BMW Group Secures Strategic USPTO Ruling, Allowing Ex Parte Reexamination to Continue After Successful Opposition to Arigna’s Petition that the Director Terminate the Proceeding on Estoppel Grounds

FOR IMMEDIATE RELEASE
April 4, 2025

WASHINGTON, DC—Finnegan is pleased to announce another significant victory for firm client BMW Group in its long-running battle against Arigna Technology Limited, a patent monetization firm affiliated with Atlantic IP Services Ltd. The U.S. Patent and Trademark Office (USPTO) has denied Arigna’s petition to terminate BMW’s ex parte reexamination (EPR) request concerning U.S. Patent No. 8,289,082—paving the way for reexamination to proceed and further undermining the already diminished value of Arigna’s patent portfolio.

BMW initiated the EPR in September 2023 based on two prior art references, Tedja and Daffron, which were first identified in BMW’s invalidity contentions in a parallel ITC action. The USPTO found that Tedja raised a substantial new question of patentability and ordered reexamination. Arigna responded with a petition to terminate the EPR, arguing that BMW was estopped under 35 U.S.C. § 315(e)(1) from relying on Tedja and Daffron in the EPR because BMW had known of the references at the time it joined a separate inter partes review (IPR) initiated by Volkswagen, which was based on entirely different prior art. According to Arigna, BMW could have—or should have—filed its own IPR based on these references, and its failure to do so should have barred it from raising them in any later proceedings.

Arigna also attempted to limit the impact of the Federal Circuit’s decision in Network-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015 (Fed. Cir. 2020), asserting that the court’s ruling—holding that estoppel does not apply to grounds a joined party was procedurally barred from raising—applies only to time-barred parties. Because BMW was not time-barred under § 315(b) and could have filed its own IPR based on these references, Arigna claimed that Network-1 was inapplicable and estoppel should apply.

BMW filed a detailed opposition to Arigna’s petition, arguing that the relevant statutory inquiry under § 315(e)(1) is not whether the petitioner had knowledge of a prior art reference, but whether it was procedurally permitted to raise that reference in the IPR that reached a final written decision. BMW explained that, as a joining party to the VW-initiated IPR under § 315(c), it was procedurally prohibited from asserting new grounds beyond those on which the IPR was instituted—and therefore could not have raised Tedja or Daffron in that proceeding, regardless of knowledge or timing. The USPTO agreed.

In a carefully reasoned decision, the USPTO rejected each of Arigna’s arguments and adopted the reasoning advanced in BMW’s opposition. The agency reaffirmed that knowledge alone is not determinative under the estoppel statute. It also flatly rejected Arigna’s attempt to limit application of Network-1 to time-barred parties, concluding that nothing in the Federal Circuit’s opinion tied its holding to the one-year time bar. Instead, what matters is whether the petitioner was procedurally permitted to raise the ground in a prior IPR—not whether it could have filed a separate hypothetical petition at some earlier point in time.

Accordingly, the USPTO held that BMW is not estopped from relying on Tedja and Daffron in the EPR, and the proceeding will now resume before the Central Reexamination Unit.

“This decision is another meaningful affirmation of BMW Group’s commitment to resolutely defend itself against meritless patent assertions, building on victories against Arigna in the ITC and multiple U.S. district courts,” said Finnegan partner Lionel Lavenue. “And it reinforces that legal strategy and procedural rules matter, and that the USPTO will apply the Federal Circuit’s interpretations of the estoppel statute.”

Ex Parte Reexamination Control No. 90/019,261