DLA Piper secures defense win for BMW in patent infringement lawsuit

DLA Piper achieved a defense victory for client Bayerische Motoren Werke AG and BMW of North America, LLC (collectively, “BMW”) in the US District Court of Maryland in a patent infringement lawsuit initiated by US patent assertion entity Paice LLC and the Abell Foundation, Inc. (Paice).

Starting in 2004, Paice had embarked on a litigation campaign against several automotive companies, asserting over 10 patents directed to hybrid vehicles from its portfolio.  Paice secured a $29 million verdict in 2015 against one of the automotive companies and resolved the other matters by selling licenses to its portfolio.

In November 2019, Paice continued its campaign and sued BMW in the District of Maryland, accusing hybrid electric versions of numerous BMW vehicle models—including the 3-series, 5-series, 7-series, X5 and MINI—of infringing three of its patents. Notably, two of the three patents asserted against BMW were asserted by Paice in its prior cases, were found to be infringed in the 2015 verdict, and survived challenges by other automotive companies at the Patent Office.

Rather than pay Paice’s license demand, BMW committed to its broader strategy of vigorously and consistently defending itself against unfounded infringement allegations of invalid patents brought by patent assertion entities.

DLA Piper represented BMW in the district court action and developed with BMW a strategy to aggressively litigate these patents, including by invalidating these three patents at the Patent Office through Inter Partes Reviews (IPRs) and seeking a stay of the district court litigation.

Crowell & Moring filed the three IPR Petitions for BMW in May-July 2020, and DLA Piper successfully secured the stay for BMW in November 2020. The Patent Trial and Appeal Board (PTAB) issued Final Written Decisions invalidating each of the asserted claims, and the Federal Circuit has now affirmed each of those decisions. The district court dismissed the district court action on May 23, 2023.

The DLA Piper team representing BMW was led by partner Brian Biggs (Wilmington) and retired partner Joe Lavelle (Washington D.C.), and included Counsel David Knudson and Associate Stephanie Lim.