A federal court in Waco on Friday dismissed Lewis Hamilton and Charles LeClerc from a patent infringement suit brought earlier this year against the Formula One drivers and several other big players in the world of professional racing.
The ruling, issued by U.S. District Judge Alan Albright, is a win for a team of Texas lawyers at Hogan Lovells and Morgan Lewis who represent Hamilton and LeClerc.
The lawsuit alleges Hamilton; LeClerc; Formula One; Federation Internationale de l’Automobile (FIA); racing teams Mercedes-Benz Grand Prix, Ferrari, and Red Bull Racing; and others infringed on plaintiff Jens Nygaard’s patented technology for the “Halo” and “Aeroscreen” devices now used in race cars.
The technology was designed to protect drivers’ heads and necks during any accidents while racing. According to the lawsuit, Nygaard developed the patented technology in the early 2000s.
He alleges that the Halo technology was developed from Nygaard’s patented technology after he met with representatives of FIA Institute, Mercedes and Italian auto parts manufacturer Dallara. Despite his personal involvement in developing the Halo, Nygaard alleges none of the parties he met with or teams affiliated with them have taken a license or paid him royalties.
Nygaard alleges Hamilton infringed on his inventions by driving on one of the Mercedes vehicles containing the technology in U.S. Grand Prix races in 2018 and 2019 in Austin.
According to the lawsuit, LeClerc (who Nygaard lodged similar allegations against) was the first Formula One driver to be spared from death or serious injury because of the Halo.
Hamilton’s lawyers argued he should be dismissed from the lawsuit under the “customer suit” exception, a legal precedent that says litigation over the supplier or manufacturer of the infringing goods takes precedence over a suit against the customers when both are named in litigation.
“Hamilton has no connection to this case, apart from these two alleged uses (the 2018 and 2019 races Hamilton drove in),” a motion filed by Hamilton’s lawyers says. “Further, involving Hamilton in the suit cannot increase the amount of recovery Nygaard will be able to receive should he prevail on his infringement claims. Only one recovery with respect to the accused products is permitted.”
Hogan Lovells also represents Mercedes-Benz Grand Prix and Mercedes’ parent company, Daimler, in the litigation. Both are still defendants. The team includes Bruce Oakley from the firm’s Houston office and Celine Jimenez Crowson, Joe Raffetto, Ryan Stephenson and David Brzozowski from the firm’s Washington, D.C. office.
Morgan Lewis also represents Ferarri, which is what LeClerc drove in the 2018 and 2019 Grand Prix events at issue. The team includes David Levy, Elizabeth Chiaviello, Thomas Davis and Winn Carter from the firm’s Houston office.
The litigation has already become a legal who’s who, with Texas lawyers from Baker Botts, Fish & Richardson and Orrick, Harrington & Sutcliffe involved.
Claudia Wilson Frost, Jeffrey Johnson, Travis Jensen and Ryan Wooten from Orrick’s Houston and Menlo Park, California offices represent France-based FIA, the governing body that regulates the U.S. Grand Prix in Austin as well as other professional circuits. FIA requires all F1 racing teams to use the Halo device.
Fish & Richardson represents the plaintiff, and the team includes Washington, D.C. partner Ahmed Davis and Brian Strand, Jakob Ben-Ezra, W. Thomas Jacks, and Danielle Healey from the firm’s Houston and Austin offices.
Tyler-based attorney Deron Dacus is local counsel for Red Bull Racing and Red Bull Technology.
Healey pointed out that Judge Albright did not issue a ruling on the merits when he dismissed Hamilton and LeClerc. She said the dismissal orders came after a hearing last week, during which Mercedes and Ferrari “agreed they were responsible for racing the F1 cars that were accused of infringement, making it unnecessary to have the drivers also in the case.
“Lewis Hamilton and Charles LeClerc are both subject to being rejoined later if necessary, and both are bound by the decisions their teams receive in the case,” she added.
The case is 6:20-cv-00234-ADA in the U.S. District Court for the Western District of Texas.