Fox Rothschild LLP

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to dismiss Plaintiff’s complaints asserting infringement of U.S. Patent Nos. 9,705,765 (“the ‘765 patent”), 10,002,036 (“the ‘036 patent”), 10,031,790 (“the ‘790 patent”) and 10,248,477 (“the ‘477 patent”) from the use of the AUTOSTAR communication technology in Defendants’ vehicles.

Defendants’ motions to dismiss Plaintiff’s complaints under Federal Rule of Civil Procedure 12(b)(6) were based on three asserted grounds:  (1) claim preclusion based on the dismissals with prejudice entered by the District Court in the Eastern District of Texas in a prior action that Plaintiff brought against some of the Defendants asserting infringement of U.S. Patent Nos. 8,209,705 (“the ‘705 patent”) and 8,566,843 (“the ‘843 patent”) (“Stragent II”); (2) issue preclusion based on final written decisions issued by the Patent Trial and Appeals Board (“PTAB”) in inter partes reviews concerning certain patents; and (3) Plaintiff’s alleged violation of 37 C.F.R. § 42.73(d)(3) which allegedly led to Plaintiff wrongfully obtaining three of the four patents asserted in the action.  Id. at *1-4.  In denying Defendants’ motion to dismiss, the Court found that claim preclusion did not apply because Defendants failed to meet their burden to prove that the claims asserted in the instant action were the same as those alleged in Stragent II.  Id. at *6-13.  The Court also found that issue preclusion did not apply because the inter partes reviews before the PTAB did not adjudicate the identical issues that are presented in the instant action.  Id. at *13-14.  Lastly, the Court found that 37 C.F.R. § 42.73(d)(3) did not have preclusive effect under the circumstances of the instant action.  Id. at *4.

A copy of the Memorandum Opinion is attached.

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