A remote engine start feature is one of the most beloved features in cars, especially in frigid cold or hot weather, as it allows you to start the engine and control the climate inside the car to a perfect temperature. Omega Patents LLC owned a patent (U.S. 9,458,814) directed to a remote start control system for a vehicle. The patent is directed to a system that not only controls the vehicle’s climate control function, but also activates the parking brake when starting the engine. In 2020, Omega sued BMW, alleging that BMW’s X5 and X7 SUVs infringe its patent. In response, BMW challenged the validity of Omega’s patent by requesting Patent Trial and Appeal Board (PTAB) to invalidate the patent for being obvious in view of the prior art. On May 9, 2022, the PTAB agreed with BMW and issued a decision invalidating the patent.
To show obviousness, not only must each element of a claim be found in the prior art, but in addition, the prior art as a whole must provide sufficient motivation to a person of ordinary skill in the art to combine the elements in the manner claimed and that doing so would have provided reasonable expectation of success. One of the issues that Omega argued is that BMW’s proffered “broad motivation of ‘improved safety’ is improper in this instance of vehicle operation, since such would permit almost any combination of prior art references in hindsight.” However, the PTAB disagreed with Omega. The PTAB said “addressing the problem of rollaway is well recognized within the prior art” and not based on improper hindsight. The PTAB held that, in this case, “the proposed combination presents ‘a precise combination that would have specifically mitigated the safety risk of [a] rollaway while preserving the convenience of [a] remote start.”