As predicted a couple of months ago, AutoConnect Holdings LLC has begun litigating, accusing Toyota (2:24-cv-00802) of infringing 11 patents from a recently growing portfolio. Toyota is accused of infringement in the Eastern District of Texas complaint through the provision of a wide array of automobiles, vehicle systems (e.g., in-vehicle multimedia systems), mobile apps, and related hardware and software components. At issue are features such as support for Toyota's Digital Key, face identification, and User Profiles features, as well as the support for Apple's CarPlay and Google's Android Auto platforms.
The asserted patents—described as "part of a broader portfolio of technologies owned by AutoConnect that includes nearly 100 issues United States patents and pending applications related to new and improved vehicle technologies"—are broadly directed to automobiles, particularly various aspects of network-connected vehicles. AutoConnect aims the patents at the following technologies: the 8,793,034 patent on vehicles, vehicle systems (e.g., in-vehicle multimedia systems), and related hardware and software components that enable face identification in vehicles (2023 model year and later); the 9,020,491; 9,140,560; 9,290,153; and 10,862,764 patents, on components that enable Android Auto and/or Apple CarPlay (2019 model year and later); the 9,020,697; 9,123,186; and 11,163,931 patents on components that "enable Toyota's Digital Key feature" (2022 model year and later); the 9,116,786 patent, on components that enable Android Auto and/or Apple CarPlay (2019 model year and later); and the 9,147,296 and 12,039,243 patents, on components that enable User Profiles in Toyota vehicles (2022 model year and later).
AutoConnect alleges that the infringement was willful, pleading that it first contacted Toyota over its patent portfolio in December 2023. Toyota's response is alleged to have addressed only four of the 19 patents identified, in which it stated that "the accused features in their Accused Instrumentalities implement the technology previously described in patent references that predate the AutoConnect inventions"; for the remaining 15 patents, Toyota "deferred responsibility for thirteen of them to their suppliers" Panasonic Automotive Systems (as to ten of the patents) and DENSO TEN (as to three patents). Toyota is alleged to have "finally addressed" the remaining two patents (the '034 and '296 patents) in an October 2024 correspondence, stating that the accused features again "implement technology previously described in patent references that predate the AutoConnect inventions".
This past summer, AutoConnect's patent collection activities hit the radar, after the May 2015 transfer of more than two dozen assets from Flex (Flextronics America LLC) to AutoConnect and the March 2020 transfer of over 200 other assets—formerly held by Flex—from IP Optimum Ltd. to the same entity were recorded with the USPTO. Based on publicly available assignment records, AutoConnect Holdings appears to hold more than 90 active US assets, all acquired at least a few years ago and all naming Christopher ("Chris") P. Ricci as an inventor, either alone or with others.
AutoConnect Holdings was formed in Delaware on February 26, 2015, with patent acquisitions over the years from Flex, IP Optimum, or Ricci himself, starting in May 2015. The address given for AutoConnect Holdings in connection with many of these transactions (corrected for the location of Newbury in Massachusetts, not Connecticut) corresponds to a residence apparently belonging to Gregg S. Hershenson, who identifies himself on social media as an "Entrepreneur / Investor". He indicates that he has been the cofounder of AutoConnect Holdings in Boston, Massachusetts since May 2016, describing the firm as a "Stealth-mode IOT / Connected Car company" that is "[b]ringing cutting edge technology to the connected car market via API integration, autonomous vehicle, navigation, infotainment, ADAS and security breakthroughs..."
In addition to older positions with venture capital and consulting firms, Hershenson also identifies a current position (since October 2010) as cofounder of WaveGuide Corporation, "an early stage medical diagnostic company with technology exclusively licensed from Harvard University". Any direct connection from Hershenson to Ricci is unclear. On social media, Ricci characterizes himself as located in Marco Island, Florida and as CEO of Impel Advantage, "an insurtech startup focusing on captive solutions". Ricci touts having "amassed over two decades of experience in a variety of innovation-rich sectors including financial services, aerospace, automotive, robotics, SaaS, and IoT", indicating that when a partner with Strategic Legal Partners (between January 2017 and May 2021) in the San Francisco Bay Area, one of his "exemplar assignments" was with an "AutoConnect LLC" in Boston, MA. He characterizes that entity as a "Tier 1 Connected Car Company" and his work as having "[c]reated strategic M&A options relative to the company's financial situation; in collaboration with Finance leadership, prepared the company for sale and led execution".
Ricci further indicates that from March 2011 through September 2015, he worked as "VP, Deputy General Counsel" with Flextronics (which later changed its name to Flex). He has apparently held legal executive positions, with a concentration in intellectual property, with various other companies, including Avaya, NCR, and Summit Wireless Technologies.
Optimum IP is an entity formed in Ireland on May 13, 2019, with records there suggesting that it no longer exists. Its business type is described as "leasing of intellectual property and similar products, except copyrighted works" and identifies a James Murphy as its "Company Director". On social media, an Ireland resident by that same name describes himself as a "Serial Entrepreneur based in Ireland with investments in Health, Environmental, Medtech, Fintech, Financial, Property and AI globally".
The new case has been assigned to Chief Judge Rodney Gilstrap. Miller Fair Henry PLLC provides representation. 10/3, Eastern District of Texas.
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