Indect USA Corp. v. Park Assist, LLC
3:18-cv-02409
S.D. Cal.Jan 25, 2021Background
- Park Assist owns U.S. Patent No. 9,594,956 (the '956 Patent) covering a camera-based parking guidance method/system.
- Park Assist sued San Diego County Regional Airport Authority alleging Indect’s UPSOLUT system practices claim 1 of the '956 Patent.
- Indect sued Park Assist seeking a declaratory judgment of noninfringement; Park Assist filed counterclaims including (1) induced infringement, (2) declaratory judgment of direct infringement, and (3) declaratory judgment of induced infringement.
- Indect moved to dismiss Park Assist’s second and third counterclaims (the two declaratory-judgment counterclaims) for failure to state a claim and as seeking an advisory opinion; the motion was filed prior to claim construction.
- The Court relied on its Claim Construction Order, which concluded the asserted method does not necessarily require a human operator, and held Park Assist plausibly alleged an actual controversy and pleaded sufficient facts to survive Rule 12(b)(6).
- Result: Indect’s motion to dismiss the two declaratory-judgment counterclaims was denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Park Assist's declaratory-judgment claim for direct infringement alleges an actual controversy and states a claim | Claim is speculative/advisory because Indect does not operate parking garages and therefore cannot perform method steps requiring a human operator | Claim sufficiently alleges UPSOLUT could perform the method as construed (no human operator required), creating a reasonable apprehension of suit | Denied — pleadings plausibly allege actual controversy and state a claim under Twombly/Iqbal standard |
| Whether Park Assist's declaratory-judgment claim for induced infringement states a claim | Same infirmities as direct-infringement DJ: speculative future conduct and noninfringement allegations | Claim plausibly alleges induced infringement given claim construction and factual allegations | Denied — induced-infringement DJ survives pleading-stage challenge |
Key Cases Cited
- Johnson v. Riverside Healthcare Sys., 534 F.3d 1116 (9th Cir. 2008) (standards for Rule 12(b)(6) dismissal)
- Navarro v. Block, 250 F.3d 729 (9th Cir. 2001) (same)
- Stacy v. Rederite Otto Danielsen, 609 F.3d 1033 (9th Cir. 2010) (courts accept pleaded facts and draw inferences in claimant's favor on a 12(b)(6) motion)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (threadbare conclusory allegations insufficient)
- Zixiang Li v. Kerry, 710 F.3d 995 (9th Cir. 2013) (application of plausibility standard)
- Lang v. Pac. Marine & Supply Co., 895 F.2d 761 (Fed. Cir. 1990) (actual-controversy standard for declaratory judgment of infringement)