Finnegan and BMW Put an End to Patent Assertion Entity Stragent’s Long-Running Trolling Efforts

FOR IMMEDIATE RELEASE
May 5, 2023

WASHINGTON, DC—For almost 13 years, non-practicing entity Stragent, LLC has been pursuing BMW products through nearly continuous litigation over six separate cases between the Eastern District of Texas and the District of Delaware, accompanied by nearly a dozen proceedings before the United States Patent and Trademark Office adverse to Stragent. No longer so: Finnegan and BMW have secured a covenant not to sue from Stragent covering Stragent’s entire present and future patent portfolio, and BMW did not pay a penny.

In one of Stragent’s most recent cases against BMW, BMW forced Stragent to concede that it could not present enough evidence to prove infringement of its asserted patents before the District of Delaware. Facing unrebutted expert testimony of noninfringement and invalidity, and the pressure of an attorneys’ fee motion due to its failure to prosecute, Stragent granted BMW a covenant not to sue on Stragent’s full portfolio, including any future assets.

Finnegan Partner Lionel Lavenue said, “The Finnegan team is extremely proud of its hard-fought victory for BMW and BMW’s resilience and determination in weathering the 13-year storm of Stragent’s repeated litigation. Principled stances are hard to make, especially when taking a license for noninfringing products may be an easier way out, but we are thrilled when they pay off for great clients like BMW.”

Stragent began targeting BMW products in 2010, when Stragent sued BMW and a slew of other automobile suppliers in the Eastern District of Texas over patents related to adaptive cruise control. The case, which was not handled by Finnegan, was dismissed in 2011.

But Stragent remained busy in 2011, implicating BMW products twice more in the Eastern District of Texas. First, Stragent sued BMW supplier Bosch alleging that Bosch software infringed another of Stragent’s patent families by incorporating the AUTOSAR standard that Bosch and BMW helped develop. Second, Stragent sued for infringement over a third patent family, this time related to voice control patents. Stragent eventually had to dismiss both cases, the second after BMW and Finnegan secured a favorable claim construction. BMW’s art was also used to cancel the Stragent’s voice control patent family at the Patent Office.

Stragent remained undeterred, suing BMW again in the Eastern District of Texas in 2016, returning to the same patent family Stragent had originally asserted against Bosch to directly target BMW vehicles of infringement based on AUTOSAR.  On behalf of BMW, Finnegan invalidated Stragent’s patents in proceedings before the Patent and Trademark Office Patent Trial and Appeals Board, leading Stragent to disclaim the asserted patents and withdraw its case.

Yet even after BMW’s early victories invalidating Stragent’s patents, Stragent returned to the Patent Office to obtain new patents allegedly covering AUTOSAR, which Stragent asserted again against BMW in 2020 and 2022 cases in Delaware. Finnegan again invalidated one of Stragent’s patents in Patent Office proceedings and instituted review of several others.

In the first of these Delaware litigations, and while BMW’s Patent Office challenges were still pending, BMW forced Stragent to maneuver itself into a hopeless position, leading to what can only be described as a total victory for BMW.

The most recent cases are Stragent, LLC v. BMW of North America, LLC, et al., C.A. No. 20-510-JDW (D. Del.); Stragent, LLC v. Bayerische Motoren Werke AG, C.A. No. 23-005-JDW (D. Del.); BMW of North America, LLC, et al. v. Stragent, LLC, IPR2021-00417 (P.T.A.B.).

Contacts

Erika 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.