Paice, a pioneer in hybrid electric vehicle technology, and the Abell Foundation have filed a federal patent infringement lawsuit against BMW in U.S. District Court in Maryland. The complaint accuses the German automaker of knowingly infringing on the rights of Paice and Abell, and it alleges that BMW deliberately ignored Paice and Abell’s overtures to take a license to lawfully use its patented technology.
Paice’s contributions have been recognized by the world’s leading automakers over the past decade. Since 2010, Paice has licensed its technology portfolio to many of the largest automakers in the world, including Toyota, Ford, Honda, Hyundai/Kia and others. Collectively, these companies account for more than 80% of all hybrid vehicle sales in the United States. BMW is one of the last few holdouts that have refused to compensate Paice for its technology.
“We must hold foreign companies like BMW accountable when they take American technology without compensation,” said Paice CEO Robert Oswald, an automotive industry veteran with more than 50 years of experience. “Paice shared intimate details of our hybrid vehicle technology with BMW in good faith. Rather than negotiate a license for our technology, BMW took what it learned from Paice and used it for its own gain.”
Francie Keenan, executive chairman of the Paice Board of Directors, added: “It is mystifying that BMW believes it doesn’t need a license when nearly every other major hybrid automaker in the world has already taken one. Given BMW’s well-publicized desire to move to a hybrid and electric world, it is even more mystifying that BMW would not even extend the courtesy of responding to our invitation to discuss a license.”
Patent attorney Alistair Chan comments on the Paice case here.
Paice’s Collaboration with BMW
According to the complaint, beginning in the early 2000’s, Paice taught BMW how its patented technology could maximize fuel efficiency and reduce harmful emissions without sacrificing driving performance. It held face-to-face meetings with BMW’s senior management and shared detailed technical information with BMW engineers.
“BMW readily expressed interest in Paice’s technology because BMW was still pushing its diesel technology and was years behind other leading automakers that were actively pursuing hybrids,” the complaint states.
The company ultimately adopted Paice’s technology. “BMW began employing Paice’s critical teachings, adding hybrid and plug-in hybrid models to its vehicle line-up with notable success,” the complaint reads.
Eight BMW hybrid and plug-in hybrid vehicles are accused of infringement, including the 330e iPerformance, 530e iPerformance, 750e xDrive iPerformance, i8 Roadster Plug-in, ActiveHybrid 3, ActiveHybrid 5, ActiveHybrid 7 and Mini Countryman Plug-in.
A Leader in the Hybrid Industry
Paice was an early leader in electrified vehicles. The company was awarded its first hybrid vehicle patent in 1994, long before most automakers began seriously focusing on ways to improve fuel efficiency and reduce emissions. Paice’s technology proved valuable and helped accelerate the growth of the hybrid vehicle industry. An independent analysis concluded that Paice owns the most dominant hybrid vehicle patents in the world.
Dr. Alex Severinsky, a Russian immigrant, founded Paice in 1992 with the support of the University of Maryland. The company has been awarded 30 U.S. and foreign patents.
About the Abell Foundation
The Abell Foundation, a Baltimore-based charitable organization dedicated to fighting urban poverty and promoting social objectives by investing in progressive local start-up companies, is a co-owner of the Paice patents. Since 1999, Abell has invested millions of dollars to support Paice’s efforts to develop and promote its hybrid technology.