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`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 1 of 26 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`SAFE DRIVING TECHNOLOGIES LLC.
`Plaintiff,
`
`v.
`
`FORD MOTOR COMPANY
`
`Defendant.
`
`
`
`
`
`
`Civil Action No.
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`This is an action for willful patent infringement in which Safe Driving Technologies LLC
`
`(“SDT” or “Plaintiff”) makes the following allegations against Ford Motor Company (“Defendant”
`
`or “Ford”):
`
`THE PARTIES
`
`1.
`
`Plaintiff SDT is a limited liability company duly existing and organized under the
`
`laws of the State of New York with its principal place of business in Suffern, New York.
`
`2.
`
`Defendant Ford is a corporation duly existing and organized under the laws of the
`
`State of Delaware that makes, sells, and offers for sale in the United States, or imports into the
`
`United States, motor vehicles and related motor vehicles components and accessories, including
`
`those products accused of infringement in this matter.
`
`3.
`
`SDT is the successor in interest to the intellectual property of Applied Computer
`
`Technologies, Inc. (www.actplace.net). Applied Computer Technologies was established in
`
`September of 1985 by Mr. Mouhamad Naboulsi and focused on efforts to computerize cars. Those
`
`efforts included, but were not limited to, research and development of non-GPS navigation
`
`systems; pay at the pump methods; tire pressure monitoring; and detecting and managing calls
`
`1
`
`

`

`
`
`
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`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 2 of 26 PageID #: 2
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`while driving.
`
`4.
`
`Mr. Naboulsi is an entrepreneur and the named inventor on over a dozen patents,
`
`having decades of experience in the automotive industry. Mr. Naboulsi was born into a family
`
`involved in the automobile business as importers, mechanics, and service providers. His first
`
`automotive job was working on a Ford assembly line while attending college.
`
`5.
`
`In 1987, Mr. Naboulsi was hired by Mazda, working in various departments ranging
`
`from robot programming to consumer support, where he worked on improving quality, improving
`
`JD power numbers, analyzing warranty data, developing analysis software, and managing the
`
`quality committee for North American built Mazda. While at Mazda, Mr. Naboulsi submitted a
`
`patent application to remotely start the car and unlock the doors, activate the wipers and control
`
`the heat and A/C.
`
`6.
`
`From 1993-2000, Mr. Naboulsi held various engineering positions in the
`
`automotive industry, including for Ford Motor Company Body Operations where he managed the
`
`deployment of a standardized data analysis package across Ford stamping plants.
`
`7.
`
`Mr. Naboulsi filed U.S. provisional Patent Application No. 60/336,293, on October
`
`24, 2001, and U.S. Provisional Patent Application No. 60/390,877, which was filed on June 21,
`
`2002. Mr. Naboulsi also filed U.S. patent application serial number 10/279,447, filed October 24,
`
`2001, and U.S. patent application serial number 10/287,299, filed November 4, 2002, both of
`
`which claim priority to the provisionals in this paragraph.
`
`8.
`
`In 2003, Mr. Naboulsi was hired by Ford Motor Company.
`
`
`JURISDICTION AND VENUE
`
`9.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a) as this action arises under Title 35 of the United States Code.
`
`10.
`
`Defendant Ford is a corporation duly existing and organized under the laws of the
`
`2
`
`

`

`
`
`
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`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 3 of 26 PageID #: 3
`
`State of Delaware that makes, sells, and offers for sale in the United States, or imports into the
`
`United States and exports from the United States, motor vehicles and related motor vehicles
`
`components and accessories, including those products accused of infringement in this matter.
`
`11.
`
`This Court has personal jurisdiction over Ford because Ford is incorporated in the
`
`State of Delaware. This Court also has personal jurisdiction over Ford because Ford regularly
`
`transacts business with entities and individuals in the State of Delaware, including one or more of
`
`at least four Ford dealerships located in the State of Delaware, and because Ford manufactures and
`
`distributes infringing motor vehicles and other infringing products that it purposefully directs into
`
`the State of Delaware, including this District, or at least places into the stream of commerce via
`
`established distribution channels with the knowledge and expectation that they will be sold in the
`
`State of Delaware, including in this District.
`
`12.
`
`Venue is proper in this District under 28 U.S.C. § 1400(b) because Ford is
`
`incorporated in the State of Delaware.
`
`THE ASSERTED PATENTS
`
`13.
`
`This lawsuit concerns Ford’s infringement of United States Patent No. 9,713,994
`
`(the “’994 Patent”), United States Patent No. 8,301,108 (the “’108 Patent”), United States Patent
`
`No. 9,047,170 (the “’170 Patent”) and United States Patent No. 10,532,709 (the “’709 Patent”)
`
`(collectively, the “Asserted Patents”). Each of the above patents continues from and claims priority
`
`to U.S. Patent Application No. 60/336,293, which was filed on October 24, 2001, and to U.S.
`
`Patent Application No. 60/390,877, which was filed on June 21, 2002.
`
`14.
`
`Each of the Asserted Patents was invented by Mouhamad Naboulsi. Each of the
`
`inventions has been assigned to SDT.
`
`15.
`
`Generally speaking, each of the Asserted Patents relates to the field of telematics,
`
`namely to the field of integrating information, communication, computing and entertainment
`
`3
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`

`

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`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 4 of 26 PageID #: 4
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`technologies into vehicles for civilian or military use. The invention particularly relates to safety
`
`control systems for vehicles to reduce driver distraction, avoiding potentially dangerous conditions
`
`tending to produce accidents.
`
`16.
`
`For example, each of the Asserted Patents recites ways in which vehicle safety is
`
`improved by automatically managing the use of telematics in general, and cellular phones in
`
`specific, by drivers while driving.
`
`17.
`
`Such inventions improve over the prior art by, for example, using combinations of
`
`driving and stopping events, driver preferences, vehicle type, driving purpose and environmental
`
`conditions in order to significantly improve the system’s ability to avoid dangerous conditions,
`
`manage risk and individualize the warnings to individual driving skills and driving purpose.
`
`18.
`
`The inventions disclosed in the Asserted Patents have been revolutionary
`
`throughout the industry. In fact, the patent family to which each of the Asserted Patents belongs
`
`has been cited by over 275 other patents, including dozens of patents filed by Ford and its related
`
`entities such as Ford Global Technologies, LLC, as well as others such as Honda, Toyota, General
`
`Motors, Volkswagen, Nissan, Volvo, Nio, Audi and Avaya.
`
`THE PARTIES’ PAST RELATIONSHIP
`AND FORD’S USE OF PLAINTIFF’S TECHNOLOGY
`
`19.
`
`In 2000, Mr. Naboulsi tested the invention that is the subject of the Asserted Patents
`
`by implementing it on a Mazda minivan.
`
`20.
`
`After filing his invention, Mr. Naboulsi exhibited the invention in various
`
`automotive shows throughout the US, which were attended by various representatives from the
`
`automotive industry, including Ford.
`
`4
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 5 of 26 PageID #: 5
`
`
`
`
`Naboulsi participated and exhibited in multiple regulatory sessions, including:
`
`21.
`
`Transport Canada, in Ottawa October 2003; Department of Transportation in Washington, D.C.
`
`U.S. Department of Transportation Secretary LaHood Distracted Driving Summit September 30 -
`
`October 1, 2009 and again in September of 2010; National Congress for State Legislature in Salt
`
`Lake City July 2004 and in Louisville in July 2010; and Governors Highway Safety Association
`
`in Kansas in 2010.
`
`22.
`
`23.
`
` In March 2003, Naboulsi was hired to work in Ford’s Safety Office.
`
`Prior to his employment, Naboulsi disclosed to Ford that he filed multiple patents
`
`relating to driver’s safety and distraction, namely to Patti Warren and Dennis Curry.
`
`24.
`
`In May 2004, Naboulsi was asked by two Ford Executives to give a demonstration
`
`of his invention at the Ford Advanced Design Center, and to give a presentation and a
`
`demonstration about his invention to Dev Kotchar and Luis Trajena Human Factor researchers at
`
`Ford Motor Company and Jeff Rupp Senior Manager in Autonomous Vehicles, ADAS, and Crash
`
`Safety R&D. In October of 2004, a Ford IP attorney came to his exhibit to inquire about the patent.
`
`25.
`
`Shortly after the demo, another Ford representative asked Mr. Naboulsi if he would
`
`assign his invention to Ford in return for full-time employment at Ford. He declined to do so
`
`because of other investors associated with the development of his invention.
`
`5
`
`

`

`
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`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 6 of 26 PageID #: 6
`
`26. Mr. Naboulsi was eventually terminated in December 2004 by Mazen Hammoud,
`
`manager at Ford. While the official reason for termination was “a conflict of interest,” Mr.
`
`Naboulsi believes that he was terminated because he refused to assign his invention to Ford.
`
`27.
`
`Since then, Mr. Naboulsi made many presentations about his invention. One of
`
`them was for a group of engineers at Ford’s Advanced Features & Technology, Development &
`
`Implementation, located at 20300 Rotunda Drive, Dearborn MI 48124. During the meeting, the
`
`engineers were commenting about the similarity between his presentation and SYNC features.
`
`28.
`
`Shortly thereafter, Ford announced the adoption of its SYNC infotainment module,
`
`which implemented the invention recited in the Asserted Patents.
`
`29. Mr. Naboulsi was awarded the prestigious MIT-SAE innovator of the year award
`
`in April 2010.
`
`
`
`
`
`
`FORD USED THE INFRINGING TECHNOLOGY IN ITS SYNC SYSTEM
`
`30.
`
`Ford’s SYNC infotainment system is focused on reducing driver’s distraction and
`
`allowing the driver to access various features without removing hands off the steering wheel.
`
`6
`
`

`

`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 7 of 26 PageID #: 7
`
`https://www.ford.com/technology/sync/sync-3/ (last accessed November 22, 2020)
`
`
`
`
`COUNT 1
`
`INFRINGEMENT OF U.S. PATENT NO. 9,713,994
`
`31.
`
`Plaintiff repeats and incorporates by reference each preceding paragraph as if fully
`
`set forth herein and further states:
`
`
`
`32. The ’994 Patent was duly and legally issued on July 25, 2017. A true and correct copy
`
`is attached as Exhibit A. Plaintiff holds all rights and title to such patent, including the sole and
`
`exclusive right to bring a claim for its infringement.
`
`33. As described below, Ford has directly infringed the ’994 Patent in violation of 35
`
`U.S.C. § 271(a) by making, using, selling, and/or offering for sale in the United States, and/or
`
`importing into the United States, without authorization, products that practice claims of the ’994
`
`Patent.
`
`34. At a minimum, such infringing products include Ford’s SYNC system.
`
`35.
`
`Ford’s SYNC infringes at least claim 1 of the ‘994 patent. The first element of
`
`claim 1 recites: “a telematic device running at least one software application and having at least
`
`7
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 8 of 26 PageID #: 8
`
`
`
`one input and at least one output.” SYNC is a telematic device running a software application
`
`accepting an input and providing an output.
`
`
`
`
`
`http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-
`SYNC-3-Supplement-version-1_sycsy_EN-US_05_2015.pdf (last accessed December
`14, 2020)
`
`
`36.
`
`The second element of claim 1 recites “at least one sensor operable to sense at least
`
`one condition related to a driving environment and data providing information indicating at least
`
`one distracting feature for at least one software application.” SYNC uses the vehicle’s speed
`
`sensor to determine the speed of the vehicle.
`
`8
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 9 of 26 PageID #: 9
`
`
`
`https://www.autozone.com/
`engine-
`management/vehicle-
`transmission-speed-
`sensor/ford (last accessed
`December 14, 2020)
`
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp.
`13-14
`(http://www.fordservicecontent.com/Ford_Content/Catal
`og/owner_information/Ford-SYNC-3-Supplement-
`version-1_sycsy_EN-US_05_2015.pdf ) (last accessed
`December 14, 2020)
`
`
`
`37.
`
`The third element of claim 1 recites “a controller in communication with the sensor
`
`and the data and the software application and the telematic device, the controller configured to
`
`prevent the at least one application output from being provided to the driver in the original
`
`format...” SYNC includes a controller in communication with, for example, the vehicle’s speed
`
`sensor. For example, in order not to distract the driver, the SYNC controller simplifies the listing
`
`of phone contacts on the display if the vehicle is moving.
`
`9
`
`

`

`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 10 of 26 PageID #: 10
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp. 13-14
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-
`SYNC-3-Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December
`14, 2020)
`
`
`38.
`
`The fourth element of claim 1 recites “wherein the controller controls when at least
`
`one input into the software application and at least one output from the software application are
`
`provided to the driver so that prior to permitting the driver to access the input or prior to providing
`
`an output from the software application on the telematic device to the driver, the controller
`
`determines whether said at least one condition is within a threshold and permits the driver to access
`
`said input or provides said output to said driver only when said at least one condition is within the
`
`threshold.” For example, if the SYNC controller receives information from the speed sensor that
`
`the vehicle is moving, SYNC prevents the driver from using the keyboard to enter a navigation
`
`destination, and prevents the driver from viewing text messages.
`
`
`
`10
`
`

`

`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 11 of 26 PageID #: 11
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp. 13-14
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-SYNC-3-
`Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December 14, 2020)
`
`
`39. Ford’s acts of infringement have damaged Plaintiff, and Plaintiff is entitled to recover
`
`from Ford for those damages in an amount to be proven at trial, including injunction, actual and/or
`
`compensatory damages, reasonable royalties, pre-judgment and post-judgment interest, enhanced
`
`damages, and costs.
`
`COUNT 2
`
`INFRINGEMENT OF U.S. PATENT NO. 9,047,170
`
`40. Plaintiff repeats and incorporates by reference each preceding paragraph as if fully set
`
`forth herein and further states:
`
`41. The ’170 Patent was duly and legally issued on June 2, 2015. A true and correct copy
`
`is attached as Exhibit B. Plaintiff holds all rights and title to such patent, including the sole and
`
`exclusive right to bring a claim for its infringement.
`
`42. As described below, Ford has directly infringed the ’170 Patent in violation of
`
`35U.S.C. § 271(a) by making, using, selling, and/or offering for sale in the United States, and/or
`
`importing into the United States, without authorization, products that practice claims of the ’170
`
`Patent.
`
`43. At a minimum, such infringing products include Ford’s SYNC system.
`
`11
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 12 of 26 PageID #: 12
`
`
`
`44. Ford’s SYNC infringes at least claim 1 of the ‘170 patent.
`
`45. Claim 1 recites a method for “sensing movement of the telematic device;” and
`
`“comparing movement of the telematic device to a threshold.” SYNC uses the vehicle’s speed
`
`sensor to determine the speed of the vehicle.
`
`https://www.autozone.com/
`engine-
`management/vehicle-
`transmission-speed-
`sensor/ford (last accessed
`December 14, 2020)
`
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp.
`13-14
`(http://www.fordservicecontent.com/Ford_Content/Catal
`og/owner_information/Ford-SYNC-3-Supplement-
`version-1_sycsy_EN-US_05_2015.pdf ) (last accessed
`December 14, 2020)
`
`
`
`46. Method claim 1 also recites the steps of “preventing said at least one output from being
`
`communicated within the vehicle in the original format of said at least one output when movement
`
`of the telematic device is at or above the threshold;” and “providing said at least one output to the
`
`driver in the format different than the original format when movement of the telematic device is
`
`at or above the threshold.” SYNC includes a controller in communication with, for example, the
`
`vehicle’s speed sensor. For example, in order not to distract the driver, the SYNC controller
`
`simplifies the listing of phone contacts on the display if the vehicle is moving.
`
`12
`
`

`

`
`
`
`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 13 of 26 PageID #: 13
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp. 13-14
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-SYNC-3-
`Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December 14, 2020)
`
`47. Method claim 1 also recites “permitting the driver to access said input or providing
`
`said output to said driver in the original format when movement of the telematic device is below
`
`the threshold.” For example, if the SYNC controller receives information from the speed sensor
`
`that the vehicle is moving, SYNC prevents the driver from using the keyboard to enter a navigation
`
`destination, and prevents the driver from viewing text messages.
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp. 13-14
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-SYNC-3-
`Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December 14, 2020)
`
`48. Ford’s acts of infringement have damaged Plaintiff, and Plaintiff is entitled to recover
`
`from Ford for those damages in an amount to be proven at trial, including injunction, actual and/or
`
`compensatory damages, reasonable royalties, pre-judgment and post-judgment interest, enhanced
`
`13
`
`

`

`
`
`
`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 14 of 26 PageID #: 14
`
`damages, and costs.
`
`COUNT 3
`
`INFRINGEMENT OF U.S. PATENT NO. 10,532,709
`
`49. Plaintiff repeats and incorporates by reference each preceding paragraph as if fully set
`
`forth herein and further states:
`
`50. The ’709 Patent was duly and legally issued on January 14, 2020. A true and correct
`
`copy is attached as Exhibit C. Plaintiff holds all rights and title to such patent, including the sole
`
`and exclusive right to bring a claim for its infringement.
`
`51. As described below, Ford has directly infringed the ’709 Patent in violation of 35
`
`U.S.C. § 271(a) by making, using, selling, and/or offering for sale in the United States, and/or
`
`importing into the United States, without authorization, products that practice claims of the ’709
`
`Patent.
`
`52. At a minimum, such infringing products include Ford’s SYNC system.
`
`53. Ford’s SYNC infringes at least claim 1 of the ‘709 patent. The first element of claim
`
`1 recites: “a first mode of operation and a reduced distractions mode of operation.”
`
`
`
`
`
`https://www.ford.ca/resources/ford/general/pdf/37695_Ford_SYNC3_UserGuide_E.pdf
`
`54. The second element of claim 1 recites: “the telematics system configured to be
`
`14
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 15 of 26 PageID #: 15
`
`operatively coupled with a cellular phone having at least one feature and an output.”
`
`
`
`
`
`
`
`
`
`15
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 16 of 26 PageID #: 16
`
`
`
`56. The third element of claim 1 recites: “the telematics system operable by a driver of the
`
`motor vehicle.”
`
`
`57. The fourth element of claim 1 recites: “the telematics system configured to be
`
`operatively coupled with a web server.”
`
`
`
`16
`
`
`
`
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 17 of 26 PageID #: 17
`
`
`
`58. The fifth element of claim 1 recites: “the telematics system being operatively coupled
`
`to the vehicle's bus and being configured to receive at least one of a vehicle transmission
`
`information and a vehicle movement information from the bus.”
`
`
`
`
`
`https://naviupgrade.com/guides/whats-the-difference-between-sync-2-sync-3/
`
`https://naviupgrade.com/guides/whats-the-difference-between-sync-2-sync-3/
`
`17
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 18 of 26 PageID #: 18
`
`
`
`
`
`https://www.autozone.com/engine-management/vehicle-transmission-speed-sensor/ford
`
`
`
`
`
`
`
`59. The sixth element of claim 1 recites: “the telematics system configured to
`
`automatically switch between the first mode of operation and the reduced distractions mode of
`
`18
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 19 of 26 PageID #: 19
`
`
`
`operation, as a result of at least one predetermined condition being met by the at least one of the
`
`transmission information and the vehicle movement information.”
`
`
`
`60. The seventh element of claim 1 recites: “and, wherein the telematics system, while
`
`operating in the reduced distractions mode of operation, is configured to disable the at least one
`
`feature, suppress at least a portion of the output.”
`
`
`
`
`
`
`
`61. The final element of claim 1 recites: “and provide at least one indicium to the driver
`
`that the reduced distractions mode of operation is active; wherein the at least one indicium is
`
`19
`
`

`

`
`
`
`
`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 20 of 26 PageID #: 20
`
`presented by the motor vehicle.”
`
`
`62. Ford’s acts of infringement have damaged Plaintiff, and Plaintiff is entitled to recover
`
`from Ford for those damages in an amount to be proven at trial, including injunction, actual and/or
`
`compensatory damages, reasonable royalties, pre-judgment and post-judgment interest, enhanced
`
`damages, and costs.
`
`COUNT 4
`
`INFRINGEMENT OF U.S. PATENT NO. 8,301,108
`
`63. Plaintiff repeats and incorporates by reference each preceding paragraph as if fully set
`
`forth herein and further states:
`
`64. The ’108 Patent was duly and legally issued on October 30, 2012. A true and correct
`
`copy is attached as Exhibit D. Plaintiff holds all rights and title to such patent, including the sole
`
`and exclusive right to bring a claim for its infringement.
`
`65. As described below, Ford has directly infringed the ’108 Patent in violation of 35
`
`U.S.C. § 271(a) by making, using, selling, and/or offering for sale in the United States, and/or
`
`importing into the United States, without authorization, products that practice claims of the ’108
`
`Patent.
`
`20
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 21 of 26 PageID #: 21
`
`
`
`66. At a minimum, such infringing products include Ford’s SYNC system.
`
`67. Ford’s SYNC infringes at least claim 1 of the ‘108 patent. The first element of claim
`
`1 recites: “a communication device having at least one of an input accessible from within the
`
`vehicle and at least one output communicated within the vehicle.” SYNC is a communication
`
`device with an input accessible from within the vehicle and an output communicated within the
`
`vehicle.
`
`
`
`
`
`http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-
`SYNC-3-Supplement-version-1_sycsy_EN-US_05_2015.pdf (last accessed December
`14, 2020)
`
`68. The second element of claim 1 recites “at least one sensor operable to sense at least
`
`one condition related to vehicle operation.” SYNC uses the vehicle’s speed sensor to determine
`
`the speed of the vehicle.
`
`21
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 22 of 26 PageID #: 22
`
`
`
`https://www.autozone.com/
`engine-
`management/vehicle-
`transmission-speed-
`sensor/ford (last accessed
`December 14, 2020)
`
`
`
`
`
`
`See, e.g., SYNC 3 Manual of Operations, May 2015, pp.
`13-14
`(http://www.fordservicecontent.com/Ford_Content/Catal
`og/owner_information/Ford-SYNC-3-Supplement-
`version-1_sycsy_EN-US_05_2015.pdf ) (last accessed
`December 14, 2020)
`
`
`
`69. The third element of claim 1 recites “a controller communicated with the sensor and
`
`the communication device, the controller prevents said at least one output from being provided to
`
`the driver in the original format of said at least one output and provides said at least one output to
`
`the driver in a different format, and wherein the controller controls when at least one input and at
`
`least one output are provided to the driver so that prior to permitting the driver to access said input
`
`or prior to providing an output from the communication device to the driver, the controller
`
`determines whether said at least one condition is within a threshold and permits the driver to access
`
`said input or provides said output to said driver only when said at least one condition is within the
`
`threshold.” SYNC includes a controller in communication with, for example, the vehicle’s speed
`
`sensor. For example, in order not to distract the driver, the SYNC controller simplifies the listing
`
`of phone contacts on the display if the vehicle is moving.
`
`22
`
`

`

`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 23 of 26 PageID #: 23
`
`
`
`
`
`pp.
`2015,
`Operations, May
`of
`3 Manual
`SYNC
`e.g.,
`See,
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-SYNC-3-
`Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December 14, 2020)
`
`
`13-14
`
`70. Additionally, if the SYNC controller receives information from the speed sensor that
`
`the vehicle is moving, SYNC prevents the driver from using the keyboard to enter a navigation
`
`destination, and prevents the driver from viewing text messages.
`
`
`
`
`
`13-14
`pp.
`2015,
`of Operations, May
`3 Manual
`SYNC
`e.g.,
`See,
`(http://www.fordservicecontent.com/Ford_Content/Catalog/owner_information/Ford-SYNC-3-
`Supplement-version-1_sycsy_EN-US_05_2015.pdf ) (last accessed December 14, 2020)
`
`
`
`
`
`
`
`
`71. Ford’s acts of infringement have damaged Plaintiff, and Plaintiff is entitled to recover
`
`from Ford for those damages in an amount to be proven at trial. including injunction, actual and/or
`
`23
`
`

`

`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 24 of 26 PageID #: 24
`
`compensatory damages, reasonable royalties, pre-judgment and post-judgment interest, enhanced
`
`damages, and costs.
`
`COUNT 5
`
`WILLFUL INFRINGEMENT
`
`72. Plaintiff repeats and incorporates by reference each preceding paragraph as if fully set
`
`forth herein and further states:
`
`73. Ford’s infringement of the ’994 Patent, ‘108 patent, ‘170 Patent and the ’709 Patent
`
`was and continues to be willful.
`
`74. As previously discussed, prior to his employment at Ford, Naboulsi disclosed to Ford
`
`that he filed multiple patents relating to driver’s safety and distraction, namely to Patti Warren and
`
`Dennis Curry.
`
`75. In May 2004, Naboulsi was asked by two Ford Executives to give a demonstration of
`
`his invention at the Ford Advanced Design Center, and to give a presentation and a demonstration
`
`about his invention to Dev Kotcharand and Luis Trajena, Human Factor researchers at Ford Motor
`
`Company and Jeff Rupp Senior Manager in Autonomous Vehicles, ADAS, and Crash Safety
`
`R&D. In October of 2004, a Ford IP attorney came to his exhibit to inquire about the patent.
`
`76. Shortly after the demo, another Ford representative asked Mr. Naboulsi if he would
`
`assign his invention to Ford in return for full-time employment at Ford. He declined to do so
`
`because of other investors associated with the development of his invention.
`
`77. Mr. Naboulsi was eventually terminated in December 2004 by Mazen Hammoud,
`
`manager at Ford. While the official reason for termination was “a conflict of interest,” Mr.
`
`Naboulsi believes that he was terminated because he refused to assign his invention to Ford.
`
`78. Ford’s acts of willful infringement have damaged Plaintiff, and Plaintiff is entitled to
`
`recover from Ford for those damages in an amount to be proven at trial.
`
`24
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 25 of 26 PageID #: 25
`
`DEMAND FOR JURY TRIAL
`
`79. Plaintiff hereby demands a jury trial on all issues so triable.
`
`PRAYER FOR RELIEF
`
`80. WHEREFORE, PLAINTIFF SAFE DRIVING TECHNOLOGIES LLC requests entry of
`
`judgment in its favor and against DEFENDANT FORD MOTOR COMPANY as follows:
`
`A.
`
`B.
`
`C.
`
`Declaring that Ford has infringed each of the Asserted Patents;
`
`Declaring that Ford’s infringement has been willful;
`
` Awarding damages equal to those damages Plaintiff has suffered as a result of
`
`Ford’s infringement, including no less than a reasonable royalty pursuant to 35 U.S.C. §
`
`154(d) and 35 U.S.C. § 284, enhanced damages pursuant to 35 U.S.C. § 284, costs, and
`
`prejudgment and post-judgment interest;
`
`D. Awarding supplemental damages, with interest, to Plaintiff with an accounting,
`
`as needed;
`
`E.
`
`Permanently enjoining Ford and its parents, subsidiaries, affiliates, officers,
`
`directors, agents, servants, employees, successors and assigns, and all others in active
`
`concert or participation with any of the foregoing from any further acts of infringement of
`
`the Asserted Patents or, in the alternative, an award of a reasonable ongoing royalty for future
`
`infringement of the Asserted Patents by Ford;
`
`F. Awarding of attorneys’ fees pursuant to 35 U.S.C. § 285 or as otherwise
`
`permitted by law; and
`
`G. Awarding such other costs and further relief as the Court may deem just and
`proper.
`
`25
`
`

`

`Case 1:21-cv-00064-UNA Document 1 Filed 01/21/21 Page 26 of 26 PageID #: 26
`
`Dated: January 21, 2021
`
`Of Counsel:
`
`Michael E. Shanahan
`Hanna F. Madbak
`BAILEY DUQUETTE P.C.
`104 Charlton Street, 1-W
`New York, NY 10014
`T.: 212.658.1946
`Michael@baileyduquette.com
`Hanna@baileyduquette.com
`
`Respectfully submitted,
`
`FARNAN LLP
`
`
`/s/ Brian E. Farnan
`Brian E. Farnan (Bar No. 4089)
`Michael J. Farnan (Bar No. 5165)
`919 N. Market St., 12th Floor
`Wilmington, DE 19801
`Telephone: (302) 777-0300
`Facsimile: (302) 777-0301
`Email: bfarnan@farnanlaw.com
`
`mfarnan@farnanlaw.com
`
` Attorneys for Plaintiff Safe Driving
`Technologies LLC
`
`26
`
`