DCT
1:24-cv-01581
Municipal Parking Services Inc v. CLANCY Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Municipal Parking Services, Inc. (Minnesota)
- Defendant: Clancy Systems, Inc. d/b/a Clancy Systems International, Inc. (Colorado)
- Plaintiff’s Counsel: Davis Graham & Stubbs LLP
- Case Identification: 1:24-cv-01581, D. Colo., 06/06/2024
- Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant is a Colorado corporation with its principal place of business in Denver, Colorado.
- Core Dispute: Plaintiff alleges that Defendant’s "Clancy Vision" automated parking management system infringes three U.S. patents related to camera-based monitoring of parking facilities and automated violation enforcement.
- Technical Context: The technology involves using cameras, often with license plate recognition, to track vehicle entry and exit times in parking lots to automate billing and issue violation notices without physical gates or on-site attendants.
- Key Procedural History: The complaint alleges that during the prosecution of Defendant's own patent application for similar technology, the USPTO examiner rejected the application's claims as unpatentable over a patent publication belonging to Plaintiff's patent family. This event is presented as evidence of Defendant's pre-suit knowledge of Plaintiff's patents.
Case Timeline
| Date | Event |
|---|---|
| 2013-01-25 | Earliest Priority Date for ’205 and ’302 Patents |
| 2013-03-15 | Earliest Priority Date for ’172 Patent |
| 2018-11-06 | U.S. Patent No. 10,121,172 Issues |
| 2020-12-03 | Defendant files patent application for “Camera Parking Enforcement” |
| 2022-02-22 | U.S. Patent No. 11,257,302 Issues |
| 2023-06-27 | U.S. Patent No. 11,688,205 Issues |
| 2024-06-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,121,172 - Parking Lot Monitoring System, issued Nov. 6, 2018
The Invention Explained
- Problem Addressed: The patent describes conventional parking lot management as inconvenient for consumers (e.g., lost tickets) and inefficient for operators due to the costs of on-site inspectors and revenue lost from missed violations (ʼ172 Patent, col. 1:24-44).
- The Patented Solution: The invention proposes an automated system that replaces manual oversight with cameras at the entrance and exit of a parking lot. These cameras capture image data of vehicles, which is sent along with entry/exit timestamps to a remote computer system. This central system determines vehicle identification, calculates parking duration, and automatically identifies and processes violations, often in conjunction with a payment kiosk. (ʼ172 Patent, Abstract; col. 2:54-67).
- Technical Importance: This approach aims to reduce operational costs by eliminating the need for on-site enforcement personnel while increasing revenue by capturing all violations automatically (ʼ172 Patent, col. 2:50-53).
Key Claims at a Glance
- The complaint asserts independent method claim 12.
- Claim 12 requires the following steps:
- sensing a vehicle entering the parking lot;
- capturing image data of the entering vehicle and transmitting it to a remote networked computer system;
- recording a time of entry for the vehicle and transmitting it to the remote system;
- determining an identification of the entering vehicle;
- sensing the vehicle exiting the parking lot;
- capturing image data of the exiting vehicle and transmitting it to the remote system;
- recording a time of exit for the vehicle and transmitting it to the remote system;
- determining an identification of the exiting vehicle;
- determining that a parking violation has occurred due to a time period expiring without the vehicle exiting; and
- communicating notice of the violation to the remote system.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,688,205 - Parking Meter System, issued Jun. 27, 2023
The Invention Explained
- Problem Addressed: The patent addresses the unreliability of prior art systems where a violation might not be determined before a vehicle leaves a camera's field of view, allowing some violations to be missed (ʼ205 Patent, col. 2:10-15).
- The Patented Solution: The invention describes a method for monitoring and managing parking by capturing image data of a vehicle both entering and exiting a facility. This data, along with entry and exit times, is transmitted to a remote computer system that identifies the vehicle and determines if a violation has occurred because a permitted time period has expired. The system then automatically issues a violation notice. (ʼ205 Patent, Abstract; col. 2:50-67).
- Technical Importance: The method provides a closed-loop system for tracking a vehicle's entire parking session, aiming to ensure that violations for overstaying a paid or grace period are reliably captured and enforced.
Key Claims at a Glance
- The complaint asserts independent method claim 16.
- Claim 16 requires the following steps:
- capturing image data of a vehicle entering a parking facility and transmitting it to a remote networked computer system;
- recording a time of entry for the entering vehicle;
- determining an identification of the entering vehicle;
- capturing image data of the vehicle exiting the facility and transmitting it to the remote system;
- recording a time of exit for the exiting vehicle;
- determining an identification of the exiting vehicle;
- determining a parking violation has occurred due to a time period expiring without the vehicle exiting; and
- issuing a parking violation notice automatically by the remote networked computer system.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 11,257,302 - Parking Meter System, issued Feb. 22, 2022
- Technology Synopsis: The ʼ302 Patent, which is part of the same family as the ʼ205 Patent, discloses a method for automated parking management. The method involves capturing vehicle image data upon entry and exit, recording the corresponding times, and using license plate recognition (LPR) on the entry image data to identify the vehicle. This information is processed by a remote computer system to automatically determine and issue violations. (ʼ302 Patent, Abstract; col. 28:47-67).
- Asserted Claims: Independent method claim 1 is asserted (Compl. ¶22).
- Accused Features: The complaint alleges that Defendant's "Clancy Vision" product, which provides automated parking lot management services, infringes the ʼ302 Patent (Compl. ¶48).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant’s "Clancy Vision" product, described as an automated parking lot maintenance and management system (Compl. ¶¶ 20, 23).
Functionality and Market Context
- The complaint alleges the Clancy Vision system uses cameras to capture vehicle identification information as cars enter and exit parking lots (Compl. ¶23). This information is then allegedly used for automated fee calculation and the issuance of violations or penalties, which may include the use of "grace periods" (Compl. ¶23). The complaint identifies a parking lot at 1115 N Acoma Street in Denver, Colorado, as one location where the accused infringing activity occurs (Compl. ¶24). The complaint provides a screenshot from a YouTube video titled "Clancy Vision in a minute" as evidence of Defendant's use of a camera system (Compl. ¶25, p. 5). This screenshot shows a dome security camera advertised by Defendant for capturing vehicle evidence (Compl. ¶25, p. 5).
IV. Analysis of Infringement Allegations
10,121,172 Infringement Allegations
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of monitoring and managing parking in a parking lot having an entrance and an exit, the method comprising: | Defendant's marketing materials and enforcement activities allegedly demonstrate a method of monitoring and managing parking (Compl. ¶25, p. 5). | ¶25 | col. 29:65-67 |
| sensing a vehicle entering the parking lot; | The system uses a camera to capture vehicle evidence, which requires sensing the vehicle's entry (Compl. ¶25, p. 5). | ¶25 | col. 30:2 |
| capturing image data of the vehicle entering the parking lot and transmitting the image data to a remote networked computer system; | Marketing materials allegedly advertise using a camera system to capture vehicle images and transmit the data to its network computer system (Compl. ¶25, p. 5). | ¶25 | col. 30:3-6 |
| recording a time of entry for the vehicle entering the parking lot and transmitting the time of entry to the remote networked computer system; | A provided parking violation notice shows a recorded entry time ("In: 01/08/2024 02:27 PM") allegedly processed by Defendant's system (Compl. ¶25, p. 6). | ¶25 | col. 30:7-10 |
| determining an identification of the vehicle entering the parking lot; | The violation notice includes vehicle identification information, such as a license plate number, determined upon entry (Compl. ¶25, p. 6). | ¶25 | col. 30:11-12 |
| sensing the vehicle exiting the parking lot; | The violation notice shows a recorded exit time, which requires sensing the vehicle's exit (Compl. ¶25, p. 6). | ¶25 | col. 30:13-14 |
| capturing image data of the vehicle exiting the parking lot and transmitting the image data to the remote networked computer system; | The violation notice is generated based on image data, such as the license plate, captured upon exit and transmitted for processing (Compl. ¶25, p. 6). | ¶25 | col. 30:15-18 |
| determining that a parking violation has occurred due to a parking time period expiring without the vehicle exiting the lot prior the parking period expiring; | The violation notice itself, for "NO PAYMENT UNDER 1 HOUR," is evidence that a violation was determined in an automated manner based on the duration of the stay (Compl. ¶25, p. 8). | ¶25 | col. 30:23-26 |
- Identified Points of Contention:
- Evidentiary Questions: The primary evidence provided is a "Parking Violation" notice from a third party, "Parkwell" (Compl. ¶25, p. 6). A central question will be what evidence demonstrates that Defendant Clancy's system performs each of the claimed steps, as opposed to the system of Parkwell or another entity.
- Scope Questions: The complaint alleges infringement based on marketing materials and a violation notice. The analysis may turn on whether the actual technical operation of the "Clancy Vision" system meets the specific requirements of "sensing," "transmitting," and "determining" as construed by the court. The functionality of the "remote networked computer system" and the precise data transmitted will also be a focus.
11,688,205 Infringement Allegations
| Claim Element (from Independent Claim 16) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of monitoring and managing parking in a parking facility having an entrance and an exit, the method comprising: | Defendant's system is alleged to be a method of monitoring and managing parking facilities (Compl. ¶25, p. 9). | ¶25 | col. 30:12-15 |
| capturing image data of a vehicle entering the parking facility and transmitting the image data to a remote networked computer system; | Defendant's marketing materials allegedly show the use of a camera system to capture vehicle image data and transmit it to a network computer system (Compl. ¶25, p. 9). | ¶25 | col. 30:16-19 |
| recording a time of entry for the vehicle entering the parking facility; | The provided parking violation notice shows a recorded time of entry, allegedly captured and processed by the accused system (Compl. ¶25, p. 10). | ¶25 | col. 30:20-21 |
| determining an identification of the vehicle entering the parking facility; | The violation notice identifies the vehicle, indicating that an identification was determined upon entry (Compl. ¶25, p. 10). | ¶25 | col. 30:22-23 |
| determining that a parking violation has occurred due to a time period expiring without the vehicle exiting the facility prior the time period expiring; and | The violation notice for non-payment indicates an automated determination that the vehicle overstayed a permitted time period (Compl. ¶25, p. 11). | ¶25 | col. 30:29-32 |
| issuing a parking violation notice automatically by the remote networked computer system. | The parking violation notice itself is alleged to be the automatically issued notice, with capabilities for remote payment and processing (Compl. ¶25, p. 11). | ¶25 | col. 30:33-35 |
- Identified Points of Contention:
- Technical Questions: As with the ʼ172 Patent, a key question will be the evidentiary connection between the "Parkwell" violation notice and the functionality of the "Clancy Vision" system.
- Scope Questions: The claim requires "issuing a parking violation notice automatically by the remote networked computer system." The infringement analysis will likely focus on the degree of automation in the Clancy Vision system and whether the issuance of the notice meets this limitation as construed.
V. Key Claim Terms for Construction
The Term: "remote networked computer system" (asserted in claims of all three patents)
- Context and Importance: This term defines the required back-end architecture of the claimed invention. The dispute may turn on whether Defendant's system architecture, including any cloud-based servers or third-party processors, falls within the scope of this term. Practitioners may focus on this term because the location and control of the processing servers are central to the claimed method.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the system may include a "host or control computer 120 that governs the operation of and/or stores the data from a given number of networked meters," which "may comprise one or more servers interfacing with networked storage in a data center" located "remotely in a secure location" (ʼ172 Patent, col. 6:51-58). This could support a broad definition covering various distributed or cloud-based architectures.
- Evidence for a Narrower Interpretation: Figure 22 of the ʼ172 Patent depicts a "central computer" (120) that is distinct from but connected to a "kiosk" (512) and cameras. An argument could be made that the term requires a specific, centralized server architecture as depicted in the embodiments, rather than any generic networked computer.
The Term: "determining an identification of the vehicle" (asserted in claims of all three patents)
- Context and Importance: The definition of this term is critical for establishing what level of data processing is required. A key question is whether capturing an image of a license plate is sufficient, or if the system must perform successful optical character recognition (LPR) to extract the alphanumeric characters.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states "The camera captures a digital image of the vehicle and/or its license plate" (ʼ172 Patent, col. 6:45-47), which could suggest that merely capturing the image is sufficient for "identification."
- Evidence for a Narrower Interpretation: The specification frequently discusses using an "optical character recognition process (license plate recognition or LPR) ... to extract the plate alpha numerals" (ʼ172 Patent, col. 6:48-50). Furthermore, asserted claim 1 of the ʼ302 Patent explicitly adds the limitation "including performing a license plate recognition," suggesting that "determining an identification" alone might be a broader step that does not necessarily require LPR. This distinction could be a central point of argument.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement is willful and deliberate (Compl. ¶¶ 36, 43, 50). The primary basis for this allegation is Defendant’s alleged pre-suit knowledge of Plaintiff’s technology. The complaint alleges that Defendant filed its own patent application, which was rejected by the USPTO examiner who cited a publication from Plaintiff's patent portfolio as rendering the claims unpatentable (Compl. ¶¶ 27-31). This prosecution history event is alleged to constitute knowledge of Plaintiff's patents.
VII. Analyst’s Conclusion: Key Questions for the Case
- A primary issue will be one of evidentiary proof: What evidence will Plaintiff produce to link the functionality described in the "Parkwell" parking violation notice directly to the technical operations of Defendant Clancy’s "Clancy Vision" system and demonstrate that Clancy itself performs each step of the asserted claims?
- A second core issue will be one of definitional scope: How will the court construe key terms such as "remote networked computer system" and "determining an identification of the vehicle"? The outcome of claim construction will likely determine whether the architecture and specific LPR capabilities of the accused system fall within the scope of the patent claims.
- A key question for damages will be one of willfulness: Will the examiner's citation of Plaintiff's patent publication during the prosecution of Defendant's own, separate patent application be sufficient to prove pre-suit knowledge and support a finding of willful infringement?