Case Name: Beacon Navigation GmbH v. Chrysler Group, LLC
Docket Number: 2:13-cv-11378-PJD-MAR
Date Filed: 3/28/2013
Judge: Hon. Victoria A. Roberts
Status: Pending

On March 28, 2013, Beacon Navigation GmbH (“Plaintiff”) brought suit against Chrysler Group, LLC (“Defendant”) alleging that the Defendant infringed United States Patent Nos. 6,360,167 and 5,878,368 (collectively, “the Patents-in-Suit”).  Patent No. 6,360,167 discloses a vehicle navigation system with location-based multi-media annotations.  The navigation system provides multi-media annotations, such as text, graphics, and/or audio, based on the present location of the vehicle.  The navigation system includes a wireless communication system, which interacts with and provides further location-based multi-media annotations.

  Patent No. 5,878,368 discloses a navigation system with user definable cost values.  The navigation system will determine a route from a selected beginning point to a desired destination by evaluating the “cost” of the road segments to be traveled.  Once the cost is determined, the navigation system will recommend the route with the lowest total cost.  The navigation system may factor in congestion levels, highway preference and avoidance, and toll road preference and avoidance in determining the recommended route.

This action, among many others, was transferred from Delaware to Michigan on March 28, 2013.  On May 30, 2013, the Plaintiff filed a Motion to Amend the Complaint and a Motion to Consolidate Cases.  The Defendant did not oppose consolidation, but did oppose the Amended Complaint filing.  The Plaintiff claims that it is in the court’s best interest to allow the amendment because it would save both judicial and party resources.  Before the court could issue an order on the motions, however, Judge Duggan signed an order staying the case pursuant to the court’s August 12, 2013 order in case numbers 13-cv-11389 and 13-cv-11511, which stayed the cases pending the results of a re-examination notice filed with the United States Patent and Trademark Office questioning patentability of the Patents-in-Suit. Judge Duggan signed the order on September 17, 2013.  The case was reassigned to the honorable Victoria A. Roberts on October 19, 2015. A status conference was conducted on December 15, 2015. The following issues were discussed during the status conference: pending motions including Beacon’s Request to Lift the Stay and Consolidate the cases, Consolidation (all pretrial proceedings and validity trial), claim construction, lead counsel, scheduling order, dismissal with prejudice as requested by Defendants), and bifurcation of liability and damages (as requested by defendants).  On December 22, 2015, an order was entered by the Court relating to (1) dismissal of specified claims, (2) limitation on remaining claims, (3) litigation before the USPTO, (4) denial of motions to dismiss, (5) delayed grant of the requests to consolidate, and (6) stay. Specifically, the following claims were dismissed with prejudice as a result of reexamination:

·         Claim 1 (US 6,374,180)

·         Claims 1, 26, and 29 (US 6,178,380)

·         Claims 1, 2-3, 5-6, 10-13, 17-20, and 22 (US 6,029,111)

·         Claims 1 and 32 (US 6,360,167)

·         Claims 1, 12, and 18 (US 5,819,201)

·         Claims 1, 7, and 11 (US 6,163,269)

·         Claims 1 and 15 (US 5,878,368)

As a result, Claims 1 and 3 of US 5,862,511 remain in suit. Defendants’ requested the opportunity to challenge the claims remaining in suit in the USPTO. In response to this request, the Court ordered Defendants to take action within 120 days of the order or the Court would reevaluate its position on stay. The Court also denied Defendants’ motion to dismiss without prejudice, declines to grant consolidation, and continued to stay the case to allow Defendants to pursue USPTO review. Currently, the case is still stayed.