LAW360
By Hailey Konnath
Law360 (April 8, 2020, 10:47 PM EDT) — A patent-licensing company founded by former WilmerHale and Kirkland & Ellis LLP partners said Wednesday it has resolved a dispute with Lyft over methods of routing ride-sharing traffic.
A Delaware federal judge found in January that Blackbird Tech LLC had raised plausible arguments that its routing system “improved existing technologies in an unconventional way.” The judge refused to shut down the suit, holding that the patent infringement allegations deserved to go to trial.
Blackbird reached an agreement with Lyft Inc. last month, it said in Wednesday’s statement. According to the case docket, Blackbird lodged a stipulation of dismissal March 26 that said both parties would cover their own costs, expenses and attorney fees, but otherwise didn’t provide details on the deal. The case was closed the next day.
Blackbird CEO Wendy Verlander said in a statement Wednesday that the vehicle management system described in the patent at issue is widely used in modern transportation services.
“It is remarkable that the inventors of this now ubiquitous technology were able to understand its importance two decades ago,” she said.
Blackbird has also reached an agreement with Uber Technologies Inc. in a separate suit over the same patent, according to a joint stipulation lodged in that case March 17. The Uber case remains open, but its deadlines have been suspended since March 18, per the case docket.
Details on that deal weren’t disclosed in court documents. Counsel for Blackbird and representatives with Uber didn’t immediately respond to requests for comment Wednesday. Lyft declined to comment.
Blackbird, known for its prolific filing of infringement suits, was co-founded by Verlander, a former partner at WilmerHale, and Chris Freeman, a former partner with Kirkland. Freeman has since left to join Burford Capital.
The patent at the heart of the dispute covers a system “for controlling vehicle movements, in areas containing a road network, and a plurality of vehicles.”
Blackbird hit Lyft and Uber with its suits over the ride-sharing technology in March 2019, accusing both companies of direct and willful infringement. Uber and Lyft also induced infringement by encouraging drivers to download its app for use on the road, Blackbird alleged.
The patent-licensing company argued that both ride-hailing companies willfully ignored a 2017 Patent Trial and Appeals Board rejection of a claim that there was a “reasonable likelihood” that the patent was invalid. The PTAB decision was in response to an action by a technology membership organization, Unified Patents Inc., for a review of the patentability of Blackbird’s assertions.
In January, U.S. District Judge Maryellen Noreika agreed with 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 were not patentable under the U.S. Supreme Court’s ruling in Alice Corp. v. CLS Bank International. But she rejected their arguments that Blackbird was conventional in its use of data.
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.
The patent-in-suit is U.S. Patent No. 6,754,580.
Blackbird Technologies is represented by Stamatios Stamoulis and Richard C. Weinblatt of Stamoulis & Weinblatt LLC.
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.
Uber Technologies Inc. is represented by Amy M. Dudash, Brent A. Hawkins, Hersh Mehta and Julie S. Goldemberg of Morgan Lewis & Bockius 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.
–Additional reporting by Jeff Montgomery. Editing by Breda Lund.