Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 1 of 45 PageID #: 188
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`v.
`
`
`
`
`
`
`LYFT, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`C.A. No. 20-cv-01629-RGA
`JURY TRIAL DEMANDED
`
`
`
`
`)
`
`RIDESHARE DISPLAYS, INC.,
`)
`
`
`
`
`
`
`)
`
`Plaintiff,
`)
`
`
`
`)
`
`
`
`)
`
`
`
`)
`
`
`
`)
`
`
`
`)
`
`
`
`)
`
`
`
`)
`
`Defendant.
`____________________________________)
`
`
`
`AMENDED COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff, RideShare Displays, Inc., files this Amended Complaint for Patent Infringement
`
`
`1.
`
`and Demand for a Jury Trial against Defendant Lyft, Inc., and alleges as follows:
`
`THE PARTIES
`
`Plaintiff, RideShare Displays, Inc. (“RSDI”) is a Delaware Corporation with its principal
`
`2.
`
`place of business at 19 Gardner Road, Fairfield, New Jersey, 07004 USA.
`
`3.
`
`Defendant, Lyft, Inc. (“Lyft”) is a Delaware Corporation with its principal place of
`
`business at 185 Berry Street, Suite 5000 San Francisco, California, 94107 USA.
`
`JURISDICTION AND VENUE
`
`This action arises under the Patent Act, 35 U.S.C. 101, et seq. This Court has subject
`
`4.
`
`matter jurisdiction over this controversy under 28 U.S.C. 1331 and 1338.
`
`5.
`
`This Court has personal jurisdiction over Defendant Lyft, Inc., because Lyft is a
`
`Delaware Corporation and because Lyft, Inc. has regularly and systematically transacted
`
`
`
`1
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 2 of 45 PageID #: 189
`
`
`
`business in this judicial district, directly or through intermediaries, and/or committed acts of
`
`infringement in this judicial district.
`
`6.
`
`Defendant’s Registered Agent in the State of Delaware is The Corporation Trust
`
`Company, and its registered office in the State of Delaware is 1209 Orange Street, Corporation
`
`Trust Center, Wilmington, New Castle County, Delaware 19801.
`
`7.
`
`Defendant has been sued in this Judicial District no less than four times and did not
`
`contest jurisdiction in those cases.
`
`8.
`
`Venue is proper in this Court pursuant to 28 U.S.C. 1400(b).
`
`THE RSDI PATENTS-IN-SUIT
`
`RSDI is the owner of all right, title and interest in U.S. Patent No. 9,892,637 (“the ‘637
`
`9.
`
`Patent”), titled “Vehicle Identification System.” On February 13, 2018, the ‘637 Patent was duly
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘637
`
`Patent issued from Application No. 14/723,049, filed on May 27, 2015, and claims priority to
`
`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
`
`‘637 Patent is attached as Exhibit A to this Complaint.
`
`10.
`
`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,169,987 (“the ‘987
`
`Patent”), titled “Vehicle Identification System.” On January 1, 2019, the ‘987 Patent was duly
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘987
`
`Patent issued from Application No. 15/860,939, filed on January 3, 2018 and claims priority to
`
`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
`
`‘987 Patent is attached as Exhibit B to this Complaint.
`
`11.
`
`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,395,525 (“the ‘525
`
`Patent”), titled “Vehicle Identification System.” On August 27, 2019, the ‘525 Patent was duly
`
`
`
`2
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 3 of 45 PageID #: 190
`
`
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘525
`
`Patent issued from Application No. 16/198,140, filed on November 21, 2018 and claims priority
`
`to Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of
`
`the ‘525 Patent is attached as Exhibit C to this Complaint.
`
`12.
`
`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,559,199 (“the ‘199
`
`Patent”), titled “Vehicle Identification System.” On February 11, 2020, the ‘199 Patent was duly
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘199
`
`Patent issued from Application No. 16/514,492, filed on July 17, 2019 and claims priority to
`
`Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of the
`
`‘199 Patent is attached as Exhibit D to this Complaint.
`
`13.
`
`RSDI is the owner of all right, title and interest in U.S. Patent No. 10,748,417 (“the ‘417
`
`Patent”), titled “Vehicle Identification System.” On August 18, 2020, the ‘417 Patent was duly
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). The ‘417
`
`Patent issued from Application No. 16/731,558, filed on December 31, 2019 and claims priority
`
`to Provisional Application No. 62/004,753, filed on May 29, 2014. A true and correct copy of
`
`the ‘417 Patent is attached as Exhibit E to this Complaint.
`
`14.
`
`The ‘637 Patent, ‘987 Patent, ‘525 Patent, ‘199 Patent and ‘417 Patents are collectively
`
`referred to as the “Patents-in-Suit”
`
`15.
`
`RSDI is also the owner of all right, title, and interest in U.S. Patent Nos. 10,249,184,
`
`10,467,896; 10,789,837; 10,672,265; and pending applications relating to the same (“Other
`
`RSDI RideShare Patents”). The Other RSDI RideShare Patents also relate to various rideshare
`
`technologies.
`
`
`
`3
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 4 of 45 PageID #: 191
`
`
`
`16.
`
`RSDI is the owner of all rights, title and interest in and to the Patents-in-Suit and Other
`
`RSDI RideShare Patents and possesses the exclusive right of recovery of past, present, and future
`
`infringement.
`
`17.
`
`RSDI has not licensed the Patents-In-Suit or Other RSDI RideShare Patents to
`
`Defendant, or otherwise authorized Defendant to practice any of the claims of the Patents-in-Suit
`
`or the Other RideShare Patents.
`
`FACTUAL BACKGROUND
`
`The rideshare space has been one of the hottest growth markets worldwide.
`
`However, the rapid expansion of the rideshare market has exposed substantial and serious
`
`18.
`
`19.
`
`weaknesses in vehicle/driver/passenger identification, security, and safety resulting in significant
`
`concerns for drivers and passengers, as well as growing litigation and regulatory issues.
`
`The Parties
`
`20.
`
`Plaintiff, RSDI is the pioneer and innovative leader in the development of rideshare
`
`technologies, including active display systems and advanced technologies for the rideshare
`
`industry.
`
`21.
`
`The active display technology developed and patented by RSDI – referred to as
`
`LOCUSTM - provides passengers with the ability to immediately locate and securely identify the
`
`correct rideshare vehicle and driver. LOCUS™ displays a single-use identifier (e.g. a particular
`
`text string or color) that is sent simultaneously to both the driver’s and passenger's cell
`
`phones/mobile device for each trip. A visor mounted display, visible from the exterior of the
`
`driver’s vehicle, displays a single-use identifier matching the identifier sent to the passenger’s
`
`cell phone/mobile device. In addition, LOCUS™ provides a universal delivery system for
`
`messages, logos, advertisements, driver or passenger emergency and medical alerts.
`
`
`
`4
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 5 of 45 PageID #: 192
`
`
`
`22.
`
`23.
`
`RSDI designed, developed and prototyped the LOCUSTM.
`
`Defendant, Lyft, controls a ride sharing platform that uses apps (“the Lyft App(s)”) to
`
`connect passengers requesting rides with drivers who have vehicles. Both the passenger and
`
`driver operate Lyft Apps, which are designed and controlled by Lyft. Lyft conditions
`
`participation in its ride sharing network by performance of a step or steps of a patented method
`
`and establishes the manner or timing of that performance for drivers and passengers.
`
`24.
`
`25.
`
`Lyft serves over 600 cities in the U.S., as well as other cities abroad.
`
`Among the cities and towns served by Lyft are cities and towns in the District of
`
`Delaware.
`
`26.
`
`To date, Lyft has serviced well over 1 billion cumulative rides. According to its SEC
`
`filings, in 2018, Lyft serviced 30.7 million riders with 1.9 million drivers, and over 1 billion
`
`cumulative rides.
`
`27.
`
`According to Lyft’s public financial reporting, in 2016, 2017, 2018, Lyft bookings were
`
`$1.9 billion, $4.6 billion and $8.1 billion respectively.
`
`28.
`
`Lyft’s published corporate Mission Statement is “to improve people’s lives with the
`
`world’s best transportation.”
`
`29.
`
`30.
`
`31.
`
`Lyft provides certain software and hardware technology to its drivers and riders.
`
`One such technology is the “Amp” device.
`
`The Lyft Amp (pictured below) is a device for enabling riders to identify their assigned
`
`vehicle and driver.
`
`
`
`5
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 6 of 45 PageID #: 193
`
`
`
`
`
`32.
`
`Upon information and belief, Lyft designed the Amp in unison with the Igor Institute and
`
`Ammunition. The Lyft Amp is manufactured for Lyft by companies including but not limited,
`
`to, Chicony Global, Chicony Electronics, and Chicony America.
`
`33.
`
`34.
`
`Lyft purchases, imports, uses, and distributes the Lyft Amp.
`
`As per Lyft’s stated terms and conditions, Lyft provides the Amp to eligible Lyft drivers
`
`and provides instructions for how to use it, install it, and pair it with their mobile device.
`
`35.
`
`The primary function of the Amp is to provide a “beaconing” function that allows
`
`passengers to correctly identify their driver’s vehicle by color, where the color is assigned from a
`
`select group of colors predetermined by Lyft.
`
`36.
`
`Through the “Lyft App”, passengers are alerted via their cell phone/mobile device of the
`
`unique color identifier (green, orange, yellow, white, purple, and grey) which is also displayed
`
`on the Amp device of their Lyft driver.
`
`37.
`
`For example, as illustrated below, when the color yellow is used as the identifier, the
`
`Amp device changes color to yellow and the icon(s) in the ride’s Lyft App corresponding to the
`
`driver’s vehicle likewise are displayed as yellow:
`
`
`
`
`
`
`
`6
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 7 of 45 PageID #: 194
`
`
`
`
`
`
`
`
`
`
`
`
`
`38.
`
`The Amp replaced Lyft’s prior “Glowstache” and “Moustache” devices and sits in the
`
`front windshield of the Lyft driver’s vehicle.
`
`39.
`
`By matching the color displayed on the Amp with the color sent from a server under the
`
`control and direction of Lyft, received by the rider’s cell phone/ mobile device, and then
`
`displayed on the Lyft App running on the rider’s cell phone/ mobile device, riders can easily,
`
`safely, and securely identify the correct vehicle before entering.
`
`40.
`
`In its Help Center, Lyft describes the “beaconing” feature of the Amp as follows:
`
`“Passengers will be alerted of a unique Amp color that will be projected when you are picking
`
`them up. This feature helps you stand out in the crowded streets.”
`
`Safety and Security is a Mission-Critical Issue for the RideShare Industry, Including Lyft
`7
`
`
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 8 of 45 PageID #: 195
`
`
`
`
`41.
`
`The safety and security of the rideshare industry, including the ability of riders to identify
`
`their vehicles and their drivers, has been and continues to be a source of much public concern
`
`and discussion by the media, government regulators, and the public.
`
`42.
`
`Lyft provides services conforming to those of a “common carrier,” and has been
`
`designated as such by many states.
`
`43.
`
`As such, Lyft must comply with laws and regulations in many states requiring ride share
`
`vehicles display distinctive signage that is sufficiently large and color-contrasted so as to be
`
`readable during daylight hours at a distance of at least fifty feet. The purpose of the distinctive
`
`signage requirement is to provide passengers the ability to clearly identify the Lyft vehicle.
`
`44.
`
`For example, the Pennsylvania Utility Commission (“PUC”), which is charged with
`
`regulating motor carriers in the State of Pennsylvania, includes rideshare companies (i.e.,
`
`“Transportation Network Companies”), including Lyft, in its purview. The PUC designates Lyft
`
`as a TNC -Transportation Network Company. Lyft must be licensed by the PUC and is
`
`regulated by Title 66 of the PA Consolidated Statutes, Chapter 26, § 2605 (2016).
`
`45.
`
`The state of Maryland likewise designates Lyft, and other rideshare companies, as a
`
`common carrier.
`
`46.
`
`As a “common carrier,” Lyft has a heightened obligation to protect the public safety and
`
`welfare. For example,“[c]ommon carriers must use the highest care and vigilance of a very
`
`cautious person. They must all do that human care, vigilance and foresight reasonably can do
`
`under the circumstances to avoid harm to passengers.” CACI No. 902 (Duty of Common
`
`Carrier).
`
`47.
`
`In addition, many States have enacted legislation referred to as “Sami’s Law” to protect
`
`passengers and drivers. Lyft is required to implement an enhanced digital system to verify
`
`
`
`8
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 9 of 45 PageID #: 196
`
`
`
`passengers with their authorized rideshare vehicle and driver. Federal Legislation, H.R. 4686,
`
`which has passed The U.S. House of Representatives, requires the same safety measures
`
`nationally.
`
`48.
`
`Sami’s Law was named after Samantha “Sami” Josephson, a 21-year-old University of
`
`South Carolina student from Robbinsville, New Jersey who was kidnapped and stabbed to death
`
`in Columbia, SC in March 2019 by a man who pretended to be her Uber driver.
`
`49.
`
`There have been numerous media reports highlighting the safety and driver identification
`
`issues with rideshare companies, such as Lyft.
`
`50.
`
`For example, on April 16, 2019, both The Today Show and NBC Nightly News aired an
`
`investigative video report entitled, “Beware of fake Uber drivers: Here’s how to spot them.”
`
`Reporter Jeff Rossen led off the investigative news story, framing the issue of riders getting into
`
`rideshare vehicles without checking to see whether it was the right car: “Certainly looks like an
`
`Uber. It pulls right up. And you get in.”
`
`51.
`
`As another example, nearly a year before The Today Show and NBC Nightly News
`
`reports, on May 21, 2018, nine members of the U.S. Congress wrote a letter to the CEOs of
`
`companies in the rideshare industry, including Lyft CEO, Logan Green, in light of recent
`
`“appalling” news reports “to inquire about the practices your companies employ for ensuring
`
`passenger safety.” (“May 2018 Letter from Congress”)
`
`52.
`
`The May 2018 Letter from Congress followed a CNN report that found at least 103 Uber
`
`drivers and 18 Lyft drivers had been accused of sexually assaulting passengers in the prior four
`
`years.
`
`
`
`9
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 10 of 45 PageID #: 197
`
`
`
`53.
`
`On June 18, 2018, RSDI CEO Steve Rose responded to the May 2018 Letter from
`
`Congress, with a letter that was sent to all of the original recipients of that letter, including Lyft
`
`CEO Logan Green. (“the June 2018 RSDI Letter to Congress and the Rideshare Industry”).
`
`54.
`
`The June 2018 RSDI Letter to Congress and the Rideshare Industry highlighted the
`
`serious and dangerous problem of fake and imposter ride-share drivers, where unwitting riders
`
`get into the wrong Uber or Lyft car.
`
`55.
`
`The June 2018 RSDI Letter to Congress and the Rideshare Industry reviewed and
`
`explained how RSDI’s patented technology addresses and solves this problem.
`
`56.
`
`The June 2018 RSDI Letter to Congress and the Rideshare Industry also specifically
`
`identified the ‘637 Patent-in-Suit:
`
`“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.”
`
`For example, www.whoisdrivingyou.org, issued a Who’s Driving You Report that kept a
`
`57.
`
`running list of incidents involving Uber and Lyft drivers from 2014-2018.
`
`58.
`
`Lyft has touted and promoted the beaconing function of the Amp – the very technology
`
`covered by the RSDI Patents-in-Suit – as a critical technology for safety and security.
`
`59.
`
`For example, in its September 11, 2020 regularity compliance submission to the State of
`
`Pennsylvania Public Utility Commission, Lyft stated:
`
`“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
`
`
`
`10
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 11 of 45 PageID #: 198
`
`
`
`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.”
`
`
`
`
`Defendant’s Pre-Suit Notice of the Patents-in-Suit
`
`
`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
`
`On March 30, 2017, RSDI issued a press release entitled “Unique Technology Breaks
`
`60.
`
`New Ground in Locating & Identifying the Correct Ride Share Vehicle, While Dramatically
`
`Improving Passenger/Driver Safety & the Pickup Process.” 2017 (“the 2017 RSDI Press
`
`Release”)
`
`61.
`
`The 2017 RSDI Press Release was distributed to numerous internet sources, many
`
`individuals, as well as to thousands of media outlets, including NewsWire.
`
`62.
`
`The 2017 RSDI Press Release notes the serious problems for rideshare companies and
`
`their customers as well as the owners/operators of ride share vehicles, due to “an increase of
`
`reported misidentifications between passenger and vehicle, missed transactions, inconveniences,
`
`embarrassment and incorrect charges, and … more importantly, serious criminal activities
`
`associated with vehicle misidentification are on the rise as well.”
`
`63.
`
`The 2017 RSDI Press Release described its LOCUS™ system, which it described as
`
`consisting of “a proprietary receiver, sensors and processors embedded in a hi-brightness
`
`electronic display located in the windshield area of the ride share vehicle, facing the outside”
`
`which “displays a unique identifier (i.e. RX7) sent by the ride share company for each trip” that
`
`“appears on the display and the same identifier appears on the passenger's mobile device,” as an
`
`available technology-based solution to the vehicle identification problem.
`
`
`
`11
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 12 of 45 PageID #: 199
`
`
`
`64.
`
`Lyft was aware of the 2017 RSDI Press Release at that time, because copy of the 2017
`
`RSDI Press Release was sent to the company directly. Specifically, RSDI CEO, Steve Rose,
`
`emailed a copy of the 2017 RSDI Press Release to Lyft’s Dan Trugib.
`
`65.
`
`On March 15, 2018 (“the 2018 RSDI Press Release”), RSDI issued a second press release
`
`entitled “RSDI Announces Patent For Its Cutting-Edge LOCUS RideShare ID System.”
`
`66.
`
`Like the 2017 RSDI Press Release, the 2018 RSDI Press Release was distributed to
`
`numerous internet sources, many individuals, as well as to thousands of media outlets, including
`
`NewsWire.
`
`67.
`
`68.
`
`69.
`
`The 2018 RSDI Press Release announced the granting of the ‘637 Patent-in-Suit.
`
`On information and belief, Lyft was aware of the 2018 RSDI Press Release.
`
`On information and belief, Lyft was also made aware of issuance of the ‘637 Patent-in-
`
`Suit at this time.
`
`
`
`2. Lyft Was Again Made Aware of the ‘637 Patent-In-Suit in June of 2018
`
`As noted above, in Pars. 50-55, Lyft again received notice of the ‘637 Patent-in-Suit on
`
`70.
`
`June 18, 2018 when it received a copy of the June 2018 RSDI Letter to Congress and the
`
`Rideshare Industry sent by RSDI CEO, Steve Rose.
`
`71.
`
`Defendant has been aware of RSDI’s technology patented inventions since at least as
`
`early as June 18, 2018, when it received a copy of the June 2018 RSDI Letter to Congress and
`
`the RideShare Industry, which was sent by U.S. Postal Service certified mail, and provided
`
`details of its technology and specifically identified the ‘637 Patent-in-Suit.
`
`
`
`
`
`3. Lyft Was Aware of RSDI and its CEO, Steven Rose, and Contacted Him to Discuss
`Technology In Mid-2019
`
`12
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 13 of 45 PageID #: 200
`
`
`
`
`On Sunday, August 4, 2019, Lyft Global Supply Manager, Mike D’Amico phoned RSDI
`
`72.
`
`CEO Steve Rose. After a lengthy discussion, Mr. D’Amico requested and provided an NDA for
`
`Mr. Rose to sign and return.
`
`73. Mr. Rose signed and returned the NDA as instructed by Lyft.
`
`74.
`
`However, after the Sunday night conversation, Lyft went completely silent. Even after
`
`repeated attempts by Mr. Rose to inquire as to the status, Lyft never responded.
`
`
`
`4. The December 2019 Call and Aftermath
`
`On December 6, 2019, a representative of RSDI who had a prior connection with Lyft’s
`
`75.
`
`executive management team facilitated an introduction of RSDI to Lyft.
`
`76.
`
`Subsequent to RSDI’s representative contacting with Lyft, on December 8, 2019, RSDI
`
`CEO Steve Rose was introduced to Kristina Omari, Lyft VP of Corporate Development and Tzu-
`
`San Hung, Lyft Director of Corporate Development.
`
`77.
`
`On December 8, 2019, RSDI CEO Steve Rose and RSDI EVP Elliot Sommer, received
`
`an invitation from Tzu -San Hung of Lyft to join a conference call on December 11, 2019.
`
`78.
`
`On December 9, 2020, Ms. Hung requested and Mr. Rose sent background information
`
`about the RSDI technology.
`
`79.
`
`On December 11, 2019, Steve Rose and Elliot Sommer of RSDI participated in the
`
`telephone conference call arranged by Lyft with Kristina Omari, Lyft’s Head of Corporate
`
`Development and Tzu-San Hung, Lyft’s Director of Corporate Development and engaged in a
`
`30-minute plus conversation during which they discussed RSDI’s patented technology (“the
`
`December 2019 Call”).
`
`
`
`13
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 14 of 45 PageID #: 201
`
`
`
`80.
`
`During the December 2019 Call, Mr. Rose discussed the RSDI technology and its
`
`importance and value proposition focusing specifically on the technology for rideshare
`
`identification, passenger safety, and driver protection. He also discussed how additional
`
`technologies developed by RSDI could be integrated into the Lyft Amp device.
`
`81.
`
`During the December 2019 Call, Lyft’s representatives stated that the beaconing function
`
`of the RSDI technology was already in the Lyft Amp.
`
`82.
`
`At that point of the December 2019 Call, Mr. Rose explained to the Lyft representatives
`
`that the Amp is infringing on RSDI’s patents: “The Amp is infringing on our IP, but that’s a
`
`different issue. The technology for whether its colors, or alphanumeric characters, or pictures, is
`
`that - we have the IP for that, and we’re just trying to partner.”
`
`83.
`
`Lyft’s representatives, however, abruptly ended the call, stating that they were “out of
`
`time,” “had back-to-back meetings,” and had to prioritize other opportunities.
`
`84.
`
`Before the call ended, the RSDI representatives expressed surprise that Lyft was not
`
`interested in or focused on the verification and safety aspect for ensuring safe connection
`
`between the rider and driver, and offered to spend more time discussing that aspect of the RSDI
`
`technology.
`
`85.
`
`Neither RSDI nor its representatives received any further communications from Ms.
`
`Omari, Ms. Hung, or Lyft.
`
`86.
`
`On Monday January 6, 2020, a representative of RSDI, Garrett Kramer, wrote to Brian
`
`Roberts, Lyft’s CFO, providing information about RSDI, its patents, and its technology, and
`
`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.
`
`
`
`14
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 15 of 45 PageID #: 202
`
`
`
`87.
`
`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
`
`out to let you know that we are not interested in this portfolio at this time, but if things change, I
`
`will let you know.”
`
`88.
`
`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
`
`some of the IP covers stuff Lyft is already using.”
`
`89.
`
`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.
`
`90.
`
`After a further follow-up email by Mr. Kramer, Ms. Flores responded on January 13,
`
`2020, that “It's ok to reach out, but please set expectations that this does not appear relevant to
`
`our business at this time.”
`
`91.
`
`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
`
`92.
`
`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”).
`
`
`
`15
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 16 of 45 PageID #: 203
`
`
`
`93.
`
`The May 21, 2020 Letter provided each of these four Lyft executives with information
`
`about the RSDI technology and its patent portfolio.
`
`94.
`
`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
`
`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.”
`
`95.
`
`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.”
`
`96.
`
`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.
`
`97.
`
`Lyft provided no response to the May 21, 2020 letters to RSDI or its representatives.
`
`
`Lyft’s Later Issued Beaconing Patent
`
`98.
`
`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.
`
`99.
`
`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.
`
`
`
`16
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 17 of 45 PageID #: 204
`
`
`
`100. As noted above in Par. 91, Kristin Svercheck was a recipient of RSDI's May 21, 2020
`
`Letter.
`
`101. 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.
`
`102. 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.
`
`103. Lyft sought expedited prosecution of the ‘417 Application.
`
`104. The ‘417 Application was originally filed as a “Track One Request.”
`
`105. The originally filed claim 1 of the ‘417 Application was as follows:
`
`106.
`
`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.”
`
`
`
`
`
`17
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 18 of 45 PageID #: 205
`
`
`
`107. The ‘417 Application was rejected numerous times during prosecution in view of the
`
`prior art.
`
`108. 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.”
`
`109. RSDI’s published provisional application filed on May 29, 2014, which was subsequently
`
`converted to a nonprovisional application that published as Pub. No. US 2015/0348408 on
`
`December 3, 2015, is prior art to the ‘417 Application and the ‘108 Patent.
`
`110. 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.
`
`111. 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.
`
`112. 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.
`
`113. Lyft continues to file patents that relate to the ‘108 Patent and that cover the functionality
`
`of its AMP device.
`
`
`
`18
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document 6 Filed 01/08/21 Page 19 of 45 PageID #: 206
`
`
`
`114. 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:
`
`
`
`115. RSDI’s published provisional application filed on May 29, 2014, which was subsequently
`
`converted to a nonprovisional application that published as Pub. No. US 2015/0348408 on
`
`December 3, 2015, is prior art to the ‘253 Application.
`
`116. 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.
`
`117. 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.
`
`118. 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
`
`
`
`19
`
`

`

`Case 1:20-cv-01629-RGA-JLH Document