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FIA News: Lawsuit over F1 Halo and IndyCar Aeroscreen patent infringement settled

Posted by AR1 staff

The creator of a safety feature that’s become standard for open cockpit Formula cars (F1, IndyCar, F2, F3, etc.)  has been settled with the FIA and its Norwegian inventor Jens Nygaard over the design of the life-saving “Halo” and IndyCar Aeroscreen cockpit bars.

The terms of the settlement were not revealed over the lawsuit filed Sept. 19, 2020 in the Federal District Court in Waco, Texas.  However, it was likely to be substantial given how many forms of motorsports use Nygaard’s invention.

“One of my first actions as president was to be transparent about the legal challenges we faced,” said FIA president Mohammed Ben Sulayem.

“So, I am very happy to tell you that the Halo litigation has been resolved in a very positive way, safeguarding the future of the FIA, and I thank the legal team for all their hard work.”

The Lawsuit Alleged the following:

I. INTRODUCTION

  1.  Plaintiff Jens H. S. Nygaard (“Nygaard”) files this First Amended Complaint for infringement of his United States Patent 7,494,178 (“the ’178 patent”) in violation of Sections 271(a), (b), (c) and (f) of Title 35 of the United States Code, by Fédération Internationale de l’Automobile (“FIA”), Formula One Management Ltd. (“F1”), Formula One World Championship Ltd. (“FOWC”), Mercedes-Benz Grand Prix Ltd. (“Mercedes”), Daimler AG (“Daimler”), Lewis Hamilton (“Hamilton”), Red Bull Technology Ltd. (“RBT”), Red Bull Racing Ltd. (“RBR”), Ferrari S.p.A. ( “Ferrari”), Charles Leclerc (“Leclerc”), and Dallara Automobili S.p.A. (“Dallara”) (collectively “Defendants”), by making, using, selling, offering for sale or importing the “Halo” and “Aeroscreen” devices in the United States for implementation in cars in the United States, causing to be supplied substantial components of the vehicles implementing the Halo and Aeroscreen from the U.S. for assembly abroad in a manner that would infringe the patent, and/or indirectly causing others to do so. The patented inventions are in structures to protect the heads and necks of drivers in the U.S. Grand Prix, the U.S. ePrix,1 and Formula 3 events in the United States, and their U.S. based teams, and the NTT IndyCar 500 Series, other Indy Circuits, and also their  U.S. based teams.  Plaintiff alleges as follows:
  1. The Halo is a device that is integrated into Formula 1, Formula E, and other “Formula” cars. It is designed to protect the drivers’ heads and necks in collisions as well as from debris. The Halo is credited with saving at least three drivers in Formula events from death or injury, including Leclerc (a serious collision with another car in the 2018 Belgian Grand Prix).
  2. The Aeroscreen is a safety device deployed in cars competing in the NTT IndyCar 500 Circuit and other IndyCar Circuits. Although only first deployed in the 2020 NTT IndyCar 500 this season, it appears to have saved three drivers from death or serious injury in a major accident in a race in Iowa on July 18, 2020 and another in an accident on August 27,
  3. In or around 2011 there was concern in Formula racing and IndyCar racing about driver safety in light of driver deaths and injuries in 2009 and 2011. The FIA and/or the FIA Institute for Motor Sport Safety and Sustainability (“FIA Institute”),2 undertook a project to develop solutions to address the risks to drivers’ necks and heads in open cockpit (e.g. Formula) cars. IndyCar also wanted to develop safety measures to address these same risks in its open cockpit racing. Upon information and belief, FIA and FIA Institute garnered cooperation from F1 Grand Prix teams and others, including IndyCar for a their safety project (“the Project”). Both the Halo and the Aeroscreen have their genesis in the Project.
  4. The Halo (including the Halo structure in the Aeroscreen) was developed from discussion and study of Nygaard’s patented inventions at a meeting on March 27, 2013 at FIA Headquarters in Paris, France among him, the FIA Institute for Motor Sport Safety and Sustainability (“FIA Institute”),3 and Dallara. Mr. Nygaard sent a letter to FIA offering to license his patents for safety devices. In response to his letter, Mr. Nygaard was asked to a meeting with FIA Institute’s administration in London on or about April 5, 2013. At that meeting, the FIA Institute demanded that Mr. Nygaard give over his patent rights with no guarantee of payment of any kind.
  5. On May 31, 2013, the FIA Institute informed Mr. Nygaard by letter that it would not negotiate with him unless, among other things, he committed to give it control of his ’178 patent for motor sports (e.g., Grand Prix, Formula E, 2, 3, 4, and other circuits) and agreed he would receive no compensation unless and until it had successfully commercialized the patent (but with no obligation it do so).
  6. The Halo was developed for, or alternatively with, the FIA Institute, Dallara, and later at least Mercedes and Ferrari, for use in Formula racing, including the Grand Prix Racing Circuit during the RBT became involved in the Project, and developed a competing safety device called the “Aeroscreen”.
  7. Despite Mr. Nygaard’s personal involvement in developing the Halo, and their knowledge of his patent rights, neither FIA, F1, FOWC, Mercedes, Daimler, Ferrari, RBT, RBR, Dallara nor any teams have taken a license or paid him a
  8. The F1 Strategy Group adopts rules for F1 Grand Prix Racing. The rules it adopts then must be ratified by the F1 Commission, and then are implemented in the regulations by the FIA. The F1 Strategy Group has five permanent members, F1, FIA, Mercedes, Ferrari, RBR, Williams, McLaren, and potentially a sixth member from the other teams. In 2016 the FIA with the support of the drivers proposed adoption of the Halo for F1 Grand Prix The F1 Strategy Group, however, did not like the aesthetics of the Halo and was concerned about how fans would react to it. The F1 Strategy Group voted to delay consideration of adoption of the Halo for a year to explore other alternatives.
  9. Liberty Media purchased F1 as of January 2017. The “new” F1 has now been able to eliminate the F1 Strategy Group for its new contract cycle that begins at the end of 2020. In 2017, F1 started to bring changes to the F1 Strategy Group by getting all the other teams access to meetings as
  10. The Halo rule was adopted at an F1 Strategy Group meeting in July 2017 with the “new” F1 participating and the other teams present. The Halo rule was then ratified by the F1 Commission. After the Halo rule was proposed and adopted by the F1 Strategy Group, and  later ratified by the F1 Commission, that it was then implemented by FIA for F1 Grand Prix and other Formula Racing.4
  11. FIA describes itself as “the governing body for world motor sport and the federation of the world’s leading motoring organisations.” It is a non-profit making association based in France. It is a membership organization under French law. FIA is the “governing body” for Formula 1, F3 Americas, Formula 4, and World Endurance Racing. FIA is the sanctioning authority for the S. Grand Prix held at the Circuit of the Americas in Dell Valle, Travis County, Texas (“COTA”), the U.S. ePrix on New York City roads, the F3 Americas circuit, among other racing in this country.
  12. Upon information and belief, FIA was paid substantial fees by COTA to host the 2018 and 2019 Grand Prix events (approximately $30 million in 2019 alone, all or mostly all of the annual fees are reimbursed by the State of Texas).
  13. Upon information and belief, FIA, F1 and others have been working to bring another F1 race to the U.S., for 2021 in Miami,
  14. Liberty Media purchased Formula One effective January 2017 for about $4.6 billion. F1 and FOWC are the Liberty Media entities that manage and commercialize Formula One Grand Prix racing, including the 2018 and 2019 U.S. Grand Prix events at COTA. Upon information and belief, F1 and FOWC are among the successors in interest to the original Formula One company and Delta Topco, Ltd., founded by Bernie Ecclestone to exploit media and other commercial aspects of Formula One Grand Prix racing.
  1. F1, FIA and then F1 teams (including Mercedes, Ferrari and RBR) have contracts among them that provide for governance of F1 Grand Prix racing and also allocate revenues among them.
  2. Delta was the original entity that owned the license from FIA to exploit rights regarding the Formula One Grand Prix series. Mr. Nygaard communicated with Formula One and Mr. Ecclestone (and through them, Delta) regarding his intellectual property by 2006. Upon information and belief, Delta transferred its license and rights to commercialize Formula One Grand Prix racing to FOWC in or after January 10, 2017. Delta remains an indirect subsidiary of Liberty.
  3. Mercedes is the racing arm of Daimler AG (“Daimler”). Mercedes was a member of the F1 Strategy Group that adopted the Halo in 2017 as a safety measure for Grand Prix Mercedes actively worked on the Halo as part of the Project, and produced an early prototype for it. Mercedes competed in the 2018 and 2019 U.S. Grand Prix with cars implementing the Halo. Mercedes estimated in its most recent financial statement that it creates about $5 billion in advertising and brand value for Daimler AG.
  4. Paddy Lowe was executive director (technical) for Mercedes from 2013 to 2017, during the time when Halo was in development and Mercedes produced a prototype Halo. In or around late 2012, shortly before Mr. Lowe started at Mercedes, Mr. Lowe had an in person meeting with Mr. Nygaard and discussed his patent and inventions with him. Daimler is the parent company of Mercedes. It is a German company that trades securities on the New York Stock Exchange. It is one of the largest corporations in the world, and is the controlling party for the Mercedes-Benz brand and companies.
  5. Upon information and belief, Daimler controls Mercedes. Daimler has actively directed Mercedes business, taken started and took direct control of its Formula E operations, and heavily subsidized Mercedes through purchase of services and goods, and interest-free loans and other mechanisms.
  1. Daimler corresponded with Nygaard regarding his patent in 2011. Daimler had Mr. Nygaard meet with engineers in Germany in 2015 regarding his patented safety inventions.
  2. Lewis Hamilton (“Hamilton”) is the most successful driver currently active in Formula One and dominates Grand Prix racing today. He is currently under contract to Mercedes through the end of the 2020 season. He directly infringed the patent-in-suit by driving one of the infringing Mercedes vehicles in each of the 2018 and 2019 U.S. Grand Prix in Austin, Texas in vehicles that implemented the Halo. Hamilton’s victory in the U.S. Grand Prix in Austin, Texas in 2019 clinched his sixth driver’s crown win for the 2019 season, much to his benefit, and also that of Mercedes and Daimler.5 Mr. Hamilton is paid tens of millions of dollars by Mercedes each season.
  3. Ferrari is a manufacturer of automobiles, races in F1 Grand Prix events through its Scuderia Ferrari racing division, arranges for customer racing, and also operates the Ferrari Driver Academy to train Formula Circuit drivers. Ferrari has an extensive business licensing its trademarks. Ferrari’s image and brand depend on the past, present and future historical success of Scuderia
  4. Ferrari is a member of the F1 Strategy Group, and upon information and belief has veto power over its decisions. Ferrari was part of the F1 Strategy Group that adopted the Halo in 2017. Ferrari was the first team to publically test the Halo when in the spring of 2016 it had an F1 car with a Halo drive laps in events around the Spanish Grand Prix. Its Scuderia Ferrari team competed in the 2018 and 2019 U.S. Grand Prix with cars implementing Halo. On June 7, 2019, Ferrari filed an information disclosure statement informing the U.S. Patent & Trademark Office (U.S.P.T.O.) the Nygaard patent pre-dated and was relevant to its own patent application for improvements to vehicle safety. (Obviously Ferrari had notice of Mr. Nygaard’s patent at some point prior to its U.S.P.T.O. filing). Among other things, Ferrari’s application appears to attempt to adapt and combine Nygaard’s inventions for improved vehicle safety with its
  5. Charles Leclerc (“Leclerc”) drove a Ferrari vehicle with a Halo in the 2019 U.S. Prix, and he is currently under contract to Ferrari. Mr. Leclerc drove a vehicle with a Halo for Alfa Romeo Sauber F1, an Austrian team, in the 2018 S. Grand Prix. Mr. Leclerc is an emerging star in Grand Prix racing, his 2019 contract with Ferrari was a multi-million dollar deal and he has endorsement or similar deals with Giorgio Armani and Twitch. On information and belief, Mr. Leclerc was the first Formula One driver to have been saved from death or serious injury by the Halo (in the 2018 Belgian Grand Prix). Mr. Leclerc was also saved by the Halo from injuries in the 2020 Italian Grand Prix where he drove into a safety barrier at or near racing speed, resulting in a “big crash”, with material falling over Mr. Leclerc’s Halo.
  6. RBT is a technology company for the automobile industry and also owns and operates RBR. RBT is an indirect subsidiary of Red Bull GmbH. RBT developed the Aeroscreen as an alternative to Halo during the Project. RBR was part of the F1 Strategy Group that voted in April 2016 to delay the Halo and look for alternatives. Shortly after that meeting, RBR demonstrated the Aeroscreen on an F1 car in events around the 2016 Russian Grand
  7. In 2018 and 2019 RBT worked with IndyCar and Dallara to reconfigure the Aeroscreen for IndyCar. Dallara suggested adding the Halo to the Aeroscreen for strength. Today RBT and Dallara supply Aeroscreen (which includes Halo) to the U.S. for implementation in cars competing in IndyCar Circuits, including racing at COTA and Texas Motor
  8. RBR is owned by RBT. In 2017, it was a member of the F1 Strategy Group that adopted Halo. RBR competed in the 2018 and
  9. RBR competes in the Formula One Grand Prix series. In 2018 and 2019, RBR had a “sister team” also owned indirectly by Red Bull GmbH, or sometimes called its “junior team,” Scuderia Alpha Tauri, formerly called Scuderia Torro Rosso (owned by a different Red Bull entity), which also competed in the same F1 Grand Prix events, including the 2018 and 2019 S. Grand Prix in cars implementing Halo.
  10. RBT and RBR joined forces with Aston Martin for F1 Grand Prix racing for the 2018 season. Aston Martin is not merely a sponsor of RBR but RBT and RBR engineers have actively collaborated on Aston Martin vehicle engineering. Mr. Nygaard had made presentations about this patent to Aston Martin, and upon information and belief, RBT and RBR knew of Mr. Nygaard’s patent from Aston Martin or Dallara or FIA or F1 Strategy Group prior to the 2018 S. Grand Prix.6
  11. Dallara is an Italian manufacturer and assembler of automobile chassis, upgrade and safety kits, as well as parts, for motor sports, including Formula 1, Formula E, Formula 3, and IndyCar Circuits, among others. Dallara collaborates with RBT on the Aeroscreen. Dallara collaborates with Haas on its F1 Grand Prix vehicles and racing program. Dallara engineering (including Luca Pignacca and Didier Perrin) met with Mr. Nygaard on or about March 27, 2013 at FIA headquarters in Paris as part of the project that resulted in Halo being chosen by FIA for driver safety in July In or around 2018, Dallara suggested to RBT and IndyCar that the Halo be added to the Aeroscreen to enhance its strength. Dallara makes and supplies Aeroscreen components for U.S. IndyCar teams, including for their use in racing at COTA and Texas Motor Speedway. Dallara also collaborated on Haas’ F1 Grand Prix cars outfitted with the Halo in 2018 and 2019 for competition in Grand Prix racing, including the U.S. Grand Prix races at the U.S. Grand Prix at COTA. Haas is the only U.S. based team in F1, and the U.S. Grand Prix at COTA is its “home race”.

II. Factual Background

  1. On March 29, 2004, Mr. Nygaard’s original patent application for his inventions for vehicle safety was filed in Great Among other things, Mr. Nygaard’s inventions protect people from accidents caused by collisions, flying objects, and roll-overs.
  2. The original application, subsequent filings in the U.S.P.T.O, filings in other jurisdictions and the issued ’178 patent itself, included drawings that illustrated many examples of embodiments of his inventions, including cars with what Defendants now refer to as the “Halo.” The Aeroscreen is essentially a “tear-off” “jet cockpit” windscreen combined with a
  3. Shown below from left to right are figure 68 from the ’178 patent, a depiction from FIA regulations of the Halo, and the Halo of the car driven by Charles Leclerc in the 2018 Belgium Grand Prix. The marks on the Halo of Mr. Leclerc’s car were caused by the tire of another F1 car that launched into the air in a multi-car accident during the race. The Halo received worldwide praise for saving Mr. Leclerc’s
  4. Nygaard contacted manufacturers, government regulators, FIA, Delta, Formula One and others in the automobile industry to improve safety with his patent pending inventions. He reached out to the FIA by 2005 to improve safety in motor sports. Over the following years He discussed his inventions, and also consulted with, major car manufacturers, including, among others, Aston Martin, Audi, Bentley, Daimler, Jaguar, Lotus, Magna Styr, Nissan, Rolls Royce and Volvo, as well as consultants, government and others in the automobile industry.  Mr. Nygaard directly contacted Mr. Bernie Ecclestone of Delta and Formula One in 2006 about his patent applications to bring his safety inventions to Formula One Grand Prix events. Mr. Nygaard also met with auto manufacturers and consultants at or around the annual Geneva, Switzerland Auto Shows.
  5. Upon information and belief, Mr. Nygaard believes that through his correspondence and meetings with the FIA, FIA Institute, and Dallara as well as his discussions about his safety research, innovations and patents with manufacturers and consultants in the automobile industry, intertwined engineering staff among some of the Defendants, and the collaboration among members of the F1 Strategy Group, as well research projects among them for the Halo and the Aeroscreen, that his patents were known to F1, FOWC, FIA, Mercedes, Daimler, Ferrari, RBT, RBR, and Dallara before infringement of the ’178 patent in this
  6. Upon information and belief, Delta transferred its rights and license for commercialization of the Grand Prix series, including media rights, to Delta’s license was first commercialized by the original Formula One company run by Bernie Ecclestone. Liberty Media Company acquired the Delta and the Grand Prix/Formula One business in 2016. F1 and FOWC are the Liberty entities that have run Grand Prix/Formula One commercial operations and media since at least 2018 or earlier.7
  7. Despite Mr. Nygaard’s call for improved driver safety in 2005 and 2006, FIA, Formula One and Delta declined to discuss his inventions with him at that time. But in 2009, Henry Surtees died driving in a Formula 2 event when he was struck in the head by flying Had Mr. Nygaard’s inventions been deployed when he brought them to the attention of FIA and others, Mr. Surtees might still be driving. Driver Felipe Massa suffered a serious head injury when he was hit by flying debris in the 2009 F1 Hungarian Grand Prix, and Mr. Nygaard’s inventions very likely would have spared him from injury.
  8. After Surtees’ untimely death and Mr. Massa’s injury, FIA Institute focused on finding a solution for protection of the heads and necks of drivers in FIA administered Formula motor sports, which became the Project. The FIA Institute conducted years of study and testing of multiple different safety devices. Upon information and belief, Mercedes, Ferrari and RBT became involved in this work and/or were monitoring it from early stages. (FIA took control of FIA Institute’s safety research when FIA Institute was dissolved at the end of 2016).
  9. FIA Institute conducted a series of tests on different devices for driver head and neck protection in 2011. The testing showed the devices it had studied were not suitable for Formula racings’ purposes for driver head and neck
  10. In 2011, Dan Wheldon, a popular driver who competed in IndyCar, Daytona Endurance and other racing, was killed. He died in an accident during the championship race of the IndyCar season on October 16, 2011, at the Las Vegas Motor Speedway. Dan Wheldon’s death heightened the urgency of, and further demonstrated the need for, the Dallara named its 2012 model chassis in his honor, which is known as the Dallara DW12.
  11. In or around 2011, IndyCar began investigating improvements for driver IndyCar monitored, and also provided data, for the Project: IndyCar at least informally consulted with RBT and/or RBR during this time.
  12. Having failed in its attempts to find a suitable safety device, FIA and/or FIA Institute met in late 2012 with Mr. Nygaard to consult on the Project.  On March 27, 2013, Mr. Nygaard met with Dallara, and FIA Institute at FIA’s Paris Headquarters to implement his inventions for Formula racing.
  13. In 2014, Jules Bianchi suffered mortal head and neck injuries in an accident at the 2014 Formula 1 Japanese Grand Prix, and later died in 2015. In 2015, driver Justin Wilson died of head and neck injuries in an IndyCar race at the Pocono Motor
  14. Up through 2015, Mr. Nygaard met with automobile companies (including some with Grand Prix teams) regarding his safety research, inventions and patents, including, Aston Martin, Bentley, BMW, Daimler, Jaguar Land Rover, Lotus, Magna-Str, McLaren, Nissan, Rolls- Royce and Volvo. Mr. Nygaard also met with automotive consulting firms and communicated with government agencies. Mr. Nygaard evangelized his safety innovations in England in meetings and work involving Aston Martin, Lotus, McLaren, Nissan, Jaguar Land Rover, Bentley and Rolls Royce, as well as consulting
  15. In late 2015 and early 2016, the Grand Prix Drivers’ Association Ltd. (“GPDA”) petitioned for improved driver safety protection. In 2015, elements of the F1 Grand Prix series fan base and press were urging Formula One and FIA to take measures to prevent any more driver deaths. In 2016, both the GPDA and FIA urged the F1 Strategy Group to adopt the Halo for F1 Grand Prix
  16. Mercedes showed its prototype Halo in 2015. Ferrari implemented a Halo on a Grand Prix car in early 2016, and tested the Halo during the 2016 Spanish Grand Prix
  17. On information and belief, safety devices for Formula racing that covered (e.g., canopy) or partially blocked the view of the driver (e.g., Halo) were controversial with F1 teams and fans who felt these types of modifications violated the spirit of open cockpit racing, which many feel is at the heart of Formula racing. Nonetheless, by 2015, there was substantial pressure from significant parts of the fan base, publications and racing personalities, as well as the drivers themselves, to improve driver safety by modification of cockpit protections.
  18. The F1 Strategy Group makes the rules for Grand Prix racing, which the FIA then implements. In spring of 2016, it appeared that Halo was the only effective measure to protect Formula drivers’ heads and necks. Nonetheless, despite lobbying by the drivers, there was substantial division among the F1 Strategy Group over whether to adopt the Halo because of its aesthetics. Further, the F1 Strategy Group did not want to adopt a canopy or closed cockpit solution because it would have eviscerated Grand Prix racing’s open cockpit format and At a 2016 meeting, the F1 Strategy Group delayed consideration of the Halo in order to explore other alternatives, including development of a device known as the “shield.”
  19. RBT demonstrated its Aeroscreen at the 2016 Russian Grand Prix shortly after an April 2016 meeting of the F1 Strategy Group where Halo was discussed, putting its product in competition with
  20. The “shield,” was made out of “jet fighter glass” and bent around the driver leaving an opening at the top. Ferrari agreed to further develop and test the “shield”. Ferrari ultimately tested the shield on an F1 car at events around the 2017 British Grand Prix at Silverstone. Ferrari driver Sebastian Vettel drove the Ferrari test on July 14, 2017, but aborted it after one lap, reporting that the curvature of the shield made it difficult to see, especially in looking forward. He also reported the shield made him dizzy. Although the shield was scheduled for another test in September 2017 at the Italian Grand Prix, further testing stopped after the unsuccessful run in England.
  21. Liberty Media had taken over F1 in early 2017, opened up F1 Strategy Group meetings for observation by all teams, and had all teams present for the July 2017 meeting where the Halo was to be voted on and adopted by the F1 Strategy Having been unable to develop or find an alternative to Halo by July 2017, the F1 Strategy Group adopted the Halo for Grand Prix racing for 2018. Upon information and belief, when the Halo rule was adopted, the F1 Strategy Group knew about Mr. Nygaard’s patent: Mercedes knew about Mr. Nygaard’s patents through Paddy Lowe and/or the Project and/or Daimler. Further, Formula One (and its successor in interest F1) knew of the patent through prior correspondence with Mr. Nygaard and upon information and belief, the F1 Strategy Group. Ferrari, upon information and belief, learned about the ’178 patent from one or more of its collaborators at FIA Institute, Mercedes and/or Dallara, and/or through its involvement in the F1 Strategy Group, as well as its own patenting activities. Upon information and belief, RBR and RBT knew about Mr. Nygaard’s patent through monitoring the Project for IndyCar, its work with the Project in developing the Aeroscreen, and/or its participation in the F1 Strategy Group, and/or Mr. Nygaard’s promotion of his invention among F1 teams and auto companies in England. (Later, in September 2017, Aston Martin and RBT and RBR began a collaboration that included engineering cross-over, at which time RBT and RBR should have learned about Mr. Nygaard’s patent from Aston Martin).
  22. Following the F1 Strategy Group’s adoption of Halo, FIA promulgated rule changes in late July 2017. At a press conference on July 27, 2017, the FIA made a detailed presentation explaining only the Halo had passed all benchmarks set for driver head and safety protection in the
  23. The Halo was implemented in F1 Grand Prix racing in the 2018 season at tremendous expense to the teams (some estimates are around $1,000,000 or more). Halo was first used at Grand Prix events in the U.S. at the U.S. Grand Prix in late 2018 in Austin, Texas. Halo was also used in the 2019 Formula ePrix in New York City and 2019 U.S. Grand Prix at The Halo was used at the F3 Americas event at COTA in 2018. Upon information and belief, Halo was implemented in Haas Grand Prix vehicles built and tested in North Carolina in 2018, 2019 and 2020.
  24. The Halo infringes claim 1 and 2 of Mr. Nygaard’s patent, and when combined with a Grand Prix car infringes claim 4 Mr. Nygaard’s ’178 patent. The Halo is a custom-made component that has no substantial non-infringing use other than in the inventions in claim 4 of the ’178 patent and is a substantial portion of the
  25. Dallara made the chassis for IndyCars, as well as kits for those chassis to improve aerodynamics and safety, among other things. Dallara collaborated with the Haas Grand Prix racing team to implement the Halo on its F1
  26. Dallara had a collaboration with Spark Racing Technology, the official vendor for Formula E cars, and has designed and manufactured chasses used by all cars in Formula E, and other equipment, for Formula E
  27. Dallara collaborated with RBT to import custom Aeroscreen components into the U.S. for IndyCar racing and to make and use it in the United States. On information and belief, Dallara has made and imported Aeroscreen parts or kits as custom components with no substantial non-infringing use except in the inventions in claims 1 and 2 (“strengthening member”), as well as a road vehicle with strengthening members infringe claim 4. Dallara imported these parts knowing that they would be used and vetted by teams at the NTT IndyCar 500 official practices in February 2020 at COTA and Texas Motor Speedway. Upon information and belief, Dallara collaborated with RBT in preparing IndyCars for these Texas practices, which RBT attended and reported on to Dallara. Dallara also knew in collaborating on the IndyCar Aeroscreen that they would be used in IndyCar racing at COTA and Texas Motor Speedway.     Upon information and belief, based on driver comments and other information learned from these events, Dallara made modifications to the Aeroscreen components.
  1. Spark Racing Technology was chosen to build all cars for Formula E for all Spark contracted with Dallara to do the work on the chasses and as well as other tasks for the cars. For the 2018-2019 Formula E season, Spark sold the Spark Gen2 to Formula E teams. The Spark Gen2 has a Halo incorporated into it. For the 2020-2021 season, Spark is selling the Spark Gen2EVO, which likewise includes a Halo. Dallara designed and built the vehicle chasses and Halo for these vehicles.
  2. In or about late 2018 and 2019, there was further communication between Nygaard and FIA about the ’178 patent, and Mr. Nygaard’s claim for royalties for the Halo. Ultimately, Jean Baptiste Pinton responded for the FIA in March 2019 with an email, and copied multiple people on his response, including those with F1 and/or FOWC. Further, upon information and belief, Mr. Nygaard’s claim for royalties would have been made known to the F1 Strategy Group, if not all F1 teams.
  3. Halo was implemented in the F1 Grand Prix Circuit in 2018, and all Formula circuits by 2019. All vehicles competing in the 2018 and 2019 U.S. Grand Prix at COTA and in the 2019 ePrix on New York City roads implemented the Halo. F3 Americas cars implemented the Halo in 2018, including at the F3 Americas World Championship at COTA in fall
  4. Vehicles and their components were supplied from the U.S. to other countries following the U.S. Grand Prix events for assembly into the invention abroad. Upon information and belief, F1 teams disassemble their vehicles down to their component parts for shipment, and transport their vehicle chasses with the Halo as a separately packaged component from others, including power units, windscreens, steering wheels, racing tires, among others.  F1 and FOWC facilitate the movement of teams and their equipment between races, and induced and caused to be supplied the components that make up substantially all of the invention, as well as components that have no substantial non-infringing use (that is, the vehicle chasses with the Halo), which if assembled in the U.S. would infringe the ’178
  5. About nine teams also supplied their vehicles and components to other countries following the 2019 S. ePrix events, including Daimler’s HWA Racelab team. Upon information and belief these teams would have shipped their vehicle chasses implementing the Halo as a separately from at least some other parts of their cars.
  6. Upon information and belief, Haas Racing LLC drove vehicles implementing the inventions (Halo) on roads in or near its facility in the S., and also caused to be supplied abroad components of the invention, including components with no substantial non-infringing use (that is, the vehicle chasses with Halo), which would infringe if assembled here.8
  7. There are two U.S. based Formula E teams, and both were required to use Spark Gen2 cars that incorporate Halo for the 2019 U.S. ePrix and other ePrix races that season, BMW Andretti Motorsport and Geox Dragon. Dallara built the chasses implementing Halo for these cars. Upon information and belief, these teams used their cars on S. roads in preparation for and during the 2018-2019 and 2019-2020 Formula E seasons (with chassis built by Dallara).
  8. Formula E teams supplied or caused to be supplied components that make up all or substantially all of the invention, including their vehicle chasses with Halo, and other custom components with no substantial non-infringing use but for use in a Spark Gen2 car, from the U.S. abroad for ePrix racing after the July 2019 U.S. ePrix, which would infringe the ’178 patent if assembled in the S.
  9. FIA regulations implemented the Halo in Formula 3 events. Accordingly, the patent was likewise directly infringed by teams and drivers on teams competing in F3 Americas Circuit events, including the F3 Americas Championship in 2018 at U.S.
  10. Since Halo’s adoption in July 2017, FIA has implemented production standards, specifications, and testing of all Halos used in F1 and Formula E events by designating approved manufacturers for the Halo, and requiring all Halos be shipped to the provider it designated for testing of the Halos prior to shipment to the teams. Each Halo supplied to F1 had to come from a manufacturer approved and been tested by a contractor designated by
  11. Even though Mr. Nygaard again asked FIA in 2018 to compensate him for his patent rights, FIA flatly refused to do so. FIA did not even make an offer to license. Neither F1, FOWC, Mercedes, Daimler, Ferrari, RBT, RBR, Dallara nor others sought a license, even though they knew the Halo would be deployed as implemented in cars in the U.S. Grand Prix at COTA, the S. ePrix on New York City roads, by F1’s U.S. based F1 team (Haas Racing), and by BMW Andretti and Geox Dragon Formula E teams based in the U.S., among other times and places in this country. They also knew that many F1 Grand Prix vehicles with the Halo would be supplied from the U.S. abroad disassembled into their custom components that make up all or substantial all of the invention including the vehicle chasses with Halo, that have no substantial non-infringing use, other than for assembly into the invention. Defendants also knew that Formula E teams would ship their Spark Gen2 cars with Halo disassembled so that the vehicle chasses implementing Halo is a custom component, together with other components that if assembled in the U.S. would infringe the patent.
  12. IndyCar was working with other collaborators on its own safety project, as well as monitoring the Project. IndyCar had developed a “shield” cockpit protection device with Although this device supposedly overcame the vision and other issues that a version of the shield developed for the F1 Strategy Group, suffered from, it ultimately was not strong enough to provide safety for the driver’s head and neck according to the benchmarks used by IndyCar .
  13. At some point in or around 2018, IndyCar went to RBT and asked it to collaborate on the IndyCar driver safety device. RBT and IndyCar included Dallara in the redesign effort. Dallara suggested the Halo be incorporated in the Aeroscreen for strength. They redesigned IndyCar’s Aeroscreen to incorporate the Halo. Ultimately, RBT collaborated with Dallara as well as PPG and Pankyl to create the Aeroscreen. IndyCar tested the Aeroscreen in 2019, and late that year adopted it for professional IndyCar racing for
  14. It is significant that the original Aeroscreen design was not able to pass the FIA’s 2017 strength tests, nor was IndyCar’s shield, but again only Halo provided the strength needed to protect driver’s heads and necks in collisions and flying objects. IndyCar adopted the Aeroscreen for use starting in the 2020 Circuits, starting with the NTT IndyCar 500 official practices at COTA and Texas Motor Speedway the week of February 10,
  15. Below is a diagram of the Aeroscreen as completed for IndyCar racing circuits shown on a Dallara DW12
  16. Dallara assembled Aeroscreen components at its facilities in Italy and rushed to import them into the U.S. so that they could be assembled and installed in preparation for testing in racing conditions at the NTT IndyCar 500 official practices the week of February 10, 2020 at COTA and Texas Motor Speedway.
  17. The first, and as of the filing of the Original Complaint, only public, ticketed IndyCar event where all teams participated with the Aeroscreen was the 2020 NTT IndyCar Series Official Practice on February 11, 2020 at COTA. The Aeroscreen was used at subsequent closed practices later that week at COTA and Texas Motor Speedway, and since that time in multiple IndyCar practices and events since June 2020. There was a problem with water leaking into the cars during the February 11 test. In addition, there was a problem with heat building up in the cockpit behind the Aeroscreen. After these tests, RBT and Dallara worked on the Aeroscreen to improve it before it was deployed in competition. Among other things, upon information and belief, Dallara made changes to the air ducts after studying the feedback from the Texas testing sessions.
  18. The first NTT Indy500 Circuit Race that deployed the Aeroscreens was at the Texas Motor Speedway in June
  19. At least four IndyCar drivers have been spared death or serious injury due to the Aeroscreen in July and August 2020. Other drivers in F1, F2 and F3 have been saved death or serious injury due to
  20. The patent attached as Exhibit A and the illustrative claim charts attached as Exhibit B show how claims 1 and 2 apply to the Halo and Aeroscreen, and also how vehicles incorporating the Halo or Aeroscreen infringe claim 4 (as well as claims 1 and 2).

a. Defendants have all taken the position that a race car is not a road In doing so, they chiefly rely on language in the specification that they say distinguishes “normal road vehicles” from “race cars.” But the language in claims 1 and 4 require a “road vehicle” not a “normal road vehicle.” “Normal” means common, average, or “run of the mill” or the like, even though a race car is not a common, average or “run of the mill” road vehicle, it is nonetheless a “road vehicle” because it is a vehicle that drives on a road (whether a city street, road track, over track or other road). The patent includes figures 63-74 showing the inventions in race cars of the type used in Formula and IndyCar racing.

b. Claim 2 only requires a vehicle, and a race car is a vehicle

c. Defendants have also taken the position that the use of the words “front windscreen” in claims 1 and 4 require a physical windscreen. Defendants are wrong because the invention does not require it to be integrated with a windscreen. Further, the windscreen is only a reference point for binocular vision aspect of the claims, and as such need not be a physical structure. The specification in its detailed discussion of figures 63- 74, which depict race cars, never mentions the windscreen, which shows “windscreen” is not a structural limitation. Col. 20, 14-57. Nonetheless, even if Defendants are correct in their construction of windscreen then Mercedes used its vehicles with Halo and “jagged windscreens” in the 2018 and 2019 S. Grand Prix. Upon information and belief, Plaintiff alleges that Haas Racing Team and also Racing Point Racing Team ran vehicles in the U.S. in preparation for or at either or both of the 2018 and 2019 U.S. Grand Prix that likewise used “jagged windscreens”. In addition, all Aeroscreens have windscreens. Finally, the placement of the Halo on the vehicles used in Formula racing are achieving the same result in the same way using the same structure as is in claims 1, 2, and 4, and upon information and belief must be using some other reference point in place of the windscreen, thereby meeting this limitation by doctrine of equivalents.

d. Moreover, claim1 is to the strengthening member itself, not to the road vehicle, so neither a “road vehicle” nor a “front windscreen” are limitations in claim

e. Claim 2 only requires a vehicle and has no limitation as to the “front windscreen”.