Case Information
*1 .l UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA INDECT USA CORP., Case No.: 3:18-cv-02409-BEN-DEB Plaintiff,
ORDER DENYING MOTION TO v. DISMISS COUNTERCLAIMS 14 PARKASSIST,LLC, [ECF No. 69] Defendant.
This matter comes before the Court on Plaintiffindect USA Corp.'s ("Indect")
17 Motion to Dismiss two of the counterclaims filed by Defendant Park Assist, LLC ("Park 18 Assist"). ECF No. 69. Indect seeks dismissal of Park Assist's second and third 19 counterclaims, which request declaratory judgment of direct infringement and induced infringement, respectively. For the following reasons, the Motion is BACKGROUND I. Indect and Park Assist are direct competitors that develop and sell technologies for 23 camera-based parking guidance systems. These systems manage the occupancy of 24 parking spaces within a parking lot or parking garage by detecting a space's occupancy 25 status with cameras and sensors. Park Assist owns United States Patent Number 26 9,594,956 ("the '956 Patent"), which is the subject of this lawsuit. Park Assist is also involved in a related lawsuit pending before this Court. See Park Assist, LLC v. San Diego Cty. Reg 'l Airport Auth., et al., Case No. 18-cv-2409-
1 BEN-DEB. In that case, Park Assist sued the San Diego County Regional Airport 2 Authority ("SDCRAA") for infringing the '956 Patent by using Indect's UPSOLUT 3 parking guidance system at the Terminal 2 parking garage of the San Diego International 4 Airport. Park Assist alleges UPSOLUT practices each and every element of at least 5 claim 1 of the '956 Patent. Shortly after Park Assist filed suit against the SDCRAA, Indect sued Park Assist
7 seeking,
inter alia,
a declaratory judgment that UPSOLUT does not infringe the '956
8 Patent. ECF No. 58. Park Assist counterclaimed for (1) induced infringement of the
'956 Patent, (2) declaratory judgment of direct infringement of the '956 Patent, and (3)
10 declaratory judgment of induced infringement of the '956 Patent. ECF No. 68.
Thereafter, Indect filed this Motion to Dismiss both of Park Assist's declaratory
judgment counterclaims (the "Motion"). ECF No. 69. Indect does not challenge Park
13 Assist's first counterclaim. The Motion is fully briefed and was submitted on the papers
14 without oral argument pursuant to Civil Local Rule 7.l(d}(l} and Rule 78(b) of the
15 Federal Rules of Civil Procedure. ECF No. 78.
II. LEGAL STANDARD
A dismissal under Rule 12(b )( 6) may be based on the lack of a cognizable legal
theory or absence of sufficient alleged facts under a cognizable legal theory.
Johnson v.
Riverside Healthcare Sys.,
20 F.3d 729, 732 (9th Cir. 2001). When considering a Rule 12(b)(6) motion, the Court
21 "accept[ s] as true facts alleged and draw[ s] inferences from them in the light most
22 favorable to the [claimant]."
Stacy v. Rederite Otto Danielsen,
3: l 8-cv-02409-BEN-DEB 1 "Threadbare recitals of the elements of a cause of action, supported by mere conclusory 2 statements, do not suffice." Iqbal, 556 U.S. at 678.
3 III. ANALYSIS Based on the procedural history of this case, Indect filed this Motion to Dismiss
5 before the Parties had the benefit of the Court's Claims Construction Order regarding the '956 Patent. See ECF No. 80. That Order makes disposition of this Motion 7 straightforward. A. Counterclaim for Declaratory Judgment of Direct Infringement Indect first argues Park Assist is seeking relief for future, speculative harm, and therefore is asking the Court to issue an impermissible advisory opinion. Mot., ECF No.
11 69, 4. Indect also argues Park Assist has failed to allege sufficient facts to support the 12 direct infringement counterclaim. Id. at 6. Specifically, Indect argues that it cannot 13 directly infringe the '956 Patent because Indect does not manage a parking garage, and 14 Park Assist cannot speculate Indect will manage a parking garage sometime in the future. 15 Reply, ECF No. 77, 2. Based on the Court's Claims Construction Order construing 16 certain terms and phrases in the '956 Patent, these arguments lack merit. The Declaratory Judgment Act provides that "in a case of actual controversy," a federal court "may declare the rights and other legal relations of any interested party
19 seeking such declaration, whether or not further relief could be sought." 28 U.S.C. §
20 2201 (a). In patent cases, declaratory judgment of infringement is available when the
21 defendant engages in acts "directed toward making, selling, or using subject to an
infringement charge under 35 U.S.C. 271(a) ... or[] making meaningful preparation
for such activity," that "indicate a refusal to change the course of its actions in the face of
24 acts by the patentee sufficient to create a reasonable apprehension that a suit will be
forthcoming."
Langv. Pac. Marine & Supply Co.,
2 a human operator in certain steps of the patented method. Indect asserts it merely sells
3
the UPSOLUT parking guidance system and does not itself manage parking garages
4 staffed by human operators, which means it cannot infringe at least some of the steps in
5
the '956 Patent. Reply, ECF No. 77, 8. However, the Court's Claims Construction Order
6 reached the opposite conclusion on the relevant parts of the '956 Patent: the method
7
taught by the '956 Patent does not necessarily require a human operator. It follows that
8 Indect's UPSOLUT parking guidance system
could
infringe the '956 Patent without Park
9 Assist having to prove Indect operates parking garages, and Park Assist has plausibly
10 pied that here.
See Twombly,
3:18-cv-02409-BEN-DEB