Crowell Discharges Hybrid Vehicle Patents Asserted Against BMW—Federal Circuit Affirms BMW’s PTAB Wins

Washington, D.C.—April 10, 2023: On April 7, 2023, the Federal Circuit affirmed three IPR decisions obtained by Crowell invalidating every asserted claim of three patents owned by Paice LLC and the Abell Foundation that were asserted against BMW: U.S. Patent Nos. 7,104,347; 7,237,634; and 8,630,761.

In November 2019, BMW became the latest target of a long-running patent enforcement campaign by Paice and Abell. Paice developed and owns a large family of patents directed to various hybrid vehicle technologies, and had previously and successfully obtained licenses from almost all major car manufacturers. It sued BMW for infringement of three of its patents in the District of Maryland, accusing hybrid electric versions of numerous BMW vehicle models—including the 3-series, 5-series, 7-series, X5, and MINI—of infringing its patents.

Rather than pay Paice’s license demand, BMW once again committed to its strategy of vigorously and consistently defending itself against such patent trolls. BMW hired Crowell & Moring to invalidate the patents, and beginning in May 2020, the Crowell team filed three Petitions for Inter Partes Review (IPR) at the U.​S.​ Patent & Trademark Office (USPTO).  The Patent Trial and Appeal Board (PTAB) instituted a review of all three patents, and subsequently, issued Final Written Decisions invalidating each of the asserted claims. Paice then appealed, but the Federal Circuit has now affirmed each of those decisions. The district court action has been stayed pending resolution of these IPRs.

The IPRs are Bayerische Motoren Werke Aktiengesellschaft v. Paice LLC, IPR2020-00994, IPR2020-01299, and IPR2020-01386, and the Federal Circuit appeal has case Nos. 2022-1355, 2022-1512, 2022-1582.

BMW is represented by Crowell & Moring partners Jeffrey Sanok, Vince Galluzzo, and Scott Bittman.

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