Volkswagen, Bentley Slam Signal IP's Safety Patent Claims
By Lisa Ryan
Law360, New York (October 07, 2014, 3:36 PM ET) -- Volkswagen Group of America Inc. and Bentley Motors Inc. on Monday fired back at Signal IP’s car safety patent infringement suit in California federal court, urging the judge to declare the automakers haven’t ripped off the safety technology and that the patents asserted in the suit are invalid.
The car giants slapped a counterclaim against Signal, a subsidiary of patent acquisition and monetization firm Marathon Patent Group Inc., in the dispute accusing Volkswagen and Bentley of infringing six patents, including one for a method for determining whether to deploy an air bag based on the direction an infant is facing and another for a radar system that detects objects in drivers’ blind spots.
“[Volkswagen] and Bentley are not infringing, and have not infringed, the ’927, ’375, ’486, ’601, ’007 and ’775 patents, either literally or under the doctrine of equivalents,” the counterclaim said.
In April, Signal filed suit against the automakers, and also hit Ford Motor Co., Chrysler Group LLC, Fiat USA Inc., Jaguar Land Rover North America LLC, Mercedes-Benz USA LLC and more with similar suits, accusing the car giants of ripping off combinations of seven of Signal’s vehicle safety patents.
Volkswagen and Bentley allegedly infringed the radar and air bag patents, in addition to patents related to technology used in the automakers' cruise control, collision warning and keyless entry systems. Another patent describes a method for when to use electric power in a hybrid vehicle, according to the complaint.
The automakers asked the judge to toss the willful infringement claims in July, but Signal argued that it never even made a claim for pre-suit infringement, and also told the court that it has sufficiently pled post-suit willful infringement based on the automakers' knowledge of the patents-in-suit from at least the filing of the complaint.
Two weeks ago, U.S. District Judge John A. Kronstadt granted the automakers’ July bid to toss the pre-suit and post-suit willful infringement claims, saying it “only pleads post-suit knowledge of the patents-in-suit. Further, plaintiff has not sought a preliminary injunction. Under these circumstances, a claim for willfulness may not be maintained.”
And in their Monday filing, Volkswagen and Bentley asked the judge to declare that they have not infringed the patents, and also argued that the patents are actually invalid because Delphi Technologies, the previous holder of the patents, signed a patent purchase agreement releasing its customers from any liability of infringement over the patents in October 2013.
Representatives for Signal declined to comment, and counsel for the automakers didn’t respond to requests for comment on Tuesday.
Signal is represented by Randall J. Sunshine, Ryan E. Hatch and Jason L. Haas of Liner LLP.
The automakers are represented by Ryan K. Yagura and Kevin Murray of O'Melveny & Myers LLP and Michael J. Lennon, Michael N. Zachary and Susan A. Smith of Kenyon & Kenyon LLP.
The patents-in-suit are U.S. Patent Numbers 5,714,927; 5,732,375; 5,954,775; 6,434,486; 6,775,601; and 6,012,007.
The suit is Signal IP Inc. v. Volkswagen Group of America Inc. et al., case number 2:14-cv-03113, in the U.S. District Court for the Central District of California.
--Editing by Stephen Berg.
