Lyft Inc v. Rideshare Displays Inc

1. Case Identification

• Case #: IPR2021-01598
• Patent #: 9,892,637
• Filed: October 1, 2021
• Petitioner(s): Lyft, Inc.
• Patent Owner(s): Rideshare Displays, Inc.
• Challenged Claims: 1-9, 11-20

2. Patent Overview

• Title: Vehicle Identification System
• Brief Description: The ’637 patent describes a system and method for identifying a specific vehicle for a user who has requested a ride. The system uses a controller to send a signal to a driver's mobile device, which in turn causes an indicator (e.g., code, icon) to be shown on a display visible from the exterior of the vehicle, allowing the user to visually match it with an indicator on their own device.

3. Grounds for Unpatentability

Ground 1: Claims 1-9 and 11-20 are obvious over Kalanick in view of Kemler.

• Prior Art Relied Upon: Kalanick (Application # US20150332425A1) and Kemler (Patent 9,494,938).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Kalanick discloses a complete on-demand transportation service system with all the core components of claim 1: a server (controller), communication network (transceiver), and a personalized, dynamically configured indication device mounted on the vehicle (exterior display). Kalanick’s system communicates with both driver and user mobile devices. However, Petitioner contended that to the extent Kalanick does not explicitly teach generating the signal based on the vehicle being within a "predetermined distance" of the user, Kemler supplies this limitation. Kemler describes a centralized dispatching system where a unique signal is sent to both the vehicle's external display and the user's device specifically when the vehicle reaches a threshold distance from the user, to facilitate identification.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine Kalanick and Kemler because they address the identical problem of vehicle identification in a rideshare context. A POSA would have been motivated to modify Kalanick’s system with Kemler’s proximity-based triggering mechanism as a well-known and logical way to improve system efficiency and user experience. Triggering the display only when the vehicle is close enough for the user to see it conserves energy and focuses the identification process at the most relevant time.
  • Expectation of Success: A POSA would have a high expectation of success because the combination involves integrating known, predictable technologies. Kalanick’s system already includes the necessary GPS location tracking and communication links between the controller, driver device, and vehicle display, making the implementation of Kemler's proximity trigger a straightforward software modification.

Ground 2: Claims 1-9 and 11-20 are obvious over Lalancette in view of Kemler.

• Prior Art Relied Upon: Lalancette (Application # 2012/0137256A1) and Kemler (Patent 9,494,938).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Lalancette discloses a cross-platform taxi identification system that also meets the core limitations of claim 1. It describes a central server (controller) that sends a unique, human-readable icon to a taxi's rooftop display, the driver's in-car display, and the user's smartphone. This allows the user to visually match the icon on their phone to the one on the taxi. As in Ground 1, Kemler is used to supply the teaching of triggering this signal transmission based on the vehicle being within a predetermined distance of the user. Kemler also teaches a broader array of indicators, such as alphanumeric strings, beyond the icons primarily discussed in Lalancette.
  • Motivation to Combine: A POSA would combine Lalancette and Kemler to enhance the privacy and efficiency of Lalancette’s identification system. Both references focus on using unique, non-personal indicators to protect user privacy. A POSA would find it obvious to incorporate Kemler's feature of displaying the signal only when the vehicle is near the user to further protect privacy and optimize the system. Furthermore, using Kemler's textual or alphanumeric indicators would be an obvious design choice to make the indicators more easily distinguishable than the geometric icons of Lalancette, especially from a distance.
  • Expectation of Success: Success would be expected as both systems utilize the same basic display and communication technologies. Implementing Kemler's proximity-based logic and more diverse indicators into Lalancette's existing framework for generating and transmitting unique identifiers would be a predictable modification for a POSA.

4. Key Claim Construction Positions

• Petitioner argued that certain terms should be given their plain and ordinary meaning. However, Petitioner also addressed the Patent Owner's proposed constructions from the parallel district court litigation, which require certain signals and indicators to be "actively formulated" by the controller for each ride. Petitioner contended that even under this narrower construction, the proposed combinations of prior art render the claims obvious. For example, Petitioner argued that the central servers in both Kalanick and Lalancette, which generate unique identifiers for each transaction, meet the "actively formulated" requirement.

5. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that the Board should not exercise discretionary denial under 35 U.S.C. §314(a) based on the Fintiv factors. Petitioner argued that the parallel district court case was in its early stages, with a trial date scheduled for May 2023, which is after the projected Final Written Decision (FWD) in the inter partes review (IPR). Petitioner stated its intent to seek a stay in the district court case, which would favor institution.
• Petitioner also argued against denial under 35 U.S.C. §325(d), stating that the prior art references relied upon in the petition (Kalanick, Kemler, and Lalancette) were never considered by the Examiner during the original prosecution of the ’637 patent. Therefore, the petition raised new arguments based on unanalyzed prior art and was not cumulative.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-9 and 11-20 of the ’637 patent as unpatentable under 35 U.S.C. §103.