The EPO Opposition Division has revoked a patent owned by Munich-based NPE, IoT IP, with opponents including two carmakers Audi and BMW. Both successfully appealed against the granting of the patent, averting potential licensing obligations for the remote control components of their cars.
14 November 2022 by Mathieu Klos
At the end of October, the Opposition Division of the European Patent Office revoked the granting of the European patent EP 33 73 570 B1 of Munich-based NPE, IoT IP. Two German carmakers, Audi and BMW, had acted against the granting of the patent. German patent attorney firm Hoffmann Eitle, which filed a strawman suit, appeared as the third opponent.
The judges found that the amendments made by IoT IP during the opposition proceedings for the patent and the invention did not meet the requirements of Article 101(3)(b) of the European Patent Convention. It filed the parent patent in the UK in 2003, which later also survived an opposition in the EPO granting procedure. The party then filed divisional application EP 570 B1, which is now in dispute.
Meanwhile, EPO law has changed. Opposition Division members have found that IoT IP inadmissibly extended the application, because it did not disclose the patent claims verbatim.
EP 570 B1 would have protected a system and method for monitoring and controlling of wireless modules linked to assets. These could be, among other things, remote control components in cars, for example. However, the decision is not yet legally binding. The NPE can still appeal to the Boards of Appeal. Furthermore, the EPO has not yet released the written reasons for the judgment.
IoT IP had requested that the many global car manufacturers take a licence because the scope of the patent’s protection covered the remote control components of vehicles. So far, however, no car manufacturer has taken a licence. Instead, some carmakers such as BMW and Audi attacked EP 570 B1 at the EPO.
According to JUVE Patent information, while IoT IP has not yet filed a patent infringement suit at the civil courts, the EPO’s revocation makes this less likely. Should the patent be reinstated in an appeals procedure at the Boards of Appeal, it would then only be a matter of damages in infringement proceedings. EP 570 B1 will expire in May 2023.
In the US, on the other hand, the parallel US patent is being enforced against Amazon. However, in this case IoT IP is not the patent holder.
Munich IP firm Bardehle Pagenberg has a long-standing albeit non-exclusive relationship with BMW. According to the firm, it has successfully defended the carmaker in a number of recent NPE suits. In 2019, the firm appeared alongside BMW in a case brought by Broadcom/Avago. Teams from Bardehle Pagenberg were also involved in the connected cars dispute between Nokia and Daimler on behalf of two suppliers, Robert Bosch and TomTom.
A second Bardehle team is also representing Audi in the EPO proceedings. According to JUVE Patent information, the firm has not previously appeared for Audi in a major infringement suit. Indeed, Kather Augenstein litigated for Audi in the last major dispute.
Bardehle has, however, advised the car manufacturer out of court many times in recent years.
It is not known for which company Hoffmann Eitle is acting in the dispute. The firm files patents for Hyundai and Mitsubishi, two Asian conglomerates that also make cars, for example.
In the connected cars cases, their patent attorneys have tended to appear on the side of SEP holders, including IP Bridge as claimant against Ford. The firm also represented Ericsson in the German case against Apple over SEPs.
Jan Gigerich and Roman Sedlmaier from Munich firm IPCGS advised the claimant IoT IP. Both have experience in SEP claims and are also registered CEOs of IoT IP. They had acquired the European rights to the patent from the inventor Philip Wesby.
Patent attorney Gigerich and lawyer Sedlmaier worked for Bernhard Frohwitter for many years. Until 2020, he was the person behind what is probably Germany’s best-known NPE, IPCom. Gigerich and Sedlmaier were involved in IPCom’s lawsuits until 2016.
For IoT IP
IPCGS (Munich): Jan Gigerich (patent attorney), Roman Sedlmaier (both partners)
Bardehle Pagenberg (Munich): Tobias Kaufmann (patent attorney, partner)
Bardehle Pagenberg (Munich): Tilman Müller-Stoy, Johannes Lang (patent attorney; both partners); associate: Klaus Reindl (patent attorney)
For Hoffmann Eitle (strawman)
Hoffmann Eitle (Munich): Axel Esser (patent attorney, partner)
European Patent Office, Opposition Division
Jens Baltersee (chairman); Enrico Pasini (first examiner); Isabel Plata-Andres (second examiner)