ITC backs BMW and GM in SUV patent case
An Irish licensing company sought to ban the importation of electric vehicles into the US | Original complaint targeted a number of high-profile auto manufacturers | If upheld, allegations would have significant impact on domestic manufacturing | Finnegan.
BMW and General Motors have prevailed at the US International Trade Commission (ITC), after it upheld a ruling that the automotive manufacturers did not infringe semiconductor technology in their electric sports utility vehicles (SUVs).
The ITC issued a final determination in the case on December 7, affirming its September decision dismissing the claims against the companies.
Back in June 2021, Ireland-based Arigna Technology filed a complaint, aiming to ban the importation and sale of a range of hybrid and all-electric SUVs, as well as other vehicles.
In the ITC action, Arigna accused the companies of violating Section 337 of the Tariff Act of 1930 by importing into the US vehicles containing power inverters and converters. These vehicles included semiconductor devices that allegedly infringed two patents, US numbers 8,247,867 and 8,289,082.
The Commission then instituted a notice of investigation against a number of automotive brands which, alongside BMW and General Motors, included Porsche, Volkswagen AG, Audi, Bentley Motors, Lamborghini and MercedesBenz.
Last two standing
As the proceedings progressed, all claims against these companies, except for BMW and General Motors, had been dropped by September 2022.
A team of Finnegan attorneys led by partners Lionel Lavenue and Kara Specht, and of counsel Benjamin Cassady, advised BMW; while Fish & Richardson represented General Motors.
Arigna was represented by Susman Godfrey and Russ August & Kabat.
According to the Finnegan legal team, “the allegations threatened the importation of these fuel-efficient vehicles and would have harmed BMW’s significant domestic manufacturing efforts in South Carolina”.
Finnegan's Lionel Lavenue—who is based in Virginia—told WIPR: "BMW’s counsel at Finnegan is very pleased with the correct and just result by the ITC that affirmed ALJ Bhattacharyya’s key rulings and terminated the investigation of BMW with a finding of no violation.
"The ALJ ruled in BMW’s favour after a five-day evidentiary hearing held from April 4-8, 2022, where Arigna asserted its patents were infringed by BMW. The ITC’s decision rejects the majority of Arigna’s positions and adopted the ALJ’s rulings, denying Arigna any remedies against BMW.
"The ITC further confirmed, correctly, that Arigna’s asserted patents are invalid and not infringed.
"Finnegan is proud of its team that led to this success for BMW."
The Office of Unfair Import Investigations also participated in the investigation.
Final determination
In March, Arigna was forced to drop its claims against BMW regarding the ‘867 patent after the ITC agreed that the accused devices were not used in the company’s vehicles.
During a five-day trial in April 2022, Judge Monica Bhattacharyya issued an initial determination finding no violation of Section 337, and that all claims asserted against the companies were invalid and not infringed.
Later in April, Arigna filed a petition for review of the finding of non-violation regarding the ‘082 patent, including issues of claim construction, non-infringement, and invalidity. Arigna did not petition for review of any findings relating to the ‘867 patent.
On September 6, 2022, BMW filed their opposition to Arigna’s petition for review of the judge’s findings with respect to the ‘082 patent.
Later that month, Judge Bhattacharyya agreed with these arguments, and issued a determination finding no violation of Section 337 and that all claims asserted against BMW were invalid and noninfringed.
This ruling has now been reaffirmed in a final ruling this month (December).
This article was updated after publication on Friday, December 9, 2022.
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