Once again, the BWM Group successfully fought off an attack by the NPE (non-practicing entity) IoT IP GmbH with opposition proceedings before the European Patent Office (EPO), which resulted in the complete revocation of the European patent EP 3 373 570 B1 (“patent”) relating to methods and devices for remotely controlling assets (e.g. vehicles).
IoT IP GmbH confronted the BMW Group and other car manufacturers, stating that remote control components, among other things, of vehicles sold by BMW were comprised by the scope of protection of the patent, and requested that the BMW Group take a license. In response, the BMW Group filed an opposition against the patent with the EPO, requesting the revocation of the patent in its entirety on the grounds of, inter alia, inadmissible extension and lack of patentability in view of patent documents not considered in the examination procedure. Additionally, third parties filed further oppositions.
In the hearing of October 25, 2022, the Opposition Division followed the line of argument of the opposing party and revoked the patent in its entirety both in terms of the granted claims and in terms of five auxiliary requests, four of which were withdrawn in the course of the hearing. The decision may be appealed by IoT IP GmbH. Whether or not IoT IP GmbH will appeal this decision cannot be predicted; the written grounds of the decision are still pending. The revoked patent will expire in May 2023.
Once again, this dispute shows that the BMW Group calmly, but fiercely, counters attacks by NPEs based on questionable patents and knows how to fight them off. Other examples are previous successful proceedings against Synchronicity IP GmbH (BARDEHLE PAGENBERG successfully defends BMW’s emergency call system “Intelligent Emergency Call” in preliminary injunction proceedings against Synchronicity IP GmbH) and against London Optical Car Systems Ltd. (BMW Group achieves success with BARDEHLE PAGENBERG against patent exploitation company and BARDEHLE PAGENBERG helps BMW AG achieve final success against NPE before German Federal Court of Justice).
Representatives of BMW: BARDEHLE PAGENBERG (Munich, Germany):
Prof. Dr. Tilman Müller-Stoy (Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, Commercial Mediator (MuCDR), Partner)
Johannes Lang (German and European Patent Attorney, Co-Managing Partner)
Dr. Klaus Reindl (German and European Patent Attorney)
Representatives of IoT IP GmbH:
Jan Gigerich (Patent Attorney and European Patent Attorney, IPCGS)
Dr. Roman Sedlmaier (Attorney-at-law, IPCGS)
EPO Opposition Division
Enrico Pasini (First Examiner)
Isabel Plata-Andres (Second Examiner)
Jens Baltersee (Chair)