from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-00067.
from the United States District Court for the Southern
District of California in No. 3:15-cv-01526-CAB-MDD, Judge
Cathy Ann Bencivengo.
Alan Raphael, Hunton Andrews Kurth LLP, Washington, DC,
argued for appellant in 2018-1205. Also represented by Daniel
George Vivarelli, Jr., Steven Leslie Wood.
Richard Torczon, Wilson, Sonsini, Goodrich & Rosati, PC,
Washington, DC, argued for appellee in 2018-1205. Also
represented by Matthew A. Argenti, Palo Alto, CA; Douglas H.
Carsten, San Diego, CA; Michael T. Rosato, Seattle, WA.
Douglas H. Carsten, Wilson, Sonsini, Goodrich & Rosati,
PC, San Diego, CA, argued for plaintiff-appellant in
2018-1360. Also represented by Nathaniel Ryan Scharn, James
Patrick Healy Stephens; Adam William Burrowbridge,
Washington, DC; Christopher D. Mays, Palo Alto, CA.
M. Kalb, Hunton Andrews Kurth LLP, Atlanta, GA, argued for
defendants-appellees in 2018-1360. Also represented by Daniel
George Vivarelli, Jr., Stuart Alan Raphael, Washington, DC.
Lourie, Dyk, and Taranto, Circuit Judges.
Lourie, Circuit Judge
Group Inc. ("IPS") appeals from two decisions of
the United States District Court for the Southern District of
California granting summary judgment of noninfringement of
U.S. Patents 8, 595, 054 ("the '054 patent")-
IPS Grp., Inc. v. Duncan Sols., Inc., No.
15-CV-1526-CAB-(MDD), 2017 WL 5973337 (S.D. Cal. Dec. 1,
2017) ("'054 Decision")-and 7, 854,
310 ("the '310 patent")-IPS Grp., Inc. v.
Duncan Sols., Inc., No. 15-CV-1526-CAB-(MDD), 2017 WL
3530968 (S.D. Cal. Aug. 16, 2017) ("'310
Decision") (collectively, the "1360
Parking Technologies Inc. ("DPT") appeals from a
related decision of the Patent Trial and Appeal Board
("the Board"), Duncan Parking Techs., Inc. v.
IPS Grp., Inc., No. IPR2016-00067, Paper 29 (P.T.A.B.
Mar. 27, 2017) ("Board Decision"),
modified on reh'g, Paper 37 (P.T.A.B. Aug. 18,
2017) ("Rehearing Decision"), in an
inter partes review holding that claims 1-5 and 7-10
of the '310 patent were not shown to be unpatentable as
anticipated under 35 U.S.C. § 102(e) (the "1205
Appeal"). We address these appeals together in this
reverse the Board's decision in the 1205 Appeal that
claims 1-5 and 7-10 of the '310 patent are not
unpatentable as anticipated. We affirm the district
court's decision in the 1360 Appeal granting summary
judgment of noninfringement of the '310 patent. Finally,
we vacate the district court's decision in the 1360
Appeal granting summary judgment of noninfringement of the
'054 patent because the district court erred in
construing the claims too narrowly, and we remand the case to
the district court for further proceedings consistent with
the claim construction we set forth.
designs parking meter technology. It is run by founder and
CEO Dave King and Chief Technical Officer Alexander Schwarz.
Both are electrical engineers by training. The company
manufactured multi-space parking meters from its founding in
1994 until it changed its focus to cellular phone technology
around 2000. According to King, he conceived the idea for a
credit-card enabled, solar-powered, single-space parking
meter in May 2003, when he had trouble finding change to pay
for a parking meter in Newport Beach, California. IPS began
work on the project shortly thereafter, and King consulted
with Schwarz as he developed his idea. Eventually, King
decided that IPS could gain greater market access by offering
a retrofit device that replaces the internal components of an
existing parking meter, rather than a costly replacement of
the entire meter.
identified "two big hurdles" to developing
IPS's single-space parking technology: (1) designing a
device with all of the requisite components that could easily
retrofit existing parking meter housings and (2) integrating
the electronic components and designing software and a
controller to coordinate the electrical system. J.A.
1336. To assist with the first challenge, IPS
engaged a design firm, D, in November 2004 and provided it
with a list of desired components and functionalities that
King purportedly conceived, including a credit card reader, a
solar panel, and a switch pad, among others.
assigned Schwarz responsibility for "figuring out how to
implement the electronics." J.A. 1337. According to
King, "[Schwarz's] inventive contribution [was]
limited to conception and development of how the various
electrical components of the meter are interconnected and
operate together." J.A. 1345. Schwarz sourced the
electronic components, and generally took responsibility for
solving electronics obstacles. In July 2005, Schwarz compiled
a list of electrical components to be included in the device,
along with product specifications for many of them, and drew
a block diagram conceptualizing the electrical connections
between the components. A slightly modified version of that
block diagram was later disclosed in the '054 patent as
Figure 8, illustrating "[t]he various electrical and
other components of the parking meter device." '054
patent col. 4 ll. 15-16.
'310 and '054 patents are similar but do not have the
same specifications. The '054 patent issued in 2013 from
a PCT application filed on December 4, 2006, naming King and
Schwarz as inventors. It claims a credit card-enabled,
solar-powered, single-space parking meter device that can be
used to retrofit the internal components of existing parking
meters. Claim 1 is the sole independent claim and is
1. A parking meter device that is receivable within a housing
base of a single space parking meter, the parking meter
a payment facilitating arrangement operable in cooperation
with a non-cash payment medium for effecting payment of a
monetary amount for a parking period;
a display configured to visually provide a balance remaining
of the parking period;
a power management facility that supplies power to the timer,
payment facilitating arrangement, and display;
a wireless communications subsystem configured to receive
information relating to the non-cash payment medium in
respect of the payment facilitating arrangement;
a keypad sensor that receives input comprising manipulation
by the user;
a coin slot into which coins are inserted for delivery to the
coin sensor and then to a coin receptacle; and
a lower portion and an upper portion;
wherein the keypad sensor operates the parking-meter and
determines parking time amount for purchase in accordance
with the received input from the user;
wherein the display provides the amount of time purchased in
response to the received input from the user;
wherein the upper portion of the parking meter device
includes a solar panel that charges the power management
wherein the lower portion of the parking meter device is
configured to have a shape and dimensions such that the
lower portion is receivable within the housing base of
the single space parking meter; and
wherein the upper portion of the parking meter device is
covered by a cover that is configured to accommodate the
upper portion and that is en-gageable with the housing base
of the single space parking meter such that the payment
facilitating arrangement is accessible by the user for user
manipulation effecting the payment of the monetary amount for
the parking period when the lower portion of the parking
meter device is received within the housing base and the
upper portion is covered by the cover.
patent col. 5 l. 43-col. 6 l. 17 (emphasis added).
'310 patent issued in 2010 from an application filed on
February 27, 2008, more than a year after the '054
patent's application had been filed, naming as inventors
King and three engineers from D, Murray Hunter, Mathew
Hall, and David Jones. It claims a credit ...