A Michigan district court has found that German car maker BMW has not infringed the remaining patent in a long-running dispute with Swiss patent-holding company Beacon Navigation.

US district judge Mark Goldsmith on 18 September granted summary judgment ruling that BMW had not infringed the ’511 patent through its improved vehicle navigation systems. In a separate ruling on the validity of the patent, Goldsmith granted in part and denied in part BMW’s motion for summary judgment. The invalidity counterclaim is still pending in this case.

The court found that, on the whole, BMW was entitled to summary judgment of no infringement either directly or indirectly. The court did reject BMW’s first defence which was based on maths principles. The judge, however, agreed with BMW’s other arguments, such as the fact that claim 1 of the ’511 patent recites that the navigation system rotates “said velocity” which the GPS receiver “provides”. Since BMW’s accused navigation systems do not rotate a GPS velocity provided by the GPS receiver, BMW successfully argued the claim language precludes infringement.

The court also found that BMW had not induced customers to infringement.

The dispute dates back to 2011, when Beacon Navigation sued a number of defendants asserting three patents at the US District Court for the District of Delaware. BMW moved to stay the case pending a parallel US International Trade Commission investigation filed in December 2011, which Beacon unilaterally moved to terminate in the midst of discovery.

The case was then transferred to the US District Court for the Eastern District of Michigan. In Michigan, the case was stayed pending six re-examinations at the US Patent and Trademark Office filed by BMW and other Beacon defendants. Following the final re-examination, the stay was lifted and Beacon filed an amended complaint asserting the only surviving claims of one out of the three original patents in question, the ’511 patent relating to vehicle navigation technology.

Lionel Lavenue, Reston-based partner at Finnegan Henderson Farabow Garrett & Dunner, represented BMW. 

He said: “At Finnegan, we are happy to celebrate BMW Group’s complete victory over Beacon Navigation at the Eastern District of Michigan finding all asserted claims not infringed.”

Reinhold Diener, VP of intellectual property for BMW Group, said the outcome “marks another victory in BMW Group’s long-term strategy for handling meritless patent assertion litigation”.

Michigan-based IP lawyer Jay Schloff of Aidenbaum Schloff and Bloom represented Beacon, along with TechKnowledge Law Group.

Arigna dispute 

Earlier in the month, BMW secured victory against another patent holding company, Dublin-based Arigna. BMW had been hit by a spate of patent infringement claims from Arigna, part of the Atlantic IP Services group, spanning multiple jurisdictions including not just the US but also Germany and dating back to February 2021.

US Patent No 8,289,082 (‘082 patent) was the one patent dispute still pending between Arigna and BMW in the US.

On 11 September, represented by Finnegan, it obtained a covenant-not-to-sue and zero-dollar walkaway in a declaratory judgment action in the US District Court for the District of Columbia.

In this declaratory judgment action for non-infringement of the ’082 patent, the court dismissed Arigna’s counterclaim of patent infringement with prejudice. 

Finngean noted that: “This outcome represents a definitive victory for the BMW Group, bringing a close to litigation surrounding the ’082 patent – the last of four patents initially asserted by Arigna as part of its broader enforcement campaign.”

The German litigation is, however, still pending.