By Jeff Montgomery
Law360 (January 7, 2020, 3:43 PM EST) — A federal judge in Delaware refused to shut down a suit claiming Uber Technologies Inc. and Lyft Inc. infringed a patent on methods for routing ride-sharing traffic, saying in an order released Monday that Blackbird Tech LLC’s allegations deserved to move toward trial.
U.S. District Court Judge Maryellen Noreika found that Blackbird raised plausible arguments that its routing system “improved existing technologies in an unconventional way,” trumping claims by Uber and Lyft that Blackbird’s case should be dismissed because it attempted to enforce a patent on an abstract idea.
In the balance was U.S. Patent No. 6,754,580, issued to Blackbird in 2004 and covering a system “for controlling vehicle movements, in areas containing a road network, and a plurality of vehicles.”
Judge Noreika agreed with arguments by Uber and Lyft that representative claims of Blackbird’s patent appeared to be focused on an abstract matter — managing traffic through collection and analysis of data — and therefore was not protected under the U.S. Supreme Court’s ruling in Alice Corp. v. CLS Bank International . But the judge rejected their claims that Blackbird was conventional in its use of the data.
“Moreover, Blackbird’s complaints include plausible factual allegations that the claimed invention improves upon the prior conventional systems by using dynamic route guidance, which allows control centers to better manage the flow of vehicles as compared to only using the current traffic,” the judge said.
The comments appeared in a transcript of a ruling from the bench during proceedings on Dec. 20, included with the memorandum order issued Monday.
While Uber and Lyft argued that Blackbird had to make specific assertions that aspects of the ‘580 patent are not well understood, Judge Noreika said that at the motion-to-dismiss stage, courts must decide plausible allegations involving factual issues in favor of the assigned patent holder.
At the same time, Judge Noreika said Blackbird’s assertion will likely have to run a “claims construction” gauntlet to assess the precise meaning of the words in the patent.
“For example, the preamble recites several ‘means for’ limitations that seem to go to the type of technology that is used to effectuate the traffic control achieved by the claims,” Judge Noreika said. “These terms — if simply generic limitations — may support a finding that there is no inventive concept captured in the claims.”
Blackbird’s suits, filed on March 22 against Uber and three days later against Lyft, accused both of direct and willful infringement of the ‘580 patent, and argued each induced infringement by encouraging drivers to download its app for use on the road.
The suit also requested a finding of willful infringement that, if upheld, could subject the companies to triple damages.
Blackbird argued that both ride-sharing firms willfully ignored a Patent Trial and Appeals Board rejection in January 2017 of a claim that there was a “reasonable likelihood” that the ‘580 patent was invalid. The PTAB decision came in response to an action by a technology membership organization, Unified Patents Inc., for a review of the patentability of Blackbird’s assertions.
Judge Noreika also said in her decision from the bench that the court could not conclude, at this early stage of the case, that the claims “require only ‘off-the-shelf, conventional’ technology functioning in conventional ways to gather, analyze and present the data.”
Blackbird Technologies is represented by Stamatios Stamoulis, Richard C. Weinblatt of Stamoulis & Weinblatt LLC and Wendy Verlander, Jeffrey Ahdoot of Blackbird Technologies.
Uber Technologies Inc. is represented by Amy M. Dudash, Brent A. Hawkins, Hersh Mehta and Julie S. Goldemberg of Morgan Lewis & Bockius LLP.
Lyft Inc. is represented by John G. Day and Andrew C. Mayo of Ashby & Geddes and Roger Fulghum and Jennifer C. Tempesta of Baker Botts LLP.
The cases are Blackbird Tech LLC v. Uber Technologies Inc., case number 1:19-cv-00561, and Blackbird Tech LLC v. Lyft Inc., case number 1:19-cv-00566, in the U.S. District Court for the District of Delaware.
–Editing by Marygrace Murphy.