Indect USA Corp. v. Park Assist, LLC

• Decision Date: 28 July 2021
• Docket Number: 3:18-cv-02409-BEN-DEB
• Court: U.S. District Court — Southern District of California
• Parties: INDECT USA CORP., a Texas corporation, Plaintiff, v. PARK ASSIST, LLC, a Delaware limited liability company, Defendant. PARK ASSIST, LLC, a Delaware limited liability company, Counterclaimant, v. INDECT USA CORP., a Texas corporation, Counterdefendant.

INDECT USA CORP., a Texas corporation, Plaintiff, v. PARK ASSIST, LLC, a Delaware limited liability company, Defendant.

PARK ASSIST, LLC, a Delaware limited liability company, Counterclaimant, v. INDECT USA CORP., a Texas corporation, Counterdefendant.

No. 3:18-cv-02409-BEN-DEB

United States District Court, S.D. California

July 28, 2021

ORDER ON: (1) MOTIONS FOR SUMMARY JUDGMENT; (2) MOTION TO DISMISS; AND (3) REQUESTS FOR JUDICIAL NOTICE [ECF NOS. 145, 148, 149, AND 157]

HON ROGER T. BENITEZ United States District Judge

This case arises out of a lawsuit filed by Plaintiff Indect USA Corp. (“Indect†) seeking a declaratory judgment that neither Indect nor the users of its products infringed on claims of U.S. Patent Number 9, 594, 956 (“the ‘956 Patent†) owned by Defendant Park Assist, LLC (“Park Assist†). Second Amended Complaint (“SAC†), ECF No. 58, ¶ 6. The matter comes before the Court on (1) Indect and Park Assist's Cross-Motions for Partial Summary Judgment, (2) Park Assist's Motion to Dismiss, and (3) Indect's Requests for Judicial Notice. ECF Nos. 145, 148, 149, and 157. The motions were submitted on the papers without oral argument pursuant to Civil Local Rule 7.1(d)(1) and Rule 78(b) of the Federal Rules of Civil Procedure. ECF No. 190.

Based on the parties' briefs, evidence submitted, and applicable law, the Court: (1) DENIES both parties' Motions for Partial Summary Judgment as to Indect's First Claim for Relief; (2) DENIES both parties' Motions for Partial Summary Judgment on Indect's Second Claim for Relief; (3) GRANTS Indect's Motion for Summary Judgment as to its Third Claim for Relief (and also DENIES Park Assist's Motion to Dismiss that claim); (4) DENIES Park Assist's Motion for Summary Judgment on Indect's Fourth Claim for Relief; (5) GRANTS Indect's Motion for Summary Judgment on Park Assist's First Counterclaim; (6) DENIES Indect's Motion for Summary Judgment on Park Assist's Second Counterclaim; (7) GRANTS Indect's Motion for Summary Judgment on Park Assist's Third Counterclaim; and (8) GRANTS Indect's Requests for Judicial Notice.

I. BACKGROUND

Indect and Park Assist are direct competitors that develop and sell technologies for camera-based parking guidance systems. Park Assist's Mot., ECF No. 142, 10; Indect's Mot., ECF No. 147, 12. These systems manage the occupancy of parking spaces within a parking lot or parking garage by detecting a parking space's occupancy status with cameras and sensors. Indect Mot., ECF No. 147, 12. Park Assist owns the ‘956 Patent, which is the subject of this lawsuit.

Park Assist was also involved in a related lawsuit pending before this Court. See Park Assist, LLC v. San Diego Cty Reg'l Airport Auth., et al., Case No. 18-cv-2409-BEN-DEB (the “Airport Case”). In the Airport Case, Park Assist sued the San Diego County Regional Airport Authority and Ace Parking Management, Inc. for infringing the ‘956 Patent by using Indect's UPSOLUT parking guidance system at the Terminal 2 parking garage of the San Diego International Airport. On March 31, 2021, the Airport Case settled and has since been dismissed by stipulation of the parties. See Airport Case, ECF No. 146. Before settling, however, the defendants in the Airport Case filed a motion for sanctions pursuant to Rule 11 of the Federal Rules of Civil Procedure (“Rule 11”). Airport Case, ECF No. 42. The Court denied that motion for sanctions. Airport Case, ECF No. 69. Nonetheless, that litigation forms part of the basis for one of Indect's claims in this case. See SAC, ECF No. 58, ¶¶ 225-31.

Shortly after Park Assist filed the Airport Case on September 5, 2018, Indect filed this lawsuit against Park Assist, alleging four claims for relief: (1) declaratory relief that UPSOLUT does not infringe the ‘956 Patent; (2) declaratory relief the ‘956 Patent is invalid; (3) declaratory relief that Indect's customers do not infringe the ‘956 Patent; and (4) damages and an injunction for Park Assist's alleged unfair competition in violation of 15 U.S.C. § 1125(a) (the “Lanham Act”). See SAC, ECF No. 58, ¶¶ 210-32. In response, Park Assist filed an answer and countercomplaint, alleging three counterclaims for (1) induced infringement of the ‘956 Patent; (2) a declaratory judgment of direct infringement by Indect of the ‘956 Patent; and (3) a declaratory judgment of induced infringement by Indect of the ‘956 Patent. Answer, ECF No. 68, ¶¶ 40-58.

The ‘956 Patent is relatively straightforward and contains only two claims. Claim 1 is at issue here. In its entirely, claim 1 states:

What is claimed is:

1. A method of managing a plurality of parking spaces, comprising:

(a) monitoring a parking space with an imaging device of an imaging unit;

(b) detecting, by said imaging unit, occupancy of said parking space;

(c) assigning said parking space, in which said occupancy was detected, an occupied status, wherein said occupied status is indicated by illuminating a first color of a multicolor indicator collocated with said imaging device, said first color predefined to determine said occupied status;

(d) obtaining, as a result of said parking space having said occupied status, a single high resolution image of a vehicle occupying said parking space, said high resolution image obtained by said imaging device;

(e) storing at least part of said high resolution image on a storage device;

(f) displaying a thumbnail image of said parking space on a graphic user interface (GUI), said thumbnail image digitally processed from an image electronically communicated to said GUI from said imaging unit;

(g) deciding whether said occupied status is incorrect, based on a visual review of said thumbnail image on said GUI;

(h) correcting said occupied status, by inputting computer-readable instructions to a computer terminal of said GUI, if said parking space shown in said thumbnail image is vacant and said computer terminal electronically communicating a command to toggle said multicolor indicator to illuminate a second color, said second color predefined to indicate a vacant status;

(i) extracting from said high resolution image, by digital image processing, a permit identifier for said vehicle and comparing said permit identifier with at least one parking permit identification stored on said storage to determine a permit status of said parked vehicle; and

(j) initiating an infringement process for said vehicle having said permit identifier that fails to coincide with at least one of said at least one parking permit identification.

See ‘956 Patent, Col. 22:30-23:4. At the parties' request, the Court construed several terms of the ‘956 Patent. See Claims Construction Order, ECF No. 80.

On June 21, 2021, both parties filed their respective Motions for Partial Summary Judgment. ECF Nos. 145, 149. The Final Pretrial Conference is scheduled for October 4, 2021. ECF No. 152.

II. LEGAL STANDARDS

A. Motion for Summary Judgment

Summary judgment is appropriate where “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). A fact is material if it could affect the outcome of the case under governing law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute of material fact is genuine if the evidence, viewed in light most favorable to the non-moving party, “is such that a reasonable jury could return a verdict for the non-moving party.” Id. The party seeking to defeat summary judgment must come forward with affirmative evidence from which a reasonable jury could render a verdict in that party's favor. Id. at 252. However, the nonmoving party's mere allegation that factual disputes exist between the parties will not defeat an otherwise properly supported motion for summary judgment. See Fed. R. Civ. P. 56(c); see also Phytelligence, Inc. v. Washington State Univ., 973 F.3d 1354, 1364 (Fed. Cir. 2020) (“Mere allegation and speculation do not create a factual dispute for purposes of summary judgment.”) (quoting Nelson v. Pima Cmty. College, 83 F.3d 1075, 1081-82 (9th Cir. 1996)). Additionally, while the Court will draw all reasonable inferences in the non-moving party's favor and believe the evidence of the non-moving party, the Court will not draw unreasonable inferences and cannot believe evidence that does not exist. Cf. Anderson, 477 U.S. at 255.

When ruling on such a motion for summary judgment, courts apply federal circuit law to issues unique to patent law, Nuance Commc'ns, Inc. v. Abbyy Software House, 626 F.3d 1222, 1230 (Fed. Cir. 2010), and regional circuit law to substantive issues that are not unique to patent law or procedural issues. See, e.g., Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc., 908 F.2d 951, 952-53 (Fed. Cir. 1990) (“When this court considers questions on appeal involving substantive matters not exclusively assigned to the Federal Circuit, our general practice is to apply to related procedural issues the appropriate regional circuit law.”).

On motions for summary judgment involving patent infringement the party claiming patent infringement must prove infringement “by a preponderance of the evidence, which simply requires proving that infringement was more likely than not to have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341, n.15 (Fed. Cir. 2005) (internal citations omitted). Because the ultimate issue of infringement is a question of fact, Columbia Sportswear N. Am., Inc. v. Seirus Innovative Accessories, Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019), infringement issues that require courts to draw inferences from the known facts are not well-suited to summary judgment because all such inferences must be drawn...