`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`VOLKSWAGEN AG,
`
`Defendant.
`
`
`
`NORTHSTAR SYSTEMS LLC,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`BAYERISCHE MOTOREN WERKE AG,
`
`Defendant.
`
`
`
`Case No. 2:22-cv-00486-JRG (Lead Case)
`
`JURY TRIAL DEMANDED
`
`
`Case No. 2:22-cv-00496-JRG (Member Case)
`
`JURY TRIAL DEMANDED
`
`Oral Argument Requested
`
`
`
`
`
`
`DEFENDANT BAYERISCHE MOTOREN WERKE AG’S NOTICE OF
`DEVELOPMENT REGARDING THE PENDING MOTION TO STAY AND
`INSTITUTION OF INTER PARTES REVIEW REGARDING ALL FIVE OF THE
`ASSERTED PATENTS
`
`
`
`
`
`
`
`Case 2:22-cv-00486-JRG Document 97 Filed 03/06/24 Page 2 of 4 PageID #: 1564
`
`
`
`Defendant Bayerische Motoren Werke AG (“BMW AG”) respectfully notifies the Court
`
`that, as of March 6, 2024, all 5 of the asserted patents in the case, and all asserted claims of those
`
`5 patents, as filed against BMW AG by NorthStar Systems LLC (“NorthStar”), are currently
`
`undergoing review, by the Patent Trial and Appeal Board (“PTAB”). BMW AG filed a related
`
`pending motion to stay. Dkt. 87.
`
`The PTAB instituted inter partes review for U.S. Patent Nos. 6,898,432 (“the ’432
`
`patent”); 8,014,943 (“the ’943 patent”); 8,032,297 (“the ’297 patent”); 8,478,527 (“the ’527
`
`patent”); and 8,805,416 (“the ’416 patent”).
`
`A chart detailing the status of each patent is below.
`
`Institution Date
`
`November 9, 2023
`
`December 8, 2023
`
`December 8, 2023
`
`January 19, 2024
`
`March 6, 2024
`
`March 6, 2024
`
`Case No.
`
`IPR2023-00890
`
`IPR2023-00934
`
`IPR2023-01017
`
`IPR2023-01190
`
`IPR2023-01049
`
`IPR2023-01191
`
`Asserted Patent
`
`8,032,297
`
`8,478,527
`
`8,014,943
`
`6,898,432
`
`8,805,416
`
`8,805,416
`
`
`
`
`
`
`
`
`
`
`
`1
`
`
`
`Case 2:22-cv-00486-JRG Document 97 Filed 03/06/24 Page 3 of 4 PageID #: 1565
`
`
`
`The following table confirms that all asserted claims of all five patents have been instituted:
`
`Asserted Claims by
`NorthStar
`1-2, 4-5, and 7-8
`
`Claims Challenged in
`Petitions by BMW NA
`1-8
`
`Claims Instituted by
`the Board
`1-8
`
`1-30
`
`1-18, 20-21, 23-26, and
`28-30
`1, 3-14, 18-20, and 26-
`30
`1-18, 20-21, and 23-26 1-26
`
`Patent/IPR
`proceeding
`IPR2023-01190 –
`the ’432 patent
`IPR2023-00890 –
`the ’297 patent
`IPR2023-00934 –
`the ’527 patent
`IPR2023-01017 –
`the ’943 patent
`IPR2023-01049 and
`IPR2023-01191 –
`the ’943 patent
`
`
`Exs. 1, 2, (’416 Institution Decisions); Dkt. 87, Ex. 8 (’432 Institution Decision); Dkt. 87, Ex. 4
`
`1-30
`
`1-30
`
`1-30
`
`1-26
`
`1, 3-6, 9-13, and 17-19 1-35
`
`1-35
`
`(’297 Institution Decision); Dkt. 87, Ex. 5 (’527 Institution Decision); Dkt. 87, Ex. 6 (’943
`
`Institution Decision).
`
`Now, all asserted claims of all 5 of the asserted patents in the case are subject to review by
`
`the PTAB.
`
`
`
`
`
`Dated: March 6, 2024
`
`Respectfully submitted,
`
`/s/Lionel M. Lavenue
`Lionel M. Lavenue
`Virginia Bar No. 49,005
`lionel.lavenue@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`1875 Explorer Street, Suite 800
`Reston, VA 20190
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`
`ATTORNEY FOR DEFENDANT
`BAYERISCHE MOTOREN WERKE AG
`
`
`2
`
`
`
`
`
`Case 2:22-cv-00486-JRG Document 97 Filed 03/06/24 Page 4 of 4 PageID #: 1566
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on March 6, 2024, I caused the foregoing DEFENDANT
`
`BAYERISCHE MOTOREN WERKE AG’S NOTICE OF DEVELOPMENT REGARDING
`
`THE PENDING MOTION TO STAY AND INSTITUTION OF INTER PARTES REVIEW
`
`REGARDING ALL FIVE OF THE ASSERTED PATENTS to be electronically filed with the
`
`Clerk of the Court using the CM/ECF system which will send notification of such filing via
`
`electronic mail to all counsel of record.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/Lionel M. Lavenue
`Lionel M. Lavenue
`
`
`
`
`
`3
`
`
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