IPS Group, Inc. v. Duncan Solutions, Inc.
Filing
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ORDER Denying as Moot 177 and 190 Motion for Summary Judgment. Signed by Judge Cathy Ann Bencivengo on 10/2/2017. (mxn)
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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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IPS GROUP, INC.,
Case No.: 15-cv-1526-CAB (MDD)
Plaintiff,
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ORDER ON MOTION FOR
SUMMARY JUDGMENT
[Doc. No. 177]
v.
DUNCAN SOLUTIONS, INC. and
DUNCAN PARKING TECHNOLOGIES,
INC.,
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Defendants.
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This matter comes before the court on Defendants’ motion for summary of non-
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infringement of U.S. Patent Nos. 7,854,310 (“the ‘310 patent”) and 8,595,054 (“the ‘054
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patent”) by the Liberty No Solar Panel and Liberty Next Gen. [Doc. No 177.] The motion
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has been fully briefed and the Court finds it suitable for determination on the papers
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submitted and without oral arguments in accordance with Civil Local Rule 7.1(d)(1). For
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the reasons set forth below, the Court denies the motion.
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I.
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Plaintiff IPS Group, Inc. manufactures solar-powered parking meters and is the sole
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owner of ‘310 and ‘054 patents. Defendants Duncan Solutions, Inc. (“Duncan Solutions”)
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and Duncan Parking Technologies, Inc. (“Duncan Parking”), in direct competition with
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plaintiff, market the Duncan Liberty® Single-Space Meters to municipalities.
Background
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15-cv-1526-CAB (MDD)
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In the Second Amended Complaint, it is alleged that Duncan’s products, “including,
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but not limited to the Duncan Liberty® Single-Space Meters infringe one or more claims
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of the ‘054 the ‘310 Patents. Duncan’s parking meter products are solar powered, fit in
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single space parking meter housings, allow cash and credit card/electronic payment, and
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can be managed wirelessly.” [Doc. No. 34 at ¶ 15.] Plaintiff alleges claims against
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Defendants for direct infringement, willful infringement, inducement of infringement, and
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contributory infringement.
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Plaintiff asserts that Defendants’ Duncan Liberty® Single-Space Meters infringe
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Claim 1 of the ‘054 Patent because it includes, among other things, “an upper portion with
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a solar panel that charges the power management facility.” [Id. at ¶ 31(h).] Claim 1 of the
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‘054 Patent provides that the parking meter device includes an upper portion and a lower
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portion, “wherein the upper portion of the parking meter device includes a solar panel that
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charges the power management facility1.” [Doc. No 34-1, at 12, Col. 6:1-3.]2 Dependent
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Claim 8 states that “[t]he [parking meter as claimed in Claim 1, wherein the solar panel is
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located on the rear side of the upper portion of the parking device and is configured to be
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visible through a solar panel window of the cover when the cover is closed over the upper
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portion.” [Id. at Col. 6:36-40.]
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As to the ‘310 patent, Plaintiff contends that the Duncan Liberty® Single-Space
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Meters infringe as least Claim 1 of the ‘310 patent because it includes, among other things,
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“[a] solar cell operatively associated with said connections to charge said battery.” [Doc.
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No. 34 at ¶ 46(d).] Claim 1 of the ‘310 Patent claims the invention to be a parking meter
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that includes “a solar cell operatively associated with said connections to charge” the
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rechargeable battery used to power the reader, sensor and device. [Doc. No. 34-2 at 9, Col.
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3:57-58.] Further, the claimed parking meter includes “a rear face comprising a surface of
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The power management facility “supplies power to the timer, payment facilitating arrangement, and
display.” [Doc. No. 34, at Col 5:52-54.]
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Document and page cites refer to the CM/ECF assigned page designations at the top of the docketed
document.
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the cover panel and a surface of the intermediate panel set providing a window aperture via
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which said solar cell is exposed to light.” [Id. at Col. 4:5-7.] Claim 9 of the ‘310 Patent
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describes the module of the parking meter as being comprised of multiple elements,
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including an electronic device comprising of “(iv) a solar cell operatively coupled with the
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rechargeable battery to charge the rechargeable batter,[sic] the solar cell being disposed to
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receive light via the second window.” [Id. Col. 4:64-67.]
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On July 31, 2017, Defendants filed their motion for summary judgment of non-
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infringement of U.S. Patent Nos. 7,854,310 and 8,595,054. [Doc. No. 177.3] Plaintiff filed
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its response in opposition [Doc. No. 207] and Defendants filed their reply [Doc. No. 231].
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On August 7, 2017, a claim construction hearing and motion hearing was held in this
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matter and the related litigation, Case No. 3:17-cv-00632-CAB-MD (“the ’17 case”).
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[Doc. No. 186; Doc. No. 66 in the ’17 case.] At the hearing, the undersigned indicated that
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the ‘310 and ‘054 patent infringement claims filed against CivicSmart 4 in the’17 case
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should be moved to this case and asked the parties to meet and confer on the topic and
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submit a joint proposal to the Court. [Doc. No. 78 in the ’17 case, at 26-30, 45-46.] As of
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the date of this Order, the parties have not moved to join CivicSmart nor submitted a joint
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proposal, and the Court has not issued an order consolidating the ’17 case claims into this
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case.
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On August 16, 2017, the undersigned granted Defendants’ motion for summary
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judgment of non-infringement of the ‘310 patent by Duncan’s Liberty® Single-Space
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Meter. [Doc. No. 198.] Accordingly, Defendants’ motion in regards to the ‘310 patent is
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moot.
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A redacted version of this motion and memorandum in support were filed at Doc. No. 190 of the CM/ECF
and the exhibits accompanying the motion were filed under seal at Doc. No. 184.
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In August or so of 2015, Duncan Solutions sold off Duncan Parking Solutions to CivicSmart. Duncan
Parking Solutions is a wholly-owned subsidiary of CivicSmart. [Doc. No. 78 in the ’17 case, at 25.]
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II.
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Pursuant to Federal Rule of Civil Procedure 56(a) summary judgment is appropriate
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when “there is no genuine issue as to any material fact and the moving party is entitled to
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judgment as a matter of law.” However, “courts have ‘no business’ deciding legal disputes
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or expounding on law in the absence of [] a case or controversy.” Already, LLC v. Nike,
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Inc, 568 U.S. 85, 90 (2013) (citing DamilerChrylser Corp. v. Cuno, 547 U.S. 332, 341
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(2006)).
Discussion
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In patent cases, “the existence of case or controversy must be evaluated on a claim-
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by-claim basis.” Fox Group, Inc. v. Cree, Inc., 700 F.3d 1300, 1307 (Fed. Cir. 2012)
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(quoting Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399 (Fed Cir. 1984)).
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“[J]urisdiction must exist at all stages of review, not merely at the time the complaint was
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filed, … a counterclaimant must show a continuing case or controversy with respect to
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withdrawn or otherwise unasserted claims.” Streck, Inc. v. Research & Diagnostic Sys.
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Inc., 665 F.3d 1269, 1282-83 (Fed. Cir. 2012).
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In support of their motion, Defendants contend that its’ Liberty No Solar Panel
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(“NSP”) and Liberty Next Gen (“LNG”), which were offered for sale in June and October
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2016 after Plaintiff filed this suit, lack solar panel or solar cells and therefore cannot
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literally infringe the patents-in-suit. [Doc. No. 190-1 at 9-10.] Additionally, Defendants
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assert that the NSP and LNG cannot infringe under the judicially-created doctrine of
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equivalents. [Id. at 13-16.] In their reply brief, Defendants make two additional arguments
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as to why the motion is properly before the Court. First, they argue that because there is a
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dispute as to whether the NSP and LNG meters are non-infringing alternatives for the
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purpose of calculating a reasonable royalty the Court has jurisdiction. [Doc. No. 231 at 5-
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7.]
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infringement claims filed against CivicSmart in the related litigation, Case No. 3:17-cv-
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00632-CAB-MDD, should be moved to this case, has resulted in the Court having
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jurisdiction over the issue of whether the NSP and LNG meters infringe these patents. [Id.
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at 7-9.]
Second, they assert that the Court’s indication that the ‘310 and ‘054 patent
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Plaintiff does not dispute that the NSP or LNG meters do not include either a solar
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panel or solar cell. Rather, IPS counters that it has never accused the NSP or LNG meters
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of infringement, that neither of these products have appeared in IPS’s preliminary or
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amended infringement contentions, and it has only accused the “traditional Liberty meter
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(with solar panels) of infringement in this case.” [Doc. No. 207 at 7.] Plaintiff posits that
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as result there is not a justiciable case or a live case or controversy regarding these two
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products and this Court, therefore, lacks jurisdiction to decide a motion on unasserted
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claims.
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Here, Plaintiff’s SAC alleges infringement of “at least Claim 1of the ‘054 Patent”
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because it includes, among other things, “an upper portion with a solar panel that charges
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the power management facility.”
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Infringement Contentions, dated January 17, 2017, refer to the Duncan Liberty® Single-
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Space Meters (“the Liberty® Meter”) and the MS™ and M5™ Single-Space Smart Parking
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Meters. [Doc. No. 221-17 at 9-15.] Further, the preamble to the Claim Chart Comparing
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Claim 1 of ‘054 patent to the Liberty® Meter states:
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[Doc. No. 34 at ¶ 31(h).]
Plaintiff’s Amended
at this time IPS Group alleges that the Accused Products include at least
Duncan’s Liberty® Meters.
These contentions therefore analyze
infringement by the Liberty® Meter. However, later discovery in this case
may reveal that additional products made, used, sold, offered for sale, or
imported by DPT and/or DSI infringe this claim. IPS Group reserves the right
to supplement its contentions to add additional accused products based on
subsequent discovery.
[Id. at 64.] The claim chart itself includes multiple instances where the solar panel is
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identified as an element of the accused products. For example, Plaintiff notes that “Duncan
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advertised that the Liberty® Meter is ‘[s]olar powered with rechargeable battery for
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extended life’…. The battery pack is continuously recharged by two solar panels mounted
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below the front and rear LCD displays. . . . The mechanism will automatically switch back
to the primary batteries once the solar panels have sufficiently recharged the battery pack.”
Id. at 73. See also Id. at 77, 90-92, 98-100,101, 103, 104, 107-08. In sum, not only are
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the LNG and NSP meters not specifically identified anywhere within the infringement
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contentions or SAC, the general Liberty® Meters accused of infringing include solar panels
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which means that the LNG and NSP do not fit within this definition.
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In light of these circumstances, the Court concludes that Plaintiff has not alleged or
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contended that the LNG and NSP meters are devices that infringe the patents-at suit. As a
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consequence, the Court DENIES AS MOOT Defendants’ motion for summary judgment
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on the LNG and NSP meters. The Court further concludes that Plaintiff is estopped from
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asserting the LNG and NSP meters infringe the ’310 patent. At this time, the Court offers
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no opinion as to whether the LNG and NSP meters are non-infringing alternatives.
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Whether they constituted an alternative would depend on facts not before the Court, such
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as whether solar powered capability was driving demand for the product. This issue has
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not been properly briefed and is best addressed in relation to damages opinions and
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testimony.
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III.
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Based on the foregoing, the Court DENIES AS MOOT Defendants’ motion for
Conclusion
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summary judgment [Doc. No. 177].
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It is SO ORDERED.
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Dated: October 2, 2017
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