BMW Group Secures Major Victory Against Patent Monetization Firm Affiliate in Protracted Patent Dispute

FOR IMMEDIATE RELEASE
September 11, 2024

WASHINGTON, DC—Finnegan is pleased to announce that firm client BMW Group has secured yet another significant victory against Arigna Technology Ltd. (“Arigna”), an Irish patent monetization firm affiliated with Atlantic IP Services Ltd., after obtaining a covenant-not-to-sue and zero-dollar walkaway in a declaratory judgment action in the U.S. District Court for the District of Columbia, effectively marking the conclusion of Arigna’s high-profile patent enforcement campaign against BMW.

In this declaratory judgment action for noninfringement and invalidity of U.S. Patent No. 8,289,082, brought by BMW of North America, LLC (“BMW NA”) and Bayerische Motoren Werke AG (“BMW AG”) as part of its long-fought battle against Arigna, the court has dismissed Arigna’s counterclaim of patent infringement with prejudice. This dismissal comes after BMW secured a royalty free covenant-not-to-sue on the asserted patent, ensuring that Arigna cannot reassert its claims against BMW. This outcome represents a definitive victory for the BMW Group, bringing a close to litigation surrounding the ’082 patent—the last of four patents initially asserted by Arigna as part of its broader enforcement campaign.

Arigna’s assertion of the ’082 patent traces back to May 2021, when it first sued BMW NA and BMW AG, along with other vehicle defendants, in the U.S. District Court for the Eastern District of Texas, followed by a corresponding complaint at the International Trade Commission (“ITC”). While the Texas case was stayed, BMW successfully defended itself at the ITC, where the administrative law judge ruled in favor of BMW, finding all asserted claims of the ’082 patent both invalid and non-infringed. Despite this decisive loss, Arigna sought to renew its claims in Texas, targeting BMW AG after BMW NA was dismissed due to improper venue. BMW NA and BMW AG then filed the declaratory judgment action in the District of Columbia.

Although the ITC’s findings of invalidity and noninfringement played a key role in weakening Arigna’s infringement claims, the final blow came after Arigna became embroiled in a public dispute with its litigation funder, Longford Capital Fund III, LP. This led to Arigna’s unilateral dismissal of the Texas case and the withdrawal of its counsel in the District of Columbia. In the wake of Arigna’s internal challenges, it agreed to not sue BMW Group on the ’082 patent and to dismiss its infringement counterclaim with prejudice, bringing a final, favorable, and decisive resolution for the BMW Group.

Despite Arigna's protracted litigation efforts at the ITC, in U.S. district courts, and in Germany, with this dismissal the BMW Group conclusively defended itself against Arigna’s remaining efforts to extract a settlement payment. Not only does this victory signal a conclusive end to Arigna’s claims against BMW Group in the United States, but it further cements the BMW Group’s commitment to resolutely defending itself against meritless patent assertions.

This case is Bayerische Motoren Werke AG et al v. Arigna Technology Limited, No. 1:23-cv-01190 (D.D.C.).

Contacts

Erika H. Arner, Managing Partner
erika.arner@finnegan.com

Anand K. Sharma, Chair
anand.sharma@finnegan.com

About Finnegan
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is one of the largest IP law firms in the world. From offices in Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, DC, the firm practices European, German, UK, and U.S. IP law. In addition to services related to all aspects of patent, trademark, and copyright law, including counseling, prosecution, licensing, and litigation, Finnegan provides counseling and litigation services in advertising, privacy, and a wide spectrum of additional IP-adjacent commercial matters, including trade secrets, international trade, the Internet, e-commerce, government contracts, antitrust, and unfair competition. For additional information on the firm, please visit www.finnegan.com and follow us on LinkedIn.