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Duncan Parking Technologies, Inc. v. IPS Group, Inc.

United States Court of Appeals, Federal Circuit

January 31, 2019

DUNCAN PARKING TECHNOLOGIES, INC., Appellant
v.
IPS GROUP, INC., Appellee IPS GROUP, INC., Plaintiff-Appellant
v.
DUNCAN SOLUTIONS INC., DUNCAN PARKING TECHNOLOGIES, INC., CIVICSMART, INC., Defendants-Appellees

          Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2016-00067.

          Appeal from the United States District Court for the Southern District of California in No. 3:15-cv-01526-CAB-MDD, Judge Cathy Ann Bencivengo.

          Stuart 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.

          Joshua 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.

          Before Lourie, Dyk, and Taranto, Circuit Judges.

          Lourie, Circuit Judge

         IPS 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 Appeal").

         Duncan 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 combined opinion.

         We 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.

         I. Background

         A.

         IPS 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.

         King 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.[1] 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.

         King 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.

         B.

         The '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 representative:

1. A parking meter device that is receivable within a housing base of a single space parking meter, the parking meter device including:
a timer;
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 facility;
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.

         '054 patent col. 5 l. 43-col. 6 l. 17 (emphasis added).

         The '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 ...


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