A retired Georgia Tech professor who claims Uber and Lyft built their multibillion-dollar ride-sharing platforms by infringing his 2004 patent has enlisted the help of law firms in New York and Atlanta known for their prowess in intellectual property disputes.
Stephen Dickerson—a mechanical engineering professor emeritus and inventor whose research focuses on high-performance, computer-controlled motion devices—wants to claw back millions of dollars in what he claims are unpaid licensing fees from Uber and Lyft.
A team of attorneys led by New York litigator Marc Kasowitz of Kasowitz Berman Torres and two intellectual property practice partners with Atlanta’s Kilpatrick Townsend & Stockton have weighed in on Dickerson’s behalf.
Kasowitz and law firm partners Daniel Benson in New York and Jeffrey Toney in Atlanta are suing Lyft in federal court in San Francisco, where they claim Lyft built its business by infringing a patent that Dickerson designed in 1999 and secured in 2004.
Kilpatrick Townsend partners Mitchell Stockwell and David Reed are spearheading a virtually identical patent infringement suit against Uber in U.S. District Court in Atlanta. Both suits were filed on behalf of Dickerson’s company, RideApp Inc.
Dickerson contends his patent, 6,697,730 B2, details a way to match rental car users with available vehicles, arrange pickup sites and then handle billing by mobile phone—all core features of Uber and Lyft.
Dickerson says he invented the ride-share patent that rested on mobile phone technology while he was teaching at Georgia Tech.
The suits also contend that Dickerson conceived of and patented his idea at a time when no major cellphone manufacturer had integrated GPS technology into their devices. Mobile devices at the time also did not allow automatic billing of anything other than phone calls.
Dickerson said he designed and patented the technology because of his concerns about growing traffic congestion and the environmental, social, personal and infrastructure costs associated with it.
Dickerson’s lawsuits claim Uber and Lyft were founded a decade after he filed his ride-share patent application and “literally cannot operate” without relying on it.
Lyft has filed a motion to dismiss Dickerson’s patent infringement case in the U.S. District Court for the Northern District of California after successfully petitioning a federal judge in New York to transfer it there.
Lyft contends that Dickerson’s patent claims are based on “the automation of a well-known business practice using generic technology,” and include “no inventive concepts.” Lyft also contends that Dickerson’s infringement claims “rely on the application of generic components, used in generic ways, to the field of taxi dispatch and billing.”
Lyft’s lawyers claim that Dickerson’s infringement allegations “are directed to an abstract idea and there are no allegations that the claims are anything other than well-understood, routine, and conventional” and, as such “are not patent eligible.”
Lyft attorneys have moved to invalidate Dickerson’s patent before the Patent Trial and Appeal Board, and a decision is expected in the coming weeks. Lyft is represented by a team of Baker Botts attorneys in California and New York led by Bryant Boren, the firm’s patent litigation practice group chair.
The Uber suit was filed May 31 in the U.S. District Court for the Northern District of Georgia in Atlanta, and attorneys representing the company have not yet filed an appearance. Uber’s chief spokeswoman and chief legal officer, Tony West, could not be reached for comment.
Dickerson said that, when Uber and Lyft opened for business around 2012, Dickerson said he “figured out almost immediately … they were violating my patent.”
Dickerson said it took him several years to file suit, because he had assigned his ride-share patent to the Georgia Tech Research Corp., which registered patents of his earlier inventions in what became a lucrative joint commercial enterprise after he retired from Georgia Tech.
But Dickerson said Georgia Tech didn’t protect his patent or police potential infringements. As a result, before he could sue Uber and Lyft for infringing his invention, he had to negotiate with the university to have the patent assigned back to him.
As Uber and Lyft expanded without acknowledging Dickerson’s patent or paying him licensing fees, Dickerson said, “We finally decided it had to be done.”