Relentless pursuit of victory: BMW Group prevails in Arigna patent litigation saga

BMW Group prevailed in its long-running battle against Arigna Technology Ltd. While Arigna’s efforts spanned years and multiple venues — BMW Group’s multi-faceted legal strategy and refusal to settle ultimately forced Arigna to fold.

Pressuring from all sides: BMW Group’s multi-pronged legal strategy

The saga began in May 2021, when Arigna sued BMW Group in the US District Court for the Eastern District of Texas and at the ITC, alleging discrete chips in certain vehicles infringed US Patent No. 8,289,082 (“the ’082 patent”). The Texas case was stayed in favor of the ITC investigation, where all asserted claims of the ’082 patent were found invalid and not infringed. However, this ITC win did not deter Arigna, which sought a second chance against BMW Group by resuming the Texas case.

However, Arigna failed to join all necessary parties in Texas, and BMW Group filed a declaratory action in the US District Court for the District of Columbia, pressuring Arigna by shifting the legal battle to another forum. BMW Group pursued parallel patent office challenges to add further pressure to Arigna’s infringement claims.

Squeezing Arigna’s claims: patent office challenges

A key component of BMW Group’s strategy was its comprehensive pursuit of patent office challenges, particularly an Inter Partes Review (“IPR”) and an Ex Parte Reexamination (“EPR”) against the ’082 patent. The timing of these filings applied crucial pressure on Arigna while it sought to litigate its infringement claims. Although the Patent Trial and Appeal Board did not find the ’082 patent claims invalid, the Board’s decision was appealed to the Federal Circuit, keeping Arigna on the defensive.

In parallel, BMW Group filed an EPR against the ’082 patent, challenging the validity of key claims based on prior art that had been successfully used in its ITC victory. The USPTO granted the EPR request a few months later.

With this additional challenge and growing uncertainty, Arigna’s position continued to weaken. By launching these challenges, BMW Group successfully created a layered defense that kept Arigna’s litigation efforts in constant flux.

Battling for discovery: Arigna’s litigation funder

BMW Group also pursued a rigorous discovery strategy aimed at uncovering details about Arigna’s funding arrangements. Unsurprisingly, Arigna consistently resisted these efforts as allegedly neither relevant nor discoverable. However, when Arigna became embroiled in a public dispute in a federal district court with its litigation funder, Longford Capital, BMW Group seized the opportunity to turn up the pressure.

BMW Group first served a subpoena on Longford, seeking information related to its funding arrangement with Arigna. BMW Group next sought to intervene in Arigna’s fee dispute against Longford, arguing that the dispute had direct relevance to Arigna’s ability to continue litigating its patent claims. At a critical juncture, the move forced Arigna to confront the reality of its strained financial backing.

Dismissing Arigna’s claims with prejudice: the final victory

With funding in jeopardy, Arigna’s original legal counsel withdrew from the case, and Arigna ultimately offered BMW Group a covenant-not-to-sue on the ’082 patent. On September 10, 2024, Arigna’s counterclaims of infringement were dismissed, ensuring that Arigna could not pursue further claims against BMW Group on the ’082 patent.

Reflecting on the result, Reinhold Diener, BMW Group’s Vice President of Intellectual Property, stated: “The BMW Group has successfully fought off multiple lawsuits brought by patent assertion entities without paying them any money. We continue to watch our long-term strategy pay off for the BMW Group, and we will not deviate from our way of handling meritless patent assertion litigation.”

Conclusion: a relentless defense strategy

BMW Group’s victory in this declaratory judgment action marks the culmination of its multi-year defense against Arigna. By leveraging a combination of offensive declaratory judgment actions, patent office challenges, and aggressive discovery efforts, BMW Group applied sustained and multi-pronged pressure on Arigna, forcing it to ultimately cut its losses. This victory is not only a testament to BMW Group’s commitment to defending against baseless patent assertions but also serves as a blueprint for how companies can prevail against persistent patent assertion entities through relentless and multi-faceted legal strategies.

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