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25 November 2019PatentsSarah Morgan

BMW facing lawsuit over hybrid engine tech

A US-based maker of hybrid engine technology and a Baltimore-based charity have accused BMW of infringing patents.

Paice and nonprofit The Abell Foundation said BMW had infringed three patents covering hybrid technology, in a suit filed at the US District Court for the District of Maryland on Thursday, November 21.

“In the face of universal industry recognition for Paice’s patents, BMW has continued to sell hybrid vehicles throughout the US without compensating Paice and Abell for the very foundational hybrid technology that is critical to the success of so many hybrid vehicles on the road today, including BMW’s,” alleged the complaint.

Paice added that its technology has now been licensed by automaker including Toyota, Ford, Hyundai, Kia, and Honda.

According to Paice and the nonprofit (which has “invested millions of dollars” to support Paice’s efforts to develop its technology), Paice taught BMW its patent-protected technology through numerous interactions.

The suit alleged that, at BMW’s request, Paice sent information on its technology, patents and cost advantages.

BMW’s interest in Paice allegedly peaked in 2004, with Paice providing detailed computer modelling and design specifications for BMW’s fellow German automakers, VW and Daimler.

“BMW also sought access to Paice’s technology in quieter ways,” said Paice, alleging that BMW began working with a European agent of Paice’s and eventually acquired the agent’s patents.

The suit added: “As more and more automakers have licensed Paice’s patents over the last decade, BMW now finds itself as one of the last few holdouts, continuing to sell hybrid vehicles that violate Paice’s patent rights. BMW has deliberately ignored Paice’s and Abell’s requests to negotiate a license in good faith.”

BMW has also deliberately ignored Paice’s and Abell’s requests to negotiate a licence in good faith, according to the hybrid technology company.

In February, Paice reportedly contacted BMW’s general counsel, inviting BMW to discuss licensing Paice’s patents but received no response. Paice again attempted to contact BMW in July but received no response.

Paice and the nonprofit are seeking a finding of infringement and damages.

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