Indect USA Corp. v. Park Assist, LLC

S.D. California

Indect USA Corp. v. Park Assist, LLC

DecidedJanuary 25, 2021

Docket3:18-cv-02409

StatusUnknown

This text of Indect USA Corp. v. Park Assist, LLC (Indect USA Corp. v. Park Assist, LLC) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Indect USA Corp. v. Park Assist, LLC, (S.D. Cal. 2021).

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Opinion

| JAN 2 5 2021 □ 2 corer, ; ees 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 |) INDECT USA CORP., Case No.: 3:18-cv-02409-BEN-DEB Plaintiff, ORDER DENYING MOTIONTO 13 v. DISMISS COUNTERCLAIMS 14 || PARK ASSIST, LLC, (ECF No. 69] 15 Defendant. 16 This matter comes before the Court on Plaintiff Indect USA Corp.’s (“Indect”) 17 || Motion to Dismiss two of the counterclaims filed by Defendant Park Assist, LLC (“Park 18 || Assist”). ECF No. 69. Indect seeks dismissal of Park Assist’s second and third 19 || counterclaims, which request declaratory judgment of direct infringement and induced 20 infringement, respectively. For the following reasons, the Motion is DENIED. BACKGROUND 22 Indect and Park Assist are direct competitors that develop and sell technologies for 23 || camera-based parking guidance systems. These systems manage the occupancy of 24 || parking spaces within a parking lot or parking garage by detecting a space’s occupancy 25 ||status with cameras and sensors. Park Assist owns United States Patent Number 26 |}9,594,956 (“the ‘956 Patent”), which is the subject of this lawsuit. 27 Park Assist is also involved in a related lawsuit pending before this Court. See 28 || Park Assist, LLC v. San Diego Cty. Reg'l Airport Auth., et al., Case No. 18-cv-2409-

3:18-cv-02409-BEN-DEB

1 || BEN-DEB. In that case, Park Assist sued the San Diego County Regional Airport 2 || Authority (“SDCRAA”) for infringing the ‘956 Patent by using Indect’s UPSOLUT 3 || parking guidance system at the Terminal 2 parking garage of the San Diego International 4 Airport. Park Assist alleges UPSOLUT practices each and every element of at least 5 ||claim 1 of the ‘956 Patent. 6 Shortly after Park Assist filed suit against the SDCRAA, Indect sued Park Assist 7 || seeking, inter alia, a declaratory judgment that UPSOLUT does not infringe the ‘956 8 || Patent. ECF No. 58. Park Assist counterclaimed for (1) induced infringement of the 9 || ‘956 Patent, (2) declaratory judgment of direct infringement of the ‘956 Patent, and (3) 10 |) declaratory judgment of induced infringement of the ‘956 Patent. ECF No. 68. 11 Thereafter, Indect filed this Motion to Dismiss both of Park Assist’s declaratory 12 || judgment counterclaims (the “Motion”). ECF No. 69, Indect does not challenge Park 13 || Assist’s first counterclaim. The Motion is fully briefed and was submitted on the papers 14 without oral argument pursuant to Civil Local Rule 7.1(d)(1) and Rule 78(b) of the 15 || Federal Rules of Civil Procedure. ECF No. 78. 16 ||II. LEGAL STANDARD 17 A dismissal under Rule 12(b)(6) may be based on the lack of a cognizable legal 18 || theory or absence of sufficient alleged facts under a cognizable legal theory. Johnson y, {9 || Riverside Healthcare Sys., 534 F.3d 1116, 1121 (9th Cir. 2008); Navarro v. Block, 250 20 || F.3d 729, 732 (9th Cir. 2001). When considering a Rule 12(b)(6) motion, the Court 21 ||“accept[s] as true facts alleged and draw[s] inferences from them in the light most 22 || favorable to the [claimant].” Stacy v. Rederite Otto Danielsen, 609 F.3d 1033, 1035 (9th 23 Cir. 2010). A claimant must not merely allege conceivably unlawful conduct but must 24 allege “enough facts to state a claim to relief that is plausible on its face.” Beil Atl. Corp. 25 Twombly, 550 U.S. 544, 570 (2007). “A claim is facially plausible ‘when the 26 [claimant] pleads factual content that allows the court to draw the reasonable inference 27 that the defendant is liable for the misconduct alleged.’” Zixiang Li v. Kerry, 710 F.3d 28 995, 999 (9th Cir. 2013) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). 3:18-cv-02409-BEN-DEB

1 || “Threadbare recitals of the elements of a cause of action, supported by mere conclusory 2 statements, do not suffice.” Jgbal, 556 U.S. at 678. 3 ANALYSIS 4 Based on the procedural history of this case, Indect filed this Motion to Dismiss > || before the Parties had the benefit of the Court’s Claims Construction Order regarding the 6 || “956 Patent. See ECF No. 80. That Order makes disposition of this Motion 7 || straightforward. 8 A. Counterclaim for Declaratory Judgment of Direct Infringement 9 Indect first argues Park Assist is seeking relief for future, speculative harm, and 10 || therefore is asking the Court to issue an impermissible advisory opinion. Mot., ECF No. 11 || 69, 4. Indect also argues Park Assist has failed to allege sufficient facts to support the 12 || direct infringement counterclaim. /d. at 6. Specifically, Indect argues that it cannot 13 || directly infringe the ‘956 Patent because Indect does not manage a parking garage, and 14 || Park Assist cannot speculate Indect will manage a parking garage sometime in the future. 15 ||Reply, ECF No. 77, 2. Based on the Court’s Claims Construction Order construing 16 || certain terms and phrases in the ‘956 Patent, these arguments lack merit. 17 The Declaratory Judgment Act provides that “in a case of actual controversy,” a 18 || federal court “may declare the rights and other legal relations of any interested party 19 || seeking such declaration, whether or not further relief could be sought.” 28 U.S.C. § 20 |/2201(a). In patent cases, declaratory judgment of infringement is available when the 21 || defendant engages in acts “directed toward making, selling, or using subject to an 22 infringement charge under 35 U.S.C. § 271(a) ... or [] making meaningful preparation 23 || for such activity,” that “indicate a refusal to change the course of its actions in the face of 24 || acts by the patentee sufficient to create a reasonable apprehension that a suit will be 25 ||forthcoming.” Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 764 (Fed. Cir, 1990). 26 || This standard allows for declaratory judgment in cases that, at first glance, may appear to 27 ||seek an advisory opinion based on hypothetical, future conduct. 28 Here, however, Park Assist’s claim clearly meets the standard of “a case of actual

1 controversy.” 28 U.S.C. § 2201 (a). Indect’s argument assumes the ‘956 Patent requires 2 ||a human operator in certain steps of the patented method. Indect asserts it merely sells 3 ||the UPSOLUT parking guidance system and does not itself manage parking garages 4 || staffed by human operators, which means it cannot infringe at least some of the steps in 5 || the ‘956 Patent. Reply, ECF No. 77, 8. However, the Court’s Claims Construction Order 6 || reached the opposite conclusion on the relevant parts of the ‘956 Patent: the method 7 || taught by the 956 Patent does not necessarily require a human operator. It follows that 8 || Indect’s UPSOLUT parking guidance system could infringe the ‘956 Patent without Park 9 || Assist having to prove Indect operates parking garages, and Park Assist has plausibly -10 pled that here. See Twombly, 550 U.S. at 570. When discovery is complete, the Court 11 |jmay conclude on a motion for summary judgment that the UPSOLUT system does not 12 infringe the ‘956 Patent, but at this point, Park Assist has met its pleading burden. 13 || Indect’s Motion to Dismiss this counterclaim is, therefore, denied. 14 B.

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| JAN 2 5 2021 □ 2 corer, ; ees 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 |) INDECT USA CORP., Case No.: 3:18-cv-02409-BEN-DEB Plaintiff, ORDER DENYING MOTIONTO 13 v. DISMISS COUNTERCLAIMS 14 || PARK ASSIST, LLC, (ECF No. 69] 15 Defendant. 16 This matter comes before the Court on Plaintiff Indect USA Corp.’s (“Indect”) 17 || Motion to Dismiss two of the counterclaims filed by Defendant Park Assist, LLC (“Park 18 || Assist”). ECF No. 69. Indect seeks dismissal of Park Assist’s second and third 19 || counterclaims, which request declaratory judgment of direct infringement and induced 20 infringement, respectively. For the following reasons, the Motion is DENIED. BACKGROUND 22 Indect and Park Assist are direct competitors that develop and sell technologies for 23 || camera-based parking guidance systems. These systems manage the occupancy of 24 || parking spaces within a parking lot or parking garage by detecting a space’s occupancy 25 ||status with cameras and sensors. Park Assist owns United States Patent Number 26 |}9,594,956 (“the ‘956 Patent”), which is the subject of this lawsuit. 27 Park Assist is also involved in a related lawsuit pending before this Court. See 28 || Park Assist, LLC v. San Diego Cty. Reg'l Airport Auth., et al., Case No. 18-cv-2409-

3:18-cv-02409-BEN-DEB

1 || BEN-DEB. In that case, Park Assist sued the San Diego County Regional Airport 2 || Authority (“SDCRAA”) for infringing the ‘956 Patent by using Indect’s UPSOLUT 3 || parking guidance system at the Terminal 2 parking garage of the San Diego International 4 Airport. Park Assist alleges UPSOLUT practices each and every element of at least 5 ||claim 1 of the ‘956 Patent. 6 Shortly after Park Assist filed suit against the SDCRAA, Indect sued Park Assist 7 || seeking, inter alia, a declaratory judgment that UPSOLUT does not infringe the ‘956 8 || Patent. ECF No. 58. Park Assist counterclaimed for (1) induced infringement of the 9 || ‘956 Patent, (2) declaratory judgment of direct infringement of the ‘956 Patent, and (3) 10 |) declaratory judgment of induced infringement of the ‘956 Patent. ECF No. 68. 11 Thereafter, Indect filed this Motion to Dismiss both of Park Assist’s declaratory 12 || judgment counterclaims (the “Motion”). ECF No. 69, Indect does not challenge Park 13 || Assist’s first counterclaim. The Motion is fully briefed and was submitted on the papers 14 without oral argument pursuant to Civil Local Rule 7.1(d)(1) and Rule 78(b) of the 15 || Federal Rules of Civil Procedure. ECF No. 78. 16 ||II. LEGAL STANDARD 17 A dismissal under Rule 12(b)(6) may be based on the lack of a cognizable legal 18 || theory or absence of sufficient alleged facts under a cognizable legal theory. Johnson y, {9 || Riverside Healthcare Sys., 534 F.3d 1116, 1121 (9th Cir. 2008); Navarro v. Block, 250 20 || F.3d 729, 732 (9th Cir. 2001). When considering a Rule 12(b)(6) motion, the Court 21 ||“accept[s] as true facts alleged and draw[s] inferences from them in the light most 22 || favorable to the [claimant].” Stacy v. Rederite Otto Danielsen, 609 F.3d 1033, 1035 (9th 23 Cir. 2010). A claimant must not merely allege conceivably unlawful conduct but must 24 allege “enough facts to state a claim to relief that is plausible on its face.” Beil Atl. Corp. 25 Twombly, 550 U.S. 544, 570 (2007). “A claim is facially plausible ‘when the 26 [claimant] pleads factual content that allows the court to draw the reasonable inference 27 that the defendant is liable for the misconduct alleged.’” Zixiang Li v. Kerry, 710 F.3d 28 995, 999 (9th Cir. 2013) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). 3:18-cv-02409-BEN-DEB

1 || “Threadbare recitals of the elements of a cause of action, supported by mere conclusory 2 statements, do not suffice.” Jgbal, 556 U.S. at 678. 3 ANALYSIS 4 Based on the procedural history of this case, Indect filed this Motion to Dismiss > || before the Parties had the benefit of the Court’s Claims Construction Order regarding the 6 || “956 Patent. See ECF No. 80. That Order makes disposition of this Motion 7 || straightforward. 8 A. Counterclaim for Declaratory Judgment of Direct Infringement 9 Indect first argues Park Assist is seeking relief for future, speculative harm, and 10 || therefore is asking the Court to issue an impermissible advisory opinion. Mot., ECF No. 11 || 69, 4. Indect also argues Park Assist has failed to allege sufficient facts to support the 12 || direct infringement counterclaim. /d. at 6. Specifically, Indect argues that it cannot 13 || directly infringe the ‘956 Patent because Indect does not manage a parking garage, and 14 || Park Assist cannot speculate Indect will manage a parking garage sometime in the future. 15 ||Reply, ECF No. 77, 2. Based on the Court’s Claims Construction Order construing 16 || certain terms and phrases in the ‘956 Patent, these arguments lack merit. 17 The Declaratory Judgment Act provides that “in a case of actual controversy,” a 18 || federal court “may declare the rights and other legal relations of any interested party 19 || seeking such declaration, whether or not further relief could be sought.” 28 U.S.C. § 20 |/2201(a). In patent cases, declaratory judgment of infringement is available when the 21 || defendant engages in acts “directed toward making, selling, or using subject to an 22 infringement charge under 35 U.S.C. § 271(a) ... or [] making meaningful preparation 23 || for such activity,” that “indicate a refusal to change the course of its actions in the face of 24 || acts by the patentee sufficient to create a reasonable apprehension that a suit will be 25 ||forthcoming.” Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 764 (Fed. Cir, 1990). 26 || This standard allows for declaratory judgment in cases that, at first glance, may appear to 27 ||seek an advisory opinion based on hypothetical, future conduct. 28 Here, however, Park Assist’s claim clearly meets the standard of “a case of actual

1 controversy.” 28 U.S.C. § 2201 (a). Indect’s argument assumes the ‘956 Patent requires 2 ||a human operator in certain steps of the patented method. Indect asserts it merely sells 3 ||the UPSOLUT parking guidance system and does not itself manage parking garages 4 || staffed by human operators, which means it cannot infringe at least some of the steps in 5 || the ‘956 Patent. Reply, ECF No. 77, 8. However, the Court’s Claims Construction Order 6 || reached the opposite conclusion on the relevant parts of the ‘956 Patent: the method 7 || taught by the 956 Patent does not necessarily require a human operator. It follows that 8 || Indect’s UPSOLUT parking guidance system could infringe the ‘956 Patent without Park 9 || Assist having to prove Indect operates parking garages, and Park Assist has plausibly -10 pled that here. See Twombly, 550 U.S. at 570. When discovery is complete, the Court 11 |jmay conclude on a motion for summary judgment that the UPSOLUT system does not 12 infringe the ‘956 Patent, but at this point, Park Assist has met its pleading burden. 13 || Indect’s Motion to Dismiss this counterclaim is, therefore, denied. 14 B. Counterclaim for Declaratory Judgement of Induced Infringement 15 Indect argues Park Assist’s counterclaim seeking declaratory judgment for induced 16 || infringement of the ‘956 Patent “suffers from the same infirmities” as the counterclaim 17 || discussed above: “hypothetical future conduct or Indect’s allegations of non- 18 || infringement” are the only bases for the allegation. Mot., ECF No. 69, 6. For the reasons 19 |) addressed in the previous counterclaim, the Claims Construction Order put this argument 20 || to rest at this phase of the litigation. Park Assist’s counterclaim plausibly alleges induced 21 ||infringement, and therefore, Indect’s Motion to Dismiss this counterclaim is denied. 22 CONCLUSION 23 Based on the foregoing, Indect’s Motion to Dismiss Park Assist’s counterclaims 24 ||seeking declaratory judgment of direct and induced infringement is DENIED. 2 IT IS SO ORDERED. □□□ 26 || Date: January, 202 1 MOK 27 / UM T. ne fez Unfted Sfates District Judge 28 3:18-cy-02409-BEN-DEB

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