Crowell & Moring LLP is pleased to announce that firm client BMW Group has achieved a zero-payment dismissal with prejudice in two cases brought by Infogation Corporation (“Infogation”) against Bayerische Motoren Werke AG (“BMW AG”) and BMW of North America, LLC (“BMW NA”) involving U.S. Patent Nos. 10,107,628; 8,898,003; 8,406,994; and 6,292,743 (“Patents-in-Suit”), before the U.S. District Court for the Eastern District of Texas.
In August 2023, Infogation initiated its campaign to assert the Patents-in-Suit against a broad swath of the automotive industry, alleging its patents cover navigation-related technologies in vehicles. This campaign followed an earlier wave of Infogation lawsuits in 2021 against Google LLC and certain telecommunications companies. BMW AG filed a motion to dismiss the first complaint based on insufficient service of process, lack of personal jurisdiction, patent ineligibility, and non-infringement. Most notably, while Infogation argued that certain service on BMW NA was effective service as to BMW AG, the Crowell team raised new and novel arguments based on existing case law that such service is ineffective and that BMW AG must be served pursuant to the Hague Service Convention. Thereafter, Infogation entered into a joint stipulation that its prior service attempts on BMW AG were ineffective and that BMW AG can only properly be served pursuant to the Hague Service Convention.
Shortly after, Infogation filed its next complaint against BMW NA in May 2024, even though venue as to BMW NA has been held by Chief Judge Gilstrap to be inappropriate in the Eastern District of Texas. After discussions with BMW’s counsel, Infogation dismissed both of its cases with prejudice and with no payment from BMW Group.
According to BMW Group’s Vice President of Intellectual Property, Reinhold Diener, “The BMW Group continues and will continue to follow its long-term strategy of rigorously fighting off lawsuits brought by non-practicing entities without paying them any money.”
The Crowell team was led by patent litigation partner and lead counsel Brian Paul Gearing, and counsel Ali H.K. Tehrani. Adding to prior successes, Gearing noted: “Patent-assertion entities should take note of the aggressive and creative strategies that BMW Group will employ to respond to meritless lawsuits and should think twice in the future about targeting BMW Group with patent litigation.”
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Crowell & Moring is an international law firm with operations in the United States, Europe, MENA, and Asia. Drawing on significant government, business, industry and legal experience, the firm helps clients capitalize on opportunities and provides creative solutions to complex litigation and arbitration, regulatory and policy, and corporate and transactional issues. The firm is consistently recognized for its commitment to pro bono service as well as its programs and initiatives to advance diversity, equity, and inclusion.
