PTAB
IPR2016-00067
Duncan Parking Technologies Inc v. IPS Group Inc
Key Events
Petition
1. Case Identification
- Case #: IPR2016-00067
- Patent #: 7,854,310
- Filed: October 22, 2015
- Petitioner(s): Duncan Parking Technologies, Inc.
- Patent Owner(s): IPS Group Inc.
- Challenged Claims: 1-5 and 7-10
2. Patent Overview
- Title: Electronic Parking Meter
- Brief Description: The ’310 patent discloses a solar-powered electronic parking meter designed to overcome limitations of traditional mechanical meters. It integrates a coin sensor, card reader, and an electronic device within a modular housing that includes a cover panel and accepts multiple forms of payment.
3. Grounds for Unpatentability
Ground 1: Anticipation by King - Claims 1-5 and 7-10 are anticipated under 35 U.S.C. §102(e) by King.
- Prior Art Relied Upon: King (Patent 8,595,054) and its supporting provisional application (U.S. Provisional Application No. 60/741,920).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that King, which was not of record during prosecution, discloses every element of the challenged claims. King teaches a solar-powered, single-bay parking meter device specifically designed to be retrofitted into the housings of existing parking meters. Petitioner asserted that King explicitly discloses a coin sensor (coin validator), a card reader, an electronic device (controller), a solar cell, and a two-part housing with a base and a movable cover panel. The petition provided a detailed mapping showing that King’s device, like the claimed invention, accepts both coin and card payments, communicates wirelessly via a cellular connection, is powered by a rechargeable battery connected to a solar panel, and features a display visible through a window on the cover. Dependent claims reciting features like a removable module and upwardly converging faces were also argued to be expressly disclosed in King’s figures and description.
Ground 2: Obviousness over Tung - Claims 1-5 and 7-10 are obvious over Tung in view of the knowledge of a person of ordinary skill in the art (POSITA).
- Prior Art Relied Upon: Tung (“Design of an Advanced On-Street Parking Meter,” a 2001 master’s thesis).
- Core Argument for this Ground:
- Prior Art Mapping: Petitioner contended that Tung teaches a modern electronic parking meter (“E-Meter”) that discloses nearly every limitation of the challenged claims. Tung’s E-Meter is solar-powered, includes a rechargeable battery, features a card reader, has an LCD screen for user interaction, and contains a modem and cellular phone for remote wireless communication. The primary element from the independent claims not present in Tung’s principal embodiment is a coin slot and coin sensor. However, Petitioner highlighted that Tung describes coin-accepting meters as a well-known, conventional technology and includes sketches of initial designs that accept both coins and cards.
- Motivation to Combine: A POSITA would combine Tung’s advanced card-reading meter design with the well-known feature of coin acceptance to meet the obvious market need for providing multiple payment options. Petitioner argued this was merely the combination of known elements to yield predictable results. Furthermore, Tung provides explicit motivation for modularity and retrofitting electronic components into existing meter housings, which would have encouraged a POSITA to incorporate conventional, coin-based features to ensure compatibility and reduce costs.
- Expectation of Success: Integrating a standard coin acceptance mechanism into an electronic meter that already processes card payments was a simple and predictable modification for a POSITA. The underlying technologies for both payment types were well-understood and widely implemented in the field, leading to a high expectation of success.
4. Relief Requested
- Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-5 and 7-10 of the ’310 patent as unpatentable.