Uber Runs Out of Gas in Drive to Dismiss Texas Patent Infringement Claims

The popular Uber ride hailing/delivery company got some bad news in Waco, Texas, a few days ago by way of a court order denying the company’s request to dismiss a series of patent infringement claims filed by Texas-based LBT IP II, LLC.

The order issued by Judge Alan Albright in the U.S. District Court for the Western District of Texas clarifies an important pleading requirement involving the application of joint infringement in the context of mobile applications.

The case is LBT IP II, LLC v. Uber Tech., Inc., No. 6:21-cv-01210, U.S. District Court for the Western District of Texas. The contested patents are U.S. Patent Nos. 7,728,724; 7,598,855; 8,531,289 and 8,224,355.

The order rejected Uber’s reasoning that the Court should dismiss the claims because LBT IP II failed to assert that “Uber makes the smartphones alleged to perform multiple claim elements in every Asserted Patent” or “that Uber directs or controls the manufacturers of alleged smartphones.” The Court found that such a showing “is not required to plead the requisite direction or control.”

Instead, Judge Albright focused on the fact that the plaintiff was not accusing “smartphones” of patent infringement but rather “the functionality that Uber provides on them through its mobile applications.”

In so doing, the Court distinguished Ruby Sands because in that case, the asserted claims were directed to “devices,” whereas in this case, the claims were “system and method claims.”

Under that framework, the Court held that the allegations in the complaint “plausibly” allege direction and control through the Uber application since Uber “operates and controls its rider and driver applications;” and Uber’s “mobile applications must be installed on a mobile computing device, Defendant controls how its riders and drivers use the infringing features of Uber’s Platform and product and perform infringing steps of the method for ride-hailing.”

Companies and lawyers with pending patent infringement matters in the Western District (and those who may find themselves there) will be wise to take note of Judge Albright’s reasoning. Otherwise, they may find themselves looking for a ride home.

Our offices are located in Houston, Texas, but our practice is nationwide and we regularly consult on matters in foreign jurisdictions as well.

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