April 3, 2024
FOR IMMEDIATE RELEASE
April 3, 2024
WASHINGTON, DC— In late 2022, a non-practicing entity, NorthStar Systems LLC, asserted five patents in the Eastern District of Texas against BMW AG – an automobile manufacturer targeted for allegedly infringing NorthStar’s patents related to displaying navigation information on electronic maps, mobile devices selectively reporting GPS position information to others, and route-based communication planning architecture and wireless communication.
Based in WDTX, NorthStar has pursued BMW Group products in litigation in the Eastern District of Texas with Judge Gilstrap from late 2022 where it has no jurisdiction over BMW AG. In response to NorthStar’s jurisdictional error and venue gamesmanship, BMW of North America filed a Declaratory Judgement (DJ) Action on non-infringement in NorthStar’s jurisdiction in the Western District of Texas with Judge Albright. BMW of North America also filed 6 IPR proceedings on all claims for all 5 patents asserted by NorthStar.
In the EDTX litigation, NorthStar denied BMW AG’s multiple requests to stay the litigation and strongly opposed BMW AG’s motion to stay while the institution decisions for some of the IPR proceedings were still pending. In the WDTX DJ Action, NorthStar sought to dismiss BMW NA’s DJ action on noninfringement. However, as soon as BMW NA received 6 favorable IPR institution decisions covering every single claim of the 5 asserted NorthStar patents, NorthStar had no other recourse but to give up its fight against BMW Group.
Finnegan and BMW Group have secured a covenant not to sue from NorthStar covering NorthStar’s entire present and future patent portfolio, and BMW Group did not pay a penny.
Finnegan Partner Lionel Lavenue said, “The Finnegan team is extremely proud of its hard-fought victory for BMW Group. BMW Group’s strategy, resilience, and determination to fight back proved effective when BMW Group achieved a perfect result with 6 favorable institution decisions for all claims for all 5 asserted patents by NorthStar, leading to what can only be described as a total victory for BMW Group.”
The most recent cases are NorthStar Systems LLC v. Volkswagen AG, Case No. 2-22-cv-00486 (E.D. Tex.); BMW of North America, LLC v. NorthStar Systems LLC, Case No. 6-23-cv-00456 (W.D. Tex.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01190 (P.T.A.B.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017 (P.T.A.B.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-00890 (P.T.A.B.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-00934 (P.T.A.B.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01049 (P.T.A.B.); BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01191 (P.T.A.B.).
Media Mention
Finnegan Shortlisted for the 2024 Asian Legal Business Japan Law Awards
April 26, 2024
Commentary
April 11, 2024
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.