End in sight to dispute between BMW, patent monetiser and Susman Godfrey

Law firm had tried to withdraw as counsel, but parties now working on settlement in long running patent infringement action

BMW has been fending off patent infringement suits from Irish patent holding company Arigna since 2021 Shutterstock

Peace might be about to break out between BMW, patent holding company Arigna Technology and its counsel, Susman Godfrey, in a long running patent infringement dispute.

In a filing in the Eastern Virginia district court on 30 January, patent monetisation company Arigna has “agreed to dismiss its claim with prejudice and to provide BMW with a covenant not to sue” on the lone patent in dispute.

The latest filing comes a few days after US trial firm Susman Godfrey had filed a motion to withdraw as counsel for Arigna, which was opposed by both BMW and Arigna.

The car maker had been hit by a flurry of patent infringement suits from Dublin-based Arigna, part of the Atlantic IP group, dating back to February 2021. 

Arigna, represented by Susman, brought three patent infringement actions against BMW beginning in February 2021, and an International Trade Commission (ITC) action. Two cases have been dismissed and the ITC investigation has been terminated. 

Now, however, with this new filing and covenant not to sue, Arigna and Susman Godfrey believe this resolves “any and all claims in this action and thus should moot the need for the court to consider Susman Godfrey’s motion to withdraw”.

Arigna and Susman Godfrey have requested a short extension of the current hearing date and briefing schedule to allow the parties to finalise the contemplated proposed dismissal and covenant not to sue, after which the parties expect that the court will be able to close the case without needing to address Susman Godfrey’s motion to withdraw. 

BMW does not oppose the request. 

Susman Godfrey had cited a business conflict as a basis for withdrawing as counsel for Arigna. An Arigna spokesperson had said it was opposing the motion “on grounds including that doing so would significantly disrupt timely resolution of the case and prejudice Arigna”.

BMW had argued that withdrawal at this stage, just months before the final pre-trial conference, significantly disrupted the proceeding and prejudiced BMW, hindering its ability to resolve the patent dispute in a timely manner.

In its opposition to Susman’s motion to withdraw, the German car maker also brought up a dispute between Arigna and Irish litigation funder Longford Capital, which, it said, it had no knowledge of until the details of the dispute became public.

In December, Arigna filed a lawsuit against Longford Capital in the Delaware district court relating to claims on proceeds from third party IP rights. Bloomberg reported that key details of the relationship between Arigna, Longford Capital and Susman Godfrey were revealed in the lawsuit including that Longford committed $23,595,500 and would pay Susman monthly fees up to $6,915,000 to prosecute district court actions up to a first trial. 

BMW had been pushing for further information on the details of the litigation funding. It argued in its filing that Susman should not be allowed to withdraw until the discoverability of the agreements between Arigna and Longford Capital was resolved.

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