DCT
3:18-cv-02409
Indect USA Corp v. Park Assist LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: INDECT USA Corp. (Texas)
- Defendant: Park Assist, LLC (Delaware)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 3:18-cv-02409, S.D. Cal., 11/02/2018
- Venue Allegations: Venue is alleged to be proper based on Defendant’s business activities within the judicial district and because a substantial part of the events giving rise to the claim, including a related lawsuit filed by the Defendant, occurred in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its parking guidance systems do not infringe Defendant’s patent related to camera-based parking lot management systems that incorporate a human review and correction interface.
- Technical Context: The technology involves camera-based sensor systems used in parking garages to monitor the occupancy status of individual parking spaces and provide data for facility management.
- Key Procedural History: This declaratory judgment action was filed in response to a lawsuit initiated by Defendant Park Assist against customers of Plaintiff INDECT, which alleged infringement of the same patent-in-suit. Plaintiff characterizes this prior lawsuit as "sham litigation" and alleges that it had previously provided Defendant with notice of its non-infringement positions.
Case Timeline
| Date | Event |
|---|---|
| 2010-05-10 | ’956 Patent Priority Date |
| 2017-03-14 | ’956 Patent Issued |
| 2017-05-19 | INDECT releases industry statement regarding non-infringement of the ’956 Patent |
| 2018-09-05 | Park Assist files infringement suit against INDECT's customers ("Sham Case") |
| 2018-11-02 | INDECT files First 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. 9,594,956, "Method and System for Managing a Parking Lot Based on Intelligent Imaging," issued March 14, 2017 (’956 Patent).
The Invention Explained
- Problem Addressed: The patent describes prior art parking guidance systems as limited. While they could guide drivers to vacant spots, they did not help drivers find their own parked vehicles later, did not enable location-based pricing, failed to integrate with environmental systems like lighting for energy savings, and lacked a mechanism for human operators to remotely view spaces and correct system errors ('956 Patent, col. 1:11-45).
- The Patented Solution: The invention is a parking management system that uses imaging units to not only determine occupancy but also to capture images of vehicles. These images are displayed on a graphical user interface (GUI) along with their automatically classified status (e.g., "vacant" or "occupied"), allowing a human operator to manually review the classifications and correct any errors ('956 Patent, Abstract; col. 6:59-65). This human-in-the-loop correction, combined with vehicle identification features, is presented as a key improvement.
- Technical Importance: The technology aims to improve the accuracy and functionality of automated parking systems by integrating a human review layer, which can correct errors in real-time and provide a more robust dataset for management functions like security and enforcement ('956 Patent, col. 1:39-45).
Key Claims at a Glance
- The complaint asserts non-infringement of Claim 1, the sole independent claim of the patent (Compl. ¶ 43).
- The essential elements of independent Claim 1 include:
- (a) monitoring a parking space with an imaging device;
- (b) detecting occupancy of the space;
- (c) assigning an "occupied status" indicated by 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 of the space on a GUI;
- (g) deciding, based on a visual review of the thumbnail on the GUI, whether the occupied status is incorrect;
- (h) correcting the status by inputting instructions to a computer terminal if the space is vacant, which toggles the indicator;
- (i) extracting and comparing a "permit identifier" from the image to a stored identifier to determine a permit status; and
- (j) initiating an "infringement process" if the permit identifier does not match.
- The complaint seeks a declaration of non-infringement of all claims of the ’956 Patent, which would include dependent Claim 2 (Compl. ¶ 5).
III. The Accused Instrumentality
Product Identification
- The complaint identifies INDECT’s "UPSOLUT" system and the "Airport Parking System" at the San Diego International Airport, which is an installation of the UPSOLUT system (Compl. ¶¶ 9-10, 22).
Functionality and Market Context
- The UPSOLUT system is described as a camera-based parking guidance system that employs optical sensors, typically installed on a ceiling, to monitor multiple parking spaces (Compl. ¶¶ 23, 25). The onboard sensor processor makes an occupancy determination and uploads this information to a server (Compl. ¶¶ 27, 29).
- The complaint repeatedly characterizes the UPSOLUT system as "fully automated" and alleges that it does "not rely on human intervention to function properly" (Compl. ¶¶ 48, 50). This allegation of full automation is central to its non-infringement theory. The complaint also positions the UPSOLUT system as a direct and superior competitor to Park Assist's products in the U.S. market (Compl. ¶¶ 30, 32-35).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the Plaintiff's (INDECT's) allegations as to why its UPSOLUT system does not meet the limitations of Claim 1 of the ’956 Patent.
’956 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (f) displaying a thumbnail image of said parking space on a graphic user interface (GUI)... | The complaint alleges the accused Airport Parking System "lacks a graphical user interface" and does not display thumbnail images of any parking space. | ¶¶61-62, 115-116 | col. 28:54-58 |
| (g) deciding whether said occupied status is incorrect, based on a visual review of said thumbnail image on said GUI; | The complaint alleges the accused systems are "fully automated" and do not involve personnel performing a visual review of a thumbnail image to determine if an "occupied" status is incorrect. | ¶¶48, 137-139 | col. 28:59-61 |
| (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... | It is alleged that because the accused systems do not involve personnel reviewing thumbnail images, they do not correct status based on such analysis. The complaint states the system does not allow the status "to be 'corrected' under any circumstances." | ¶¶50, 159-161 | col. 28:62-68 |
| (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... | The complaint alleges the accused system does not extract, store, or compare "permit identifiers." It further alleges that license plate information cannot be a "permit identifier" based on the patent's prosecution history and written description. | ¶¶67-69, 178-181 | col. 28:69 - col. 29:3 |
| (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. | The complaint alleges the accused system "has no infringement process" and cannot perform this step because it does not maintain a database of permit identifications. It contends that charging different rates is not an "infringement process." | ¶¶70, 187-191 | col. 29:4-8 |
- Identified Points of Contention:
- Scope Questions: A primary dispute will concern whether the series of claim limitations requiring a GUI, visual review, and manual correction (elements f, g, h) can read on a system that the complaint alleges is "fully automated." The case may explore whether any administrative or diagnostic interface associated with the UPSOLUT system could meet these claim limitations, even if not used for real-time operations as described in the patent.
- Technical Questions: A factual question is whether the UPSOLUT system, in its actual operation, includes any functionality for human operators to view images of parking spaces and override the system's automated occupancy determination. The complaint's categorical denial of such features (Compl. ¶¶ 159-161) sets up a direct factual clash with the patent's claims.
V. Key Claim Terms for Construction
"permit identifier"
- Context and Importance: This term is critical because the complaint argues that even if the accused system processes license plates, a license plate is not a "permit identifier" as understood in the patent (Compl. ¶ 179). If the court adopts a narrow definition that excludes license plates, it could render the final limitations of Claim 1 (i, j) non-infringed regardless of the system's other capabilities.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not explicitly define the term. A party arguing for a broader interpretation might contend that a license plate number can function as an identifier for a vehicle that has permission to park (e.g., in a pre-paid or employee lot) and thus falls within the plain and ordinary meaning.
- Evidence for a Narrower Interpretation: The complaint alleges the prosecution history and written description narrow this term (Compl. ¶ 179). A party seeking a narrower construction may point to language associating permits with specific pre-allocations, such as for staff or handicapped users, as distinct from the general identification of any vehicle via its license plate ('956 Patent, col. 14:21-33).
"based on a visual review of said thumbnail image on said GUI"
- Context and Importance: Practitioners may focus on this term because the plaintiff's core non-infringement theory rests on its system being "fully automated" and lacking the human intervention required by this limitation (Compl. ¶ 48). The outcome of the case may depend on whether any human interaction with the accused system constitutes a "visual review" for the purpose of "deciding whether said occupied status is incorrect."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any interface allowing an operator to see an image and make a decision, even for auditing or troubleshooting, constitutes a "visual review." The patent's general description of human intervention to "correct mistakes" could support this ('956 Patent, col. 1:40-42).
- Evidence for a Narrower Interpretation: The claim language links the "visual review" directly to the step of "deciding whether said occupied status is incorrect" and "correcting" it. The detailed description and figures show a specific workflow where an operator actively monitors and corrects classifications in a dedicated interface (e.g., '956 Patent, Fig. 7; col. 15:26-47). This context may support a narrower construction requiring a real-time, operational human-in-the-loop process, not just an offline diagnostic tool.
VI. Other Allegations
- Indirect Infringement: While the complaint's factual allegations focus on why the accused system does not directly infringe, the prayer for relief seeks a declaration of non-infringement "either directly, contributorily, or by inducement" (Compl. ¶ 211). The complaint does not set forth specific facts relating to indirect infringement theories beyond the general denial.
- Willful Infringement: The complaint does not allege willful infringement by INDECT. Instead, it forms the basis for an exceptional case finding against Park Assist under 35 U.S.C. § 285 by alleging that Park Assist filed its own lawsuit in bad faith (Compl. ¶ 212). The complaint alleges Park Assist knew or should have known of INDECT's non-infringement based on the product's functionality and a public statement issued by INDECT more than a year before Park Assist filed suit against INDECT's customers (Compl. ¶¶ 53-54, 192).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of functionality and claim scope: Does the accused UPSOLUT system, which the complaint alleges is "fully automated," perform the human-in-the-loop steps required by Claim 1? The case will likely turn on the factual evidence of how the UPSOLUT system operates and whether its functionalities meet the claimed requirements of displaying images on a GUI for "visual review" and manual "correcting" by an operator.
- A dispositive question will be one of claim construction: Can the term "permit identifier" be construed to encompass a standard vehicle license plate number, or is its meaning limited by the patent's specification and history to a more specific credential associated with pre-authorized parking permission?
- A third central question, underlying the associated Lanham Act and exceptional case claims, will be objective reasonableness: Was Park Assist's infringement position in its prior lawsuit against INDECT's customers objectively baseless, as the complaint alleges? The resolution of the first two technical questions will heavily influence the court's view on the reasonableness of Park Assist's litigation conduct.