Context: Earlier today we reported on a settlement between Proxense and Google (January 14, 2025 ip fray article), following a license agreement with Samsung and filings against Microsoft, Apple, Intel and LG.
What’s new: Now we have discovered a new lawsuit by the former operating company, in the Western District of Texas like the previous cases, but now targeting Korean automakers Hyundai, KIA and Genesis (which are affiliate entities). Proxense is asserting four patents (out of approximately 65 that it claims to own in that field) on digital pass key technology that is allegedly infringed by implementing the Car Connectivity Consortium’s (CCC) Digital Key standard, the first release of which was adopted in 2018 and which has since between updated twice.
Direct impact: Due to overlaps with the cases against Microsoft and Google, the matter is presumably going to be put before Judge Alan D. Albright, who has already performed claim construction and made other pretrial decisions in previous cases involving at least one of the patents-in-suit. The Hyundai-KIA group faces the risk of a substantial damages award.
Wider ramifications: While car makers have taken many licenses to cellular standard-essential patents (SEPs), typically through the Avanci pool (January 13, 2025 ip fray article), and are often the target of non-SEP infringement lawsuits, this is now a potentially unprecedented situation. Not only the particular defendants to this case, but the automotive industry at large, face patents that allegedly read on a standard without the patentee, as far as we can tell, having been involved in that standardization process. Therefore, the patents-in-suit are unencumbered by FRAND licensing promises or other restrictions imposed on SEPs.
Here is the Proxense v. Hyundai et al. complaint:
The docket shows that the case is deemed related to the Microsoft (pending) and Google (settled) actions, which are before Judge Albright. Judicial economy weighs for relating the cases and keeping them in that district. There is a reliable indication of Apple’s motion to transfer a Proxense case out of that district failed just like a couple of other companies’ attempts: Judge Albright held a Markman (claim construction) hearing after adjudicating the transfer motion. He would not have done so if the case had already been on the way out of his court.
These are the patents-in-suit:
- U.S. Patent No. 10,073,960 (“Hybrid device having a personal digital key and receiver-decoder circuit and methods of use”)
- U.S. Patent No. 9,251,332 (“Security system and method for controlling access to computing resources”)
- U.S. Patent No. 9,450,956 (“Proximity-based system for automatic application initialization”)
- U.S. Patent No. 11,095,640 (“Proximity-based system for automatic application or data access and item tracking”)
The fact that the infringement allegations focus on the CCC Digital Key standard means that other members of the CCC could face similar assertions. The CCC website lists various “adopters” but also “charter” and “core” members, such as BMW, Ford, Honda, Mazda, Nissan, Volkswagen and Volvo. Notably absent is, for example, Tesla, but even if Tesla does not implement the relevant CCC standard, its functionality appears similar.
Various automotive suppliers might also be liable.
Like the previous Proxense cases, the complaint was filed by David L. Hecht (Hecht Partners). Against Apple, Google and Microsoft, Mr. Hecht’s firm was later joined by Susman Godfrey as co-counsel.