IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

UNM RAINFOREST INNOVATIONS,

Plaintiff,

v. 

TOYOTA MOTOR NORTH AMERICA, 

INC., TOYOTA MOTOR SALES, USA, 

INC., and TOYOTA MOTOR 

ENGINEERING & MANUFACTURING 

NORTH AMERICA, INC.,

Defendants.

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CIVIL ACTION NO. 2:23-CV-00424-JRG

MEMORANDUM OPINION AND ORDER

Before the Court is Panasonic Automotive Systems Co., Ltd.’s (“Panasonic”) Motion to 

Intervene as Defendant as of right pursuant to Federal Rule of Civil Procedure 24(a), or, in the 

alternative, permissibly pursuant to Federal Rule of Civil Procedure 24(b) (“the Motion”). (Dkt. 

No. 18.) Plaintiff UNM Rainforest Innovations (“Plaintiff”) opposes the Motion. (Dkt. No. 35; 

Dkt. No. 45.) On April 9, 2024, the Court carried the Motion and ordered Panasonic to identify 

the manufacturer (or manufacturers) of the accused Wi-Fi chips as well as any indemnification 

agreements existing between Panasonic and any such chip manufacturer. (Dkt. No. 47.) The Court 

further ordered the parties to file supplemental briefing explaining how these facts impact 

Panasonic’s Motion and Plaintiff’s opposition. (Id.) The parties have now complied with the 

Court’s order. (Dkt. No. 50; Dkt. No. 52; Dkt. No. 54.) Having considered the original and 

supplemental briefing, the Court returns to consider the Motion. 

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I. LEGAL STANDARD

Federal Rule of Civil Procedure 24(a)(2) provides that “[o]n timely motion, the court must 

permit anyone to intervene who . . . claims an interest relating to the property or transaction that is 

the subject of the action, and is so situated that disposing of the action may as a practical matter 

impair or impede the movant’s ability to protect its interest, unless existing parties adequately 

represent that interest.” Thus, a prospective intervenor is entitled to intervention as a matter of 

right if each of the following elements is satisfied:

(1) the application for intervention must be timely; (2) the applicant must have an interest 

relating to the property or transaction which is the subject of the action; (3) the applicant 

must be so situated that the disposition of the action may, as a practical matter, impair or 

impede his ability to protect that interest; and (4) the applicant’s interest must be 

inadequately represented by the existing parties to the suit.

Texas v. United States, 805 F.3d 653, 657 (5th Cir. 2017) (citing New Orleans Pub. Serv., Inc. v. 

United Gas Pipe Line Co., 732 F.2d 452, 463 (5th Cir. 1984) (en banc)). “Failure to satisfy one 

requirement precludes intervention of right.” Haspel & Davis Milling & Planting Co. v. Bd. Of 

Levee Comm’rs of the Orleans Levee Dist., 493 F.3d 570, 578 (5th Cir. 2007). However, “[t]he 

rule ‘is to be liberally construed,’ with ‘doubts resolved in favor of the proposed intervenor.’” 

Entergy Gulf States Louisiana, L.L.C. v. U.S. E.P.A., 817 F.3d 198, 203 (5th Cir. 2016) (quoting In 

re Lease Oil Antitrust Lit., 570 F.3d 244, 248 (5th Cir. 2009)). 

Even if intervention is not justified as a matter of right, a court may nonetheless grant 

permissive intervention if the party “[o]n timely motion . . . has a claim or defense that shares with 

the main action a common question of law or fact.” Fed. R. Civ. P. 24(b)(1)(B). “In exercising its 

discretion, the court must consider whether the intervention will unduly delay or prejudice the 

adjudication of the original parties’ rights.” Fed. R. Civ. P. 24(b)(3). 

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II. DISCUSSION

In its Motion, Panasonic seeks to intervene in this action as of right pursuant to Federal 

Rule of Civil Procedure 24(a), or, in the alternative, permissibly pursuant to Federal Rule of Civil 

Procedure 24(b). (Dkt. No. 18 at 1.) The Court first takes up the issue of Panasonic’s mandatory 

intervention and considers each requirement in turn. 

A. Mandatory Intervention

1. Timeliness

The parties do not dispute that Panasonic’s Motion was timely. (Dkt. No. 18 at 4; Dkt. No. 

35 at 3.) The Court agrees with the parties. The Motion, which Panasonic filed just two months 

after the Complaint was filed, was timely presented. 

2. Panasonic’s Interest in the Action

Panasonic argues that it has a legal interest in this action because it manufactures the 

accused Infotainment Units in the accused Toyota vehicles and has agreed to indemnify the Toyota 

Defendants with respect to those accused Toyota vehicles. (Dkt. No 18 at 6.) Therefore, Panasonic 

contends that it has a clear financial interest in the outcome of this litigation. (Id.) 

In response, Plaintiff argues that Panasonic does not make the Wi-Fi chips that practice the 

asserted claim. (Dkt. No. 35 at 2-3, 7.) Plaintiff also points out that Panasonic does not make, 

use, sell, offer to sell, or import the Accused Products or any subcomponent thereof into the United 

States, and therefore cannot be accused of infringement. (Id. at 5.) According to Plaintiff, 

Panasonic does not have any interest in this litigation and does not have the right to intervene. (Id.

at 7.) 

In its supplemental briefing, Panasonic informed the Court that NXP Semiconductors N.V. 

(“NXP”) is the sole manufacturer of the accused Wi-Fi chips. (Dkt. No. 50 at 1.) Furthermore, 

there is no indemnification agreement between Panasonic and NXP. (Id.) Panasonic argues that 

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it is therefore the entity with the “most immediate financial interest at stake in this litigation.” 

(Dkt. No. 52 at 2.) 

The Court agrees with Panasonic. Since Panasonic has agreed to indemnify the Toyota 

Defendants in this litigation and cannot thereafter seek indemnification from NXP, Panasonic has 

a clear financial interest in this litigation. This element is satisfied.

3. Impairment of Panasonic’s Ability to Protect Its Interests

Panasonic argues that disposition of this action without Panasonic will impair or impede 

Panasonic’s ability to protect its interests because it owes an indemnification obligation to the 

Toyota Defendants. (Dkt. No. 18 at 6.) In addition. Panasonic argues that Plaintiff’s accusations 

of patent infringement threaten Panasonic’s reputation and ability to sell or market its infotainment 

products to both Toyota and other potential customers in the future. (Id.) 

Plaintiff responds that Panasonic’s indemnity obligation is “voluntary” and “cannot be used 

to manufacture the right to intervene.” (Dkt. No. 35 at 4.) Plaintiff further points out that the 

purported indemnification agreement between Panasonic and the Toyota Defendants has never 

been produced.1

 (Dkt. No. 45 at 2.) 

Based on the representations made to the Court as to such indemnity agreement, the Court 

finds that this element is satisfied. As explained above, Panasonic is the entity that will bear the 

financial responsibility for this litigation. As such, disposition of this action without Panasonic 

impairs Panasonic’s ability to protect its financial interests. Further, the Court agrees that 

disposition of this case without Panasonic poses a risk of harm to Panasonic’s infotainment 

business, including the loss of its customer base and reputational harm. 

1 Toyota and Panasonic are ordered to produce this indemnity agreement to Plaintiff pursuant to the Protective Order 

herein within five (5) days. 

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4. Inadequate Representation of Panasonic’s Interest

Panasonic argues that its interests are not adequately represented by the Toyota Defendants 

in this case because Panasonic has superior information about the technology compared to the 

Toyota Defendants and because Panasonic has agreed to indemnify the Toyota Defendants. (Dkt. 

No. 18 at 7.) In its supplemental briefing, Panasonic notes that the accused functionality is 

“hotspot/access points and other systems and features” configured to operate with various wireless 

networking standards. (Dkt. No. 52 at 3.) Panasonic argues that it manufactures the head units 

included in the Accused Toyota vehicles that allow vehicle owners to connect to Wi-Fi 

hotspot/access points. Therefore, it has superior knowledge of the specifications and functionality 

of the chips included in the Panasonic head units. (Id.) Panasonic further argues that it has superior 

knowledge of facts relevant to potential damages, including the costs of the accused NXP Wi-Fi 

chips, other components included in the Panasonic head units, and the availability of noninfringing alternatives. (Id. at 5-6.) 

In response, Plaintiff argues that Panasonic lacks first-hand knowledge of the accused 

functionality, which, according to Plaintiff, is the “Wi-Fi chips’ data frame structures.” (Dkt. No. 

54 at 4.) Plaintiff asserts that the pertinent chip-level functionality will come from the Wi-Fi chip 

manufacturers by way of subpoena and third-party depositions regardless of whether Panasonic is 

allowed to intervene. (Id.) According to Plaintiff, Panasonic has no unique knowledge of the 

technology beyond that possessed by the Toyota Defendants. (Dkt. No. 35 at 3.) 

The Court agrees with Panasonic. As the manufacturer of the head units that practice the 

accused functionality of hotspot/access points, Panasonic likely has at least some superior 

information on the technical specifications of that functionality as compared to the Toyota 

Defendants. Toyota’s knowledge is likely focused primarily on the vehicles themselves. The 

Court is further persuaded that Panasonic has superior knowledge of issues relevant to potential 

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damages, such as the cost of the accused Wi-Fi chips and the existence of available non-infringing 

alternatives. In addition, the Court finds that Panasonic’s financial interests in this case may not 

be adequately represented by the Toyota Defendants, to whom Panasonic has an indemnification 

obligation. Accordingly, this element is satisfied. 

Having found that all the requirements of mandatory intervention are satisfied, the Court 

finds that Panasonic should be allowed to intervene as of right pursuant to Federal Rule of Civil 

Procedure 24(a). In light of that finding, the Court need not reach the issue of permissive 

intervention under Federal Rule of Civil Procedure 24(b). 

III. CONCLUSION

For the foregoing reasons, Panasonic’s Motion (Dkt. No. 18) is GRANTED. The Court 

declines to adopt Plaintiff’s proposed restrictions on Panasonic’s participation in this lawsuit (Dkt. 

No. 54 at 6). However, given that the Toyota Defendants and Panasonic are represented by the 

same counsel, the Court orders that the parties are to remain on the existing schedule for this case, 

without the delay that new counsel might otherwise justify. 

.

____________________________________

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE So ORDERED and SIGNED this 9th day of July, 2024.

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