Slightly-known patent infringement lawsuit might have large implications for Uber — and doubtlessly dozens of different firms.
Carma Technology, an organization shaped in 2007 by serial entrepreneur and SOSV Ventures founder Sean O’Sullivan, filed a lawsuit earlier this 12 months towards Uber alleging the corporate infringed on 5 of its patents which are associated to the system of matching riders (or packages) with capability in autos. In different phrases, ride-sharing — a enterprise Carma operated in some kind for a decade till it modified its enterprise mannequin and utilized its tech to road-pricing providers like GPS tolling and HOV verification.
Carma has requested a jury trial and is searching for a everlasting injunction towards the corporate, obligatory future royalties on any Uber merchandise that infringe on these patents in addition to damages, and different prices associated to the lawsuit.
The lawsuit, which has been quietly winding its approach by way of the U.S. District Court docket for the Jap District of Texas, is comparatively new. The allegations have been swirling for practically a decade.
Carma attorneys first contacted Uber about its ride-sharing and floor transportation patents in 2016, in response to the grievance. That was an auspicious time for Uber. The startup, which was based simply seven years earlier than, had shot into the stratosphere — when it comes to valuation, progress, and gravitas.
Uber was valued at $66 billion on the time, and had a repute for taking large, legally sticky swings into new markets that helped it develop to a whole bunch of cities within the U.S., Europe, Canada, and the Center East. It had raised greater than $12.5 billion in enterprise capital, and was utilizing it to launch new merchandise and even push into autonomous autos.
Uber may need had the enterprise mannequin and the market share, however it didn’t have the precise ride-sharing patents, O’Sullivan advised TechCrunch in a current interview. Carma does — plus a couple dozen others. Uber was allegedly conscious of that reality as early as 2015 when the U.S. Patent and Trademark Workplace rejected one in all its functions as a result of it ran up towards present patents held by O’Sullivan and Carma, in response to the lawsuit.
No less than 4 of Uber’s patent functions — and in some instances quite a few revisions to these patents — had been rejected between 2016 and 2019 for a similar cause. The ride-share large would ultimately abandon a few of these functions.
Uber nonetheless holds a whole bunch of different patents protecting a broad swath of know-how and concepts which were utilized to its enterprise.
O’Sullivan argues the core service of what Carma’s patents describes is precisely how the fashionable day ride-sharing expertise operates. And he contends that Uber is infringing on these patents even when the corporate’s enterprise mannequin operates extra like a taxi enterprise.
The case is a sophisticated one, mental property lawyer Larry Ashery advised TechCrunch. (Ashery is just not concerned within the case.)
“What’s essential to know right here is Carma isn’t simply asserting 5 patents,” mentioned Ashery, whose follow is predicated in Larger Philadelphia space. “They’ve had a really subtle technique of patent procurement that they’ve been engaged on for the previous 18 years.”
He famous the 5 patents are a part of a 30-patent household which are all associated and related to the unique submitting date. That issues as a result of every of the 5 asserted patents comprises a number of patent claims, which outline the authorized boundaries of the invention. These particular person claims — not simply the patents as a complete — are what Carma is asserting towards Uber.
Meaning Uber should tackle and defend towards every asserted declare, making the litigation extra complicated and tough to defeat, he famous. Ashery mentioned Uber’s technique will seemingly be to attempt to invalidate these patents, which will likely be a problem.
A nine-year hole
Whereas Carma may need been armed with these particular patents, it took 9 years for the corporate to truly sue Uber. Bunsow De Mory, a Redwood Metropolis-based regulation agency, is representing Carma within the case.
“When any enterprise begins, it’s all about simply truly capturing the market and profitable within the market,” O’Sullivan mentioned. “Patents are supposed to defend towards aggressors from stealing the concept, however it’s not the primary focus of your corporation to get patent income. It’s extra as a protecting mechanism.”
Carma, he mentioned, has been “very busy constructing a multi-million greenback enterprise and attending to profitability.” However there are different causes for that nine-year time hole, O’Sullivan defined. For one, the fee.
“It’s extremely costly to sue a big firm over IP and Carma is a comparatively small group,” he mentioned in a current interview. “To provide you with the $10 million-plus to tackle an enormous patent swimsuit, which is what it takes as of late, is just not a small activity.”
O’Sullivan mentioned the corporate did attain out to Uber way back to 2016 “within the hopes that they’d do the best factor and license our patents.”
“It actually took us some time to come back to phrases with the concept we truly needed to sue Uber to ensure that them to reply,” he added.
Uber declined to touch upon the lawsuit. Uber’s attorneys did make two procedural motions this week, together with a sealed movement to dismiss for improper venue or alternatively to switch venue for comfort. This procedural movement alerts Uber’s need for the case to be litigated within the Northern District of California, the place it’s based mostly, relatively than in Texas.
Notably, the lawsuit is geared toward Uber, not Lyft or different firms utilizing ride-sharing. O’Sullivan defined Carma is “going after the most important participant first” and famous that about 60 different firms are seemingly infringing on its patents.
The five-patent argument
The first argument within the lawsuit ties again to 5 patents which were granted to O’Sullivan and Carma, which was initially named Avego.
It began with O’Sullivan’s frustration with site visitors congestion, which in the end led to ideas about car-pooling and the way an automatic system utilizing smartphones might assist individuals coordinate rides. That concept would flip into the startup Avego and grow to be the premise of the primary patent — No. 7,840,427.
The primary patent, which O’Sullivan utilized for in 2007 and was granted in 2010, created a shared transport system that matches empty house in a automobile with riders or items. The system established a set of pick-up and drop-off factors after which matched customers and drivers touring alongside the same route.
Earlier than the patent was granted Avego’s ride-sharing app debuted on Apple’s App Retailer in 2008, the identical 12 months the iPhone launched. Avego confirmed off its so-called Shared Transport app on the DEMO convention in 2008, which confirmed how a driver with an iPhone 3G might use the app to simply accept or reject a experience request. As soon as accepted, the rider was notified as the driving force approached after which was prompted to enter a pin code to show their id and authorize an digital fee.
Avego, which might later change its title to Carma, was targeted on the promotion of ride-sharing (as in carpooling) and never taxis, in response to O’Sullivan. The corporate operated the carpooling enterprise till October 2016, when the app was withdrawn from the App retailer. Nonetheless, it nonetheless had different types of ride-sharing, like its partnership with Toyota, till phasing it out altogether in April 2018.
“If you happen to have a look at the definition of ride-sharing in federal laws, it’s carpooling,” O’Sullivan mentioned, noting that Carma constructed up a multi-million greenback ride-sharing enterprise in its early days.
When Uber and Lyft got here in and tried to co-opt the time period ride-sharing to imply taxi-hailing it induced confusion out there, prompting Carma to vary its enterprise mannequin and apply its tech in new methods. “Uber and Lyft actually took ride-sharing within the route of taxi providers, however our firm Carma didn’t need to,” O’Sullivan mentioned.
Carma continues to be targeted on lowering site visitors congestion, however its tech is utilized to a unique enterprise mannequin.
In the present day, Carma makes use of its app to assist transit authorities handle tolls and categorical lanes — a product line the corporate first rolled out in 2013. As an example, the app can be utilized by a driver on a toll highway and even monitor automobile occupancy for HOV lanes. The app is designed to get extra riders into automobiles and reward these individuals by lowering tolls or giving drivers entry to the HOV lane.
The concept, O’Sullivan mentioned, is to supply toll authorities a strategy to scale back capital expenditure by as much as 20 occasions by not utilizing massive gantry-based infrastructure techniques. And it has paid off.
O’Sullivan says Carma is worthwhile, though pursuing this lawsuit will reduce into its backside line. Nonetheless, he mentioned it’s value the fee.
“I believe there’s a hazard in society the place we are able to’t depend on our patents to guard the rights of of the inventors, and the patent system exists particularly to guard the rights of traders, to not reward copycats that simply have occur to have deeper pockets,” he mentioned, pointing to Uber’s makes an attempt at its personal patents and the rejection of them by the USPTO.
“We expect it’s one thing that’s essential to acknowledge that the rights of a comparatively small inventor, are being trampled upon. However it’s not only for Carma, actually. We consider this as an issue for all the system. It’s a take a look at of whether or not the rule of regulation nonetheless applies when a strong tech large is concerned.”