IPS Group, Inc. v. Duncan Solutions, Inc.

Filing 239

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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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 IPS GROUP, INC., Case No.: 15-cv-1526-CAB (MDD) Plaintiff, 12 13 14 ORDER ON MOTION FOR SUMMARY JUDGMENT [Doc. No. 177] v. DUNCAN SOLUTIONS, INC. and DUNCAN PARKING TECHNOLOGIES, INC., 15 16 Defendants. 17 18 This matter comes before the court on Defendants’ motion for summary of non- 19 infringement of U.S. Patent Nos. 7,854,310 (“the ‘310 patent”) and 8,595,054 (“the ‘054 20 patent”) by the Liberty No Solar Panel and Liberty Next Gen. [Doc. No 177.] The motion 21 has been fully briefed and the Court finds it suitable for determination on the papers 22 submitted and without oral arguments in accordance with Civil Local Rule 7.1(d)(1). For 23 the reasons set forth below, the Court denies the motion. 24 I. 25 Plaintiff IPS Group, Inc. manufactures solar-powered parking meters and is the sole 26 owner of ‘310 and ‘054 patents. Defendants Duncan Solutions, Inc. (“Duncan Solutions”) 27 and Duncan Parking Technologies, Inc. (“Duncan Parking”), in direct competition with 28 plaintiff, market the Duncan Liberty® Single-Space Meters to municipalities. Background 1 15-cv-1526-CAB (MDD) 1 In the Second Amended Complaint, it is alleged that Duncan’s products, “including, 2 but not limited to the Duncan Liberty® Single-Space Meters infringe one or more claims 3 of the ‘054 the ‘310 Patents. Duncan’s parking meter products are solar powered, fit in 4 single space parking meter housings, allow cash and credit card/electronic payment, and 5 can be managed wirelessly.” [Doc. No. 34 at ¶ 15.] Plaintiff alleges claims against 6 Defendants for direct infringement, willful infringement, inducement of infringement, and 7 contributory infringement. 8 Plaintiff asserts that Defendants’ Duncan Liberty® Single-Space Meters infringe 9 Claim 1 of the ‘054 Patent because it includes, among other things, “an upper portion with 10 a solar panel that charges the power management facility.” [Id. at ¶ 31(h).] Claim 1 of the 11 ‘054 Patent provides that the parking meter device includes an upper portion and a lower 12 portion, “wherein the upper portion of the parking meter device includes a solar panel that 13 charges the power management facility1.” [Doc. No 34-1, at 12, Col. 6:1-3.]2 Dependent 14 Claim 8 states that “[t]he [parking meter as claimed in Claim 1, wherein the solar panel is 15 located on the rear side of the upper portion of the parking device and is configured to be 16 visible through a solar panel window of the cover when the cover is closed over the upper 17 portion.” [Id. at Col. 6:36-40.] 18 As to the ‘310 patent, Plaintiff contends that the Duncan Liberty® Single-Space 19 Meters infringe as least Claim 1 of the ‘310 patent because it includes, among other things, 20 “[a] solar cell operatively associated with said connections to charge said battery.” [Doc. 21 No. 34 at ¶ 46(d).] Claim 1 of the ‘310 Patent claims the invention to be a parking meter 22 that includes “a solar cell operatively associated with said connections to charge” the 23 rechargeable battery used to power the reader, sensor and device. [Doc. No. 34-2 at 9, Col. 24 3:57-58.] Further, the claimed parking meter includes “a rear face comprising a surface of 25 26 The power management facility “supplies power to the timer, payment facilitating arrangement, and display.” [Doc. No. 34, at Col 5:52-54.] 2 Document and page cites refer to the CM/ECF assigned page designations at the top of the docketed document. 1 27 28 2 15-cv-1526-CAB (MDD) 1 the cover panel and a surface of the intermediate panel set providing a window aperture via 2 which said solar cell is exposed to light.” [Id. at Col. 4:5-7.] Claim 9 of the ‘310 Patent 3 describes the module of the parking meter as being comprised of multiple elements, 4 including an electronic device comprising of “(iv) a solar cell operatively coupled with the 5 rechargeable battery to charge the rechargeable batter,[sic] the solar cell being disposed to 6 receive light via the second window.” [Id. Col. 4:64-67.] 7 On July 31, 2017, Defendants filed their motion for summary judgment of non- 8 infringement of U.S. Patent Nos. 7,854,310 and 8,595,054. [Doc. No. 177.3] Plaintiff filed 9 its response in opposition [Doc. No. 207] and Defendants filed their reply [Doc. No. 231]. 10 On August 7, 2017, a claim construction hearing and motion hearing was held in this 11 matter and the related litigation, Case No. 3:17-cv-00632-CAB-MD (“the ’17 case”). 12 [Doc. No. 186; Doc. No. 66 in the ’17 case.] At the hearing, the undersigned indicated that 13 the ‘310 and ‘054 patent infringement claims filed against CivicSmart 4 in the’17 case 14 should be moved to this case and asked the parties to meet and confer on the topic and 15 submit a joint proposal to the Court. [Doc. No. 78 in the ’17 case, at 26-30, 45-46.] As of 16 the date of this Order, the parties have not moved to join CivicSmart nor submitted a joint 17 proposal, and the Court has not issued an order consolidating the ’17 case claims into this 18 case. 19 On August 16, 2017, the undersigned granted Defendants’ motion for summary 20 judgment of non-infringement of the ‘310 patent by Duncan’s Liberty® Single-Space 21 Meter. [Doc. No. 198.] Accordingly, Defendants’ motion in regards to the ‘310 patent is 22 moot. 23 24 25 26 27 28 3 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. 4 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.] 3 15-cv-1526-CAB (MDD) 1 II. 2 Pursuant to Federal Rule of Civil Procedure 56(a) summary judgment is appropriate 3 when “there is no genuine issue as to any material fact and the moving party is entitled to 4 judgment as a matter of law.” However, “courts have ‘no business’ deciding legal disputes 5 or expounding on law in the absence of [] a case or controversy.” Already, LLC v. Nike, 6 Inc, 568 U.S. 85, 90 (2013) (citing DamilerChrylser Corp. v. Cuno, 547 U.S. 332, 341 7 (2006)). Discussion 8 In patent cases, “the existence of case or controversy must be evaluated on a claim- 9 by-claim basis.” Fox Group, Inc. v. Cree, Inc., 700 F.3d 1300, 1307 (Fed. Cir. 2012) 10 (quoting Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399 (Fed Cir. 1984)). 11 “[J]urisdiction must exist at all stages of review, not merely at the time the complaint was 12 filed, … a counterclaimant must show a continuing case or controversy with respect to 13 withdrawn or otherwise unasserted claims.” Streck, Inc. v. Research & Diagnostic Sys. 14 Inc., 665 F.3d 1269, 1282-83 (Fed. Cir. 2012). 15 In support of their motion, Defendants contend that its’ Liberty No Solar Panel 16 (“NSP”) and Liberty Next Gen (“LNG”), which were offered for sale in June and October 17 2016 after Plaintiff filed this suit, lack solar panel or solar cells and therefore cannot 18 literally infringe the patents-in-suit. [Doc. No. 190-1 at 9-10.] Additionally, Defendants 19 assert that the NSP and LNG cannot infringe under the judicially-created doctrine of 20 equivalents. [Id. at 13-16.] In their reply brief, Defendants make two additional arguments 21 as to why the motion is properly before the Court. First, they argue that because there is a 22 dispute as to whether the NSP and LNG meters are non-infringing alternatives for the 23 purpose of calculating a reasonable royalty the Court has jurisdiction. [Doc. No. 231 at 5- 24 7.] 25 infringement claims filed against CivicSmart in the related litigation, Case No. 3:17-cv- 26 00632-CAB-MDD, should be moved to this case, has resulted in the Court having 27 jurisdiction over the issue of whether the NSP and LNG meters infringe these patents. [Id. 28 at 7-9.] Second, they assert that the Court’s indication that the ‘310 and ‘054 patent 4 15-cv-1526-CAB (MDD) 1 Plaintiff does not dispute that the NSP or LNG meters do not include either a solar 2 panel or solar cell. Rather, IPS counters that it has never accused the NSP or LNG meters 3 of infringement, that neither of these products have appeared in IPS’s preliminary or 4 amended infringement contentions, and it has only accused the “traditional Liberty meter 5 (with solar panels) of infringement in this case.” [Doc. No. 207 at 7.] Plaintiff posits that 6 as result there is not a justiciable case or a live case or controversy regarding these two 7 products and this Court, therefore, lacks jurisdiction to decide a motion on unasserted 8 claims. 9 Here, Plaintiff’s SAC alleges infringement of “at least Claim 1of the ‘054 Patent” 10 because it includes, among other things, “an upper portion with a solar panel that charges 11 the power management facility.” 12 Infringement Contentions, dated January 17, 2017, refer to the Duncan Liberty® Single- 13 Space Meters (“the Liberty® Meter”) and the MS™ and M5™ Single-Space Smart Parking 14 Meters. [Doc. No. 221-17 at 9-15.] Further, the preamble to the Claim Chart Comparing 15 Claim 1 of ‘054 patent to the Liberty® Meter states: 16 17 18 19 20 21 [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 22 identified as an element of the accused products. For example, Plaintiff notes that “Duncan 23 advertised that the Liberty® Meter is ‘[s]olar powered with rechargeable battery for 24 extended life’…. The battery pack is continuously recharged by two solar panels mounted 25 26 27 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 28 5 15-cv-1526-CAB (MDD) 1 the LNG and NSP meters not specifically identified anywhere within the infringement 2 contentions or SAC, the general Liberty® Meters accused of infringing include solar panels 3 which means that the LNG and NSP do not fit within this definition. 4 In light of these circumstances, the Court concludes that Plaintiff has not alleged or 5 contended that the LNG and NSP meters are devices that infringe the patents-at suit. As a 6 consequence, the Court DENIES AS MOOT Defendants’ motion for summary judgment 7 on the LNG and NSP meters. The Court further concludes that Plaintiff is estopped from 8 asserting the LNG and NSP meters infringe the ’310 patent. At this time, the Court offers 9 no opinion as to whether the LNG and NSP meters are non-infringing alternatives. 10 Whether they constituted an alternative would depend on facts not before the Court, such 11 as whether solar powered capability was driving demand for the product. This issue has 12 not been properly briefed and is best addressed in relation to damages opinions and 13 testimony. 14 III. 15 Based on the foregoing, the Court DENIES AS MOOT Defendants’ motion for Conclusion 16 summary judgment [Doc. No. 177]. 17 It is SO ORDERED. 18 Dated: October 2, 2017 19 20 21 22 23 24 25 26 27 28 6 15-cv-1526-CAB (MDD)

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