FOR IMMEDIATE RELEASE
February 27, 2024

WASHINGTON, DC— Finnegan is pleased to announce that firm client BMW Group has secured yet another victory over a patent assertion entity, this time securing a win over Omega Patents, LLC (“Omega”) in the United States Court for the District of Delaware following the Federal Circuit’s recent affirmance invalidating all claims of the asserted patent (U.S. Patent No. 9,458,814).

In 2020, Omega accused BMW’s vehicle remote start technology of infringing the ’814 patent in the United States District Court for the Northern District of Georgia, naming BMW of North America, LLC (“BMW NA”) and Bayerische Motoren Werke AG (“BMW AG”) as defendants. Before BMW AG was served, BMW NA successfully moved to dismiss the complaint for improper venue after the Court agreed that Omega had failed to establish that BMW NA maintained a regular and established place of business in the district for purposes of the patent venue statute, 28 U.S.C. § 1400(b). As a result of BMW NA’s procedural victory, the Court transferred the case to the United States District Court for the District of Delaware, where BMW NA is incorporated.

Prior to BMW NA’s procedural victory in the Northern District of Georgia, BMW NA filed a petition for inter partes review (“IPR”) challenging all claims of the ’814 patent. After the Patent Trial and Appeal Board (“PTAB”) instituted the IPR proceeding as to all claims of the ’814 patent with respect to all grounds in the petition, the Delaware case was stayed pending resolution of the IPR.

The PTAB issued a Final Written Decision finding BMW NA successfully proved that all claims of the ’814 patent were invalid as obvious. Omega then appealed the PTAB’s Decision to the Court of Appeals for the Federal Circuit. On appeal, BMW NA once again prevailed, with the Federal Circuit affirming the PTAB’s finding that all claims of the ’814 patent asserted against BMW were invalid. As a result of BMW NA’s successful IPR and appeal, Omega’s infringement action in the District of Delaware has now been dismissed with prejudice.

Finnegan is pleased to stand together with BMW Group against patent assertion entities’ efforts to monetize meritless, low-quality patents. As this victory demonstrates, Plaintiffs can be assured that the in-house legal and litigation teams at the BMW Group are experienced and willing to vigorously defend against baseless claims by patent assertion entities.

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

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

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.