BMW Axes Remote-Starter Patent Behind Delaware Infringement Suit

The Federal Circuit ruled that a Georgia inventor’s car remote-starter patent that his company alleges was infringed by BMW AG is invalid in light of two previously published inventions.

Kenneth Flick’s Omega Patents LLC sued BMW for infringement of US Patent No. 9,458,814 in May 2020. The suit was transferred from an Atlanta courthouse to the US District Court for the District of Delaware, which paused the proceedings after BMW filed an administrative challenge to the patent’s validity at the Patent Trial and Appeal Board.

The PTAB ruled that the ‘814 patent was obvious, and therefore invalid, based on two previously issued patents. That decision was affirmed Monday in an opinion penned by Judge Leonard P. Stark of the US Court of Appeals for the Federal Circuit.

The first of the two previous patents was issued in 2010 and disclosed a remote-starter system operated using a key fob to operate a vehicle’s ignition and climate control system as well as certain optional security features, according to Stark’s opinion. The second was issued to BMW in 2002 and discloses a process to automatically activate the brake of a vehicle to prevent it from “rolling away during the starting operation.”

Stark wrote that the tribunal was justified in finding that Omega’s 2016 patent, which also included features designed to stop remotely-started cars from rolling off, was obvious in light of a combination of the earlier patents. He said there was “substantial evidence” supporting the PTAB’s finding that a skilled engineer would combine the two older patents and the combination “would have specifically mitigated the safety risk of a rollaway while preserving the convenience of a remote start"—the technology claimed in the Omega patent.

Stark was joined by Judges Jimmie V. Reyna and Todd M. Hughes.

Finnegan, Henderson, Farabow, Garrett & Dunner LLP represents BMW. Omega is represented by Allen, Dyer, Doppelt, Milbrath & Gilchrist PA.

The case is Omega Patents, LLC v. BMW of N. Am., LLC, Fed. Cir., 22-2012, 1/22/24.