DCT
3:18-cv-02409
Indect USA Corp v. Park Assist LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: INDECT USA Corp. (Texas)
- Defendant: Park Assist, LLC (Delaware)
- Plaintiff’s Counsel: Foley & Lner LLP
- Case Identification: 3:18-cv-02409, S.D. Cal., 08/17/2020 (Second Amended Complaint)
- Venue Allegations: Venue is asserted based on Defendant actively transacting business in the district and because Defendant previously submitted to the court's jurisdiction by filing a related case in the same district.
- Core Dispute: Plaintiff INDECT USA Corp. seeks a declaratory judgment that its camera-based parking guidance systems do not infringe Defendant Park Assist's patent, that the patent is invalid, and that Park Assist has engaged in unfair competition by asserting baseless infringement claims.
- Technical Context: The lawsuit concerns automated parking guidance systems, which use cameras and sensors to monitor parking space occupancy, guide drivers, and manage parking facilities.
- Key Procedural History: This declaratory judgment action follows a prior lawsuit filed by Park Assist against customers of INDECT (the "Sham Case") in the same court, alleging infringement of the same patent. INDECT alleges that Park Assist initiated the prior suit and made other infringement accusations in bad faith, knowing that INDECT's products did not infringe.
Case Timeline
| Date | Event |
|---|---|
| 2010-05-10 | '956 Patent Priority Date |
| 2017-03-14 | U.S. Patent 9,594,956 issues |
| 2017-05-19 | INDECT releases an industry statement asserting its non-infringement of the '956 Patent |
| 2018-09-05 | Park Assist files infringement lawsuit against INDECT's customers (the "Sham Case") |
| 2020-08-17 | INDECT files Second Amended Complaint for Declaratory Judgment |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,594,956 - "Method and System for Managing a Parking Lot Based on Intelligent Imaging"
- Patent Identification: U.S. Patent No. 9594956, "Method and System for Managing a Parking Lot Based on Intelligent Imaging," issued March 14, 2017.
The Invention Explained
- Problem Addressed: The patent describes prior art parking guidance systems as limited in function. They could guide drivers to empty spaces but failed to help drivers find their parked cars later, did not enable sophisticated pricing or energy management, and lacked features for vehicle identification, security monitoring, or human-in-the-loop error correction (’956 Patent, col. 1:11-45).
- The Patented Solution: The invention proposes a comprehensive, image-based management system. Ceiling-mounted cameras monitor parking spaces, and the system automatically classifies spaces as "vacant" or "occupied" (’956 Patent, Abstract). The system then displays these images and classifications on a graphical user interface (GUI) so that a human operator can manually correct any errors (’956 Patent, col. 16:36-41). The same imaging data is used for other features, like helping a customer locate their vehicle by searching for a license plate (’956 Patent, Fig. 11).
- Technical Importance: The technology aimed to integrate multiple parking management functions—occupancy detection, vehicle location, permit enforcement, and manual oversight—into a single, cohesive system using intelligent image processing (’956 Patent, col. 2:4-27).
Key Claims at a Glance
- The complaint asserts non-infringement and invalidity of Claim 1, the sole independent claim of the patent (Compl. ¶ 44).
- The essential elements of independent Claim 1 are:
- (a) monitoring a parking space with an imaging device;
- (b) detecting occupancy of the space;
- (c) assigning an "occupied status" and indicating it with a multicolor indicator;
- (d) obtaining a single high-resolution image of the vehicle as a result of the occupied status;
- (e) storing at least part of the image;
- (f) displaying a thumbnail image on a GUI;
- (g) deciding, based on a visual review of the thumbnail, whether the status is incorrect;
- (h) correcting the status via the GUI if the space is shown to be vacant;
- (i) extracting a "permit identifier" from the image and comparing it to a stored identifier; and
- (j) initiating an "infringement process" if the permit identifier does not match.
- The complaint seeks a declaration of non-infringement for all claims, necessarily including dependent Claim 2 (Compl. ¶ 213).
III. The Accused Instrumentality
Product Identification
- The complaint identifies INDECT's "UPSOLUT" system, which is a camera-based parking guidance system (Compl. ¶ 23). The specific implementation at the San Diego International Airport is referred to as the "Airport Parking System" (Compl. ¶ 15).
Functionality and Market Context
- The UPSOLUT system uses ceiling-mounted optical sensors to monitor multiple parking spaces, make an occupancy determination, and upload the information to a server (Compl. ¶¶ 24, 26, 28).
- A central allegation in the complaint is that INDECT's systems are "fully automated and thus do not rely on human intervention to function properly" (Compl. ¶¶ 49, 51). This contrasts with the patent's described method, which involves manual review and correction.
- The complaint positions INDECT and Park Assist as "direct competitors" in the U.S. market for camera-based parking guidance systems (Compl. ¶ 31).
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement, arguing that its UPSOLUT system lacks multiple features required by the patent's claims.
No probative visual evidence provided in complaint.
'956 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (per INDECT) | Complaint Citation | Patent Citation |
|---|---|---|---|
| (f) displaying a thumbnail image of said parking space on a graphic user interface (GUI)... | The UPSOLUT system allegedly does not automatically display a thumbnail image triggered by a change in occupancy status from "vacant" to "occupied." | ¶¶ 115, 116 | col. 28:13-17 |
| (g) deciding whether said occupied status is incorrect, based on a visual review of said thumbnail image on said GUI; | The system is alleged to be fully automated and does not involve or require human intervention to review a thumbnail image to decide if an "occupied" status is incorrect. | ¶¶ 49, 143, 144 | col. 28:18-21 |
| (h) correcting said occupied status, by inputting computer-readable instructions to a computer terminal of said GUI... | Because the system allegedly does not perform the human "deciding" step of (g), it does not perform a corresponding human "correcting" step. The system allegedly does not allow the status of a parking space to be "corrected." | ¶¶ 51, 161-163 | col. 28:22-29 |
| (i) extracting from said high resolution image... a permit identifier for said vehicle and comparing said permit identifier with at least one parking permit identification stored... | The Airport Parking System allegedly does not extract a "permit identifier," store permit identifiers, or compare an extracted identifier to a stored one. | ¶¶ 69-71, 186-188 | col. 28:30-36 |
| (j) initiating an infringement process for said vehicle having said permit identifier that fails to coincide with at least one... parking permit identification. | The Airport Parking System allegedly does not have an "infringement process" to punish violators, as it does not maintain a database of parking permits. | ¶¶ 72, 193 | col. 29:1-4 |
Identified Points of Contention
- Scope Questions: The core dispute raises the question of whether Claim 1 requires a human operator to be "in the loop." Does the claim language "deciding whether... status is incorrect, based on a visual review" (element g) and "correcting said... status, by inputting... instructions" (element h) mandate human action, or could these steps be performed automatically in a way that reads on the claims? INDECT's case for non-infringement appears to heavily rely on its system being "fully automated" in a way that avoids these steps entirely (Compl. ¶ 49).
- Technical Questions: A key technical question is what constitutes a "permit identifier." The complaint argues that a license plate cannot be a "permit identifier" based on the patent's written description and prosecution history (Compl. ¶ 181). The resolution of this issue will determine whether the accused system performs elements (i) and (j).
V. Key Claim Terms for Construction
The Term: "deciding whether said occupied status is incorrect, based on a visual review"
Context and Importance
- This term is critical because INDECT's primary non-infringement argument is that its system is fully automated and does not use human visual review to validate the system's determinations (Compl. ¶¶ 139-144). Practitioners may focus on this term because it appears to describe a mental step or a human action, which could be a significant limitation on claim scope.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent describes the overall system as one of "intelligent imaging," which could suggest that "deciding" might encompass automated algorithmic comparisons, not just human review.
- Evidence for a Narrower Interpretation: The specification explicitly describes a human operator correcting errors: "The human operator must click on any mislabeled data on the screen before submitting the changes to the server" (’956 Patent, col. 17:8-10). The abstract also states that classifications "can be corrected manually." This language may support a construction requiring human involvement.
The Term: "permit identifier"
Context and Importance
- The definition of this term is central to infringement of elements (i) and (j). If "permit identifier" is construed narrowly to mean only a pre-authorized credential (like a specific hangtag or sticker), and not a general identifier like a license plate, then systems that only use license plate recognition for enforcement may not infringe. INDECT alleges the term requires an association with "permission to access one of more predefined parking spaces" (Compl. ¶ 182).
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The specification discusses identifying vehicles via "license plate number" in the context of helping a customer find their car, suggesting license plates are a key identifier used by the system (’956 Patent, col. 5:24-25). A party could argue "permit identifier" is just one type of identifier the system can use.
- Evidence for a Narrower Interpretation: The section titled "Permit Parking Control" discusses ensuring spaces are "occupied by authorised permit holder only" and identifying "permit badges" (’956 Patent, col. 14:22-26). This context may support a narrower definition tied to explicit authorization or permission, as argued in the complaint (Compl. ¶ 181).
VI. Other Allegations
Indirect Infringement
- This is a declaratory judgment action, so the context is reversed. INDECT seeks a declaration that its customers (users of its products) do not directly infringe, and that INDECT itself is not liable for contributory infringement or inducement (Compl. ¶¶ 213, 223). The allegations are rooted in Park Assist's prior lawsuit against INDECT's customers (Compl. ¶ 2) and alleged threats against other potential customers (Compl. ¶ 195).
Willful Infringement
- The complaint does not allege willfulness in the traditional sense. Instead, it makes strong allegations of "bad faith" and "sham litigation" against Park Assist, asserting that Park Assist knew or should have known its infringement claims were baseless before filing suit against INDECT's customers (Compl. ¶¶ 56-58, 226). These allegations also form the basis for a separate claim of Unfair Competition under the Lanham Act (Compl. ¶¶ 225-231).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope and operation: Do the claim steps of "deciding" and "correcting" an occupancy status (elements g and h) require human intervention? The case may turn on whether the court determines that INDECT's allegedly "fully automated" system, which purportedly omits manual review, can be proven to fall outside the scope of a claim that describes a process of human-in-the-loop error correction.
- A second key issue is one of definitional scope: Can the term "permit identifier" be construed broadly to cover a vehicle's license plate, or is its meaning limited by the patent's description to a credential specifically granting "permission" to park? The answer will likely determine whether the permit-related claim limitations (elements i and j) are met.
- Finally, the case presents a significant question of patent validity. The complaint repeatedly alleges that various elements of Claim 1 were "known in the art" prior to the patent's priority date (e.g., Compl. ¶¶ 85, 101, 108). This foreshadows a defense and counterclaim of invalidity based on obviousness, which will require the court to assess whether the patented combination of features would have been obvious to a person of ordinary skill in the art at the time.