PTAB challenges

Proceedings overview

There is one AIA trial proceeding on file for US12039243. This proceeding, a Post-Grant Review (PGR), was terminated due to settlement, meaning no claims were invalidated or sustained by a Final Written Decision from the PTAB. For a defendant, this means the patent has not been subjected to a full PTAB merits review, and its claims remain untested by the board.

PGR2025-00041 — Toyota Motor Corp. v. AutoConnect Holdings LLC

• Type: Post-Grant Review
• Filed: 2025-04-07
• Status: Terminated-Settled – The proceeding was concluded due to a settlement between the parties.
• Judge panel: Administrative Patent Judges Jennifer B. Myers, Joni Y. Williams, and Karl P. Hochgesang.
• Petition grounds: The petition challenged claims 1-20 of US12039243 as unpatentable under 35 U.S.C. § 101 and 35 U.S.C. § 103.
• Institution decision: Instituted on 2025-10-14. The panel found that the petition demonstrated a reasonable likelihood that claims 1-20 were unpatentable. Specifically, the Board instituted on all challenged claims based on anticipation under § 101 and obviousness under § 103 over various prior art references including US2014/0310788 A1 (Ricci), US2014/0309862 A1 (Ricci), US2014/0309863 A1 (Ricci), US2014/0309813 A1 (Ricci), and US2014/0310031 A1 (Ricci).
• Final Written Decision: Not issued. The proceeding was terminated before a Final Written Decision could be rendered.
• Settlement / termination: The proceeding was terminated on 2026-05-18 due to a settlement between Toyota Motor Corp. and AutoConnect Holdings LLC. The specific terms of the settlement are confidential.
• Appeal: No appeal to the Federal Circuit was made as the proceeding was terminated by settlement before a Final Written Decision.
• Defensive value: Since the proceeding settled before a Final Written Decision, none of the claims (1-20) were formally invalidated by the PTAB. While the Board did institute on all claims, indicating a preliminary assessment of unpatentability, this does not carry the same weight as a final decision. Any defendant would need to conduct their own analysis, potentially re-challenging the patent, as the claims have not been definitively upheld or canceled.

Strategic summary

Currently, all claims (1-20) of US12039243 remain UNTESTED by a Final Written Decision from the PTAB. Although a Post-Grant Review (PGR2025-00041) was instituted, finding a reasonable likelihood that all challenged claims were unpatentable, the proceeding concluded via settlement before a final determination. Therefore, no claims have been canceled or sustained by the PTAB.

Regarding the estoppel landscape, 35 U.S.C. § 315(e)(2) applies to PGR proceedings, barring the petitioner (Toyota Motor Corp.) and its privies from asserting in a civil action or ITC proceeding that a claim is invalid on any ground that the petitioner raised or reasonably could have raised during the PGR. For a new defendant facing assertion of this patent, the prior art grounds (including those based on US2014/0310788 A1, US2014/0309862 A1, US2014/0309863 A1, US2014/0309813 A1, and US2014/0310031 A1 cited in the institution decision) are still available for challenge in a new PTAB proceeding, as they are not estopped by a prior FWD.

The termination by settlement in PGR2025-00041, where Unified Patents initially filed the petition against the same patent owner (AutoConnect Holdings LLC) regarding this patent in a separate PTAB case, suggests that AutoConnect Holdings LLC may prefer settlement over full merits review at the PTAB. This could indicate a willingness to resolve disputes out of court, but also means the patent's validity has not been robustly confirmed.

Recommended next steps

• For a defendant facing assertion of US12039243, it is crucial to review the institution decision for PGR2025-00041. The Board's reasoning for instituting on claims 1-20 provides a strong indication of potential unpatentability grounds. The decision can be found on the Unified Patents portal: https://portal.unifiedpatents.com/ptab/case/PGR2025-00041.
• Consider initiating a new Post-Grant Review (PGR) or Inter Partes Review (IPR), depending on the effective filing date of the claims and the one-year bar for IPR. The fact that the previous PGR was instituted on all claims (1-20) suggests that the patent's validity is vulnerable to challenge.
• Engage in a prior art search to identify any new or stronger prior art that could be used in a new PTAB petition, building upon the grounds raised in PGR2025-00041.
• Given the prior settlement, explore settlement options with AutoConnect Holdings LLC, potentially leveraging the instituted PGR as a negotiating point.
• If you are a defendant in litigation related to this patent, consider filing a stay of litigation pending the outcome of any new PTAB proceedings.

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https://portal.unifiedpatents.com/ptab/case/PGR2025-00041
https://portal.unifiedpatents.com/ptab/case/PGR2025-00041
https://patents.google.com/patent/[US12039243B2](/patent/US12039243B2)/en
https://portal.unifiedpatents.com/ptab/case/PGR2025-00041