Future of Sidecar May Lie in its Patent Portfolio

Sidecar announced today that it is licensing its patent assets to General Motors. While Sidecar was founded in 2011, the company’s co-founder Sunil Paul developed and patented ridesharing technology more than a decade earlier. Paul received US 6,356,838 in 2002, based on a patent application he filed in 2000.

The ‘838 patent has been widely reported in the media, as well as on our blog, as a seminal patent in the ridesharing and car-hailing industry.  We reviewed the ‘838 patent in detail to understand the scope and strength of the patent. At a high level, the patent includes 231 forward citations, suggesting that it is a very fundamental patent based on other later-filed third-party patent applications that were reviewed in light of the ‘838 patent. Such third-parties include technology giants Apple, Microsoft, IBM, Facebook, and Amazon. In addition, companies directly involved with transport such as UPS and Honda have applications citing to the ‘838.  Not surprisingly, Uber has an issued patent and two pending applications that have cited to the ‘838 patent as well.

While forward citations can be an indicator of how fundamental a particular patent is, reverse or backward citations can indicate the relative strength of a patent. A reverse citation includes prior art that was cited and reviewed by the USPTO while the patent was pending. A higher number of references cited reduces the available pool of new art that may potentially be used to invalidate a particular patent. The ‘838 patent has 19 reverse citations.

The ‘838 patent has not been the subject of any post-grant proceedings however, such as an inter partes review or litigation. Thus, the strength of the ‘838 patent has not been challenged in terms of prior art or subject-matter eligibility.

Taking a close look at the independent claims, Claim 1 specifically recites sending a “transportation request” from a passenger to a driver, where the request includes “origin” and “destination” data, as well as an “efficient route” between the origin and destination. The origin is the driver’s current position and the destination is the passenger’s requested drop off point. Upon a quick reading of the claims, they certainly seem relevant to the underlying technology used by many in the ride-sharing space.

Independent Claim 12 is similar to Claim 1, but also recites that the passenger’s request comes from their “wireless device”.  This claim is truly before its time – the popularity of mobile device apps and location-based services were just in their infancy in 2000.

Independent Claim 18 is also interesting as it covers tracking a passenger after they submit a pick-up request. The passenger’s location is tracked and transmitted to the driver, so that if the passenger has moved since the time of requesting a pick-up, the driver can seamlessly arrive at the passengers’ most current location.

The patent includes 6 independent claims, and a total of 27 claims. Having numerous independent claims directed towards various aspects of a ridesharing platform makes the ‘838 patent relatively strong in my opinion. A prospective challenger would have the burden of proving non-infringement or invalidity of six independent claims, which would each likely require different arguments and contentions.

Figure 1 from the ‘838 patent below shows a high-level diagram of Sidecar’s technology and platform:

Sidecar_US6356838_Fig_1

In addition to the issued ‘838 patent, we identified the following patent applications globally listing CEO Sunil Paul, CTO Jahan Khanna, and other Sidecar employees as inventors. Only the ‘838 patent is assigned to Sidecar according to the USPTO assignment database, and the other applications do not have a publicly recorded assignment as of today.

Screen Shot 2016-01-20 at 11.57.11 AM

Two of SIdecar’s US applications have been abandoned, however, the three more recent ones directed towards providing transportation discounts and a transportation marketplace are currently pending. It will be interesting to see if other applications continue to publish in the coming months and years. If Sidecar is able to obtain additional patents in this space, it could result in additional licensing revenue for the company.

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