Duncan Parking Technologies v. Ips Group, Inc. , 914 F.3d 1347 ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
DUNCAN PARKING TECHNOLOGIES, INC.,
Appellant
v.
IPS GROUP, INC.,
Appellee
______________________
2018-1205
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2016-
00067.
--------------------------------------------------
IPS GROUP, INC.,
Plaintiff-Appellant
v.
DUNCAN SOLUTIONS INC., DUNCAN PARKING
TECHNOLOGIES, INC., CIVICSMART, INC.,
Defendants-Appellees
______________________
2018-1360
______________________
2 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
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.
______________________
Decided: January 31, 2019
______________________
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, Atlan-
ta, 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
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 3
of California granting summary judgment of nonin-
fringement 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 Deci-
sion”) (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 un-
patentable 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 con-
struction 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
4 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
training. The company manufactured multi-space park-
ing meters from its founding in 1994 until it changed its
focus to cellular phone technology around 2000. Accord-
ing to King, he conceived the idea for a credit-card ena-
bled, 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 com-
ponents 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) integrat-
ing 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+I, 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 electri-
cal components of the meter are interconnected and
1 Because we decide two appeals in this opinion,
there are two sets of briefs and two sets of joint appen-
dices. All citations in the 1360 Appeal section refer to the
briefs and joint appendices of the 1360 Appeal, while all
previous citations, including those in the background
section, refer to those of the 1205 Appeal.
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 5
operate together.” J.A. 1345. Schwarz sourced the elec-
tronic 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, nam-
ing 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 compo-
nents of existing parking meters. Claim 1 is the sole
independent claim and is representative:
1. A parking meter device that is receivable with-
in 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;
6 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
a wireless communications subsystem configured
to receive information relating to the non-cash
payment medium in respect of the payment facili-
tating arrangement;
a keypad sensor that receives input comprising
manipulation by the user;
a coin slot into which coins are inserted for deliv-
ery to the coin sensor and then to a coin recepta-
cle; 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 dimen-
sions 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 mone-
tary amount for the parking period when the low-
er portion of the parking meter device is received
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 7
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 inven-
tors King and three engineers from D+I, Murray Hunter,
Mathew Hall, and David Jones. It claims a credit card-
enabled, solar-powered, single-space parking meter.
Claim 9 is exemplary:
9. A parking meter comprising:
a housing comprising an intermediate panel set
and a cover panel, the cover panel being movably
attached to the intermediate panel set, wherein a
first surface of the cover panel and a first surface
of the intermediate panel set comprise a parking
meter front face, the first surface of the cover panel
having a first window and a plurality of buttons
that operate the parking meter upon manipulation
by a user, wherein a second surface of the cover
panel and a second surface of the intermediate
panel set comprise a parking meter rear face, the
rear face surface of the cover panel providing a
second window;
a module configured to be removably received by
the housing, the module comprising
(a) a coin sensor,
(b) a card reader, and
(c) an electronic device electrically connect-
ed to the sensor and the reader so as to re-
ceive information electronically therefrom,
the electronic device comprising
8 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
(i) a screen to provide information
visually via the first window when
the cover panel is attached to the
intermediate panel set,
(ii) a telephone connection to pro-
vide receiving information in re-
spect of the card reader,
(iii) a rechargeable battery electri-
cally coupled to provide power to
the reader, the sensor, and the elec-
tronic device, and
(iv) a solar cell operatively coupled
with the rechargeable battery to
charge the rechargeable batter[y],
the solar cell being disposed to re-
ceive light via the second window;
a coin slot in the parking meter front face into
which coins are inserted for delivery to the coin
sensor and then to a coin receptacle; and
a card slot in the parking meter front face into
which a card is inserted to be read by the reader;
wherein the coin sensor and the card reader are
electrically linked to provide information to the
electronic device to provide information of wheth-
er payment has been made.
’310 patent col. 4 l. 36–col. 5 l. 8 (emphases added).
The patents disclose closely related preferred embod-
iments based on the prototype D+I created for IPS.
Figure 4 of the ’310 patent is illustrative; it shows the
front view of the parking meter, with the cover panel (16)
pivoted to an open position:
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 9
Figure 7 of the ’054 patent shows the parking meter
device alongside the empty housing, with the cover panel
(36) again in the open position:
Figure 8 of the ’054 patent shows the block diagram of
the preferred embodiment’s electrical components, which
are described from col. 4 l. 15–col. 5 l. 8:
10 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
C.
In July 2015, IPS filed a complaint against DPT in the
Southern District of California asserting infringement of
the ’054 and ’310 patents. The district court in August
2017 granted DPT’s motion for summary judgment that
DPT’s accused product, the Liberty® Single-Space Meter
(“the Liberty Meter”), does not infringe claims 1–9 or
claim 11 of the ’310 patent because the Liberty Meter’s
cover panel does not include a “plurality of buttons,” as is
required by the ’310 patent claims. ’310 Decision at 9.
Instead, the Liberty Meter has a keypad that is part of
the parking meter device itself, which protrudes through
an opening in the housing. The court construed “cover
panel” in the ’310 patent claims as the “upper structural
component of the exterior casing,” id. at 8, and thus held
that the Liberty Meter does not infringe, literally or under
the doctrine of equivalents, any claim of the ’310 patent.
Id. at 10–11. The Liberty Meter is depicted below:
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 11
J.A. 23.
In December 2017, the district court further held that
the Liberty Meter does not infringe any claim of the ’054
patent. The claims require the “lower portion of the
parking meter device [be] configured to have a shape and
dimensions such that the lower portion is receivable
within the housing base of the single space parking me-
ter.” ’054 patent col. 6 ll. 4–7. The court construed “re-
ceivable within” as “capable of being contained inside,”
and applied this construction to require that the “entire
lower portion” of the infringing product be “receivable
within the housing base.” ’054 Decision at 8. The district
court granted summary judgment of noninfringement
because it found that the Liberty Meter’s keypad extends
through an opening in the lower portion of the housing
and, as a result, the lower portion of the Liberty Meter’s
device is not “receivable within” its housing base. Id.
Meanwhile, shortly after IPS filed its complaint, DPT
petitioned in the U.S. Patent and Trademark Office for
inter partes review of claims 1–5 and 7–10 of the ’310
patent. The Board instituted a review on the ground that
the ’054 patent anticipates the ’310 patent under
35 U.S.C. § 102(e). After institution, IPS chose not to
12 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
dispute whether, on the merits, the ’054 patent antici-
pates the ’310 patent claims. IPS instead argued in its
Patent Owner Response that the anticipating portions of
the ’054 patent are solely King’s invention, not that “of
another” under 35 U.S.C. § 102(e), and therefore cannot
be applied as prior art against the ’310 patent claims. To
support its argument that King alone conceived the
relevant disclosure, IPS submitted declarations from
King, Schwarz, and David Jones—an engineer from D+I
and a named inventor of the ’310 patent—along with
contemporaneous documents reflecting the invention’s
development from 2003 to 2005. In the Petitioner’s Reply,
DPT argued that the ’054 patent is prior art because
Schwarz conceived at least a portion of the ’054 patent’s
anticipating disclosure.
The Board held that, while Schwarz “contributed to
the creation of at least some aspects of the block diagram
of Figure 8 . . . [the Board was] skeptical that the general
recitation in claims 1 and 9 of connections and operative
associations of components constitutes more than what
Mr. King broadly envisioned.” Board Decision at 9–10.
The Board also found that, in order to account for certain
claim limitations, DPT’s anticipation argument “relie[d]
on content of [the ’054 patent] that is outside of any
depiction or description associated with Figure 8,” which
was indisputably the work of King alone. Id. at 10. The
Board ultimately held that King was the sole inventor of
the anticipating disclosure of the ’054 patent, id. at 14,
and thus claims 1–5 and 7–10 were held not unpatentable
as anticipated by the ’054 patent. 2
2 The Board found that King was the sole inventor
of all of the limitations of claims 1–5, 7, and 9, Board
Decision at 14; that King, Hunter, Hall, and Jones (the
’310 patent inventors) jointly invented the limitations of
claims 8 and 10, id. at 15; and that King and Schwarz
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 13
DPT timely appealed from the Board’s decision, and
IPS timely appealed from the district court’s summary
judgments of noninfringement. We have jurisdiction over
both appeals under 28 U.S.C. §§ 1295(a)(1), (a)(4)(A). We
first address the Board’s decision.
II. DISCUSSION
A. The 1205 Appeal
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we
review the Board’s factual findings underlying those
determinations for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is sup-
ported by substantial evidence if a reasonable mind might
accept the evidence as adequate to support the finding.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Anticipation is a question of fact. In re Gleave, 560 F.3d
1331, 1334–35 (Fed. Cir. 2009). Inventorship is a ques-
tion of law based on underlying findings of fact, Gen. Elec.
Co. v. Wilkins, 750 F.3d 1324, 1329 (Fed. Cir. 2014),
which we review for substantial evidence.
DPT argues in the 1205 Appeal that Schwarz is a
joint inventor of the relevant portions of the ’054 patent
because he conceived the electrical system depicted in
Figure 8. Thus, DPT contends that the ’310 patent claims
are anticipated by the ’054 patent. In addition, DPT
argues that the Board abused its discretion by denying
DPT’s motion for additional discovery, under
derived the subject matter in the ’054 patent which dis-
closes the limitations of claims 8 and 10 from King,
Hunter, Hall and Jones, removing that subject matter as
prior art under § 102(e), Rehearing Decision at 6. DPT
does not dispute the inventorship of Hunter, Hall, and
Jones on appeal. Appellant’s Reply Br. 8.
14 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
37 C.F.R. § 42.51(b)(2), of documents that concern the
invention of the relevant portions of the ’054 patent.
IPS responds that Schwarz’s drawing the block dia-
gram does not mean that he conceived the relevant elec-
tronics, and that “Schwarz’s conception of aspects of
Figure 8 not recited in the ’310 claims is irrelevant.”
Appellee Br. 33. IPS further argues that the fact that
“King communicated his idea in terms of the ‘general’
connectivity of certain components does not matter since
that merely reflects the connectivity of those components
as recited in the ’310 claims.” Appellee Br. 37. IPS does
not dispute the Board’s finding that the ’054 patent would
anticipate the ’310 patent claims if it were prior art.
Board Decision at 6.
We agree with DPT that the ’054 patent anticipates
the challenged claims of the ’310 patent. The Board
clearly erred in concluding otherwise. A patent is antici-
pated under 35 U.S.C. § 102(e) if “the invention was
described in . . . a patent granted on an application for
patent by another filed in the United States before the
invention by the applicant for patent” (emphasis added). 3
“The statute’s reference to ‘by another’ means that an
application issued to the same inventive entity cannot
qualify as § 102(e) prior art.” EmeraChem Holdings, LLC
v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1345 (Fed.
Cir. 2017) (citing Riverwood Int’l Corp. v. R.A. Jones &
Co., 324 F.3d 1346, 1355–56 (Fed. Cir. 2003)).
3 The ’310 patent was filed in 2006 and issued in
2010, so pre-AIA § 102(e) applies. See Leahy–Smith
America Invents Act, Pub. L. No. 112–29, sec. 3(c), 125
Stat. 284, 293 (2011) (explaining that the pre-AIA version
of the Patent Act generally applies to patents with effec-
tive filing dates before March 16, 2013).
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 15
We must review here whether the Board erred in con-
cluding that the applied portions of the ’054 patent were
invented by King alone and not by King and Schwarz
jointly. See In re DeBaun, 687 F.2d 459, 463 (CCPA
1982). If Schwarz is a joint inventor of the anticipating
disclosure, then it is “by another” for the purposes of §
102(e). In re Land, 368 F.2d 866, 879 (CCPA 1966) (“[A]n
invention made jointly by A & B cannot be the sole inven-
tion of A or B . . . .”). To be a joint inventor, one must:
(1) contribute in some significant manner to the
conception or reduction to practice of the inven-
tion, (2) make a contribution to the claimed inven-
tion that is not insignificant in quality, when that
contribution is measured against the dimension of
the full invention, and (3) do more than merely
explain to the real inventors well-known concepts
and/or the current state of the art.
In re VerHoef, 888 F.3d 1362, 1366 (Fed. Cir. 2018) (quot-
ing Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir.
1998)). “The law of inventorship does not hinge co-
inventorship status on whether a person contributed to
the conception of all of the limitations in any one claim of
the patent. Rather, the law requires only that a co-
inventor make a contribution to the conception of the
subject matter of the claim.” Eli Lilly & Co. v. Aradigm
Corp., 376 F.3d 1352, 1361–62 (Fed. Cir. 2004); see Fina
Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1474 (Fed. Cir.
1997).
Thus, to decide whether a reference patent is “by an-
other” for the purposes of 35 U.S.C. § 102(e), the Board
must (1) determine what portions of the reference patent
were relied on as prior art to anticipate the claim limita-
tions at issue, (2) evaluate the degree to which those
portions were conceived “by another,” and (3) decide
whether that other person’s contribution is significant
enough, when measured against the full anticipating
16 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
disclosure, to render him a joint inventor of the applied
portions of the reference patent. We conclude that the
Board erred in not holding that King and Schwarz are
joint inventors of the anticipating disclosure.
As is clear from DPT’s Petition, J.A. 84–100, as well
as the Institution Decision, Duncan Parking Techs., Inc.
v. IPS Grp., Inc., No. IPR2016-00067, 2016 WL 5679596,
Paper 9 (P.T.A.B. Mar. 30, 2016), DPT relied on the ’054
patent’s disclosure of a specific parking meter device,
depicted in the figures and described in detail in the
specification. See, e.g., ’054 patent col. 3 ll. 9–10 (“The
invention is now described, by way of a non-limiting
example, with reference to the accompanying drawings . .
. .”); id. col. 4 ll. 15–34. As noted above, IPS does not
dispute that the ’054 patent’s embodiment discloses all of
the limitations of the ’310 patent claims at issue. On
appeal, DPT relies on Figure 8, a block diagram depicting
the embodiment’s electrical system, as anticipatory prior
art “by another” disclosing the electrical connections and
components claimed in the ’310 patent. See, e.g., Appel-
lant Br. 19–21 (comparing the electrical connections and
components recited in claims 1 and 9 with the disclosure
in Figure 8); ’054 patent col. 4 ll. 15–34 (“The various
electrical and other components of the parking meter
device 10 are indicated in FIG. 8. . . . [T]here is a power
management facility 46 . . . . The controller 52 controls
operation of the meter. An integrated device is used . . . .”
(emphases added)).
In particular, Figure 8 discloses each of the electrical
components claimed in the ’310 patent, along with a
detailed diagram showing how each component is con-
nected. The electrical system limitations of the ’310
patent claims require such connections and operability.
Claim 9 recites “[a]n electronic device electrically connect-
ed to the sensor and the reader” along with “a rechargea-
ble battery electrically coupled to provide power to the
reader, the sensor, and the electronic device” and “a solar
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 17
cell operatively coupled with the rechargeable battery to
charge the rechargeable batter[y].” Claim 1 similarly
recites “[a]n electronic device electrically connected to the
sensor and reader” and “connections for at least one
rechargeable battery to power the reader, sensor, and
device” along with a “solar cell operatively associated with
said connections to charge said battery.” The ’310 patent
claims are clear on their face that they require electronic
connections and components disclosed by Figure 8 in the
’054 patent. Because the ’310 patent claims clearly in-
clude elements previously disclosed in Figure 8, the
question is whether Schwarz conceived those elements as
they were disclosed in the ’054 patent. Cf. In re Carreira,
532 F.2d 1356, 1358–59 (CCPA 1976) (holding that a
reference patentees’ declaration that they did not invent
the claimed method is insufficient to remove the reference
patent as § 102(e) prior art because “the declarants could
be the inventors of the species disclosed in their patents,
but at the same time never have conceived of the general
or generic use [claimed in the patent at issue]”).
It is clear that Schwarz conceived much of the ’054
patent’s electrical system, including designing the dia-
gram showing how all the electronic components are
connected. See Board Decision at 9. Schwarz invented
“how the various electrical components of the meter are
interconnected and operate together.” J.A. 1345.
Schwarz’s block diagram, depicted in Figure 8, organizes
26 separate electrical components and specific electrical
connections between them. ’054 patent Fig. 8; J.A. 1390.
The record shows that Schwarz conceived many of these
details. See, e.g., J.A. 1517 (“I came up with the [idea]
that there needs to be a power management block next to
the central controller that controls the power and how to
actually connect that in detail.”); J.A. 1381–82 (communi-
cating product specifications and electrical requirements
of the solar panel, card reader, display, antenna, and
battery to King); J.A. 1391–92 (directing procurement and
18 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
design of all sourced electrical components); J.A. 1533
(noting he conceived of ideas to connect the solar panels to
recharge the battery).
Schwarz’s contribution to the invention defined by the
’310 patent claims, as disclosed in the ’054 patent, was
significant in light of the invention as a whole. While IPS
argues that Schwarz’s role consisted of “drawing a sche-
matic,” Appellee Br. 33, the record shows that creating
the block diagram was not a minor task. Schwarz had to
coordinate with D+I as they designed a device that could
physically fit within an existing parking meter housing.
See J.A. 1376–77 (telling D+I that “determin[ing] a wiring
schematic . . . [will] be easier once we have some compo-
nents and can lay them out – [it will] give me a better
idea”). As a result of Schwarz’s contribution, the ’054
patent discloses a parking meter device with a detailed
electrical system, a challenge King described as one of
“two big hurdles” to the invention, J.A. 1336. Thus,
Schwarz’s contribution, measured against the dimension
of the full invention, was significant.
Further, the ’054 patent’s parking meter device, its
sole embodiment, contains the specific electrical system
disclosed in Figure 8. As the Board found, Board Decision
at 9–10, Schwarz conceived, at the very least, some as-
pects of that electrical system which are required by the
electrical system limitations of the ’310 patent claims.
The record indicates that these aspects of the electrical
system were a significant contribution to the invention
claimed in the ’310 patent. Thus, the anticipating embod-
iment was the joint invention of King and Schwarz, an
inventive entity different from that of the ’310 patent, and
the ’054 patent is prior art under 35 U.S.C. § 102(e).
Since IPS does not dispute the Board’s finding that this
embodiment discloses every limitation of claims 1–5 and
7–10, id. at 6, we hold those claims of the ’310 patent
unpatentable as anticipated. We therefore need not
address the discovery dispute concerning them.
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 19
B. The 1360 Appeal
We review a district court’s grant of summary judg-
ment according to the law of the regional circuit. Kaneka
Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298,
1303 (Fed. Cir. 2015) (citing Halo Elecs., Inc. v. Pulse
Elecs., Inc., 769 F.3d 1371, 1377 (Fed. Cir. 2014)). In the
Ninth Circuit, summary judgment is reviewed de novo,
Brunozzi v. Cable Commc’ns, Inc., 851 F.3d 990, 995 (9th
Cir. 2017) (citing Ctr. for Bio-Ethical Reform, Inc. v. L.A.
Cty. Sheriff Dep’t, 533 F.3d 780, 786 (9th Cir. 2008)), and
is appropriate when, viewing the evidence in favor of the
non-movant, there is no genuine dispute as to any mate-
rial fact, Zetwick v. Cty. of Yolo, 850 F.3d 436, 440 (9th
Cir. 2017).
While infringement is a question of fact, Lucent
Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1309 (Fed.
Cir. 2009), we review de novo the district court’s grant of
summary judgment of noninfringement, Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1378 (Fed. Cir. 2008).
“An infringement analysis entails two steps. The first
step is determining the meaning and scope of the patent
claims asserted to be infringed. The second step is com-
paring the properly construed claims to the device ac-
cused of infringing.” Markman v. Westview Instruments,
Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc) (citations
omitted), aff’d, 517 U.S. 370 (1996).
“To establish literal infringement, every limitation set
forth in a claim must be found in an accused product,
exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54
F.3d 1570, 1575 (Fed. Cir. 1995). The patentee has the
burden of proving infringement by a preponderance of the
evidence. SmithKline Diagnostics, Inc. v. Helena Labs.
Corp., 859 F.2d 878, 889 (Fed. Cir. 1988). Claim construc-
tion is ultimately an issue of law, which we review de
novo. Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d
1359, 1364 (Fed. Cir. 2015). We review de novo the dis-
20 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
trict court’s findings of fact on evidence “intrinsic to the
patent (the patent claims and specification[], along with
the patent’s prosecution history),” and review for clear
error all other findings of fact subsidiary to the district
court’s claim construction. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
1. The ’310 Patent
IPS asserted claims 1–9 and 11 of the ’310 patent in
the district court. ’310 Decision at 2. These claims are
not coextensive with the claims DPT challenged in its
petition for IPR, claims 1–5 and 7–10, Board Decision at
1, which makes it necessary for us to consider IPS’s
infringement arguments relating to claims 6 and 11
despite our holding claims 1–5 and 7–10 unpatentable.
Because we affirm the district court’s grant of summary
judgment of noninfringement of claims 1 and 9, the only
independent claims of the ’310 patent, we need not sepa-
rately address the additional limitations of the remaining
dependent claims 6 and 11, which IPS has not specifically
argued. See Wahpeton Canvas Co. v. Frontier, Inc., 870
F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not
infringe an independent claim cannot infringe a claim
dependent on (and thus containing all the limitations of)
that claim.” (citing Teledyne McCormick Selph v. United
States, 558 F.2d 1000, 1004 (Ct. Cl. 1977))). We therefore
will only review the infringement arguments relating to
claim 9, which IPS has indicated is exemplary.
IPS argues in the 1360 Appeal that the district court
should not have granted summary judgment of nonin-
fringement of the ’310 patent because the Liberty Meter
infringes claim 9 either literally or through the doctrine of
equivalents. The essence of IPS’s argument for literal
infringement is that the district court applied its con-
struction of the term “cover panel” as “the upper structur-
al component of the exterior casing” too narrowly, relying
on the preferred embodiment and the figures to limit the
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 21
scope of the claimed invention to a cover panel that
swings open, as in Figure 4. Specifically, IPS argues that
the Liberty Meter’s keypad, a part of the device itself that
extends through an opening in the housing base, meets
the limitation of a “cover panel movably attached to the
intermediate panel set . . . [with] a plurality of buttons”
because it is “slidably attached” to the housing, which the
’310 patent specification discloses as an alternative cover
panel mechanism. ’310 patent col. 2 ll. 49–50.
DPT responds that the ’310 patent discloses the cover
panel as a singular component, not as a collection of
components, and as a part of the housing, not the internal
device as in the Liberty Meter. DPT also argues that the
Liberty Meter’s keypad is not “attached” to the intermedi-
ate panel set but is instead merely in contact with its
outside surface. Appellee Br. 37 (analogizing the Liberty
Meter keypad’s sliding over the surface of the housing to a
golf ball on a tee).
We are unpersuaded by IPS’s arguments. The Liberty
Meter’s keypad is an extension of its device, and constru-
ing part of the device as the cover panel is inconsistent
with the claims of the ’310 patent. See ’310 patent col. 4 l.
36–col. 5 l. 3 (defining “a housing comprising . . . a cover
panel” in contradistinction to the module “removably
received by the housing” as well as the coin slot); see
generally id. col. 3 l. 45–col. 4 l. 4, col. 4 l. 36–col. 5 l. 5.
The specification is equally clear that the cover panel is a
part of the housing and does not include the device. See
id. col. 2 ll. 66–67 (“The panel set 15 and cover panel 16
provide a housing 31 within which a module 32 is locat-
ed.”). DPT is also correct that the cover panel is described
as a singular component. See, e.g., id. col. 2 ll. 44–49
(“The cover panel 16 is pivotally attached to the panel set
. . . . In an alternative form, the panel 16 may be slidably
attached.” (emphases added)).
22 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
Nor is the Liberty Meter’s keypad “attached” to an in-
termediate panel set, as required by the ’310 patent
claims, simply by virtue of making contact with its hous-
ing. The word “attach” is never used in so broad a sense
in the ’310 patent. See, e.g., ’310 patent col. 2 ll. 28, 30,
44, 50. IPS has not presented any argument that a per-
son of skill in the art would understand the term more
broadly than its ordinary meaning of “to fasten or join.”
Attach, The New Oxford American Dictionary (2d ed.
2005). Accordingly, there is no genuine dispute that the
Liberty Meter does not meet the limitation of a “cover
panel movably attached to the intermediate panel set . . .
[with] a plurality of buttons,” and the district court there-
fore did not err by granting summary judgment of nonin-
fringement of the ’310 patent claims.
IPS argues in the alternative that the Liberty Meter
infringes under the doctrine of equivalents because its
keypad performs substantially the same function as the
cover panel buttons of the claimed parking meter, in the
same way, to achieve the same result. The keypad oper-
ates the parking meter, as in the claimed invention, by
using buttons to allow the user to purchase time and
process credit card transactions. According to IPS, chang-
ing the location of the buttons from the cover panel to the
device itself is an insubstantial change, and thus the case
should not have been resolved on summary judgment.
See Brilliant Instruments, Inc. v. GuideTech, LLC, 707
F.3d 1342, 1348 (Fed. Cir. 2013) (finding that an alleged
difference in location of a structural claim limitation is a
genuine dispute of material fact).
DPT contends that finding the Liberty Meter to be an
equivalent, as sought by IPS, would vitiate the claim
limitation requiring buttons to be located on the cover
panel, which is a part of the housing, not the device.
Consequently, the Liberty Meter’s keypad does not work
in the “same way” as required by the doctrine of equiva-
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 23
lents. DPT argues that summary judgment was therefore
appropriate.
We agree with DPT that the Liberty Meter’s keypad
does not work in the same way as the claimed invention.
Under the doctrine of equivalents, a product or process
that does not literally infringe a patent claim may never-
theless be held to infringe “if it performs substantially the
same function in substantially the same way to obtain the
same result.” Graver Tank & Mfg. Co. v. Linde Air Prods.
Co., 339 U.S. 605, 608 (1950) (quoting Sanitary Refrigera-
tor Co. v. Winters, 280 U.S. 30, 42 (1929)). But the doc-
trine of equivalents cannot be used to effectively read out
a claim limitation, Primos, Inc. v. Hunter’s Specialties,
Inc., 451 F.3d 841, 850 (Fed. Cir. 2006), because the
public has a right to rely on the language of patent claims.
See London v. Carson Pirie Scott & Co., 946 F.2d 1534,
1538 (Fed. Cir. 1991) (“[I]f the public comes to believe (or
fear) that the language of patent claims can never be
relied on, and that the doctrine of equivalents is simply
the second prong of every infringement charge, regularly
available to extend protection beyond the scope of the
claims, then claims will cease to serve their intended
purpose.”).
The ’310 patent claims fundamentally distinguish the
housing from the device. See, e.g., ’310 patent col. 4 ll. 37,
47. Holding that the Liberty Meter infringes the ’310
patent claims under the doctrine of equivalents would
essentially void the claim limitation of a “housing [with] a
cover panel being movably attached to the intermediate
panel set [and with] a plurality of buttons.” We have
consistently held that the doctrine of equivalents does not
extend so broadly. See, e.g., Conopco, Inc. v. May Dep’t
Stores Co., 46 F.3d 1556, 1562 (Fed. Cir. 1994) (“The
doctrine of equivalents cannot be used to erase ‘meaning-
ful structural and functional limitations of the claim on
which the public is entitled to rely in avoiding infringe-
ment.’” (quoting Pennwalt Corp. v. Durand-Wayland, Inc.,
24 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
833 F.2d 931, 935 (Fed. Cir. 1987))); Freedman Seating
Co. v. Am. Seating Co., 420 F.3d 1350, 1361 (Fed. Cir.
2005) (holding that a rotatably mounted stowable seat
was not equivalent to the claimed slidably mounted
stowable seat because it was a “structural difference” that
constituted a “clear, substantial difference or difference in
kind”).
The district court correctly found that IPS’s doctrine
of equivalents argument required vitiating a claim limita-
tion. ’310 Decision at 10. Allowing IPS to greatly expand
the scope of the ’310 patent claims, to cover a parking
meter with buttons located nearly anywhere on the out-
side of the meter, would disserve members of the public
who seek to avoid infringing those claims. See London,
946 F.2d at 1538. Thus, the district court did not err by
granting summary judgment of noninfringement. Warn-
er-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
39 n.8 (1997) (“[I]f a theory of equivalence would entirely
vitiate a particular claim element, partial or complete
judgment should be rendered by the court, as there would
be no further material issue for the jury to resolve.”
(emphasis omitted)).
The parties also argue at length about whether prose-
cution history estoppel bars IPS’s doctrine of equivalents
argument. We find it unnecessary to address this dispute
because we agree with the district court that the Liberty
Meter is simply not an equivalent to the ’310 patent
claims.
IPS further maintains that the district court resolved
disputed issues of fact over its expert Dr. Rosing’s testi-
mony, but “[w]here the parties do not dispute any rele-
vant facts regarding the accused product . . . but disagree
over possible claim interpretations, the question of literal
infringement collapses into claim construction and is
amenable to summary judgment.” See Gen. Mills, Inc. v.
Hunt–Wesson, Inc., 103 F.3d 978, 983 (Fed. Cir. 1997).
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 25
Here, Dr. Rosing’s opinion that the Liberty Meter’s key-
pad may comprise a portion of the cover panel is clearly
foreclosed by the district court’s claim construction. In
such a situation, the district court is not obligated to
credit an expert’s testimony. See TechSearch, L.L.C. v.
Intel Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002) (holding
that unsupported expert testimony is “insufficient to
avoid summary judgment where the moving party has
met its initial burden”). We discern no error in the dis-
trict court’s consideration of Dr. Rosing’s report.
We have considered IPS’s other arguments but do not
find them persuasive. We therefore affirm the district
court’s grant of summary judgment of noninfringement of
claims 1–9 and 11 of the ’310 patent.
2. The ’054 Patent
IPS also contends in the 1360 Appeal that the district
court’s grant of summary judgment of noninfringement of
the ’054 patent was erroneous. Its arguments pertain
essentially to claim construction. IPS argues that the
district court construed the term “receivable within,” in
the claim limitation “a lower portion [of the parking meter
device] . . . receivable within the housing base” too nar-
rowly, requiring that the entire lower portion of the
parking meter device be contained inside the parking
meter housing. IPS further argues that the district court
erroneously construed claim 1 to exclude a potential
unclaimed “middle portion” of the device between the
upper and lower portions.
According to IPS, the district court’s claim construc-
tion as a whole renders the preferred embodiment outside
the scope of claim 1. The card slot and the coin slot (both
parts of the device itself) cannot be part of the upper
portion of the device because the upper portion must be
covered by the cover panel. But they also cannot be a part
of the lower portion of the device because they are not
“receivable within” the housing base as per the district
26 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
court’s claim construction. Instead, they are accessible
through openings in the housing. Thus, either the coin
slot and card slot comprise a “middle portion” not defined
by the claims or the specification, or the district court’s
construction of “receivable within” is too narrow.
DPT responds that the plain meaning of “within” is
“inside,” and IPS did not choose to modify the term with
the words “generally” or “substantially.” Appellee Br. 12–
13. DPT argues that the district court’s claim construc-
tion does not actually exclude the preferred embodiment
because the coin slot is still inside the housing base.
While the coin slot of the preferred embodiment is acces-
sible through an opening in the housing, it does not
actually protrude through that opening. See ’054 patent
Fig. 6. DPT further argues that prosecution history
estoppel bars IPS from asserting that claim 1 includes
parking meter devices that are not entirely contained
within a housing.
We agree with IPS and conclude that the district
court erred by construing “receivable within” as meaning
“capable of being contained [entirely] inside.” The district
court construed the term “receivable within” as “capable
of being contained inside,” ’054 Decision at 5, but upon
applying the claim construction in its infringement analy-
sis added a requirement that the “entire” lower portion of
the device must be contained within the housing, id. at 8,
effectively altering the construction to “capable of being
contained entirely inside.” Thus, we read the district
court’s claim construction as meaning “capable of being
contained [entirely] inside,” but through operation of the
word “entirely,” this construction is much narrower than
the plain meaning of the claim limitation and is unsup-
ported by either the specification or the prosecution
history of the ’054 patent.
Claim terms must be given the ordinary and custom-
ary meaning that the term would have to a person of
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 27
ordinary skill in the art when read in the context of the
specification and prosecution history. Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The
specification and prosecution history are important to
interpreting the claim language. Id. at 1316–17; Trs. of
Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1362–
63 (Fed. Cir. 2016). A “term’s ordinary meaning must be
considered in the context of all the intrinsic evidence,
including the claims, specification, and prosecution histo-
ry.” Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d
1090, 1094 (Fed. Cir. 2013). A patentee is normally
entitled to the full scope of its claim language, Home
Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358
(Fed. Cir. 2004), and a departure from this general rule
may be warranted only where the patentee either clearly
sets forth a different definition of a claim term in the
specification or disavows the full scope of the claim term
during prosecution. See Thorner v. Sony Comput. Entm’t
Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
A reasonable meaning of the term “receivable within”
in the context of the ’054 patent is “capable of being
contained inside.” Receive, The New Oxford American
Dictionary (2d ed. 2005) (defining “receive” as “to act as a
receptacle for” and “receptacle” as “an object or space used
to contain something”). The suffix “-able” further implies
that the lower portion of the device is capable of being
contained within the housing base. But this definition
contains no limitation to “completely” or “entirely” con-
tained, nor is there any evidence that persons of skill in
the art would understand it to be so limited. Indeed, DPT
advertised the Liberty Meter on the basis that it “fits
within” existing parking meter housings. J.A. 8589.
Likewise, the specification’s sole use of the term “re-
ceivable” does not imply any limitation to devices “entire-
ly” contained by the housing. ’054 patent col. 2 ll. 11–14
(“The parking meter device in accordance with the inven-
tion may be receivable in a conventional single space
28 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
parking meter housing, such as that supplied by Duncan
Industries, POM or Mackay.”).
We also agree with IPS that the district court’s claim
construction excludes the preferred embodiment. The
specification defines the coin slot as a part of the lower
portion, see ’054 patent col. 3 ll. 44–45, even though it is
not located “within” the housing base but is instead
accessible through an opening, id. at Fig. 6. Whether the
coin slot “protrudes” or not is beside the point; it is a part
of the lower portion of the parking meter device but is not
“capable of being contained [entirely] within” the housing
base as required by the district court’s claim construction.
As IPS notes, a claim construction that excludes the
preferred embodiment is highly disfavored. See Vitrionics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir.
1996) (holding that a claim construction that excludes the
preferred embodiment is “rarely, if ever, correct and
would require highly persuasive evidentiary support”).
DPT argues that the district court’s narrow construc-
tion is warranted by the prosecution history of the ’054
patent because IPS disavowed parking meter devices not
fully enclosed by a housing in its response to an office
action. DPT specifically contends that by differentiating
the prior art on the basis that it discloses an embodiment
exposed to the elements, rather than one enclosed within
a housing, IPS disavowed parking meter devices not
entirely enclosed within a housing.
We note that the district court never relied upon the
’054 patent’s prosecution history in the ’054 Decision. In
any case, IPS’s statements fall far short of the disavowal
DPT urges. IPS distinguished the cited prior art—an
actual parking meter, not an insertable device—on the
basis that it discloses a “self-contained unit,” as opposed
to the claimed device, which is “a retro-fit upgrade to
existing parking meters.” J.A. 1424. Whether IPS was
wise to use “exposure to the elements” as a point of dis-
DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC. 29
tinction is debatable, but IPS’s statements certainly do
not amount to clear disavowal of parking meter devices
not “completely” or “entirely” contained by a housing nor
do we think the prosecution history sheds any light on the
proper interpretation of the claim.
We have considered DPT’s other arguments but do not
find them persuasive. The claims cannot be limited to a
parking meter device with a lower portion “entirely”
contained by the parking meter housing, and we therefore
hold that the term “receivable within” should be con-
strued as “capable of being contained substantially inside”
the housing base. This construction is consistent with the
plain meaning of the terms, as well as the evidence from
the intrinsic record that the inventors aimed to design a
parking meter device that could practically retrofit an
existing parking meter, not to create a device completely
sealed from the elements.
Because we agree with IPS that the district court’s
claim construction of “receivable within” was erroneous,
we vacate the district court’s grant of summary judgment
of noninfringement of the ’054 patent and remand for
further proceedings consistent with the claim construction
we have set forth, including whether DPT’s product
infringes under the proper claim construction.
III. CONCLUSION
For the foregoing reasons, we reverse the Board’s de-
cision and hold claims 1–5 and 7–10 of the ’310 patent
unpatentable as anticipated by the ’054 patent. We
affirm the district court’s grant of summary judgment of
noninfringement of the ’310 patent, vacate its grant of
summary judgment of noninfringement of the ’054 patent,
and remand to the district court for further proceedings
consistent with the construction of the ’054 patent claims
set forth in this opinion.
REVERSED IN APPEAL NO. 2018-1205
30 DUNCAN PARKING TECHNOLOGIES v. IPS GROUP, INC.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED IN APPEAL NO. 2018-1360