NEW YORK – October 30, 2018 – The Patent Trial and Appeal Board on Friday, October 19, denied institution of two Petitions filed by BMW of North America LLC for inter partes review of a patent owned by Blitzsafe Texas LLC.  The patent is related to a car infotainment system. 

The PTAB rejected BMW’s validity challenges based on the General Plastic factors, noting that BMW and a group of other automakers unsuccessfully challenged the patent in 2017. The General Plastic factors are used by PTAB judges to determine whether to grant a request to review a patent following a prior petition for inter partes review.  The factors are intended to prevent serial challenges of the same patent.  The same Blitzsafe patent has been challenged 15 times at the PTAB; none of the challenges have found any of its claims invalid.

“As the General Plastics factors have not been frequently applied, this denial by the PTAB is a boon to patent holders who have long argued against being subject to repeated challenges under the law,” said Fred Fabricant, chair of Brown Rudnick’s IP Litigation Group. 

The patent has been involved in prior patent infringement litigation against Toyota, Honda, Volkswagen, Hyundai Kia and Nissan.  The patent along with others is presently involved in litigation pending in the Eastern District of Texas against BMW, Mercedes Benz, Subaru, Mitsubishi Motors, Volvo, and Jaguar Land Rover. 

In a September 5, 2018 decision in Blitzsafe Texas LLC v Bayerische Motoren Werke AG, et al, the Brown Rudnick team successfully argued that an automotive dealership controlled by the auto manufacturer meets the TC Heartland regular and established place of business requirements for the purposes of venue. In that case, the district judge denied BMW’s motion to dismiss the case for improper venue. The case remains in the Eastern District of Texas.

The patent at issue is U.S. Patent Number 8,155,342.  BMW of North America LLC v. Blitzsafe Texas LLC is case number IPR2018-00927 at the Patent Trial and Appeal Board.

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