Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 1 of 38 PageID #: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`v.
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`LYFT, INC.,
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`C.A. No. ________
`JURY TRIAL DEMANDED
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`RIDESHARE DISPLAYS, INC.,
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`Plaintiff,
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`Defendant.
`____________________________________)
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`COMPLAINT FOR PATENT INFRINGEMENT
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`1.
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`Plaintiff, RideShare Displays, Inc., files this Complaint for Patent Infringement and
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`Demand for a Jury Trial against Defendant Lyft, Inc., and alleges as follows:
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`THE PARTIES
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`Plaintiff, RideShare Displays, Inc. (“RSDI”) is a Delaware Corporation with its principal
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`2.
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`place of business at 19 Gardner Road, Fairfield, New Jersey, 07004 USA.
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`3.
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`Defendant, Lyft, Inc. (“Lyft”) is a Delaware Corporation with its principal place of
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`business at 185 Berry Street, Suite 5000 San Francisco, California, 94107 USA.
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`JURISDICTION AND VENUE
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`This action arises under the Patent Act, 35 U.S.C. 101, et seq. This Court has subject
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`4.
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`matter jurisdiction over this controversy under 28 U.S.C. 1331 and 1338.
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`5.
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`This Court has personal jurisdiction over Defendant Lyft, Inc., because Lyft is a
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`Delaware Corporation and because Lyft, Inc. has regularly and systematically transacted
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`business in this judicial district, directly or through intermediaries, and/or committed acts of
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`infringement in this judicial district.
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`6.
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`Defendant’s Registered Agent in the State of Delaware is The Corporation Trust
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`Company, and its registered office in the State of Delaware is 1209 Orange Street, Corporation
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`Trust Center, Wilmington, New Castle County, Delaware 19801.
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`7.
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`Defendant has been sued in this Judicial District no less than four times and did not
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`contest jurisdiction in those cases.
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`8.
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`Venue is proper in this Court pursuant to 28 U.S.C. 1400(b).
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`THE RSDI PATENTS-IN-SUIT
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`RSDI is the owner of all right, title and interest in U.S. Patent No. 9,892,637 (“the ‘637
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`9.
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`Patent”), titled “Vehicle Identification System.” On February 13, 2018, the ‘637 Patent was duly
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`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘637
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`Patent issued from Application No. 14/723,049, filed on May 27, 2015, and claims priority to
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`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
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`‘637 Patent is attached as Exhibit A to this Complaint.
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`10.
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`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,169,987 (“the ‘987
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`Patent”), titled “Vehicle Identification System.” On January 1, 2019, the ‘987 Patent was duly
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`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘987
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`Patent issued from Application No. 15/860,939, filed on January 3, 2018 and claims priority to
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`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
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`‘987 Patent is attached as Exhibit B to this Complaint.
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`11.
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`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,395,525 (“the ‘525
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`Patent”), titled “Vehicle Identification System.” On August 27, 2019, the ‘525 Patent was duly
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`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘525
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`Patent issued from Application No. 16/198,140, filed on November 21, 2018 and claims priority
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`to Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of
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`the ‘525 Patent is attached as Exhibit C to this Complaint.
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`12.
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`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,559,199 (“the ‘199
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`Patent”), titled “Vehicle Identification System.” On February 11, 2020, the ‘199 Patent was duly
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`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘199
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`Patent issued from Application No. 16/514,492, filed on July 17, 2019 and claims priority to
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`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
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`‘199 Patent is attached as Exhibit D to this Complaint.
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`13.
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`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,748,417 (“the ‘417
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`Patent”), titled “Vehicle Identification System.” On August 18, 2020, the ‘417 Patent was duly
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`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘417
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`Patent issued from Application No. 16/731,558, filed on December 31, 2019 and claims priority
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`to Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of
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`the ‘417 Patent is attached as Exhibit E to this Complaint.
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`14.
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`The ‘637 Patent, ‘987 Patent, ‘525 Patent, ‘199 Patent and ‘417 Patents are collectively
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`referred to as the “Patents-in-Suit”
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`15.
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`RSDI is also the owner of all right, title, and interest in U.S. Patent Nos. 10,249,184,
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`10,467,896; 10,789,837; 10,672,265; and pending applications relating to the same (“Other
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`RSDI RideShare Patents”). The Other RSDI RideShare Patents also relate to various rideshare
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`technologies.
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`16.
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`RSDI is the owner of all rights, title and interest in and to the Patents-in-Suit and Other
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`RSDI RideShare Patents and possesses the exclusive right of recovery of past, present, and future
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`infringement.
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`17.
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`RSDI has not licensed the Patents-In-Suit or Other RSDI RideShare Patents to
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`Defendant, or otherwise authorized Defendant to practice any of the claims of the Patents-in-Suit
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`or the Other RideShare Patents.
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`FACTUAL BACKGROUND
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`The rideshare space has been one of the hottest growth markets worldwide.
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`However, the rapid expansion of the rideshare market has exposed substantial and serious
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`18.
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`19.
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`weaknesses in vehicle/driver/passenger identification, security, and safety resulting in significant
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`concerns for drivers and passengers, as well as growing litigation and regulatory issues.
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`The Parties
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`20.
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`Plaintiff, RSDI is the pioneer and innovative leader in the development of rideshare
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`technologies, including active display systems and advanced technologies for the rideshare
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`industry.
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`21.
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`The active display technology developed and patented by RSDI – referred to as
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`LOCUSTM - provides passengers with the ability to immediately locate and securely identify the
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`correct rideshare vehicle and driver. LOCUS™ displays a single-use identifier (e.g. a particular
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`text string or color) that is sent simultaneously to both the driver’s and passenger's cell
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`phones/mobile device for each trip. A visor mounted display, visible from the exterior of the
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`driver’s vehicle, displays a single-use identifier matching the identifier sent to the passenger’s
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`cell phone/mobile device. In addition, LOCUS™ provides a universal delivery system for
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`messages, logos, advertisements, driver or passenger emergency and medical alerts.
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`22.
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`23.
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`RSDI designed, developed and prototyped the LOCUSTM.
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`Defendant, Lyft, is a ride sharing platform that uses an app (“the Lyft App”) to connect
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`passengers requesting rides with drivers who have vehicles.
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`24.
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`25.
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`Lyft serves over 600 cities in the U.S., as well as other cities abroad.
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`Among the cities and towns served by Lyft are cities and towns in the District of
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`Delaware.
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`26.
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`To date, Lyft has serviced well over 1 billion cumulative rides. According to its SEC
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`filings, in 2018, Lyft serviced 30.7 million riders with 1.9 million drivers, and over 1 billion
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`cumulative rides.
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`27.
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`According to Lyft’s public financial reporting, in 2016, 2017, 2018, Lyft bookings were
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`$1.9 billion, $4.6 billion and $8.1 billion respectively.
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`28.
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`Lyft’s published corporate Mission Statement is “to improve people’s lives with the
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`world’s best transportation.”
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`29.
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`30.
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`31.
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`Lyft provides certain software and hardware technology to its drivers and riders.
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`One such technology is the “Amp” device.
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`The Lyft Amp (pictured below) is a device for enabling riders to identify their assigned
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`vehicle and driver.
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`32.
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`Upon information and belief, the Amp is manufactured for Lyft by companies including
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`but not limited, to, Chicony Global, Chicony Electronics, and Chicony America.
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`33.
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`34.
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`Lyft purchases, imports, uses, and distributes the Lyft Amp.
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`As per Lyft’s stated terms and conditions, Lyft provides the Amp to eligible Lyft drivers
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`and provides instructions for how to use it, install it, and pair it with their mobile device.
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`35.
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`The primary function of the Amp is to provide a “beaconing” function that allows
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`passengers to correctly identify their driver’s vehicle.
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`36.
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`Through the “Lyft App”, passengers are alerted via their cell phone/mobile device of the
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`unique color identifier (green, orange, yellow, white, purple, and grey) which is also displayed
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`on the Amp device of their Lyft driver.
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`37.
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`The Amp replaced Lyft’s prior “Glowstache” and “Moustache” devices and sits in the
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`front windshield of the Lyft driver’s vehicle.
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`38.
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`By matching the color displayed on the Amp with the color sent to their cell phone/
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`mobile device, riders can easily, safely, and securely identify the correct vehicle before entering.
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`39.
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`In its Help Center, Lyft describes the “beaconing” feature of the Amp as follows:
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`“Passengers will be alerted of a unique Amp color that will be projected when you are picking
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`them up. This feature helps you stand out in the crowded streets.”
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`Safety and Security is a Mission-Critical Issue for the RideShare Industry, Including Lyft
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`40.
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`The safety and security of the rideshare industry, including the ability of riders to identify
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`their vehicles and their drivers, has been and continues to be a source of much public concern
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`and discussion by the media, government regulators, and the public.
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`41.
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`Lyft provides services conforming to those of a “common carrier,” and has been
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`designated as such by many states.
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`42.
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`As such, Lyft must comply with laws and regulations in many states requiring ride share
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`vehicles display distinctive signage that is sufficiently large and color-contrasted so as to be
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`readable during daylight hours at a distance of at least fifty feet. The purpose of the distinctive
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`signage requirement is to provide passengers the ability to clearly identify the Lyft vehicle.
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`43.
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`For example, the Pennsylvania Utility Commission (“PUC”), which is charged with
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`regulating motor carriers in the State of Pennsylvania, includes rideshare companies (i.e.,
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`“Transportation Network Companies”), including Lyft, in its purview. The PUC designates Lyft
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`as a TNC -Transportation Network Company. Lyft must be licensed by the PUC and is
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`regulated by Title 66 of the PA Consolidated Statutes, Chapter 26, § 2605 (2016).
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`44.
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`The state of Maryland likewise designates Lyft, and other rideshare companies, as a
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`common carrier.
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`45.
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`As a “common carrier,” Lyft has a heightened obligation to protect the public safety and
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`welfare. For example,“[c] ommon carriers must use the highest care and vigilance of a very
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`cautious person. They must all do that human care, vigilance and foresight reasonably can do
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`under the circumstances to avoid harm to passengers.” CACI No. 902 (Duty of Common
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`Carrier).
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`46.
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`In addition, many States have enacted legislation referred to as “Sami’s Law” to protect
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`passengers and drivers. Lyft is required to implement an enhanced digital system to verify
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`passengers with their authorized rideshare vehicle and driver. Federal Legislation, H.R. 4686,
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`which has passed The U.S. House of Representatives, requires the same safety measures
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`nationally.
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`47.
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`Sami’s Law was named after Samantha “Sami” Josephson, a 21-year-old University of
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`South Carolina student from Robbinsville, New Jersey who was kidnapped and stabbed to death
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`in Columbia, SC in March 2019 by a man who pretended to be her Uber driver.
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`48.
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`There have been numerous media reports highlighting the safety and driver identification
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`issues with rideshare companies, such as Lyft.
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`49.
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`For example, on April 16, 2019, both The Today Show and NBC Nightly News aired an
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`investigative video report entitled, “Beware of fake Uber drivers: Here’s how to spot them.”
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`Reporter Jeff Rossen led off the investigative news story, framing the issue of riders getting into
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`rideshare vehicles without checking to see whether it was the right car: “Certainly looks like an
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`Uber. It pulls right up. And you get in.”
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`50.
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`As another example, nearly a year before The Today Show and NBC Nightly News
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`reports, on May 21, 2018, nine members of the U.S. Congress wrote a letter to the CEOs of
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`companies in the rideshare industry, including Lyft CEO, Logan Green, in light of recent
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`“appalling” news reports “to inquire about the practices your companies employ for ensuring
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`passenger safety.” (“May 2018 Letter from Congress”)
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`51.
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`The May 2018 Letter from Congress followed a CNN report that found at least 103 Uber
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`drivers and 18 Lyft drivers had been accused of sexually assaulting passengers in the prior four
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`years.
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`52.
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`On June 18, 2018, RSDI CEO Steve Rose responded to the May 2018 Letter from
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`Congress, with a letter that was sent to all of the original recipients of that leter, including Lyft
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`CEO Logan Green. (“the June 2018 RSDI Letter to Congress and the Rideshare Industry”).
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`53.
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`The June 2018 RSDI Letter to Congress and the Rideshare Industry highlighted the
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`serious and dangerous problem of fake and imposter ride-share drivers, where unwitting riders
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`get into the wrong Uber or Lyft car.
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`54.
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`The June 2018 RSDI Letter to Congress and the Rideshare Industry reviewed and
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`explained how RSDI’s patented technology addresses and solves this problem.
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`55.
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`The June 2018 RSDI Letter to Congress and the Rideshare Industry also specifically
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`identified the ‘637 Patent-in-Suit:
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`“Recognized by U.S. Patent # 9,892,637 for its novelty, innovation, and utility, our
`LOCUS system employs an electronic mini-billboard to display an alphanumeric [or
`other] identifier, which is clearly visible to all. A different identifier is sent for each trip
`via the rideshare app to both the passengers and drivers cell phones, providing dual
`authentication prior to the passenger entering the vehicle. This averts imposters and
`prevents unsuspecting passengers from becoming victims.”
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`For example, www.whoisdrivingyou.org, issued a Who’s Driving You Report that kept a
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`56.
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`running list of incidents involving Uber and Lyft drivers from 2014-2018.
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`57.
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`Lyft has touted and promoted the beaconing function of the Amp – the very technology
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`covered by the RSDI Patents-in-Suit - as a critical technology for safety and security.
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`58.
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`For example, in its September 11, 2020 regularity compliance submission to the State of
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`Pennsylvania Public Utility Commission, Lyft stated:
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`“Lyft also respectfully notes that the Bureau’s recommendation fails to take into account
`important safety features already established on the Lyft platform. In addition to
`confirming the correct ride by checking the driver and vehicle information shown in a
`rider’s app, Lyft utilizes its “Amp” as another method of correctly matching rider and
`driver. The Amp is a lighting beacon that sits in the front windshield of a driver’s vehicle.
`When paired with a driver’s account, an Amp will display a specific color, which is then
`also indicated in the rider’s app. By ensuring a vehicle’s Amp is displaying the same
`color indicated in their app, riders can further confirm they are entering the vehicle with
`which they were matched.”
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`Defendant’s Pre-Suit Notice of the Patents-in-Suit
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`1. Lyft Was Aware of the RSDI’s Technology Since At Least As Early as March of
`2017 and Lyft Was Aware of The ‘637 Patent-In-Suit Since At Least as Early as
`March of 2018
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`On March 30, 2017, RSDI issued a press release entitled “Unique Technology Breaks
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`59.
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`New Ground in Locating & Identifying the Correct Ride Share Vehicle, While Dramatically
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`Improving Passenger/Driver Safety & the Pickup Process.” 2017 (“the 2017 RSDI Press
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`Release”)
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`60.
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`The 2017 RSDI Press Release was distributed to numerous internet sources, many
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`individuals, as well as to thousands of media outlets, including NewsWire.
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`61.
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`The 2017 RSDI Press Release notes the serious problems for rideshare companies and
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`their customers as well as the owners/operators of ride share vehicles, due to “an increase of
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`reported misidentifications between passenger and vehicle, missed transactions, inconveniences,
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`embarrassment and incorrect charges, and … more importantly, serious criminal activities
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`associated with vehicle misidentification are on the rise as well.”
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`62.
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`The 2017 RSDI Press Release described its LOCUS™ system, which it described as
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`consisting of “a proprietary receiver, sensors and processors embedded in a hi-brightness
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`electronic display located in the windshield area of the ride share vehicle, facing the outside”
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`which “displays a unique identifier (i.e. RX7) sent by the ride share company for each trip” that
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`“appears on the display and the same identifier appears on the passenger's mobile device,” as an
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`available technology-based solution to the vehicle identification problem.
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`63.
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`Lyft was aware of the 2017 RSDI Press Release at that time, because copy of the 2017
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`RSDI Press Release was sent to the company directly. Specifically, RSDI CEO, Steve Rose,
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`emailed a copy of the 2017 RSDI Press Release to Lyft’s Dan Trugib.
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`64.
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`On March 15, 2018 (“the 2018 RSDI Press Release”), RSDI issued a second press release
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`entitled “RSDI Announces Patent For Its Cutting-Edge LOCUS RideShare ID System.”
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`65.
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`Like the 2017 RSDI Press Release, the 2018 RSDI Press Release was distributed to
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`numerous internet sources, many individuals, as well as to thousands of media outlets, including
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`NewsWire.
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`66.
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`67.
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`68.
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`The 2018 RSDI Press Release announced the granting of the ‘637 Patent-in-Suit.
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`On information and belief, Lyft was aware of the 2018 RSDI Press Release.
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`On information and belief, Lyft was also made aware of issuance of the ‘637 Patent-in-
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`Suit at this time.
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`2. Lyft Was Again Made Aware of the ‘637 Patent-In-Suit in June of 2018
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`As noted above, in Pars. 50-55, Lyft again received notice of the ‘637 Patent-in-Suit on
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`69.
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`June 18, 2018 when it received a copy of the June 2018 RSDI Letter to Congress and the
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`Rideshare Industry sent by RSDI CEO, Steve Rose.
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`70.
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`Defendant has been aware of RSDI’s technology patented inventions since at least as
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`early as June 18, 2018, when it received a copy of the June 2018 RSDI Letter to Congress and
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`the RideShare Industry, which was sent by U.S. Postal Service certified mail, and provided
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`details of its technology and specifically identified the ‘637 Patent-in-Suit.
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`3. Lyft Was Aware of RSDI and its CEO, Steven Rose, and Contacted Him to Discuss
`Technology In Mid-2019
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`On Sunday, August 4, 2019, Lyft Global Supply Manager, Mike D’Amico phoned RSDI
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`71.
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`CEO Steve Rose. After a lengthy discussion, Mr. D’Amico requested and provided an NDA for
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`Mr. Rose to sign and return.
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`72. Mr. Rose signed and returned the NDA as instructed by Lyft.
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`73.
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`However, after the Sunday night conversation, Lyft went completely silent. Even after
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`repeated attempts by Mr. Rose to inquire as to the status, Lyft never responded.
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`4. The December 2019 Call and Aftermath
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`On December 6, 2019, a representative of RSDI who had a prior connection with Lyft’s
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`74.
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`executive management team facilitated an introduction of RSDI to Lyft.
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`75.
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`Subsequent to RSDI’s representative contacting with Lyft, on December 8, 2019, RSDI
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`CEO Steve Rose was introduced to Kristina Omari, Lyft VP of Corporate Development and Tzu-
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`San Hung, Lyft Director of Corporate Development.
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`76.
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`On December 8, 2019, RSDI CEO Steve Rose and RSDI EVP Elliot Sommer, received
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`an invitation from Tzu -San Hung of Lyft to join a conference call on December 11, 2019.
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`77.
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`On December 9, 2020, Ms. Hung requested and Mr. Rose sent background information
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`about the RSDI technology.
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`78.
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`On December 11, 2019, Steve Rose and Elliot Sommer of RSDI participated in the
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`telephone conference call arranged by Lyft with Kristina Omari, Lyft’s Head of Corporate
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`Development and Tzu-San Hung, Lyft’s Director of Corporate Development and engaged in a
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`30-minute plus conversation during which they discussed RSDI’s patented technology (“the
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`December 2019 Call”).
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`79.
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`During the December 2019 Call, Mr. Rose discussed the RSDI technology and its
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`importance and value proposition focusing specifically on the technology for rideshare
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`identification, passenger safety, and driver protection. He also discussed how additional
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`technologies developed by RSDI could be integrated into the Lyft Amp device.
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`80.
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`During the December 2019 Call, Lyft’s representatives stated that the beaconing function
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`of the RSDI technology was already in the Lyft Amp.
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`81.
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`At that point of the December 2019 Call, Mr. Rose explained to the Lyft representatives
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`that the Amp is infringing on RSDI’s patents: “The Amp is infringing on our IP, but that’s a
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`different issue. The technology for whether its colors, or alphanumeric characters, or pictures, is
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`that - we have the IP for that, and we’re just trying to partner.”
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`82.
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`Lyft’s representatives, however, abruptly ended the call, stating that they were “out of
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`time,” “had back-to-back meetings,” and had to prioritize other opportunities.
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`83.
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`Before the call ended, the RSDI representatives expressed surprise that Lyft was not
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`interested in or focused on the verification and safety aspect for ensuring safe connection
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`between the rider and driver, and offered to spend more time discussing that aspect of the RSDI
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`technology.
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`84.
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`Neither RSDI nor its representatives received any further communications from Ms.
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`Omari, Ms. Hung, or Lyft.
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`85.
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`On Monday January 6, 2020, a representative of RSDI, Garrett Kramer, wrote to Brian
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`Roberts, Lyft’s CFO, providing information about RSDI, its patents, and its technology, and
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`stated: “My client has 6 patents that help ride share companies become safer and more efficient.”
`
`He requested to set up a call to discuss this with Lyft.
`
`86.
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`Later that same day, Mr. Kramer received a response from Lyft’s VP of Intellectual
`
`Property, Ms. Nair Flores. Ms. Flores stated “I received your email from Brian. I am reaching
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`out to let you know that we are not interested in this portfolio at this time, but if things change, I
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`will let you know.”
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`13
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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 14 of 38 PageID #: 14
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`87.
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`On January 7, 2020, Mr. Kramer wrote back to Ms. Flores with a message from RSDI
`
`CEO, Steve Rose, requesting to speak with her directly to better explain its “proprietary
`
`platforms, which are protected with IP and ready to roll out. We think Lyft is a natural fit since
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`some of the IP covers stuff Lyft is already using.”
`
`88.
`
`In this January 7, 2020 email, RSDI also provided Lyft with a list of its then-issued
`
`patents, including US Patent Nos. 9,892,637; 10,169,987; 10,249,184; and 10,395,525 and
`
`pending US Patent Application Pub. Nos. 2018/0190110 and 2019/0228643.
`
`89.
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`After a further follow-up email by Mr. Kramer, Ms. Flores responded on January 13,
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`2020, that “It's ok to reach out, but please set expectations that this does not appear relevant to
`
`our business at this time.”
`
`90.
`
`Neither RSDI nor its representatives received any further communications from Ms.
`
`Flores or Lyft.
`
`
`
`5. RSDI Again Contacted Lyft Later in 2020 and Lyft Ignored RSDI’s May 21, 2020
`Letters
`
`On May 21, 2020, counsel for RSDI wrote identical letters sent individually to each of
`
`91.
`
`the following: Lyft’s President, John Zimmer, Lyft’s CEO, Logan Green, Lyft’s General
`
`Counsel, Kristin Sverchek, and Lyft’s VP of Intellectual Property, Nair Flores (“the May 21,
`
`2020 Letter”).
`
`92.
`
`The May 21, 2020 Letter provided each of these four Lyft executives with information
`
`about the RSDI technology and its patent portfolio.
`
`93.
`
`The May 21, 2020 Letter noted that “RSDI owns six issued United States utility patents,
`
`2 design patents, and three pending applications that cover and/or relate to [its technology],” and
`
`included an itemized list of these patents, as well as claim charts describing representative
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`14
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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 15 of 38 PageID #: 15
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`
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`claims. It also stated that “Though RSDI has not fully considered the issue, it appears to RSDI
`
`that its patents may also be relevant to Lyft’s AMP . . . product.”
`
`94.
`
`The May 21, 2020 Letter also noted that “Lyft was recently granted its own United States
`
`Patent No. 10,636,108 on April 28, 2020 directed to the same subject matter. But RDSI’s
`
`patents, whose priority date precedes that of the Lyft patent by more than two years, were not
`
`before the Patent Office during the examination.”
`
`95.
`
`The May 21, 2020 Letter closed by indicating that “[i]n view of these facts, RSDI’s
`
`patent portfolio may be of particular interest to Lyft” and requested a meeting to further discuss
`
`RSDI’s technology and patent portfolio.
`
`96.
`
`Lyft provided no response to the May 21, 2020 letters to RSDI or its representatives.
`
`
`Lyft’s Later Issued Beaconing Patent
`
`97.
`
`On December 30, 2016, Lyft filed U.S. Patent Appl. No. 15/396,417 (“the ‘417
`
`Application”) with the U.S. Patent and Trademark Office, claiming priority to a provisional
`
`application filed on September 30, 2016.
`
`98.
`
`One of the attorneys who signed the provisional application filed on September 30, 2016
`
`as Lyft’s representative was Ms. Kristin Svercheck, who was at the time and currently remains
`
`Lyft’s General Counsel.
`
`99.
`
`As noted above in Par. 91, Kristin Svercheck was a recipient of RSDI's May 21, 2020
`
`Letter.
`
`100. One of the attorneys who signed the related non-provisional application, the ‘417
`
`Application, as Lyft’s representative when it was filed on December 30, 2016 was Nair Flores,
`
`who at the time held the position of Managing Counsel and is currently Lyft’s Vice President and
`
`Associate General Counsel of Intellectual Property.
`
`
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`15
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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 16 of 38 PageID #: 16
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`
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`101. As noted above in Pars. 86-91, Nair Flores corresponded with RSDI’s representatives
`
`about the RSDI patent portfolio in January of 2020 was a recipient of RSDI's May 21, 2020
`
`Letter.
`
`102. Lyft sought expedited prosecution of the ‘417 Application.
`
`103. The ‘417 Application was originally filed as a “Track One Request.”
`
`104. The originally filed claim 1 of the ‘417 Application was as follows:
`
`105.
`
`In the Declaration filed with the ‘471 Application, Lyft swore and declared that “the
`
`inventor(s) named below to be the original and first inventor(s) of the subject matter which is
`
`claimed and for which a patent is sought on the invention.”
`
`106. The ‘417 Application was rejected numerous times during prosecution in view of the
`
`
`
`prior art.
`
`107. Earlier this year, on April 28, 2020, the ‘417 Application finally issued as U.S. Patent No.
`
`10,636,108 (“the 108 Patent”), entitled “Identifying Matched Requesters and Providers.”
`
`
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`16
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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 17 of 38 PageID #: 17
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`
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`108. RSDI’s published provisional application that was filed on May 29, 2014, which
`
`published as Pub. No. US 2015/0348408 on December 3, 2015 is prior art to the ‘417
`
`Application and the ‘108 Patent.
`
`109. RSDI’s ‘637 Patent-in-Suit, filed on May 27, 2015 and issued on Feb 13, 2018, is also
`
`prior art to Lyft’s ‘417 Application and Lyft’s ‘108 Patent.
`
`110. During its nearly three-and-half year prosecution, Lyft did not ever identify any of the
`
`Patents-in-Suit or their related published applications as prior art to the US Patent and Trademark
`
`Office, on any Information Disclosure Statement or otherwise.
`
`111. During its nearly three-and-half year prosecution, Lyft repeatedly made arguments that
`
`the pending claims of the ‘417 Application, which ultimately issued as the ‘108 Patent, were not
`
`invalid in view of the prior art cited by the US Patent and Trademark Office, which included
`
`Lubeck et al. (US Patent Publication No. 2016-0293012 or US Patent No. 9,392,418),
`
`McKinnon, et al. (US Patent Publication No. 2017-0178269), Magazinik et al. (US Patent
`
`Publication No. 2017-0052034), Abbas, et al. (US Patent Publication No.2018-0060827)
`
`references.
`
`112. Lyft continues to file patents that relate to the ‘108 Patent and that cover the functionality
`
`of its AMP device.
`
`113. Most recently, on April 17, 2020, Lyft filed Patent Application No. 16/852,253 (“the ‘253
`
`Application”), which claims priority to the ‘417 Application that ultimately issued as the ‘108
`
`Patent. The originally filed claim 1 of the ‘253 Application is:
`
`
`
`17
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`

`

`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 18 of 38 PageID #: 18
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`
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`114. RSDI’s published provisional application that was filed on May 29, 2014, which
`
`published as Pub. No. US 2015/0348408 on December 3, 2015 is prior art to the ‘253
`
`
`
`Application.
`
`115. RSDI’s ‘637 Patent-in-Suit, filed on May 27, 2015 and issued on Feb 13, 2018, is also
`
`prior art to Lyft’s ‘253 Application.
`
`116. Lyft did not identify any of the Patents-in-Suit or their related published applications as
`
`prior art to the US Patent and Trademark Office, on any Information Disclosure Statement or
`
`otherwise during prosecution of the ‘253 Application.
`
`117. The Abstract of Lyft’s ‘108 Patent states: “Embodiments provide techniques, including
`
`systems and methods, for identifying and matching requestors and providers. For example,
`
`embodiments can display an identification pattern that is unique for a matched requestor and
`
`provider to allow the providers and requestors to quickly, easily, and accurately validate one
`
`another's identities prior to a service being provided. In some embodiments, the identification
`
`element may be presented on a provider communication device to clearly display graphics
`
`
`
`18
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`

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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 19 of 38 PageID #: 19
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`
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`associated with an identification element to all requestors in an area so that the requestors may
`
`easily identify a matched provider.”
`
`118. Figure 1 of the ‘108 Patent is reproduced below:
`
`
`119. On information and belief, embodiments of the ‘108 Patent describe Lyft’s commercial
`
`
`
`embodiment of the Amp device.
`
`120. During prosecution, Lyft averred and repeatedly argued that the claims of the ‘108 Patent
`
`were valid over the cited prior art and made numerous statements characterizing the novelty and
`
`non-obviousness of the pending claims over the prior art. Lyft ultimately succeeded in
`
`convincing the US Patent Office to issue the ‘108 Patent.
`
`121. As a result of these statements, Lyft is legally estopped from asserting that the earlier
`
`filed claims of the RSDI Patents-in-Suit are invalid based on prior art.
`
`
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`19
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`Case 1:20-cv-01629-UNA Document 1 Filed 11/30/20 Page 20 of 38 PageID #: 20
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`
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`Defendant’s Infringement
`
`Infringing Products
`
`122.