Emerging Automotive Asserts Other Members of Same Large Patent Family in Second Pair of Complaints

Early last month, on the eve of the first trial in litigation begun back in September 2023, Eastern District of Texas Judge Rodney Gilstrap granted a joint motion from Emerging Automotive, LLC and defendants Kia and Toyota to stay. The court had granted summary judgment of noninfringement as to the only one of four patents not subject to either inter partes review (IPR) or ex parte reexam (EPR). Now, Emerging Automotive has filed a pair of new cases against Kia (2:25-cv-00782) and Toyota (2:25-cv-00799) in the same district, targeting the same functionality, but over different patents from the same large family.

Emerging Automotive accuses the automakers of infringing the two newly asserted patents (11,104,245; 12,337,715) through the respective provision of Kia or Toyota and Lexus vehicles that can be operated with an electronic key, such as those that are compatible with "Kia Connect and/or Kia Connect with Digital Key" and "Remote Connect and Remote Connect with Digital Key" features, respectively. Toyota is targeted with a third new patent (12,337,716). Similar allegations appear in the 2023 complaints, originally filed over five other patents (9,171,268; 9,365,188; 10,407,026; 11,396,244; 11,738,659).

The ‘245 patent generally relates to using a mobile device to unlock and start a vehicle using electronic key or “e-key” that utilizes an access code obtained by a server as well as various related features, including using the vehicle’s camera to capture video during the time the e-key is active, assigning and sharing e-keys, geolocating the vehicle, and otherwise monitoring or restricting use of the vehicle; the ‘715 patent, to using and sharing the e-key of a registered owner of a vehicle, and related functionality including setting vehicle access privilege levels for shared e-keys and the use of encryption; and the ‘716 patent, to transferring user profiles for a vehicle over the cloud to one or more other vehicles.

Emerging Automotive was formed in California in May 2017 by named inventors of the patents-in-suit, Albert Penilla and Angel Penilla. State filings identify them both as members and/or managers, with Albert further listed as the plaintiff’s CEO. On social media, Albert indicates that he has been the “Principal – Attorney” with Penilla IP, APC, a patent prosecution firm, since 1998. Angel, of uncertain relation to Albert (although of an age that suggests he is Albert’s son), has been connected in press reports with an effort to elevate the profile of “Mejor Pink Tequila”, particularly as a drink of choice for women.

The asserted patents belong to a family of over 100 issued patents, broadly directed to remotely operated and/or cloud-connected vehicles, with issue dates ranging from June 2014 through August 2023. The family has an earliest estimated priority date in in February 2011 based on the filing of a provisional application. Prosecution of multiple related applications continues before the USPTO. Emerging Automotive pleads that the infringement alleged in each complaint has been willful.

The ‘268, ‘188, and ‘659 patents remain in suit in the earlier cases, all against Toyota, all but the ‘268 against Kia. Trials in response to petitions for IPR are underway. The claims of ‘659 patent were rejected in an EPR triggered by Unified Patents; a notice of appeal has been filed in that proceeding. In the runup to a summer trial, Judge Gilstrap adopted an earlier claim construction order from Magistrate Judge Roy S. Payne. It appears that at a June 2025 pretrial conference the court announced rulings from the bench, among them a grant of summary judgment of noninfringement of the ‘026 patent, knocking out the only patent not under review by the Patent Office. The court asked the parties to apprise it of plans to adjust their cases (e.g., to serve updated damages reports) in light of that ruling; instead, they jointly moved for the stay.

Public records suggest that Emerging Automotive has secured the backing of an unnamed funder. Bunsow De Mory LLP represents Emerging Automotive. 8/12, Toyota, 8/15, Kia, Eastern District of Texas.