Duncan Parking Technologies v. Ips Group, Inc.
914 F.3d 1347
| Fed. Cir. | 2019Background
- IPS Group developed a retrofit, single-space, solar- and credit-card-enabled parking-meter module; King (IPS CEO) and Schwarz (IPS CTO) collaborated on concept and electronics; D+I aided in industrial design.
- Two related patents: the ’054 patent (filed 2006; King & Schwarz listed) and the ’310 patent (filed 2008; King and D+I engineers listed). Both claim similar retrofit parking-meter devices; Figure 8 of the ’054 patent depicts a detailed electrical block diagram prepared by Schwarz.
- IPS sued Duncan Parking Technologies (DPT) alleging infringement of both patents; DPT’s accused product is the Liberty single-space meter (Liberty Meter).
- The PTO Board (IPR) held that claims 1–5 and 7–10 of the ’310 patent were NOT shown unpatentable as anticipated by the ’054 patent, finding King (not Schwarz) authored the anticipating disclosure. The district court granted summary judgment that the Liberty Meter does not infringe the ’310 or the ’054 patents (construing key claim terms narrowly).
- On appeal, the Federal Circuit reversed the Board (holding Schwarz a joint inventor of the anticipating disclosure and thus the ’054 patent is §102(e) prior art), affirmed noninfringement of the ’310 patent, vacated the district court’s noninfringement ruling for the ’054 patent and remanded for proceedings under a corrected claim construction.
Issues
| Issue | Plaintiff's Argument (IPS) | Defendant's Argument (DPT) | Held |
|---|---|---|---|
| 1) Is the ’054 patent “by another” under pre-AIA §102(e) (i.e., was Schwarz a joint inventor of the anticipating disclosure)? | King alone invented the anticipating disclosure; Schwarz merely drew a schematic and did not contribute inventive subject matter to the portions relied on as prior art. | Schwarz conceived significant portions of Figure 8 (electrical interconnections and power-management design), making him a joint inventor. | Held: Schwarz materially contributed to the anticipating disclosure; the ’054 patent is §102(e) prior art and claims 1–5 and 7–10 of the ’310 patent are anticipated (unpatentable). |
| 2) Does the Liberty Meter literally infringe independent claim 9 of the ’310 patent (cover-panel with a plurality of buttons)? | Liberty’s keypad (part of the removable module) is a movable/slideable cover equivalent to the claimed cover panel with buttons. | The claim’s “cover panel” is a singular component of the housing (distinct from the removable module); Liberty’s keypad is part of the module/device, not a cover panel attached to the housing. | Held: No literal infringement; Liberty’s keypad is not a cover panel “movably attached to the intermediate panel set.” Summary judgment of noninfringement affirmed. |
| 3) Can IPS prevail under the doctrine of equivalents for the ’310 patent despite lack of literal infringement? | Relocation of buttons to the device is an insubstantial change; keypad performs the same function in substantially the same way to obtain the same result. | Finding equivalence would vitiate the claim limitation that ties buttons to the housing cover panel; doctrine of equivalents cannot swallow a structural claim limitation. | Held: Doctrine of equivalents rejected because it would vitiate an express structural limitation. |
| 4) How should “receivable within” (’054 patent claim 1) be construed for infringement of the ’054 patent? | Term should allow a lower portion that is capable of fitting within a housing even if some features (slots, openings) are accessible through the housing — i.e., not limited to being entirely enclosed. | Plain meaning of “within” is “inside” (entirely); prosecution statements allegedly disavow embodiments not fully enclosed. | Held: District court erred by requiring the lower portion to be entirely contained; proper construction is “capable of being contained substantially inside.” Summary judgment of noninfringement of the ’054 patent is vacated and case remanded. |
Key Cases Cited
- In re VerHoef, 888 F.3d 1362 (Fed. Cir. 2018) (standards for joint inventorship)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (co-inventor contribution need only be to the subject matter of the claim)
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (claim construction framework)
- Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605 (U.S. 1950) (doctrine of equivalents standard)
- London v. Carson Pirie Scott & Co., 946 F.2d 1534 (Fed. Cir. 1991) (limits on doctrine of equivalents to protect public notice)
- Vitrionics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (claim construction that excludes preferred embodiment is disfavored)
- In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000) (substantial-evidence review of Board fact findings)