DLA Piper secures defense win for BMW in patent infringement lawsuit against Michigan Motor Technologies

DLA Piper achieved a defense victory for client Bayerische Motoren Werke AG and BMW of North America, LLC (collectively, “BMW”) in a patent infringement lawsuit initiated by frequent patent plaintiff Michigan Motor Technologies (MMT). MMT originally asserted a total of six patents against BMW, but MMT’s case fell apart piece by piece until MMT eventually voluntarily dismissed the district court litigation with prejudice without BMW taking a license to any of the patents.

After MMT finished two prior campaigns against two other automotive companies, on July 29, 2022, MMT filed a patent infringement suit against BMW in the Northern District of Illinois, asserting six total patents related to combustion engines and hybrid motors. BMW achieved early success in the litigation when the Court granted BMW’s motion to dismiss on July 31, 2023. In that decision, the Court found three of the six asserted patents invalid under 35 U.S.C. § 101 for failing to claim patent-eligible subject matter and dismissed those patents with prejudice.

In that same decision, the Court also dismissed two of the remaining three patents because MMT had failed to adequately allege that MMT had complied with the marking statute (35 U.S.C. § 287), which cut off pre-suit damages. Because two of the three remaining patents expired pre-suit or shortly after the complaint was filed, the Court dismissed those patents without prejudice to amend. Consequently, MMT amended its complaint to plead compliance with 35 U.S.C. § 287 for these two patents, but BMW renewed its motion to dismiss because MMT’s amendments did not cure its failure to state a claim.

While the first motion to dismiss was pending, in June and July of 2023, BMW filed five inter partes reviews (IPRs) with the Patent Trial and Appeal Board (PTAB) challenging the validity of five of the six asserted patents. The PTAB instituted all five of BMW’s petitions and found a reasonable likelihood of success that BMW would invalidate all challenged claims. If the IPRs successfully invalidated all claims, only one single asserted patent would remain, but that patent was dismissed without prejudice in BMW’s motion to dismiss and was the subject of BMW’s renewed motion to dismiss.

BMW moved to stay the district court litigation pending the completion of the IPRs on February 13, 2024. On the date MMT was due to file its opposition brief, MMT dismissed the district court litigation with prejudice. The PTAB then entered adverse judgment in two of the IPRs, invalidating all claims in two of the patents, and terminated the IPRs at the parties’ joint request in the three remaining IPRs.

“We couldn’t be more pleased with the outcome of this patent litigation case. Our long-term strategy of handling meritless patent cases pays off for the BMW Group, and I am thankful for the diligence and creativity of our team of in-house and outside counsel in obtaining this victory,” said Reinhold Diener, BMW Group’s Vice President of Intellectual Property.

“It was a pleasure to represent our longtime client BMW once again in this critical dispute in both the district court and IPRs. We are proud of the dismissal outcome, achieved without taking a license to the patents, and are supportive of BMW’s continued efforts to defend itself vigorously in patent litigation matters,” said Brian Biggs, the DLA Piper partner who led the litigation team.

In addition to Biggs (Wilmington), the DLA Piper team that represented BMW included partner Paul Steadman (Chicago), of counsel Ed Sikorski (San Diego) and associate Matt Middleton (Wilmington).