Finnegan and BMW Group Successfully Demolish Non-Practicing Entity NorthStar’s Efforts

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.).

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.