DCT
4:22-cv-01373
Parking World Wide LLC v. City Of Clayton Missouri
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Parking World Wide LLC (Missouri)
- Defendant: City of Clayton (Missouri)
- Plaintiff’s Counsel: SWIECICKI & MUSKETT, LLC
- Case Identification: 4:22-cv-01373, E.D. Mo., 12/26/2022
- Venue Allegations: Plaintiff alleges venue is proper because the patented method was "developed in this district and patented while in this district." This basis may be scrutinized under 28 U.S.C. § 1400(b), which generally establishes venue where a defendant resides or has committed acts of infringement and has a regular and established place of business.
- Core Dispute: Plaintiff alleges that Defendant’s municipal parking management system infringes a patent related to computer-implemented methods for displaying parking payment status for enforcement purposes.
- Technical Context: The technology relates to modernizing parking enforcement by replacing manual meter checks with real-time, location-aware digital systems that display payment status information on a portable device.
- Key Procedural History: Subsequent to the filing of the complaint, an Inter Partes Review (IPR) proceeding (IPR2023-00385) was initiated against the patent-in-suit. An IPR certificate issued on October 21, 2024, states that all claims of the patent, including those asserted in this litigation, have been cancelled. This post-filing event is typically dispositive of an infringement action.
Case Timeline
| Date | Event |
|---|---|
| 2010-09-27 | '421 Patent Priority Date |
| 2019-10-08 | '421 Patent Issue Date |
| 2019-11-07 | '421 Patent assigned to Plaintiff |
| 2022-12-26 | Complaint Filing Date |
| 2023-01-18 | Inter Partes Review (IPR2023-00385) Filed |
| 2024-10-21 | IPR Certificate Issued, Claims 1-7 Cancelled |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,438,421 - "PARKING STATUS SYSTEM"
- Patent Identification: U.S. Patent No. 10,438,421, "PARKING STATUS SYSTEM", issued October 8, 2019.
The Invention Explained
- Problem Addressed: The patent describes prior art parking enforcement as inefficient, citing the "antiquated" nature of coin-operated meters and the practical difficulties of other electronic systems that require officers to manually enter vehicle identifiers to check payment status ('421 Patent, col. 1:15-28, col. 2:46-59). The core problem is the lack of a system for enforcement officers to "easily and efficiently retrieve information regarding real time parking payment status" ('421 Patent, col. 2:55-59).
- The Patented Solution: The invention proposes a method and system that integrates location data (e.g., from GPS) with databases of parking spaces and subscribers to determine the payment status of a vehicle ('421 Patent, Abstract). The system then displays this status, such as a "PAID" or "UNPAID" flag, as a visual overlay upon a real-time or recorded image of the street scene on a portable device used by a parking enforcement officer, a concept the patent links to augmented reality ('421 Patent, col. 4:26-36, col. 8:3-8).
- Technical Importance: This approach sought to streamline parking enforcement by providing officers an intuitive, "at-a-glance" visual tool, thereby reducing the need for manual data entry or individual meter inspection ('421 Patent, col. 5:11-15).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 5.
- Independent Claim 1 recites a method with the following key steps:
- Assembling a database of parking spaces with geographic locations and time limits.
- Updating a database of subscribers with lists of reserved spaces, paid spaces, and expiration times.
- Calculating the location of a user via their portable electronic device.
- Determining a parking space location by comparing the user's location to the parking space database.
- Comparing the determined parking space location against the subscriber database to find a match.
- Upon a match, comparing the space to a list of expiration times.
- Displaying an "UNPAID payment indicia upon an image of the matched parking space" if the expiration time has passed.
- Independent Claim 5 recites a similar method, but specifies that the databases are stored on a "computer server" and adds the step of "enrolling each of said subscribers into a membership plan for parking payment."
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is the City of Clayton’s "demand responsive pricing and parking control software" (Compl. ¶10, 14). The complaint notes that this system is provided by a third party, Passport Parking (Compl. ¶10(a), fn. 1).
Functionality and Market Context
- The complaint alleges the system functions through the City of Clayton's public parking website, which provides a "downtown hourly parking guide map," a "way to pay for parking," and information on "paying parking tickets" (Compl. ¶10(a)-(d)). The allegations suggest the system maintains a database of parking spaces and subscribers, facilitates mobile payments, and has a component for parking enforcement (Compl. ¶10(a)-(f)). The complaint does not provide further detail on the technical operation or commercial importance of the accused system.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’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 city's parking website reflects a "downtown hourly parking guide map," which is alleged to reflect the assembly of a database of parking spaces. | ¶10(a) | col. 17:41-46 |
| updating a database upon a computer of subscribers, said database including...a list of parking spaces paid for by each subscriber, and a list of the expiration times | The website's reflection of a "way to pay for parking" is alleged to reflect a database of subscribers. | ¶10(b) | col. 17:47-52 |
| calculating a location of said user...adapted to utilize a location finding feature of said user's portable electronic device | The website's reflection of paying "with your mobile phone" is alleged to reflect the calculation of a parking user's location. | ¶10(c) | col. 17:53-56 |
| comparing upon a computer...said list of parking spaces paid for by said subscribers for a match | The website's reflection of "paying parking tickets" is alleged to suggest a comparison of spaces and subscribers to locate non-payers. | ¶10(d) | col. 17:60-67 |
| displaying upon said user's screen an UNPAID payment indicia upon an image of the matched parking space | The website's reflection of "parking tickets" is alleged to suggest that law enforcement has a list and "images of said spaces" on an electronic device. | ¶10(f) | col. 18:5-10 |
’421 Patent Infringement Allegations (Claim 5)
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| assembling a database of said plurality of parking spaces...and storing said parking space database upon a computer server | The city's parking website reflects a "downtown hourly parking guide map," which is alleged to reflect the assembly of a database of parking spaces on a server. | ¶14(a) | col. 18:46-51 |
| updating a database of subscribers...storing said subscriber database upon a computer server...enrolling each of said subscribers into a membership plan | The website's reflection of a "way to pay for parking" is alleged to reflect a database of subscribers and an enrollment plan on a server. | ¶14(b) | col. 18:51-59 |
| displaying upon said user's screen an UNPAID indicia upon an image of the matched parking space | The website's reflection of "parking tickets" is alleged to suggest that a law enforcement official has a list and "images of said spaces" on a computer server. | ¶14(f) | col. 19:12-16 |
- Identified Points of Contention:
- Technical Questions: The complaint's allegations are largely inferential, relying on high-level phrases from a public website to "suggest" or "reflect" the performance of specific, detailed method steps (Compl. ¶¶10, 14). A primary technical question is what evidence the complaint provides that the accused system performs the core claimed function of displaying an "UNPAID payment indicia upon an image of the matched parking space." The complaint alleges this functionality is "suggest[ed]" by the term "parking tickets," which raises the question of whether this is a sufficient factual basis to support the allegation (Compl. ¶10(f), 14(f)).
- Scope Questions: The claims recite a multi-step method for enforcement. A key scope question is whether the functionality of a public-facing website for paying for parking constitutes direct infringement of a method that culminates in an enforcement officer viewing an image with an overlaid status indicator.
V. Key Claim Terms for Construction
- The Term: "an image of the matched parking space"
- Context and Importance: This term is central to the invention's purported novelty, which focuses on visually overlaying data onto a representation of the physical world. The infringement analysis will depend on whether the accused system's output, if any, for enforcement officials can be considered "an image." Practitioners may focus on this term because the complaint's support for infringement of this element appears highly speculative.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the source of the image broadly, including images collected by "Google®", tablet computers, digital cameras, and other sources" and notes the image can be two- or three-dimensional (col. 7:49-62). This could support a construction that is not limited to a live camera feed.
- Evidence for a Narrower Interpretation: The patent repeatedly frames the invention in the context of "augmented reality" (col. 8:3-8), a "live, or real time, visual image" (col. 7:41-43), and a "real time camera view" (col. 16:65-67). Figure 6 depicts a literal street scene with data overlaid. This evidence may support a narrower construction requiring a photographic or video-based representation of the physical environment, as opposed to a purely schematic map or a text-based list.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead any counts for indirect infringement.
- Willful Infringement: Willfulness is requested in the prayer for relief (Compl. Prayer ¶(b)). However, the body of the complaint does not plead specific facts to support this allegation, such as pre-suit knowledge of the patent or objectively reckless conduct by the Defendant.
VII. Analyst’s Conclusion: Key Questions for the Case
Given the procedural posture, the central questions for this case have shifted from the merits of infringement to the consequences of the patent's invalidation.
- Procedural Finality: As the U.S. Patent and Trademark Office has issued a certificate cancelling all claims of the '421 patent, the primary question is not one of infringement but of case resolution: on what grounds will the court terminate a case asserting patent claims that are now legally void?
- Evidentiary Sufficiency: Setting aside the claim cancellation, a key question at the pleading stage would have been one of "operational reality versus allegation". Does the complaint, which relies on inferential readings of general text from a public website, provide a plausible factual basis that the accused system actually performs the specific, back-end method steps of the claims?
- Definitional Scope: A dispositive issue on the merits would have been one of "claim construction". Can the term "an image of the matched parking space", which is tied in the patent to augmented reality and visual overlays, be construed to read on the alleged enforcement functionalities of the Defendant's system, for which no image-based evidence is provided?