Indect USA Corp. v. Park Assist, LLC

Opinion

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 INDECT USA CORP., a Texas ) Case No.: 3:18-cv-02409-BEN-DEB corporation, ) 12 ) ORDER ON: Plaintiff, 13 ) v. ) (1) MOTIONS FOR SUMMARY 14 ) JUDGMENT; PARK ASSIST, LLC, a Delaware limited 15 ) (2) MOTION TO DISMISS; and liability company, ) (3) REQUESTS FOR JUDICIAL 16 Defendant. ) NOTICE 17 ) PARK ASSIST, LLC, a Delaware limited ) [ECF Nos. 145, 148, 149, and 157] 18 liability company, ) 19 Counterclaimant, ) 20 v. ) ) 21 INDECT USA CORP., a Texas ) corporation, ) 22 Counterdefendant. ) 23 ) 24 This case arises out of a lawsuit filed by Plaintiff Indect USA Corp. (“Indect”) 25 seeking a declaratory judgment that neither Indect nor the users of its products infringed 26 on claims of U.S. Patent Number 9,594,956 (“the ‘956 Patent”) owned by Defendant 27 Park Assist, LLC (“Park Assist”). Second Amended Complaint (“SAC”), ECF No. 58, ¶ 28 6. The matter comes before the Court on (1) Indect and Park Assist’s Cross-Motions for 1 Partial Summary Judgment, (2) Park Assist’s Motion to Dismiss, and (3) Indect’s 2 Requests for Judicial Notice. ECF Nos. 145, 148, 149, and 157. The motions were 3 submitted on the papers without oral argument pursuant to Civil Local Rule 7.1(d)(1) and 4 Rule 78(b) of the Federal Rules of Civil Procedure. ECF No. 190. 5 Based on the parties’ briefs, evidence submitted, and applicable law, the Court: (1) 6 DENIES both parties’ Motions for Partial Summary Judgment as to Indect’s First Claim 7 for Relief; (2) DENIES both parties’ Motions for Partial Summary Judgment on Indect’s 8 Second Claim for Relief; (3) GRANTS Indect’s Motion for Summary Judgment as to its 9 Third Claim for Relief (and also DENIES Park Assist’s Motion to Dismiss that claim); 10 (4) DENIES Park Assist’s Motion for Summary Judgment on Indect’s Fourth Claim for 11 Relief; (5) GRANTS Indect’s Motion for Summary Judgment on Park Assist’s First 12 Counterclaim; (6) DENIES Indect’s Motion for Summary Judgment on Park Assist’s 13 Second Counterclaim; (7) GRANTS Indect’s Motion for Summary Judgment on Park 14 Assist’s Third Counterclaim; and (8) GRANTS Indect’s Requests for Judicial Notice. 15 I. BACKGROUND 16 Indect and Park Assist are direct competitors that develop and sell technologies for 17 camera-based parking guidance systems. Park Assist’s Mot., ECF No. 142, 10; Indect’s 18 Mot., ECF No. 147, 12. These systems manage the occupancy of parking spaces within a 19 parking lot or parking garage by detecting a parking space’s occupancy status with 20 cameras and sensors. Indect Mot., ECF No. 147, 12. Park Assist owns the ‘956 Patent, 21 which is the subject of this lawsuit. 22 Park Assist was also involved in a related lawsuit pending before this Court. See 23 Park Assist, LLC v. San Diego Cty. Reg’l Airport Auth., et al., Case No. 18-cv-2409- 24 BEN-DEB (the “Airport Case”). In the Airport Case, Park Assist sued the San Diego 25 County Regional Airport Authority and Ace Parking Management, Inc. for infringing the 26 ‘956 Patent by using Indect’s UPSOLUT parking guidance system at the Terminal 2 27 parking garage of the San Diego International Airport. On March 31, 2021, the Airport 28 Case settled and has since been dismissed by stipulation of the parties. See Airport Case, 1 ECF No. 146. Before settling, however, the defendants in the Airport Case filed a motion 2 for sanctions pursuant to Rule 11 of the Federal Rules of Civil Procedure (“Rule 11”). 3 Airport Case, ECF No. 42. The Court denied that motion for sanctions. Airport Case, 4 ECF No. 69. Nonetheless, that litigation forms part of the basis for one of Indect’s 5 claims in this case. See SAC, ECF No. 58, ¶¶ 225-31. 6 Shortly after Park Assist filed the Airport Case on September 5, 2018, Indect filed 7 this lawsuit against Park Assist, alleging four claims for relief: (1) declaratory relief that 8 UPSOLUT does not infringe the ‘956 Patent; (2) declaratory relief the ‘956 Patent is 9 invalid; (3) declaratory relief that Indect’s customers do not infringe the ‘956 Patent; and 10 (4) damages and an injunction for Park Assist’s alleged unfair competition in violation of 11 15 U.S.C. § 1125(a) (the “Lanham Act”). See SAC, ECF No. 58, ¶¶ 210-32. In 12 response, Park Assist filed an answer and countercomplaint, alleging three counterclaims 13 for (1) induced infringement of the ‘956 Patent; (2) a declaratory judgment of direct 14 infringement by Indect of the ‘956 Patent; and (3) a declaratory judgment of induced 15 infringement by Indect of the ‘956 Patent. Answer, ECF No. 68, ¶¶ 40-58. 16 The ‘956 Patent is relatively straightforward and contains only two claims. Claim 17 1 is at issue here. In its entirely, claim 1 states: 18 What is claimed is: 1. A method of managing a plurality of parking spaces, comprising: 19 (a) monitoring a parking space with an imaging device of an 20 imaging unit; (b) detecting, by said imaging unit, occupancy of said parking space; 21 (c) assigning said parking space, in which said occupancy was 22 detected, an occupied status, wherein said occupied status is indicated by illuminating a first color of a multicolor indicator 23 collocated with said imaging device, said first color predefined 24 to determine said occupied status; (d) obtaining, as a result of said parking space having said occupied 25 status, a single high resolution image of a vehicle occupying said 26 parking space, said high resolution image obtained by said imaging device; 27 (e) storing at least part of said high resolution image on a storage 28 device; 1 (f) displaying a thumbnail image of said parking space on a graphic user interface (GUI), said thumbnail image digitally processed 2 from an image electronically communicated to said GUI from 3 said imaging unit; (g) deciding whether said occupied status is incorrect, based on a 4 visual review of said thumbnail image on said GUI; 5 (h) correcting said occupied status, by inputting computer-readable instructions to a computer terminal of said GUI, if said parking 6 space shown in said thumbnail image is vacant and said 7 computer terminal electronically communicating a command to toggle said multicolor indicator to illuminate a second color, said 8 second color predefined to indicate a vacant status; 9 (i) extracting from said high resolution image, by digital image processing, a permit identifier for said vehicle and comparing 10 said permit identifier with at least one parking permit 11 identification stored on said storage to determine a permit status of said parked vehicle; and 12 (j) initiating an infringement process for said vehicle having said 13 permit identifier that fails to coincide with at least one of said at least one parking permit identification. 14

See ‘956 Patent, Col. 22:30-23:4. At the parties’ request, the Court construed several 15 terms of the ‘956 Patent. See Claims Construction Order, ECF No. 80. 16 On June 21, 2021, both parties filed their respective Motions for Partial Summary 17 Judgment. ECF Nos. 145, 149. The Final Pretrial Conference is scheduled for October 18 4, 2021. ECF No. 152. 19 II. LEGAL STANDARDS 20 A. Motion for Summary Judgment 21 Summary judgment is appropriate where “the movant shows that there is no 22 genuine dispute as to any material fact and the movant is entitled to judgment as a matter 23 of law.” Fed. R. Civ. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 24 (1986). A fact is material if it could affect the outcome of the case under governing law. 25 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute of material fact is 26 genuine if the evidence, viewed in light most favorable to the non-moving party, “is such 27 that a reasonable jury could return a verdict for the non-moving party.” Id. The party 28 1 seeking to defeat summary judgment must come forward with affirmative evidence from 2 which a reasonable jury could render a verdict in that party’s favor. Id. at 252. However, 3 the nonmoving party’s mere allegation that factual disputes exist between the parties will 4 not defeat an otherwise properly supported motion for summary judgment. See Fed. R. 5 Civ. P. 56(c); see also Phytelligence, Inc. v. Washington State Univ., 973 F.3d 1354, 6 1364 (Fed. Cir. 2020) (“Mere allegation and speculation do not create a factual dispute 7 for purposes of summary judgment.”) (quoting Nelson v. Pima Cmty. College, 83 F.3d 8 1075, 1081-82 (9th Cir. 1996)). Additionally, while the Court will draw all reasonable 9 inferences in the non-moving party’s favor and believe the evidence of the non-moving 10 party, the Court will not draw unreasonable inferences and cannot believe evidence that 11 does not exist. Cf. Anderson, 477 U.S. at 255. 12 When ruling on such a motion for summary judgment, courts apply federal circuit 13 law to issues unique to patent law, Nuance Commc’ns, Inc. v. Abbyy Software House, 626 14 F.3d 1222, 1230 (Fed. Cir. 2010), and regional circuit law to substantive issues that are 15 not unique to patent law or procedural issues. See, e.g., Chrysler Motors Corp. v. Auto 16 Body Panels of Ohio, Inc., 908 F.2d 951, 952–53 (Fed. Cir. 1990) (“When this court 17 considers questions on appeal involving substantive matters not exclusively assigned to 18 the Federal Circuit, our general practice is to apply to related procedural issues the 19 appropriate regional circuit law.”). 20 On motions for summary judgment involving patent infringement, the party 21 claiming patent infringement must prove infringement “by a preponderance of the 22 evidence, which simply requires proving that infringement was more likely than not to 23 have occurred.” Warner-Lambert Co. v. Teva Pharm. USA, Inc., 418 F.3d 1326, 1341, 24 n.15 (Fed. Cir. 2005) (internal citations omitted). Because the ultimate issue of 25 infringement is a question of fact, Columbia Sportswear N. Am., Inc. v. Seirus Innovative 26 Accessories, Inc., 942 F.3d 1119, 1129 (Fed. Cir. 2019), infringement issues that require 27 courts to draw inferences from the known facts are not well-suited to summary judgment 28 because all such inferences must be drawn against the moving party, Matsushita Elec. 1 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). 2 B. Motion to Dismiss for Lack of Standing 3 Federal courts are courts of limited jurisdiction. Kokkonen v. Guardian Life Ins. 4 Co. of Am., 511 U.S. 375, 377 (1994). Consequently, district courts are presumed to lack 5 jurisdiction unless the Constitution or a statute expressly provides otherwise. Stock West, 6 Inc. v. Confederated Tribes, 873 F.2d 1221, 1225 (9th Cir. 1989); see also 28 U.S.C. § 7 1447 (requiring district courts to remand a case “[i]f at any time before final judgment it 8 appears that the district court lacks subject matter jurisdiction”). 9 Article III of the United States Constitution limits the subject-matter jurisdiction of 10 federal courts to justiciable “cases” and “controversies.” U.S. Const., Art. III, § 2. The 11 Supreme Court has held that for a case to meet the justiciability requirement, a plaintiff 12 must show (1) standing; (2) that the case is ripe; (3) the case is not moot; and (4) the case 13 does not involve a political question. See, e.g., DaimlerChrysler Corp. v. Cuno, 547 U.S. 14 332, 335 (2006) (“The doctrines of mootness, ripeness, and political question all originate 15 in Article III’s ‘case’ or ‘controversy’ language, no less than standing does.”). 16 Consequently, a “lack of Article III standing requires dismissal for lack of subject matter 17 jurisdiction under Federal Rule of Civil Procedure 12(b)(1).” Maya v. Centex Corp., 658 18 F.3d 1060, 1067 (9th Cir. 2011) (emphasis omitted). 19 III. DISCUSSION 20 As laid out above, the Court makes rulings on each of the four Claims for Relief 21 and three Counterclaims at issue in this case. However, the Court finds it most 22 straightforward to address these claims out of order by first considering the validity of the 23 ‘956 Patent; then, turning to the parties’ direct and induced infringement claims; before 24 finally concluding with Indect’s unfair competition claim. Rest assured, the Court 25 summarizes its findings with respect to each Claim for Relief and Counterclaim at the 26 conclusion of this Order. 27 A. Validity of the ‘956 Patent 28 Indect makes several challenges to the validity of the ‘956 Patent that form the 1 basis for its Second Claim for Relief in the SAC. 2 “Under 35 U.S.C. § 282, a patent is presumed valid, and the one attacking validity 3 has the burden of proving invalidity by clear and convincing evidence.” Atlas Powder 4 Co. v. E.I. duPont deNemours & Co., 750 F.2d 1569, 1573 (Fed. Cir. 1984). “Thus, a 5 moving party seeking to invalidate a patent at summary judgment must submit such clear 6 and convincing evidence of invalidity so that no reasonable jury could find otherwise.” 7 Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). In this case, the 8 Court finds that Indect has failed to present clear and convincing evidence showing why 9 the ‘956 Patent is invalid. 10 1. The ‘956 Patent is not indefinite 11 Indect first argues the Court should grant summary judgment on its Second Claim 12 for Relief because step (h) of the ‘956 Patent is invalid due to indefiniteness. Indect 13 Mot., ECF No. 147, 26. Specifically, Indect contends that the ‘956 Patent, as written, is 14 impossible to perform, and therefore is indefinite for lack of enablement. Id. Park Assist 15 responds that step (h) of the ‘956 Patent is conditional, and therefore claim 1 of the ‘956 16 Patent is enabled by the specification and not indefinite. Park Assist Opp’n, ECF No. 17 159, 24-25. 18 Section 112 of the Patent Act provides that the “specification shall contain a 19 written description of the invention, and the manner and process of making and using it, 20 in such full, clear, concise, and exact terms as to enable any person skilled in the art to 21 which it pertains . . . to make and use the same.” 35 U.S.C. § 112(a) (emphasis added). 22 “Whether a claim satisfies § 112’s enablement requirement is a question of law.” 23 Trustees of Bos. Univ. v. Everlight Elecs. Co., 896 F.3d 1357, 1361 (Fed. Cir. 2018). 24 “[T]o be enabling, the specification of a patent must teach those skilled in the art how to 25 make and use the full scope of the claimed invention without ‘undue experimentation.’” 26 Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (alteration in 27 original) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). Thus, “a patent is 28 invalid for indefiniteness if its claims, read in light of the specification delineating the 1 patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled 2 in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 3 U.S. 898, 901 (2014). “[W]hen an impossible limitation, such as a nonsensical method of 4 operation, is clearly embodied within the claim, the claimed invention must be held 5 invalid.” Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 6 1999). 7 Indect argues the ‘956 Patent must be read to include both the image of a vacant 8 parking space and extraction of a high-resolution image of a license plate. Indect Mot., 9 ECF No. 147, 26-27. Indect contends that this is nonsensical, because only an image of a 10 vehicle could contain a license plate from which a high-resolution image could be 11 extracted, and an empty parking space cannot contain an image of a vehicle. See id. Park 12 Assist responds that the step of the ‘956 Patent at issue here is conditional, and therefore 13 the step “need not ever be met for the claim to be practiced.” Park Assist Opp’n, ECF 14 No. 159, 25. 15 Step (h) of the ‘956 Patent describes how part of the claimed patent includes a 16 method for correcting a space’s occupied status once it becomes vacant: 17 correcting said occupied status, by inputting computer-readable instructions to a computer terminal of said GUI, if said parking space 18 shown in said thumbnail image is vacant and said computer terminal 19 electronically communicating a command to toggle said multicolor indicator to illuminate a second color, said second color predefined to 20 indicate a vacant status 21 ‘956 Patent, Col. 22:56-62 (emphasis added). While the Court agrees the contingent 22 clause of step (h) could have been more clearly written at the beginning of step (h) to 23 avoid this confusion, it is also mindful that courts “strive, wherever possible, to avoid 24 nonsensical results in construing claim language.” AIA Eng'g Ltd. v. Magotteaux Int'l 25 S/A, 657 F.3d 1264, 1276 (Fed. Cir. 2011) (citing Bd. of Regents of the Univ. of Tex. Sys. 26 v. BENQ Am. Corp., 533 F.3d 1362, 1370 (Fed. Cir. 2008)). Here, reading step (h) as 27 applying only in cases where the parking space in the thumbnail image is vacant thwarts 28 Indect’s challenge. 1 Accordingly, the Court finds the ‘956 Patent, including but not limited to Step (h) 2 of Claim 1, is not invalid for indefiniteness. 3 2. The ‘956 Patent is not directed at an abstract idea 4 While the Court concludes the ‘956 Patent is not invalidated on indefiniteness 5 grounds, Indect also argues the ‘956 Patent is invalid because it is impermissibly 6 “directed to the law of nature, natural phenomenon, or abstract idea.” Indect Mot., ECF 7 No. 147, 28 (citing 35 U.S.C. § 101). Park assist opposes this contention by pointing out 8 that the Court has addressed this argument before in relation to the ‘956 Patent in the 9 Airport Case. Opp’n, ECF No. 159, 26-27 (citing Park Assist, LLC v. San Diego Cty. 10 Reg'l Airport Auth., 402 F. Supp. 3d 956, 959 (S.D. Cal. 2019)). 11 Section 101 of the Patent Act provides that “[w]hoever invents or discovers any 12 new and useful process . . . or any new and useful improvement thereof, may obtain a 13 patent therefore, subject to the conditions and requirements of this title.” 35 U.S.C. § 14 101. The term “process” “includes a new use of a known process, machine, manufacture, 15 composition of matter, or material.” 35 U.S.C. § 100(b). Patent protection, however, 16 does not extend to patent ineligible concepts of laws of nature, natural phenomena, and 17 abstract ideas, which are “building blocks of human ingenuity.” Alice Corp. Party Ltd. v. 18 CLS Bank, Int'l, 573 U.S. 208, 217 (2014). Accordingly, the Court must “distinguish 19 between patents that claim the building blocks of human ingenuity and those that 20 integrate the building blocks into something more, thereby transforming them into a 21 patent-eligible invention.” Id. at 217 (internal quotation marks and citations omitted). To 22 do so, the Supreme Court has outlined a two-step process. See id. First, the Court 23 determines whether the claims at issue are “directed to” a patent ineligible concept. Id. 24 If so, the Court next determines whether additional elements of the claim, both 25 individually and as an ordered combination, produce an “inventive concept” by 26 “transform[ing] the nature of the claim into patent-eligible application.” Id. If, however, 27 the Court finds during the first step that the claims are directed to a patent-eligible 28 concept, the claims satisfy Section 101, and the Court need not proceed to the second 1 step. Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). 2 This Court previously held that “the ‘956 Patent’s claims are not abstract because 3 they are directed to specific improvements to known parking guidance systems.” Park 4 Assist, 402 F. Supp. 3d at 960. Nonetheless, Indect argues that the Federal Circuit’s 5 recent decision in Yu v. Apple, Inc., 1 F.4th 1040 (Fed. Cir. 2021), requires a different 6 outcome here. Indect Mot., ECF No. 148, 28. Specifically, Indect contends that the ‘956 7 Patent “is directed to an abstract idea of processing and displaying information because it 8 implements the abstract idea on existing generic components and algorithms.” Id. at 29. 9 In Yu, the Federal Circuit affirmed the district court’s decision invalidating an 10 improved digital camera patent because the patent’s claims recited “[o]nly conventional 11 components” performing “only their basic functions.” 1 F.4th at 1043. The court found 12 the claim to be “simply a generic environment in which to carry out the abstract idea.” 13 Id. By contrast, and as this Court discussed when it previously addressed this issue, the 14 ‘956 Patent’s claims “are directed to ‘a specific means or method’ for improving parking 15 guidance system technology, rather than simply directed to an abstract end-result.” Park 16 Assist, 402 F. Supp. 3d at 963 (citations omitted). The ‘956 Patent includes “a novel 17 [graphic user interface], a self-modifying classification algorithm that allows the parking 18 system to adapt and learn from past errors to improve detection accuracy, and a 19 collocated imaging/indicator structure.” Id. Each of these improvements distinguishes 20 the ‘956 Patent from the Yu patent. Moreover, Yu neither changes the Alice framework 21 nor requires a different result here. The ‘956 Patent is not directed at a patent-ineligible 22 concept, and the Court’s analysis of Indect’s abstractness argument concludes here. See 23 Visual Memory, 867 F.3d at 1262. 24 Accordingly, the Court finds the ‘956 Patent is not invalid on grounds it is directed 25 at an abstract idea. 26 3. A triable issue remains as to obviousness over prior art 27 While the Court concludes the ‘956 is not invalidated on indefiniteness or 28 abstractness grounds, Indect also argues the ‘956 Patent is invalid as obvious over prior 1 art. Indect Opp’n, ECF No. 165, 16-20. Park Assist asks the Court to grant summary 2 judgment that the ‘956 Patent is not invalid based on obviousness over prior art. Park 3 Assist Mot., ECF No. 142, 20. 4 Here, the application for the ‘956 Patent has an effective filing date of May 8, 5 2011. See ‘956 Patent. Because that date is before March 13, 2013, the applicable 6 version of 35 U.S.C. § 102 (“Section 102”) is the version predating the America Invents 7 Act (“AIA”). In re Marquez, 738 F. App’x 1012, 1013 n.1 (Fed. Cir. 2018). 8 At the time, Section 102 provided that “[a] person shall be entitled to a patent 9 unless — (b) the invention was patented or described in a printed publication in this or a 10 foreign country or in public use or on sale in this country, more than one year prior to the 11 date of the application for patent in the United States.” 35 U.S.C. § 102 (pre-AIA). 12 This “prior art” is defined as “[k]nowledge that is publicly known, used by others, 13 or available on the date of invention to a person of ordinary skill in an art, including what 14 would be obvious from that knowledge.” Garner, Brian A., Black’s Law Dictionary, 15 ART (11th ed. 2019). Prior art includes information (1) “in applications for previously 16 patented inventions”; (2) “published more than one year before a patent application is 17 filed”; and (3) “in other patent applications and inventor’s certificates filed more than a 18 year before the application is filed.” Id. 19 When applied to a method patent, “there is no reason or statutory basis . . . on 20 which . . . secret commercialization of a process, if established, could be held a bar to the 21 grant of a patent . . . on that process.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 22 F.2d 1540, 1550 (Fed. Cir. 1983). Thus, regardless of whether a product is sold before 23 the critical date, the question is whether “the public could learn the claimed process by 24 examining the [product].” Id. “Whether an invention was on sale within the meaning of 25 § 102(b) is a question of law.” Electromotive Div. of Gen. Motors Corp. v. Trans. Sys. 26 Div. of Gen. Elec. Co., 417 F.3d 1203, 1209 (Fed. Cir. 2005). The party asserting 27 obviousness has the burden of proving a patent is obvious over prior art by clear and 28 convincing evidence. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996). 1 Indect argues the ‘956 Patent is invalid because Park Assist’s own M3 Parking 2 System is prior art of the ‘956 Patent. Indect Opp’n, ECF No. 165, 14. Applying the 3 ‘956 Patent’s effective filing date to Section § 102(b), the critical date to constitute prior 4 art is May 8, 2010, or one year before the filing date of the claimed invention. See Park 5 Assist Mot., ECF No. 142, 17-18; Indect Opp’n, ECF No. 165, 15. In support of Indect’s 6 allegation, it argues that, prior to the critical date, (1) Park Assist used a version of a 7 promotional brochure (the “M3 Brochure”) and (2) an article (the “Intertraffic Article”) 8 promoting the M3 Parking System was published in an industry magazine. Opp’n, ECF 9 No. 165, 16-18. Indect also argues the M3 Parking System was offered for sale before 10 the critical date. Id. at 18-19. 11 Notably, Park Assist does not dispute that the method used by the M3 Parking 12 System is indistinguishable from its ‘956 Patent. See Park Assist Mot. 142 at 18-20. 13 Instead, Park Assist argues Indect has no evidence the M3 Brochure or Intertraffic Article 14 were published prior to the critical date. Id. at 18. Indect responds that metadata 15 indicates the M3 Brochure was created on March 17, 2010, almost two months before the 16 critical date. Indect Opp’n, ECF No. 165, 17. While Park Assist argues metadata 17 showing date of creation does not prove publication, see Park Assist Reply, ECF No. 187, 18 6, the Court concludes that a triable issue of fact exists as to whether the M3 Brochure is 19 prior art of the ‘956 Patent. 20 The same holds true for the Intertraffic Article, published in Intertraffic World 21 around the critical date. The Intertraffic Article, found in a printed publication and 22 written by Park Assist’s CEO, describes the PASE-2 Parking System, which was later 23 renamed the M3 Parking System. Indect Opp’n, ECF No. 165, Ex. D-2. If published 24 before the critical date, this may serve as invalidating prior art for the ‘956 Patent. See 35 25 U.S.C. § 102 (pre-AIA). Park Assist contends that there is no evidence the Intertraffic 26 Article was distributed at the 2010 Intertraffic Trade Show, which occurred before the 27 critical date, and that “it would make more sense for the publication to be distributed after 28 the show, thus allowing it to report on the show.” Park Assist Reply, ECF No. 187, 13- 1 14. The Court disagrees. It may be more likely that the publication was produced before 2 the Trade Show to publicize the upcoming event. The Court need not resolve that issue 3 now and it is better left for the jury to determine at trial. 4 Finally, Indect argues that the M3 Parking System is prior art because it was 5 offered for sale before the critical date. Indect Opp’n, ECF No. 165, 18-19. The alleged 6 offer for sale concerns Park Assist’s bid to provide the M3 Parking System to the 7 Cadillac Fairview Chinook Centre in Calgary, Canada. Indect Opp’n, ECF No. 165, 15- 8 16. Park Assist responds that this is not prior art because the proposal cited by Indect 9 (the “Chinook Document”) is incomplete and there is no evidence the document was ever 10 presented to the customer. Park Assist Mot., ECF No. 142, 19. Park Assist also contends 11 that (1) process claims, like those at issue in the ‘956 Patent, cannot be the subject of an 12 offer of sale and (2) the sale took place in Canada, making Section 102(b) inapplicable to 13 that sale. Id. The Court agrees with Park Assist with respect to the Chinook Document. 14 “The law is unequivocal that the sale of equipment to perform a process is not a 15 sale of the process within the meaning of section 271(a).” Joy Techs, Inc. v. Flakt, Inc., 6 16 F.3d 770, 773 (Fed. Cir. 1993). When evaluating whether a patented method is obvious 17 over prior art for purposes of Section 102(b), the inquiry is not whether a product 18 produced by the method is sold before the critical date, but whether the patented method 19 underlying the product was disclosed or the public could learn the claimed process by 20 examining the product. See W.L. Gore, 721 F.2d at 1550. In this case, the Chinook 21 Document is an offer to sell a product – the M3 Parking System – not the method 22 underlying that system. See Indect Opp’n, ECF No. 165, Ex. D-3. Indect relies on 23 Robotic Vision Systems, Inc. v. View Engineering, Inc., 249 F.3d 1307 (Fed. Cir. 2001), 24 for the proposition that sale of a product can make the method the product uses prior art. 25 Indect Opp’n, ECF No. 165, 18. However, Robotic is distinguishable because in that 26 case there was evidence the co-inventor of the method explained the invention to another 27 party and “[t]his explanation was sufficiently specific for [the other party] to understand 28 the invention and to write the software needed to implement the method.” 249 F.3d at 1 1311. Here, on the other hand, Indect cannot point the Court to any evidence that Park 2 Assist offered to explain the method underlying the M3 Parking System product to 3 Chinook Centre. Instead, the Chinook Document only offers the M3 Parking System, not 4 the method the M3 Parking System relies upon. See Indect Opp’n, ECF No. 165, Ex. D- 5 3. It follows, then, that an offer to sell the M3 Parking System as a product made before 6 the critical date cannot form the basis for a contention that the ‘956 Patent’s method was 7 obvious over prior art. See W.L. Gore, 721 F.2d at 1550. 8 4. Conclusion as to validity of the ‘956 Patent 9 “Under 35 U.S.C. § 282, a patent is presumed valid, and the one attacking validity 10 has the burden of proving invalidity by clear and convincing evidence.” Atlas Powder, 11 750 F.2d at 1573. As set forth above, Indect has not met its burden of proving invalidity 12 of the ‘956 Patent because a reasonable jury could conclude that the M3 Brochure and 13 Intertraffic Article are not prior art that would render the ‘956 Patent obvious, and thus, 14 invalid to a person of ordinary skill in the art. Accordingly, the Court DENIES (1) 15 Indect’s Motion for Summary Judgment on its Second Claim for Relief and (2) Park 16 Assist’s Motion for Summary Judgment with respect to obviousness. 17 B. A Triable Issue of Fact Remains as to Direct Infringement 18 The Court next turns to the parties’ cross-motions for summary judgment on 19 Indect’s First Claim for Relief and Park Assist’s Second Counterclaim. Indect’s First 20 Claim for Relief seeks a declaratory judgment that it does not infringe the ‘956 Patent. 21 SAC, ECF No. 58, ¶¶ 210-214. Park Assist’s Second Counterclaim seeks declaratory 22 relief that Indect does infringe the ‘956 Patent. Answer, ECF No. 68, ¶¶ 47-52. 23 “To prove direct infringement a patentee must establish, by a preponderance of the 24 evidence, that one or more claims of the patent read on the accused device literally or 25 under the doctrine of equivalence.” NuVasive, Inc. v. Alphatec Holdings, Inc., No. 3:18- 26 CV-347-CAB-MDD, 2020 WL 1984061, at *1 (S.D. Cal. Apr. 24, 2020) (citing 27 Advanced Cardiovascular Sys., Inc., v. Scimed Life Sys., Inc. 261 F.3d 1329, 1336 (Fed 28 Cir. 2001)). “The patentee has the burden of proving infringement by a preponderance of 1 the evidence.” Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1328 (Fed. Cir. 2019). 2 When seeking summary judgment of non-infringement, “nothing more is required than 3 the filing of a motion stating that the patentee has no evidence of infringement and 4 pointing to the specific ways in which the accused [products do] not meet the claim 5 limitations.” Exigent Tech. v. Atrana Solutions, Inc., 442 F.3d 1301, 1309 (Fed. Cir. 6 2006). Because a moving party seeking a judgment of non-infringement does not “have 7 to support its motion [for summary judgment] with evidence of non-infringement,” 8 noninfringement is more likely to be amenable to summary judgment than infringement. 9 Id. at 1308-09. This is because the patent holder must show every limitation of a claim is 10 found in the accused device to secure a summary judgment of infringement whereas an 11 accused infringer need only show that its product lacks a single limitation to avoid 12 infringement. 3rd Eye Surveillance, LLC v. United States, No. 15-501C, 2020 WL 13 7021437, at *3 (Fed. Cl. Nov. 20, 2020). 14 Park Assist argues that Indect’s UPSOLUT system infringes on each step of claim 15 1 of the ‘956 Patent with the sole exception of step (h), which the Court has already 16 determined is conditional and therefore not required to be performed for infringement to 17 occur. Park Assist Mot., ECF No. 142, 20-21. Park Assist contends that Indect’s expert, 18 Dr. Havlicek, admitted that the UPSOLUT has the capability to practice the remaining 19 elements of claim 1. Id. at 21. Indect responds that its expert made no such concession, 20 and that even if step (h) is not required for infringement, there is no evidence that Indect 21 has ever performed steps (f), (g), (h), and (j) of the ‘956 Patent. Indect Mot., ECF No. 22 147, 14. The Court concludes a triable issue of fact on direct infringement exists. 23 For example, step (f) of the ‘956 Patent requires “displaying a thumbnail image of 24 said parking space on a graphic user interface (GUI), said thumbnail image digitally 25 processed from an image electronically communicated to said GUI from said imaging 26 unit.” ‘956 Patent, Col. 22:49-52. The Court construed “displaying a thumbnail image” 27 as “displaying a small near real-time image of a picture of said parking space on the 28 computer screen.” Claims Construction Order, ECF No. 80, 13. The Court adopted this 1 construction because “the intent of the invention is in part to ‘provide real-time 2 feedback,’” on parking space availability. Id. In contrast, Dr. Havlicek’s rebuttal report 3 indicates that when using Indect’s parking guidance system, hours or days could pass 4 without a new picture being taken of a particular parking space. Melgar Decl. Ex. 61, 5 ECF No. 142-63, ¶ 105. So long as the vehicle in the space does not move, Dr. Havlicek 6 opines that no new image would be taken and displayed. Id. If no new image is 7 displayed, the feedback is not “near real time,” meaning UPSOLUT is not practicing step 8 (f). If UPSOLUT does not practice step (f) of Claim 1, it cannot infringe. See 3rd Eye 9 Surveillance, 2020 WL 7021437 at *3 (stating that the infringer’s “failure to meet even 10 one element within a claim, literally or by its substantial equivalent, negates a finding of 11 infringement”). 12 While Park Assist responds by stating that Indect’s expert, Dr. Havlicek, “admitted 13 to the capability of the UPSOLUT system to practice element[s] (a)-(g), (i) and (j) in his 14 expert report and/or deposition,” Park Assist Mot., ECF No. 142, 21, the argument relies 15 on a rather contorted interpretation of Dr. Havlicek’s testimony. Further, expert opinions 16 on legal conclusions may not defeat or warrant summary judgment. See, e.g., Telemac 17 Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316 (Fed. Cir. 2001) (holding “broad 18 conclusory statements offered by Telemac’s experts are not evidence and are not 19 sufficient to establish a genuine issue of material fact”). The Court is hesitant to endorse 20 Park Assist’s argument on near real-time display at all. Instead, it concludes there is a 21 triable issue of fact as to whether Indect practices at least step (f) of claim 1. Given 22 Indict must practice each step of claim 1 to be found liable for infringement, a triable 23 issue of material fact also exists as to whether Indect infringes on the ‘956 Patent. 24 Because a triable issue of material fact exists, the Court DENIES the parties cross- 25 motions for summary judgment on Indect’s First Claim for Relief and Park Assist’s 26 Second Counterclaim. 27 C. Induced Infringement of the ‘956 Patent 28 The Court next turns to induced infringement. Indect’s Third Claim for Relief 1 seeks declaratory judgment that its customers do not infringe the ‘956 Patent. SAC, ECF 2 No. 58, ¶¶ 220-224. Park Assist’s First Counterclaim similarly argues that Indect is 3 liable for induced infringement through installation of Indect’s parking guidance system 4 at the San Diego International Airport. Answer, ECF No. 68, ¶¶ 40-46. While Park 5 Assist’s companion suit against the airport has settled, see Airport Case, ECF No. 146, 6 there is nothing stopping Park Assist from bringing similar suits against Indect’s 7 customers at this time. 8 1. Subject matter jurisdiction exists for the induced infringement claim 9 Indect’s Third Claim for Relief seeks a declaratory judgment that the end-users of 10 its products do not infringe on the ‘956 Patent. See SAC, ECF No. 58, ¶¶ 220-24. 11 Park Assist argues the Court lacks subject matter jurisdiction for Indect’s Third 12 Claim for Relief because Indect lacks standing to bring claims on behalf of its unnamed 13 customers using Indect’s parking guidance systems. Park Assist Mot., ECF No. 142, 28. 14 Park Assist contends that because Indect sells products, and the ‘956 Patent has only 15 process claims, a “highly individualized inquiry” would be required to determine which, 16 if any, of Indect’s customers actually performed the steps of the ‘956 Patent to constitute 17 infringement. Id. Indect responds that the Court has subject matter jurisdiction to 18 consider its declaratory relief claim for non-infringement by its customers because a 19 “substantial controversy” exists between the parties. Indect Opp’n, ECF No. 165, 28-30. 20 The Court previously addressed this issue in its Order denying Indect’s Motion to 21 Dismiss two of Park Assist’s counterclaims, including the induced infringement 22 counterclaim. Order, ECF No. 96. There, the Court explained how the Declaratory 23 Judgment Act allows district courts to declare rights even if they cannot grant other relief: 24 The Declaratory Judgment Act provides that “in a case of actual controversy,” a federal court “may declare the rights and other legal 25 relations of any interested party seeking such declaration, whether or 26 not further relief could be sought.” 28 U.S.C. § 2201(a). In patent cases, declaratory judgment of infringement is available when the 27 defendant engages in acts “directed toward making, selling, or using 28 subject to an infringement charge under 35 U.S.C. § 271(a) . . . or [ ] 1 making meaningful preparation for such activity,” that “indicate a refusal to change the course of its actions in the face of acts by the 2 patentee sufficient to create a reasonable apprehension that a suit will 3 be forthcoming.” Lang v. Pac. Marine & Supply Co., 895 F.2d 761, 764 (Fed. Cir. 1990). This standard allows for declaratory judgment 4 in cases that, at first glance, may appear to seek an advisory opinion 5 based on hypothetical, future conduct.

6 Id. at 3. At that time, Indect sought to dismiss Park Assist’s counterclaims for induced 7 infringement by arguing Park Assist sought relief for future, speculative harm. Id. Now, 8 the shoe appears to be on the other foot, and Park Assist seeks to use the Court’s order in 9 its favor as a sword against Indect’s Third Claim for Relief. Park Assist seeks to dismiss 10 Indect’s claim for declaratory relief that it does not commit induced infringement on the 11 basis that such a claim is too speculative. Park Assist Mot., ECF No. 142, 28. While the 12 parties’ positions have changed, the Court’s analysis has not. 13 Under the AIA, “[w]hoever actively induces infringement of a patent shall be 14 liable as an infringer.” 35 U.S.C. § 271(b). In other words, and as applies to this case, if 15 Indect induces its customers to infringe on Park Assist’s ‘956 Patent by using its 16 program, Indect is liable to Park Assist for those customers’ infringement. In order to 17 prevail on a claim of induced infringement, a patent holder must come forward with 18 evidence of (1) acts of direct infringement of a patent by the defendant or third-party (in 19 this case, Indect’s customers’ use of UPSOLUT); (2) the defendant knowingly inducing 20 infringement by taking “affirmative steps to bring about the desired result” (i.e., Indect 21 encouraging its customers to use UPSOLUT in a configuration that infringes the ‘956 22 Patent); and (3) the defendant’s knowledge that the acts it induced would result in patent 23 infringement. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 760-61, 766 24 (2011) (“Accordingly, we now hold that induced infringement under § 271(b) requires 25 knowledge that the induced acts constitute patent infringement.”). “While proof of intent 26 is necessary, direct evidence is not required; rather, circumstantial evidence may 27 suffice.” Id. (quoting Water Techs. Corp v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 28 1988)). 1 Here, the induced infringement claim remains “a case of actual controversy.” 28 2 U.S.C. § 2201(a). The parties are direct competitors in the field of parking guidance 3 systems, and Park Assist has sent letters to some of Indect’s potential customers 4 “threaten[ing] potential customers against using Indect’s product.” Order, ECF No. 26, 5 11 n.3. To the extent Park Assist argues its claims relating to Indect’s potential 6 customers who did not receive those letters should be treated differently, it is a 7 meaningless distinction. Were these claims dismissed today, Park Assist could send 8 threatening letters to Indect’s customers and potential customers tomorrow. 9 “MedImmune [Inc. v. Genentech, Inc., 549 U.S. 118 (2007)] adopted an ‘adverse 10 legal interest’ requirement” for analyzing whether a case or controversy exists in the 11 patent context. Arris Group, Inc. v. British Telecomms. PLC, 639 F.3d 1368, 1374 (Fed. 12 Cir. 2011). “An ‘adverse legal interest’ requires a dispute as to a legal right – for 13 example, an underlying legal cause of action that the declaratory defendant could have 14 brought or threatened to bring.” Id. “[W]here a patent holder accuses customers of direct 15 infringement based on the sale or use of a supplier's equipment, the supplier has standing 16 to commence a declaratory judgment action if . . . there is a controversy between the 17 patentee and the supplier as to the supplier's liability for induced or contributory 18 infringement based on the alleged acts of direct infringement by its customers.” Id. at 19 1375. The reason for this is that if the end customers were found liable, the supplier 20 would be obligated to indemnify its customers from infringement liability. Id. As a 21 result, the law allows the supplier to “stand in the shoes of the customers” by representing 22 their interests due to the supplier’s legal obligation to indemnity. Id. 23 That is exactly the case here. Park Assist has accused Indect’s customers of direct 24 infringement, resulting in a controversy existing between Park Assist and Indect 25 regarding Indect’s liability for induced infringement based on Indect’s customers’ direct 26 infringement. Thus, Indect has standing to bring its declaratory claim for non- 27 infringement by its customers. Park Assist’s Motion to Dismiss Indect’s Third Claim for 28 Relief is DENIED. 1 2. Park Assist’s First Counterclaim is dismissed 2 Indect moves for summary judgment on Park Assist’s First Counterclaim, which 3 alleges “Indect induced and continues to induce infringement of the ‘956 Patent under 35 4 U.S.C. § 271(b) by supplying its UPSOLUT system” for the parking system operated at 5 the San Diego International Airport. Answer, ECF No. 68, ¶ 42. As noted above, Park 6 Assist’s suit against the airport has now settled, and Park Assist has provided no evidence 7 the parking guidance system installed at the airport infringes the ‘956 Patent. 8 “[L]iability for induced infringement must be predicated on direct infringement.” 9 Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 920-21 (2014). “To prove 10 direct infringement a patentee must establish, by a preponderance of the evidence, that 11 one or more claims of the patent read on the accused device literally or under the doctrine 12 of equivalence.” NuVasive, 2020 WL 1984061, at *1. 13 In response to Indect’s Motion for Summary Judgment on the First Counterclaim, 14 Park Assist provides no evidence that the airport installation actually infringed the ‘956 15 Patent. Instead, Park Assist attempts to side-step this deficiency by arguing that Indect’s 16 installation at the airport is “not part of Park Assist’s case or this case at all.” Park Assist 17 Opp’n, ECF No. 159, 18. Not so. See Answer, ECF No. 68, ¶ 42. Park Assist’s First 18 Counterclaim alleges Indect induced infringement relying solely on Indect’s installation 19 at the airport. Despite this reliance, Park Assist has not provided any evidence that 20 system – as used at the airport – infringes the ‘956 Patent. 21 Accordingly, the Court GRANTS Indect’s Motion for Summary Judgment as to 22 Park Assist’s First Counterclaim for induced infringement of the ‘956 Patent. Park 23 Assist’s First Counterclaim is dismissed with prejudice. 24 3. Park Assist’s Third Counterclaim is dismissed 25 Both parties appear to move for summary judgment on Indect’s Third Claim for 26 Relief and Park Assist’s Third Counterclaim, which seek declaratory relief that Indect 27 does or does not induce infringement of the ‘956 Patent by selling its UPSOLUT system 28 when configured to perform all the steps of claim 1 of the ‘956 Patent. Indect Mot., ECF 1 No. 147, 15-16; Park Assist Mot., ECF No. 142, 23-27. However, Park Assist argues in 2 opposition to Indect’s Motion for Summary Judgment that “it is not aware of any other 3 infringers and has not accused Indect of inducement with respect to other customers, so 4 there can be no actual controversy with respect to induced infringement and any other 5 customers.” Opp’n, ECF No. 159, 23-24. Thus, it appears Park Assist no longer moves 6 for summary judgment on its Third Counterclaim and instead argues dismissal of its own 7 counterclaim is appropriate. The Court agrees dismissal is appropriate, but as explained 8 below, it does so only after granting summary judgment in Indect’s favor. 9 Federal courts may only hear cases or controversies. U.S. Const. art. III, § 2. “The 10 Declaratory Judgment Act authorizes this Court to issue judicial decisions as a remedy, 11 28 U.S.C. § 2201(a), but only where a justiciable controversy exists.” Gen. Elec. Co. v. 12 NeuroGrafix, Case No. 2:12-CV-04586-MRP-RZ, 2012 WL 13013132, at *1 (C.D. Cal. 13 Aug. 16, 2012), adhered to on reconsideration, No. 2:12-CV-04586-MRP, 2012 WL 14 12888331 (C.D. Cal. Sept. 28, 2012). “A justiciable controversy exists where alleged 15 facts, under all circumstances, show a substantial controversy between parties having 16 adverse legal interests of sufficient immediacy and reality.” Id. (citing MedImmune, 549 17 U.S. at 127. “[F]ollowing MedImmune, proving a reasonable apprehension of suit is one 18 of multiple ways that a declaratory judgment plaintiff can satisfy the more general all- 19 the-circumstances test to establish that an action presents a justiciable Article III 20 controversy.” Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1336 (Fed. Cir. 21 2008). Indect has done so here. 22 First, Indect has been sued for direct and induced infringement. See Answer, ECF 23 No. 68, ¶¶ 40-46, 53-58. Second, Indect has provided evidence that Park Assist sent 24 letters to Indect’s potential customers warning those potential customers that doing 25 business with Indect could expose those customers “to liability for actual damages, treble 26 damages for willfully infringement [sic] and injunctive relief against the sale or use of the 27 infringing systems.” See, e.g., Storm Decl. Ex. 25, ECF No. 168-2. 28 No bright line rule establishes when the case or controversy requirement is met. 1 MedImmune, 549 U.S. at 127. “The analysis must be calibrated to the particular facts of 2 each case.” Prasco, 557 F.3d at 1336. Here, Indect’s alleged injury for which it seeks 3 declaratory judgment that it has not induced infringement is “based on a real and 4 immediate injury or threat of future injury” caused by Park Assist. Id. at 1339 (emphasis 5 in original). As Indect notes, Park Assist could have sought voluntary dismissal of its 6 Third Counterclaim pursuant to Federal Rule of Civil Procedure 41, but Park Assist has 7 not done so. Indect Reply, ECF No. 183, 5. Instead, after extensive discovery and 8 litigation, Park Assist now argues the Court lacks jurisdiction to hear this counterclaim. 9 Given Park Assist’s conduct and Indect’s real and immediate liability for induced 10 infringement unrelated to the airport, the Court concludes that the case or controversy 11 requirement is met as to Park Assist’s Third Counterclaim. 12 The remaining question is whether the Court should grant Indect’s Motion for 13 Summary Judgment as to its Third Claim for Relief and Park Assist’s Third Counterclaim 14 for induced infringement. As with the First Counterclaim discussed above, Park Assist 15 provides no evidence Indect has or “will induce infringement of the ‘956 Patent under 35 16 U.S.C. § 271(b) by continuing to supply future customers with its UPSOLUT system that 17 could be configured to perform the steps that infringe the ‘956 Patent when the systems 18 are in operation.” Answer, ECF No. 68, ¶ 54. “The patentee has the burden of proving 19 infringement by a preponderance of the evidence.” Eli Lilly, 933 F.3d at 1328. Park 20 Assist has not met that burden with respect to induced infringement in Indect’s Third 21 Claim for Relief or its own Third Counterclaim. 22 Accordingly, the Court GRANTS Indect’s Motion for Summary Judgment on its 23 Third Claim for Relief and Park Assist’s Third Counterclaim for induced infringement. 24 Due to the absence of evidence in Park Assist’s favor, a reasonable jury could not 25 conclude that Indect has induced infringement of the ‘956 Patent. Thus, no genuine issue 26 of fact exists as to that issue, and the Court grants judgment in favor of Indect and against 27 Park assist as to Indect’s Third Claim for Relief and Park Assist’s Third Counterclaim. 28 1 D. A Triable Issue of Fact Remains as to Indect’s Fourth Claim for Relief for Unfair Competition 2

3 Indect’s Fourth Claim for Relief alleges Park Assist violated the Lanham Act (1) 4 by disparaging Indect and its products in the marketplace “with objectively baseless 5 claims of patent infringement” and (2) through threats of litigation, and later, sham 6 litigation. See SAC, ECF No. 58, ¶¶ 225-31. Indect argues that although Park Assist 7 allegedly knew there was no basis for infringement allegations, Park Assist nonetheless 8 proceeded with the Airport Case and contacted Indect’s potential customers about the 9 same. Indect Opp’n, ECF No. 165, 5-6. Indect seeks damages for unfair competition, as 10 well as an injunction “prohibiting Park Assist from continuing to engage in such 11 wrongful conduct.” SAC, ECF No. 58, ¶ 231. 12 To prove a violation of the Lanham Act, a plaintiff must prove five elements: 13 (1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product; (2) the statement 14 actually deceived or has the tendency to deceive a substantial segment 15 of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false 16 statement to enter interstate commerce; and (5) the plaintiff has been 17 or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by a lessening of 18 the goodwill associated with its products. 19 Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1139 (9th Cir. 1997) (citing 20 Cook, Perkiss and Liehe, Inc. v. Northern Cal. Collection Serv., Inc., 911 F.2d 242, 244 21 (9th Cir. 1990)). 22 Park Assist moves for summary judgment on this claim, arguing that (1) its patent 23 enforcement actions are immune from liability absent bad faith and (2) Indect cannot 24 show Park Assist proximately caused damages or materially affected customer 25 purchasing decisions. Park Assist Mot., ECF No. 142, 9-16. The Court addresses these 26 arguments in turn. 27 1. Park Assist may have acted in bad faith 28 Park Assist argues the Court should grant summary judgment because its efforts to 1 protect the ‘956 Patent are immune from liability under Noerr-Pennington doctrine 2 absent a showing of bad faith, which Indect cannot prove. Park Assist Mot., ECF No. 3 142, 9-10. Indect responds that the record contains ample evidence of Park Assist’s bad 4 faith. Indect Opp’n, ECF No. 165, 7-8. 5 To avoid summary judgment, a party claiming bad faith patent enforcement, like 6 Indect, “must present affirmative evidence sufficient for a reasonable jury to conclude 7 that the patentee acted in bad faith, in light of the burden of clear and convincing 8 evidence that will adhere at trial.” Springs Window Fashions LP v. Novo Inds., L.P., 323 9 F.3d 989, 999 (Fed. Cir. 2003) (concluding that the defendant “failed to meet its burden 10 of putting forward affirmative evidence of bad faith.”). 11 Under Noerr-Pennington doctrine, “those who petition any department of the 12 government for redress are generally immune from liability for their petitioning conduct.” 13 Sosa v. DIRECTV, Inc., 437 F.3d 923, 929 (9th Cir. 2006). The Ninth Circuit has also 14 observed that litigation activities constituting “communication to the court” may be fairly 15 construed as petitioning activity for purposes of Noerr-Pennington doctrine. Id. at 933. 16 However, Noerr-Pennington doctrine does not protect sham petitions. Id. at 930. In the 17 context of civil litigation, a “sham petition” is one that is so objectively baseless that “no 18 reasonable litigant could realistically expect success on the merits.” GP Indus., Inc. v. 19 Eran Indus., Inc., 500 F.3d 1369, 1374 (Fed. Cir. 2008) (quoting Prof’l Real Estate 20 Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49, 60 (1993)). 21 Outside the context of litigation that may be protected by Noerr-Pennington 22 doctrine, the Federal Circuit has observed that “before a patentee may be held liable 23 under [the Lanham Act] for marketplace activity in support of its patent, and thus be 24 deprived of the right to make statements about potential infringement of its patent, the 25 marketplace activity must have been undertaken in bad faith.” Zenith Elecs. Corp. v. 26 Exzec, Inc., 182 F.3d 1340, 1353 (Fed. Cir. 1999). “Bad faith includes separate objective 27 and subjective components.” Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH, 28 524 F.3d 1254, 1260 (Fed. Cir. 2008). 1 As pertains to this case, resolution of Park Assist’s Motion for Summary Judgment 2 as to Indect’s Fourth Claim for Relief turns largely on whether Park Assist (1) pursued 3 the Airport Case in an objectively baseless manner and (2) took other marketplace actions 4 in bad faith. 5 Indect argues that the Airport Case was objectively baseless because at the time 6 Park Assist filed suit in the Airport Case, Park Assist knew or should have known that the 7 airport’s parking system did not infringe the ‘956 Patent because the airport did not 8 implement a preferred parking system as required to practice steps (i) and (j) of the ‘956 9 Patent. Indect Opp’n, ECF No. 165, 12. Indect further alleges that this fact “was 10 publicly observable to anyone willing to look.” Id. Thus, Indect reasons, the Airport 11 Case was objectively baseless. Id. It was also subjectively baseless, Indect argues, 12 because “all of this evidence and information . . . was available to Park Assist, and its 13 counsel, when [the parties in the Airport Case previously litigated the Rule 11 Motion.]” 14 Id. at 13. In opposition, Park Assist relies heavily on the Court’s decision to deny 15 sanctions in the Rule 11 dispute as a basis for this Court finding the Airport Case was no 16 objectively baseless. See Park Assist Reply, ECF No. 187, 2. This reliance is misplaced. 17 The Court based its decision in the Rule 11 motion in the Airport Case on the 18 evidence before it at the time, and, though similar language is used by both tests, a 19 different legal standard to the bad faith analysis. Though Park Assist also contends there 20 is additional evidence to support its claim against the airport, the Court finds that Indect 21 has at least created a triable issue of fact as to whether Park Assist’s continued pursuit of 22 the Airport Case was objectively baseless. 23 Turning to Park Assist’s other marketplace actions, Indect points to a host of 24 emails and letters to consultants in the industry and potential clients that show Park Assist 25 may have engaged in bad faith competition by overstating the reach of the ‘956 Patent. 26 See, e.g., Storm Decl. Exs. 18-23, ECF Nos. 167-16 to 167-20. Park Assist responds by 27 arguing that its efforts to merely protect its intellectual property cannot form a basis for 28 liability. Park Assist Mot., ECF No. 142, 9 (citing Virtue v. Creamery Package Mfg. Co., 1 227 U.S. 8, 37-38 (1913)). However, Indect points to letters sent by Park Assist that 2 suggest Park Assist may have held itself out to be “the exclusive source of a certain type 3 of product because of its patent,” and the Federal Circuit has found such conduct 4 actionable under the Lanham Act. See Zenith, 182 F.3d at 1344. 5 Accordingly, the Court concludes a triable issue of fact exists as to whether Park 6 Assist acted in bad faith. However, the Lanham Act also requires as a plaintiff to prove 7 that the plaintiff “has been or is likely to be injured as a result of the false statement, 8 either by direct diversion of sales from itself to defendant or by a lessening of the 9 goodwill associated with its products.” Southland Sod, 108 F.3d at 1139. If Indect has 10 not provided evidence of such damages, summary judgment of this claim might be 11 appropriate. Thus, the Court continues its analysis. 12 2. Park Assist may have caused Indect’s damages 13 Park Assist argues summary judgment is also appropriate because there is no 14 evidence that it caused Indect’s damages or that Indect’s potential customers relied on 15 Park Assist’s statements about the ‘956 Patent when making purchasing decisions. Park 16 Assist Mot., ECF No. 142, 11-16. Indect responds that it has put forth such evidence. 17 Indect Opp’n, ECF No. 165, 8-12. 18 A false statement is “material” if “it is likely to influence [a customer’s] 19 purchasing decision.” Southland Sod, 108 F.3d at 1139. As discussed above, Indect 20 points to several letters sent by Park Assist to industry consultants and potential 21 customers that suggest choosing an Indect parking guidance system could expose 22 customers to legal liability. See, e.g., Storm Decl. Exs. 18-23, ECF Nos. 167-16 to 167- 23 20. Moreover, Indect has produced evidence suggesting that Park Assist not only warned 24 one potential customer of this liability, but also agreed to indemnify that customer 25 “against any intellectual property claims resulting from the use of the Part Assist system.” 26 Storm Decl. Ex. 46, ECF No. 170-3. Thus, there is at least a triable issue of fact as to 27 whether Park Assist wielded a patent litigation immunity shield as a sword towards some 28 of Indect’s customers, and some evidence that at least one customer made a purchasing 1 decision on this basis. 2 3. Conclusion as to unfair competition 3 The Court concludes triable issues of fact remain on whether Park Assist (1) acted 4 in bad faith or (2) undertook actions that may have impacted consumer decisions and 5 caused damages. Accordingly, it DENIES Park Assist’s Motion for Summary Judgment 6 on Indect’s Fourth Claim for Relief. 7 E. Request for Judicial Notice 8 Indect’s First Request for Judicial Notice in Support of Plaintiff’s Motion for Partial 9 Summary Judgment asks the Court to take judicial notice of (1) Exhibit A-1 attached to 10 the Storm Declaration filed with Indect’s Partial Motion for Summary Judgment, which is 11 a true and correct copy of U.S. Patent No. 9,594,956; (2) Exhibit A-22 attached to the 12 Storm Declaration filed with Indect’s Partial Motion for Summary Judgment, which is a 13 true and correct copy of excerpts to the prosecution history of the U.S. Patent No. 14 9,594,956; and (3) the Notice of Voluntary Dismissal entered in the case Park Assist, LLC 15 v. San Diego County Regional Airport Authority et al, Case No. 18-CV-2068-BENDEB 16 (Dkt. No. 146). ECF Nos. 148, 149-2. Indect’s Second Request for Judicial Notice asks 17 the Court take judicial notice of (1) Exhibit D-43 attached to the Storm Declaration filed 18 with Indect’s Response to Defendant’s Motion for Partial Summary Judgment, which is a 19 true and correct copy of U.S. Patent Application No. 2008/0258935 (“Lee application”); 20 (2) Exhibit D-44 attached to the Storm Declaration filed with Indect’s Response to 21 Defendant’s Motion for Partial Summary Judgment, which is a true and correct copy of 22 U.S. Patent Application No. 2009/0192950 (“King application”); and (3) Exhibit D-45 23 attached to the Storm Declaration filed with Indect’s Response to Defendant’s Motion for 24 Partial Summary Judgment, which is a true and correct copy of excerpts to the prosecution 25 history of the U.S. Patent No. 9,594,956. ECF No. 157. Both requests are unopposed. 26 Rule 201(b) of the Federal Rules of Evidence allows courts, at any stage of 27 proceeding, to take judicial notice of (1) facts not subject to reasonable dispute and 28 “generally known within the trial court’s territorial jurisdiction” and (2) adjudicative facts, 1 which “can be accurately and readily determined from sources whose accuracy cannot 2 reasonably be questioned.” See also Asdar Group v. Pillsbury, Madison & Sutro, 99 F.3d 3 289, 290, fn. 1 (9th Cir. 1996) (taking judicial notice of court records); Enterprise Bank v. 4 Magna Bank of Missouri, 92 F.3d 743, 746 (8th Cir. 1996) (holding that the district court 5 did not err by taking judicial notice of pleadings in earlier related proceedings). 6 The Court concludes these materials are appropriate for judicial notice because they 7 are not subject to reasonable dispute and their accuracy cannot be reasonably questioned. 8 Thus, the Court GRANTS Indect’s Requests for Judicial Notice. 9 IV. CONCLUSION 10 For the foregoing reasons the Court rules as follows: 11 1. Indect and Park Assist’s Cross-Motions for Summary Judgment on Indect’s 12 First Claim for Relief for a declaratory judgment of non-infringement as to Park Assist’s 13 ‘956 Patent are DENIED. 14 2. Indect and Park Assist’s Cross-Motions for Summary Judgment on Indect’s 15 Second Claim for Relief for a declaratory judgment of invalidity as to Park Assist’s ’956 16 Patent are DENIED. 17 3. Park Assist’s Motion to Dismiss Indect’s Third Claim for Relief for 18 declaratory relief regarding non-infringement of Park Assist’s ‘956 Patent by Indect’s 19 users is DENIED. 20 4. Indect’s Motion for Summary Judgment on its Third Claim for Relief and 21 Park Assist’s Third Counterclaim for declaratory judgment of induced infringement of 22 the ‘956 Patent is GRANTED. The Court grants judgment in favor of Indect and against 23 Park Assist as to (1) Indect’s Third Claim for Relief for non-infringement of Park 24 Assist’s ‘956 Patent by Indect’s users and (2) Park Assist’s Third Counterclaim for a 25 declaratory judgment of induced infringement of the ‘956 Patent. Both claims are 26 dismissed with prejudice. 27 5. Park Assist’s Motion for Summary Judgment on Indect’s Fourth Claim for 28 Relief for Unfair Competition is DENIED. 1 6. Indect’s Motion for Summary Judgment Park Assist’s First Counterclaim for 2 induced infringement of the ‘956 Patent is GRANTED. The Court grants judgment in 3 || favor of Indect and against Park Assist as to Park Assist’s First Counterclaim dismisses 4 || that counterclaim with prejudice. 5 7. Indect’s Motion for Summary Judgment on Park Assist’s Second 6 ||Counterclaim for declaratory judgment of direct infringement is DENIED. 7 8. Indect’s Request for Judicial Notice, ECF Nos. 148 and 157, are 8 || GRANTED. 9 Thus, following summary judgment, the Court grants summary judgment in 10 || Indect’s favor as to (1) its Third Claim for Relief and (2) Park Assist’s First and Third 11 |}Counterclaims. The following claims remain for trial in this matter: (1) Indect’s First, 12 ||Second, and Fourth Claims for Relief as well as (2) Park Assist’s Second Counterclaim. 13 IT IS SO ORDERED. ° 14 Dated: July 28, 2021 15 . ROGER T. BENIT United States District Judge 16 17 18 19 20 21 22 23 24 25 26 27 28 29