Case 6:20-cv-00843 Document 1 Filed 09/15/20 Page 1 of 10
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`IKORONGO TEXAS LLC
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`Plaintiff,
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`v.
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`UBER TECHNOLOGIES, INC.
`Defendant.
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`Civil Action No.
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`6:20-cv-843
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`JURY TRIAL DEMANDED
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Ikorongo Texas LLC (“Ikorongo” or “Plaintiff”) for its complaint against
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`defendant Uber Technologies, Inc. (“Uber” or “Defendant”), hereby alleges as follows:
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`THE PARTIES
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`1.
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`Ikorongo is a Texas limited liability company having an address at 678 Bear Tree
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`Creek, Chapel Hill, NC 27517.
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`2.
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`Upon information and belief, Defendant Uber is a corporation organized under the
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`laws of Delaware with its principal place of business located in San Francisco, CA. Uber is
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`registered to conduct business in Texas.
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`JURISDICTION
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`3.
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`This is a civil action for patent infringement under the patent laws of the United
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`States, 35 U.S.C. § 271, et seq. This Court has subject matter jurisdiction under 28 U.S.C. §§
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`1331 and 1338(a).
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`4.
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`This Court has general personal jurisdiction over Uber because Uber is engaged in
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`substantial and not isolated activity within this judicial district. This Court has specific
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`jurisdiction over Uber because Uber has committed acts of infringement giving rise to this action
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`and has established more than minimum contacts within this judicial district, such that the
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`exercise of jurisdiction over Uber in this Court would not offend traditional notions of fair play
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`and substantial justice. Uber, directly and through subsidiaries or intermediaries, has committed
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`and continues to commit acts of infringement of Ikorongo’s rights in the Asserted Patents in this
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`District by, among other things, making, using, offering to sell, selling, and importing products
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`and/or services that infringe the Asserted Patents. Uber has (1) operated the Internet website,
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`https://www.Uber.com/, and provided a mobile application (the “Uber app”), which is available
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`to and accessed by ridesharing users, customers, and potential customers of the Defendant, both
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`riders and drivers, within this judicial district; (2) operated within the judicial district, with
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`ridesharing offered to users, drivers, customers, and potential customers of Defendant in
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`locations including Austin, El Paso, San Antonio, and Waco; (3) actively advertised to employ
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`(and in fact hired) residents within the District as drivers; (4) transacted business within this
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`judicial district and elsewhere in Texas; (5) infringed, actively infringed and/or induced
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`infringement of Ikorongo’s patent rights in this judicial district and elsewhere in Texas; (6)
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`established regular and systematic business contacts within the State of Texas; and (7) continued
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`to conduct such business in Texas through the continued operation within the district.
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`Accordingly, this Court’s jurisdiction over the Defendant comports with the constitutional
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`standards of fair play and substantial justice and arises directly from the Defendant’s purposeful
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`minimum contacts with the State of Texas.
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`Case 6:20-cv-00843 Document 1 Filed 09/15/20 Page 3 of 10
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`5.
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`Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391 and 1400(b).
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`Defendant is registered to do business in Texas, and upon information and belief, Uber has
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`transacted business in this District and has committed acts of infringement of Ikorongo’s patent
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`rights in this District by, among other things, making, using, offering to sell, selling, and
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`importing products and/or services that infringe the Asserted Patents. Uber has regular and
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`established places of business in this District, including at 201 East 3rd St., Austin, TX 78701;
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`507 Calles St., #120, Austin, TX 78702; 10842 Potranco Rd. #112, San Antonio, TX 78251 and
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`121 Interpark Blvd. #501, San Antonio, TX 78216.
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`FACTUAL BACKGROUND
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`6.
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`This action concerns RE 45,543 (the ‘543 Patent) and RE 47,704 (the ‘704 Patent)
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`(collectively the “Asserted Patents”), true and correct copies of which are attached as Exhibits A
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`and B, respectively.
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`7.
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`Ikorongo, pursuant to the principles of Waterman v. Mackenzie, 138 U.S. 252
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`(1891) and 35 U.S.C. §261, is the owner of the exclusive right under the Asserted Patents within
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`and throughout a specified part of the United States (“the Specified Part”) that includes specific
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`counties within the present judicial district, including the right to sue for past, present and future
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`infringement and damages thereof.
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`8.
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`Ikorongo Technology LLC is the owner of the entire right, title and interest in the
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`Asserted Patents, including the exclusive right under the Asserted Patents, within and
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`throughout all parts of the United States and world not included in the Specified Part, including
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`the right to sue for past, present and future infringement and damages thereof. This includes at
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`least one county within the present judicial district.
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`3
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`9.
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`Together Ikorongo and Ikorongo Technology LLC own the entire right, title and
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`interest in the Asserted Patents, including the right to sue for past, present and future
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`infringement and damages thereof, throughout the entire United States and world.
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`10.
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`Each of the ‘543 Patent and the ‘704 Patent is a Reissue Patent of U.S. Patent No.
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`7,080,139 (the ‘139 Patent). The ‘139 Patent, entitled “Method and Apparatus for Selectively
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`Sharing and Passively Tracking Communication Device Experiences” was filed on April 24,
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`2001 as U.S. Patent Application No. 09/841,475. It was duly and legally issued by the U.S.
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`Patent and Trademark Office (PTO) on July 18, 2006. It received 597 days of patent term
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`extension. A true and correct copy of the ‘139 Patent is attached as Exhibit C.
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`11.
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`The ‘543 Patent was filed as Reissue Application 13/894,009 on May 14, 2013. It
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`was duly and legally reissued by the PTO on June 2, 2015.
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`12.
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`The ‘704 Patent was filed as Reissue Application 14/577,746 on December 19,
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`2014. It was duly and legally reissued by the PTO on November 5, 2019.
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`13.
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`The elements claimed by Asserted Patents, taken alone or in combination, were
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`not well-understood, routine or conventional to one of ordinary skill in the art at the times of
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`their respective invention.
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`COUNT I
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`(Uber’s Infringement of the ‘543 Patent)
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`14.
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`15.
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`Paragraphs 1- 13 are reincorporated by reference as if fully set forth herein.
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`The elements claimed by the ‘543 patent, taken alone or in combination, were not
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`well-understood, routine or conventional to one of ordinary skill in the art at the time of the
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`invention. Rather, the ‘543 patent provides a technical solution to technical problems.
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`4
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`16.
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`Uber has infringed and continues to infringe, literally and/or by the doctrine of
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`equivalents, individually and/or jointly, at least claim 57 of the ‘543 patent by making, using,
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`testing, selling, offering for sale or importing into the United States products and/or services
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`covered by the‘543 patent. Uber’s products and/or services that infringe the‘543 patent include,
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`but are not limited to, Uber applications, software and services -- including the application for
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`use on rider’s phones and the application for use on driver’s phones and processes run on user
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`phones and/or Uber servers -- and any other Uber products and/or services, either alone or in
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`combination, that operate in substantially the same manner (“the Accused Instrumentalities”).
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`As one non-limiting example, see, e.g., exemplary claim chart Exhibit D, which is incorporated
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`herein by reference.
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`17.
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`Additionally, Uber is an active inducer of infringement of the ‘543 patent under
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`35 U.S.C. § 271(b) and a contributory infringer of the ‘543 patent under 35 U.S.C. § 271(c)
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`either literally and/or by the doctrine of equivalents.
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`18.
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`Uber induces infringement of the ‘543 patent by intending that others use, offer
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`for sale, or sell in the United States, products and/or services covered by the ‘543 patent,
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`including but not limited to the Accused Instrumentalities. Uber provides these products and/or
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`services to others, such as customers, resellers and end-user customers, who, in turn, use,
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`provision for use, offer for sale, or sell in the United States products and/or services that directly
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`infringe one or more claims of the‘543 patent.
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`19.
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`Uber contributes to the infringement of the ‘543 patent by others by knowingly
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`providing products and/or services that when configured result in a system that directly infringes
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`one or more claims of the ‘543 patent.
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`5
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`20.
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`Upon information and belief, Uber has had actual knowledge of the ‘543 patent
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`since at least as early as the service upon Uber of this Complaint.
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`21.
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`Uber commits affirmative acts that cause infringement of one or more claims of
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`the ‘543 patent with knowledge of the ‘543 patent and knowledge or willful blindness that the
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`induced acts constitute infringement of one or more claims of the ‘543 patent. As an illustrative
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`example only, Uber induces such acts of infringement by its affirmative actions of intentionally
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`providing software components that when used in their normal and customary way, infringe one
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`or more claims of the ‘543 patent and/or by directly or indirectly providing instructions on how
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`to use its products and/or services in a manner or configuration that infringes one or more claims
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`of the ‘543 patent, including those found at www.Uber.com, in product literature and items
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`described in the exemplary claim charts hereto.
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`22.
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`Uber commits contributory infringement by, inter alia, knowingly selling
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`products and/or services that when used cause the direct infringement of one or more claims of
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`the ‘543 patent by a third party, and which have no substantial non-infringing uses, or include a
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`separate and distinct component that is especially made or especially adapted for use in
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`infringement of the ‘543 patent and is not a staple article or commodity of commerce suitable for
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`substantial non-infringing use.
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`23.
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`As a result of Uber’s acts of infringement, Plaintiff has suffered and will continue
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`to suffer damages in an amount to be proved at trial.
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`COUNT II
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`(Uber’s Infringement of ‘704 Patent)
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`24.
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`Paragraphs 1- 23 are reincorporated by reference as if fully set forth herein.
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`6
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`25.
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`The elements claimed by the ‘704 patent, taken alone or in combination, were not
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`well-understood, routine or conventional to one of ordinary skill in the art at the time of the
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`invention. Rather, the ‘704 patent provides a technical solution to technical problems.
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`26.
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`Uber has infringed and continues to infringe, literally and/or by the doctrine of
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`equivalents, individually and/or jointly, at least claim 48 of the ‘704 patent by making, using,
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`testing, selling, offering for sale or importing into the United States products and/or services
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`covered by the ‘704 patent, including but not limited to Accused Instrumentalities. As one non-
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`limiting example, see, e.g., exemplary claim chart Exhibit E, which is incorporated herein by
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`reference.
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`27.
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`Additionally, Uber is an active inducer of infringement of the ‘704 patent under
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`35 U.S.C. § 271(b) and a contributory infringer of the ‘704 patent under 35 U.S.C. § 271(c)
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`either literally and/or by the doctrine of equivalents.
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`28.
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`Uber induces infringement of the ‘704 patent by intending that others use, offer
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`for sale, or sell in the United States, products and/or services covered by the ‘704 patent,
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`including but not limited to the Accused Instrumentalities. Uber provides these products and/or
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`services to others, such as customers, resellers and end-user customers, who, in turn, use,
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`provision for use, offer for sale, or sell in the United States products and/or services that directly
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`infringe one or more claims of the‘704 patent.
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`29.
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`Uber contributes to the infringement of the ‘704 patent by others by knowingly
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`providing products and/or services that when configured result in a system that directly infringes
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`one or more claims of the ‘704 patent.
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`30.
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`Upon information and belief, Uber has had actual knowledge of the ‘704 patent
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`since at least as early as the service upon Uber of this Complaint.
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`7
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`31.
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`Uber commits affirmative acts that cause infringement of one or more claims of
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`the ‘704 patent with knowledge of the ‘704 patent and knowledge or willful blindness that the
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`induced acts constitute infringement of one or more claims of the ‘704 patent. As an illustrative
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`example only, Uber induces such acts of infringement by its affirmative actions of intentionally
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`providing software components that when used in their normal and customary way, infringe one
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`or more claims of the ‘704 patent and/or by directly or indirectly providing instructions on how
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`to use its products and/or services in a manner or configuration that infringes one or more claims
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`of the ‘704 patent, including those found at www.Uber.com, in product literature and items
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`described in the exemplary claim charts hereto.
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`32.
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`Uber commits contributory infringement by, inter alia, knowingly selling
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`products and/or services that when used cause the direct infringement of one or more claims of
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`the ‘704 patent by a third party, and which have no substantial non-infringing uses, or include a
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`separate and distinct component that is especially made or especially adapted for use in
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`infringement of the ‘704 patent and is not a staple article or commodity of commerce suitable for
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`substantial non-infringing use.
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`33.
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`As a result of Uber’s acts of infringement, Plaintiff has suffered and will continue
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`to suffer damages in an amount to be proved at trial.
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`PRAYER FOR RELIEF
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`Plaintiff requests that the Court enter judgment against Uber:
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`(A)
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`that Uber has infringed one or more claims of each of the Asserted
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`Patents, directly and/or indirectly, literally and/or under the doctrine of equivalents;
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`(B)
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`awarding damages sufficient
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`to compensate Plaintiff for Uber’s
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`infringement under 35 U.S.C. § 284;
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`8
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`(C)
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`finding this case exceptional under 35 U.S.C. § 285 and awarding Plaintiff
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`their reasonable attorneys’ fees;
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`(D)
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`(E)
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`(F)
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`awarding Plaintiff its costs and expenses incurred in this action;
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`awarding Plaintiff prejudgment and post-judgment interest; and
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`granting Plaintiff such further relief as the Court deems just and
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`appropriate.
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`9
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`Case 6:20-cv-00843 Document 1 Filed 09/15/20 Page 10 of 10
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`DEMAND FOR JURY TRIAL
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`Plaintiff demand trial by jury of all claims so triable under Federal Rule of Civil Procedure
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`38.
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`Respectfully submitted,
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`/s/ Derek Gilliland
` DEREK GILLILAND
`STATE BAR NO. 24007239
`SOREY, GILLILAND & HULL, LLP
`109 W. Tyler St.
`Longview, Texas 75601
`903.212.2822 (telephone)
`903.212.2864 (facsimile)
`dgilliland@SoreyLaw.com
`
`KARL RUPP
`State Bar No. 24035243
`NIX PATTERSON L.L.P.
`1845 Woodall Rodgers Fwy., Suite 1050
`Dallas, Texas 45001
`972.831.1188 (telephone)
`972.444.0716 (facsimile)
`krupp@nixlaw.com
`
`
`HOWARD WISNIA
`CALIFORNIA STATE BAR NO. 184626
`WISNIA PC
`12770 High Bluff Dr., Suite 200
`San Diego, CA 92130
`Tel: (858) 461-0989
`howard@wisnialaw.com
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`COUNSEL for PLAINTIFF
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`Date: September 15, 2020
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`10
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