petition, affirming the USPTO's discretion to decline IPR institution. This decision was issued around March 20, 2026, or April 9, 2026, but related to a denial of institution, distinct from IPR2025-01064 which was instituted.

5. Settlement and Termination:

• 2026-04-01: The PTAB issued a Termination Decision, noting a post-institution settlement between the parties.
• 2026-04-02: IPR2025-01064 was officially terminated as settled.

Here's the counsel of record representing Volkswagen Group Of America Inc. in IPR2025-01064:

In-House Counsel:

• Charles Hawkins - Assistant General Counsel, IP & Litigation
  • Firm: Volkswagen Group of America, Inc.
  • Office Location: Herndon, VA (implied, as this is the North American headquarters for Volkswagen Group of America)
  • Note: Mr. Hawkins holds the title of Assistant General Counsel, IP & Litigation for Volkswagen Group of America, Inc., indicating a direct role in managing the company's intellectual property disputes.

Outside Counsel:

The following attorneys are listed from Finnegan Henderson Farabow Garrett & Dunner LLP as representing Volkswagen Group Of America Inc. in this IPR. Finnegan is a prominent intellectual property law firm.

• Luke MacDonald

  • Role: Attorney
  • Firm: Finnegan Henderson Farabow Garrett & Dunner LLP
  • Office Location: (Likely Washington, D.C. or Atlanta, where Finnegan has major offices, further search would be needed to pinpoint exact office for this specific attorney if required)
  • Note: Finnegan has a strong track record in patent litigation and IPRs, often representing major corporations like Volkswagen in complex intellectual property matters.

• Elliot C. Cook

  • Role: Attorney
  • Firm: Finnegan Henderson Farabow Garrett & Dunner LLP
  • Office Location: (Likely Washington, D.C. or Atlanta, where Finnegan has major offices, further search would be needed to pinpoint exact office for this specific attorney if required)
  • Note: Identified as Petitioner Counsel in this IPR.

• Alexander M. Boyer

  • Role: Attorney
  • Firm: Finnegan Henderson Farabow Garrett & Dunner LLP
  • Office Location: (Likely Washington, D.C. or Atlanta, where Finnegan has major offices, further search would be needed to pinpoint exact office for this specific attorney if required)
  • Note: Involved in the IPR as counsel for the petitioner.

• Daniel M. Jordan

  • Role: Attorney
  • Firm: Finnegan Henderson Farabow Garrett & Dunner LLP
  • Office Location: (Likely Washington, D.C. or Atlanta, where Finnegan has major offices, further search would be needed to pinpoint exact office for this specific attorney if required)
  • Note: Involved in the IPR as counsel for the petitioner.

While other firms like Shearman & Sterling LLP and Sterne Kessler Goldstein & Fox PLLC have represented Volkswagen Group of America Inc. in other patent disputes, the provided information specifically for IPR2025-01064 points to Finnegan Henderson Farabow Garrett & Dunner LLP and Volkswagen's in-house counsel.

The following attorneys represented Longhorn Automotive Group LLC (Patent Owner) in IPR2025-01064:

• Enrique W. Iturralde

  • Role: Lead Counsel
  • Firm: Fabricant LLP, Rye, New York
  • Note: Enrique Iturralde is listed as lead counsel for the Patent Owner in IPR2025-01064.

• Vincent J. Rubino, III

  • Role: Counsel of Record (signed Mandatory Notices)
  • Firm: Fabricant LLP, Rye, New York
  • Note: Vincent Rubino, III, is associated with Fabricant LLP and signed the Patent Owner's Mandatory Notices in this IPR proceeding.

• John A. Rubino

  • Role: Back-up Counsel
  • Firm: Rubino IP, Short Hills, New Jersey
  • Note: John A. Rubino is listed as back-up counsel for the Patent Owner in IPR2025-01064. He also filed a notice of attorney appearance on behalf of Longhorn Automotive Group LLC in a related district court case, Longhorn Automotive Group LLC v. Nissan Motor Co Ltd (2:24-cv-00397 E.D. Texas).

• Peter Lambrianakos

  • Role: Counsel
  • Firm: Fabricant Rubino Lambrianakos LLP
  • Note: Peter Lambrianakos is identified as an attorney for the Respondent (Longhorn Automotive Group LLC) in docket information.