IPS Group, Inc. v. Civicsmart, Inc. et al

Filing 130

Claim Construction Order. Signed by Judge Cathy Ann Bencivengo on 12/13/2018. (anh)

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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.: 17-CV-632-CAB-(MDD)
Plaintiff,

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v.

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CLAIM CONSTRUCTION ORDER

CIVICSMART, INC., DUNCAN
SOLUTIONS, INC. and DUNCAN
PARKING TECHNOLOGIES, INC.,

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Defendants.

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Plaintiff IPS Group, Inc. (“IPS”) alleges that defendants CivicSmart, Inc., Duncan

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Solutions, Inc. and Duncan Parking Technologies (collectively “CivicSmart”) infringe

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U.S. Patent No. 8,513,832 and U.S. Patent No. 9,391,474 for a “Power Supply Unit” and

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U.S. Patent No. 8,749,403 and U.S. Patent No. 9,424,691 for “Parking Meter

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Communications for Remote Payment with Updated Display.” [Doc. No. 23.] Before the

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Court now are the claim terms and phrases of these patents that the parties contend require

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construction. The parties briefed their claim construction positions in accordance with this

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District’s patent local rules. [Doc. Nos. 108, 109, 111, 112.] The Court held a claim

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construction hearing on September 5, 2018. [Doc Nos. 117, 118.] The Court requested

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and the parties filed supplemental briefing with regard to certain terms after the hearing.

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[Doc. Nos. 120, 121, 122, 123.]

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Having fully considered the initial and supplemental briefings of the parties and the

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arguments of counsel, for the reasons set forth below and discussed more fully at the claim

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construction hearing, the Court now enters this order construing the following terms and

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phrases.

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A.

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The ‘474 patent [Doc. No. 108-4] is a continuation of the ‘832 patent [Doc. No. 108-

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3] and therefore has a common specification. These patents are directed at power supply

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The ‘832 and ‘474 Patents

unit for a single bay parking meter. [Id., Col. 1:10-12.]

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1. “battery”

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The Court construes “battery” for both the ‘832 patent and the ‘474 patent, as “one

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or more energy storage cells used as a single source of power.”

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2. “housing that encloses”

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Claims 1 and 17 of the ‘832 patent claim a power supply unit that includes a “housing

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that encloses the main battery, the back-up battery, the control unit, and the wireless

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communication device.” [Id., Col. 3:58-60; Col. 5:7-9.] The parties agreed that a

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“housing” is a “shell or casing” and according to the plain language of the claims that

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casing “encloses,” i.e., surrounds or contains, the four listed components. The claims

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further require this casing that encloses the four component parts be received within the

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parking meter, or the parking meter housing. [Id., Col. 3:61-62; Col. 5:10-12.] The power

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supply unit housing is therefore a structure containing the enumerated parts that is

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independent of the meter, or the meter housing, such that it can be placed within the meter

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structure. The Court construes the power supply unit “housing that encloses” as an

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“independent shell or casing that surrounds or contains” the enumerated component parts.

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3. “received within the parking meter”

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Claim 1 of the ‘832 patent requires the housing of the power supply unit be “received

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within the parking meter.” [Id., Col. 3:61-62.] The Court construes this to mean “contained

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inside the parking meter device.”

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4. “control unit”

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Claim 1 and claim 17 of the ‘832 patent and claim 18 of the ‘474 patent, all recite

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“a control unit for controlling supply of power to the load primarily from the main battery

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and secondarily from the backup battery.” [Id., Col. 3:55-57; Col. 54-6; Doc. No. 108-4,

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Col. 5:1-3.]

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Defendants contend that the claim term “control unit” connotes no definite structure,

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it simply recites a unit for controlling the supply of power. “Unit” is generally recognized

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as a non-structural generic placeholder. MPEP § 2181(I)(A). Adding “control” as a

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modifier of “unit” provides no further structural disclosure. Defendants further contend

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that the claim language recites function without reciting sufficient structure for performing

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the function. The words of the claim, a control unit to control the supply of power, does

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not identify a definite structure to a person of skill in the art. Consequently, Defendants

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contend that “control unit” should be construed as a means-plus-function element, pursuant

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to 35 U.S.C. §112 ¶ 6. [Doc. No. 108-1, ¶¶ 25-37.]

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Plaintiff contends that in light of the function and the specification, the claimed term

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“control unit” would be readily recognized by a person of skill in the art to be circuitry,

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and optionally software, capable of regulating power. [Doc. No. 109-1, ¶¶ 39-42.] The

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specification identifies a conventional linear, low dropout regulator, “known in the trade

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as the Linear Technology model LT1529-5” as the control unit that controls the supply of

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power to the load from the main battery and the backup battery. [Doc No. 108-3, Col.

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2:41-45.] Figure 4 of the patent depicts a “circuit diagram of the power supply unit” [id.,

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Col. 2:13] and the control unit in that diagram is depicted using a diode symbol with

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connections to the back-up battery, the main battery and the communications device,

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although there is no further explanation in the specification regarding this arrangement or
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how it operates. [Id., Fig. 4.] Plaintiff contends that a person of skill in the art would

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therefore know from the disclosure and the diagram that the claim term control unit means

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circuitry capable of regulating the supply of power, and would further understand the

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LT1529-5 low dropout regulator to be an example of such circuitry.1 Plaintiff provides no

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reference to the specification to support its assertion that a person of skill in the art would

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also understand the control unit to include software. [Doc. No. 109-1, ¶42.]

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In determining whether to apply 112 ¶ 6 to a claim term, the standard is whether the

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words of the claim are understood by persons of skill in the art to have a sufficiently definite

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structure. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). The

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Court finds that “control unit” is a non-structural placeholder identified only by its

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function, “controlling supply of power to the load primarily from the main battery and

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secondarily from the backup battery,” and is therefore subject to a means-plus-function

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analysis. Applying 112 ¶ 6, the Court must determine what structure, if any, disclosed in

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the specification corresponds to the claimed function. Williamson, 792 F.3d at 1351.

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The specification clearly identifies the Linear Technology model LT1529-5 low

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dropout regulator as the structure that provides the function of controlling the supply of

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power to the load primarily from the main battery and secondarily from the backup battery.

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[Doc. No. 108-3, Col. 2:41-46, Col. 2:64 - Col. 3:- 64.] Figure 4 of the specification, a

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circuit diagram of the power supply unit, identifies the control unit only as a box with diode

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symbol and connections to the back-up battery, the main battery and the communications

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device. This circuitry configuration is acknowledged by both parties to be different than

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the operation of the LT1529-5 low dropout regulator.

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The Court therefore concludes that the specification discloses both the specific

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example of the LT1529-5 low dropout regulator as a structure that will control the supply

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of power to the load primarily from the main battery and secondarily from the backup

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Defendants’ Motion to Exclude Undisclosed Documents and Portions of Plaintiff’s Expert Declaration
submitted in support of this argument as untimely is denied. [Doc. No. 113.]
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battery, as well as informing a person of skill in the art that circuitry as depicted in Fig. 4

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could also provide this function. The Court however finds no support in the specification

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for the Plaintiff’s assertion that software is also disclosed to perform this function. [Doc.

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No. 109-1, ¶ 42.] Although a person of skill in the art may have implemented software to

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achieve this function, or the multiple other functions of the control unit, discussed below,

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the patent does not disclose the use of software. Medical Instrumentation and Diagnostics

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v. Elekta, 344 F.3d 1205, 1212 (Fed. Cir. 2003) (the correct inquiry is to look at the

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disclosure of the patent and determine if one of skill in the art would have understood the

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specification itself to disclose the structure, not simply whether that person would be

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capable of implementing that structure.) “It is not proper to look to the knowledge of one

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skilled in the art apart from and unconnected to the disclosure of the patent.” Id.

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The Court finds “control unit” limited to the disclosed structures, the LT1529-5 low
dropout regulator and the circuitry as depicted in Fig. 4.

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The parties dispute whether these disclosed structures can actually perform the

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claimed function. Defendants assert that the LT1529-5 is incapable of performing the

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claimed function and therefore claims 1 and 17 of the ‘832 patent and claim 18 of the ‘474

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are indefinite. Plaintiff asserts that this regulator, as well as other regulators that are

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disclosed by the circuit diagram would be readily configurable by a person of skill in the

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art to perform this function. The Court finds material facts in dispute and therefore declines

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to reach the indefiniteness challenge as to these claims at this time.

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Claim 1 of the ‘474 patent, which also claims the control unit, however is not
supported by the specification. Claim 1 of the ‘474 patent claims;

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A method for controlling the supply of power to a parking meter comprising:

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a) monitoring, by a control unit, a status of a main battery which is rechargeable
and a back-up battery which is non-rechargeable;
b) charging at least partially, by the control unit, the main battery via one or more
charging sources;
c) supplying power, by the control unit, to the parking meter primarily from the
main battery;

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d) switching the supply of power, by the control unit, to come from the back-up
battery when the voltage across the main battery falls below a predetermined
level;
e) supplementing the supply of power during a peak power demand, by the
control unit , to the main battery by utilizing at least one capacitor; and
f) signaling, by the control unit, a wireless communication device to communicate
a status message to a control system external to the parking meter regarding the
status of the main battery and the back-up battery;
wherein the main battery, the back-up battery, the at least one capacitor, the wireless
communications device, and the control unit are received within the parking meter.
[Id., Col. 3:53 – 4:7 (emphasis added).]

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The specification identifies no structure that corresponds to all these claimed

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functions. The only structures disclosed as a control unit are the Linear Technology model

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LT1529-5 low dropout regulator and a circuit depicted in Figure 4, a box with diode symbol

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and connections to the back-up battery, the main battery and the communications device,

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described as providing the function of controlling the supply of power. The patent is

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entirely devoid of any explanation as to how these structures achieve all the above listed

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functions.

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Plaintiff never addresses directly what structures are disclosed to provide all this

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functionality and simply argues that one of skill in the art would know to use more

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sophisticated circuitry elements including software to achieve these functions. Although a

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person of skill in the art may have the knowledge to conceive a circuit or other structure to

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accomplish these steps, it would be unconnected to the patent disclosure.

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“If a person of ordinary skill in the art would be unable to recognize the structure in

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the specification and associate it with the corresponding function in the claim, a means-

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plus-function clause is indefinite.” Williamson, 792 F.3d at 1352. Finding no structure

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disclosed in the patent as a control unit that performs all the functions set forth in claim 1

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of the ‘474 patent, the Court finds that claim invalid for indefiniteness.

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17-CV-632-CAB-(MDD)

The ‘403 and ‘691 Patents

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B.

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The ‘691 patent [Doc. No. 108-6] is a continuation of the ‘403 patent [Doc. No. 108-

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5] and therefore has a common specification. These patents are directed at parking meter

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communications for remote payment, with updated displays and the capability to power

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down and wake up portions of the communications subsystem in relation to expiration and

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payments. [Id., Col. 3:51-63.]

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1. controller module

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The Court construes “controller module” to be a means-plus-function element and

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identified the corresponding structures at Col. 8:30-48 of the ‘403 patent. [Doc. No. 108-

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5.]
2. configured to wake up the powered down portion of the communication
subsystem upon determining that the [first] amount of time remaining is
below a threshold time prior to the expiration of the parking session
The Court construes “upon” in the claim limitation as “immediately and because of.”

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3. control the communications subsystem to transmit a message to a remote
management system or to a wireless device of the registered user; control
the communications subsystem to transmit the identification information to
the remote management system

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The Court found these claim phrases unambiguous and declined any further

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construction.

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4. receiving time information from the management system indicating a set
time for a current parking session and initiating a count-down of the set time
toward zero, and then deactivating at least a portion of the communication
circuitry

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The Court found this claim phrase unambiguous and declined any further

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construction.
5. activating the communication circuitry [the deactivated portion of the
communication circuitry] and initiating a communication session with the
management system at a predetermined time prior to the expiration of the
parking session set time

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The Court found this claim phrase unambiguous and declined any further
construction.

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6. wherein upon initiating the communication session, transmitting a message
to the management system or to a wireless devise of the registered user

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The Court construes “upon” in the claim limitation as “immediately and because of.”

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It is SO ORDERED.

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Dated: December 13, 2018

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