DCT
4:22-cv-01252
Parking World Wide LLC v. City Of St Louis
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parking World Wide LLC (Missouri)
- Defendant: City of St. Louis (Missouri)
- Plaintiff’s Counsel: Swiecicki & Muskett, LLC; Charles C. McCloskey, LLC
- Case Identification: 4:22-cv-01252, E.D. Mo., 11/22/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Missouri because the patented method was developed and patented within the district.
- Core Dispute: Plaintiff alleges that Defendant’s “ParkLouie” public parking management system infringes a patent related to a system for displaying parking payment status.
- Technical Context: The technology concerns electronic parking management systems that seek to integrate real-time location data, subscriber payment information, and visual displays to improve the efficiency of parking enforcement.
- Key Procedural History: Subsequent to the filing of the complaint, an Inter Partes Review (IPR) was initiated against the patent-in-suit (IPR2023-00385). On October 21, 2024, the U.S. Patent and Trademark Office issued a certificate cancelling all claims of the patent (Claims 1-7). This post-filing development raises a threshold question regarding the viability of the infringement claims asserted in the complaint. The patent was assigned from the inventor, Gil Bashani, to the Plaintiff on November 7, 2019.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-27 | U.S. Patent No. 10,438,421 Priority Date |
| 2019-10-08 | U.S. Patent No. 10,438,421 Issue Date |
| 2022-11-22 | Complaint Filed |
| 2023-01-18 | IPR Proceeding (IPR2023-00385) Filed |
| 2024-10-21 | IPR Certificate Issued; All Claims of '421 Patent Cancelled |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,438,421 - “Parking Status System,” issued October 8, 2019
The Invention Explained
- Problem Addressed: The patent describes the inefficiencies of traditional parking enforcement, including the inconvenience of coin-operated meters and the practical difficulties of prior art electronic systems, which can require manual data entry by officers or lack an integrated visual interface (’421 Patent, col. 2:16-59).
- The Patented Solution: The invention is a system designed for a parking control officer that integrates position data (e.g., GPS), payment status, and subscriber information into a single visual display on a portable electronic device (’421 Patent, col. 4:26-31). The system can overlay status indicators (e.g., a "PAID" or "UNPAID" flag) onto a real-time image or camera view of a street scene, enabling an officer to quickly identify non-compliant vehicles without manually checking each meter (’421 Patent, col. 4:31-39; Abstract). The specification describes this functionality as a form of "Augmented Reality" (’421 Patent, col. 8:8-28).
- Technical Importance: The described technology aims to streamline parking enforcement by replacing discrete, manual inspection processes with a unified, real-time data visualization tool for enforcement personnel (’421 Patent, col. 5:41-55).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5.
- Independent Claim 1 recites a method with the following essential elements:
- Representing the parking status of parking spaces on a screen of a user's portable electronic device upon a "real time camera view," with status being "PAID" or "UNPAID."
- Assembling a database of parking spaces with their geographic locations.
- Updating a database of subscribers, including lists of reserved spaces, paid spaces, and expiration times.
- Calculating the user's location.
- Determining the location of a specific parking space by comparing the user's location to the parking space database.
- Comparing the location of that parking space against the subscriber database to find a match.
- Comparing the matched space against the list of expiration times and, if expired, displaying an "UNPAID payment indicia" on the user's screen.
- Independent Claim 5 recites a similar method, but specifies that the databases are assembled and stored on a "computer server" and adds a step of "enrolling each of said subscribers into a membership plan for parking payment."
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the City of St. Louis's "demand responsive pricing and parking control software," which includes the "ParkLouie" website (Compl. ¶10).
Functionality and Market Context
The complaint alleges the ParkLouie system is operated by the City Treasurer for municipally owned parking facilities (Compl. ¶10(a)). Its alleged functions include allowing motorists to reserve parking, utilizing a map and a database of parking spaces, and identifying "active sessions" with data such as subscriber, amount paid, and expiration time (Compl. ¶10(a)-10(b)). The complaint also references a "sign up" feature, a "find my car button," and a webpage for "Paying a Ticket" as evidence of the system's underlying functionality (Compl. ¶10(d), ¶10(g), ¶10(i)). The complaint describes a webpage (referenced as Exhibit 1) that it alleges shows a feature for "reserving your spot ahead" (Compl. ¶10(g)).
IV. Analysis of Infringement Allegations
'421 Patent Infringement Allegations (Claim 1)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| assembling a database upon a computer of said plurality of parking spaces, said database including geographic locations of said plurality of parking spaces... | The Treasurer's system allegedly "utilizes a database of parking spaces" and the ParkLouie webpage has a "map button." | ¶10(b), ¶10(c) | col. 15:7-14 |
| updating a database upon a computer of subscribers, said database including a list of parking spaces reserved by each subscriber, a list of parking spaces paid for by each subscriber, and a list of the expiration times for each paid for parking space... | The ParkLouie webpage allegedly has "sign up" and "sign in" features suggesting a subscriber database, and lists "active sessions" data by subscriber, amount paid, and expiration. | ¶10(d), ¶10(e) | col. 15:15-22 |
| calculating a location of said user... | The ParkLouie webpage allegedly lists a "most recent zone," which the complaint "suggests" is the result of "calculating a location of a parking user." | ¶10(f) | col. 15:51-54 |
| determining upon a computer a location of one of said plurality of parking spaces by comparing the location of said user to said database of said plurality of parking spaces and selecting one... within eight to ten feet of the position of said user | The ParkLouie webpage allegedly has features for "reserving your spot ahead" and a "find my car button," which the complaint alleges "together determine a parking spot to within eight (8) to ten (10) feet." | ¶10(g) | col. 15:55-60 |
| ...comparing the matched parking spaces to said list of expiration times and upon detecting the matched parking spaces exceeding an expiration time displaying upon said user's screen an UNPAID payment indicia upon an image of the matched parking space... | The complaint alleges that the "active sessions" feature has an expiration time, which "suggests comparing spaces... to find parking users who have not paid," and that a "Paying a Ticket" webpage suggests a list of unpaid spaces. | ¶10(h), ¶10(i) | col. 16:1-10 |
'421 Patent Infringement Allegations (Claim 5)
The allegations for Claim 5 in ¶14 of the complaint largely mirror those for Claim 1, with minor variations in wording. The complaint points to the same features of the ParkLouie website—such as the map button, "sign up" feature, "active sessions" list, and "find my car button"—to support its infringement theory for Claim 5 (Compl. ¶14(a)-14(f)). The complaint references a webpage screenshot (see Ex. 2) that allegedly shows "active sessions" data, which is used to suggest the updating of a subscriber database (Compl. ¶14(c)).
- Identified Points of Contention:
- Evidentiary Gaps: The complaint's allegations frequently rely on inference, using phrases like "suggests" to connect high-level features on the ParkLouie website (e.g., a "sign up" button) to the specific database and processing steps required by the claims. The complaint does not provide direct factual allegations about the back-end architecture of the accused system.
- Scope Questions: A primary question is whether the accused ParkLouie website, which appears to be a consumer-facing portal for motorists, meets claim limitations that describe a system for a "user" with a "real time camera view." The complaint does not allege that the City of St. Louis provides its enforcement officers with a device featuring an augmented-reality-style camera overlay as described in the patent.
- Technical Questions: It is unclear what evidence supports the allegation that the accused system "determines a parking spot to within eight (8) to ten (10) feet" (Compl. ¶10(g)). The complaint attributes this function to a combination of a "reserving your spot ahead" and "find my car button," but the technical mechanism for achieving this claimed precision is not specified.
V. Key Claim Terms for Construction
The Term: "a screen of a user's portable electronic device upon a real time camera view"
- Context and Importance: This term appears in the preamble of both asserted independent claims and is central to the invention's augmented reality concept. Its construction is critical because the infringement allegation is directed at a conventional website, for which no "real time camera view" with data overlays is alleged. Practitioners may focus on this term to determine if the accused system falls entirely outside the scope of the claims.
- Intrinsic Evidence for a Broader Interpretation: A party could argue the term does not require the data to be literally superimposed on a camera feed, but merely displayed on a portable device that has a camera, pointing to general language about the system operating on web browsers (’421 Patent, col. 5:63-66).
- Intrinsic Evidence for a Narrower Interpretation: The specification explicitly links the invention to augmented reality, stating it "integrates digital information regarding parking spaces with live video of a user's environment in real time" and "overlays new information about parking spaces upon the image" (’421 Patent, col. 8:20-24). This language may support a construction requiring an actual camera-based overlay.
The Term: "user"
- Context and Importance: The identity of the "user" is fundamental to the infringement analysis. The complaint's allegations are based on the ParkLouie website, which is used by motorists. However, the patent specification repeatedly and consistently describes the "user" as a "parking control officer."
- Intrinsic Evidence for a Broader Interpretation: A party might argue "user" should be given its plain meaning, encompassing any person interacting with the system, including a motorist subscribing to a service.
- Intrinsic Evidence for a Narrower Interpretation: The Summary of the Invention and Detailed Description sections are replete with references to the "user" being a "parking control officer" who patrols a "beat," views the status of adjacent vehicles, and performs enforcement (’421 Patent, col. 4:26-31; col. 4:63-col. 5:2; col. 5:41-45). This context strongly suggests the claimed "user" is an enforcement agent, not a member of the general public.
VI. Other Allegations
- Willful Infringement: The complaint's prayer for relief includes a request for a finding of willful infringement (Compl. p. 6, ¶(b)). However, the factual allegations in the body of the complaint do not contain any specific claims of pre-suit or post-suit knowledge of the patent or any conduct alleged to be egregious.
VII. Analyst’s Conclusion: Key Questions for the Case
- Procedural Viability: The most significant issue is procedural: in light of the IPR certificate cancelling all claims of the '421 Patent, what legal basis remains for the lawsuit? Barring a successful appeal of the IPR decision, the complaint’s core allegations appear to be moot.
- Definitional Mismatch: A central infringement question is one of scope and context: can the claims, which describe an enforcement tool for a "user" (contextually, a parking officer) with a "real time camera view," be construed to cover the accused ParkLouie system, a consumer-facing website for motorists that is not alleged to possess any augmented reality or camera-overlay functionality?
- Sufficiency of Pleading: An early challenge may focus on an evidentiary question: are the complaint's infringement contentions, which infer complex back-end database operations from generic website features like "sign in" buttons and "active sessions" lists, factually sufficient to state a plausible claim for relief?