Case 1:20-cv-03156-PGG Document 1 Filed 04/21/20 Page 1 of 8
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`Marc A. Fenster (pro hac vice application to be filed)
`Reza Mirzaie (pro hac vice application to be filed)
`Kristopher R. Davis (pro hac vice application to be filed)
`Jonathan Ma (pro hac vice application to be filed)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
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`Attorneys for Plaintiff
`PARKING TECHNOLOGY HOLDINGS LLC
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`PARKING TECHNOLOGY HOLDINGS LLC,
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`Plaintiff,
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`v.
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`Civil Action No. ________
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`JURY TRIAL DEMANDED
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`PARK ASSIST, LLC,
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff Parking Technology Holdings LLC (“Plaintiff” or “PTH”), for its Complaint
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`against Defendant Park Assist, LLC (“Defendant” or “Park Assist”), hereby alleges as follows:
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`PARTIES
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`1.
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`PTH is a Delaware limited liability company and is the sole owner by assignment
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`of all right, title, and interest in United States Patent No. 7,893,848 (“’848 patent”).
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`2.
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`On information and belief, Defendant is a Delaware limited liability company
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`with its principal place of business located at 57 W 38th Street, 11th Floor, New York, New
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`York 10018.
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`Case 1:20-cv-03156-PGG Document 1 Filed 04/21/20 Page 2 of 8
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`3.
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`On information and belief, Defendant is a wholly-owned subsidiary of its parent
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`company, TKH Group NV, a Dutch public limited company headquartered in the Netherlands.
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`NATURE OF THE ACTION
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`4.
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`This is a civil action for the infringement of the ’848 patent under the patent laws
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`of the United States, 35 U.S.C. § 1, et seq. A copy of the ’848 patent is attached as Exhibit 1.
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`5.
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`This action involves Defendant’s manufacture, use, sale, offer for sale, and/or
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`importation into the United States of infringing products, methods, processes, services, and
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`systems that provide parking guidance and infringe one or more claims of the ’848 patent
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`(“Accused Products”). The Accused Products include, for example, Defendant’s M4 Smart-
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`Sensor, L4 Lightpipe Sensor, S1 Outdoor Solution, Sparx platform, Park Alerts, Park Finder, and
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`Park Surveillance products and services, as well as parking guidance systems incorporating such
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`products and services.
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`JURISDICTION AND VENUE
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`6.
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`This Court has original jurisdiction over the subject matter of this Complaint
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`under 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the
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`United States, including 35 U.S.C. §§ 271, et seq.
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`7.
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`This Court has personal jurisdiction over Defendant in this action because
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`Defendant regularly transacts business in this District, has committed acts within this District
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`giving rise to this action, and has established minimum contacts with this forum, such that the
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`exercise of jurisdiction over Defendant would not offend traditional notions of fair play and
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`substantial justice. Defendant has committed and continues to commit acts of infringement in
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`this District by, among other things, making, using, offering to sell, selling, and importing
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`products that infringe the ’848 patent.
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`Case 1:20-cv-03156-PGG Document 1 Filed 04/21/20 Page 3 of 8
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`8.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b). Upon
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`information and belief, Defendant has transacted business in this District and has committed acts
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`of direct and indirect infringement in this District by, among other things, making, using,
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`offering to sell, selling, and importing products that infringe the ’848 patent. Defendant
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`maintains its corporate headquarters and employs employees in this District at 57 W 38th Street,
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`11th Floor, New York, New York 10018. Park Assist lists this office on its website at
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`https://www.parkassist.com/contact-us/.
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`INTRODUCTION AND FACTUAL BACKGROUND
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`9.
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`Navigating a large parking structure or lot can be very frustrating and time
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`consuming. With the help of parking guidance technology, however, drivers can locate vacant
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`parking spaces more easily and efficiently. Besides improving customer experience, parking
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`guidance technology can also benefit car park managers by enabling more efficient utilization
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`and providing valuable analytics data.
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`10.
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`Early parking guidance technology involved, for example, counting the number of
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`cars that enter and exit a parking structure to derive the number of vacant spaces within the
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`structure. While such systems offered marginal improvements over having no guidance at all,
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`there remained much room for improvement. The inventor of the ’848 patent, Mr. David Chew,
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`recognized these deficiencies and identified key technological advancements that would
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`dramatically improve the parking experience for both drivers and car park managers. This
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`infringement action is about these patented improvements.
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`11.
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`PTH owns by assignment all rights, title, and interest in U.S. Patent No.
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`7,893,848, entitled “Apparatus and Method for Locating, Identifying and Tracking Vehicles in a
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`Parking Area.” The ’848 patent was duly and legally issued by the United States Patent and
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`Trademark Office on February 22, 2011. A true and correct copy of the ’848 patent is attached as
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`Exhibit 1.
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`12.
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`All maintenance fees for the ’848 patent have been paid, and there are no fees
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`currently due.
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`13.
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`Defendant has known of the ’848 patent since at least October 8, 2014, when U.S.
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`Patent Publication No. 2009/0309760 (which later issued as the ’848 patent) was cited by the
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`Examiner during the prosecution of Defendant’s U.S. Patent No. 9,594,956. In fact, the ’848
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`patent was applied by the Examiner against Defendant’s application in at least five subsequent
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`Office Actions, including those dated January 28, 2015; May 1, 2015; October 9, 2015; February
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`9, 2016; and June 9, 2016. The ’848 patent has also been applied by the Examiner in at least five
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`Office Actions against Park Assist’s pending U.S. patent application (App. Ser. No. 15/406,797),
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`including those dated March 9, 2017; September 5, 2017; December 28, 2017; June 3, 2019; and
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`September 11, 2019. Nonetheless, Defendant continues to make, use, offer to sell, sell, and
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`import the Accused Products, despite its detailed knowledge of the ’848 patent and the
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`objectively high likelihood that these activities constitute infringement of a valid patent.
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`14.
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`According to Defendant, it entered the parking guidance market in 2005. See
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`https://www.parking-net.com/parking-showcases/park-assist/business-case-for-camera-based-
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`pgs. Defendant released its “1st Generation Camera Sensors” in 2010 and claims that it
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`“invented the concept of camera based guidance.” Id. Defendant did not invent this concept. The
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`’848 patent explicitly discloses and claims camera-based parking guidance systems, and it claims
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`priority to a U.S. patent application filed in 2004 and a Singaporean patent application filed in
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`2003. Defendant was forced to repeatedly narrow the claims of its patent application in response
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`to the Examiner’s repeated rejections applying the ’848 patent as prior art.
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`Case 1:20-cv-03156-PGG Document 1 Filed 04/21/20 Page 5 of 8
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`COUNT I
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`(INFRINGEMENT OF THE ’848 PATENT)
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`15.
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`PTH realleges and incorporates by reference the foregoing paragraphs as if fully
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`set forth herein.
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`16.
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`PTH owns by assignment all rights, title, and interest in U.S. Patent No.
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`7,893,848, entitled “Apparatus and Method for Locating, Identifying and Tracking Vehicles in a
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`Parking Area.” The ’848 patent was duly and legally issued by the United States Patent and
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`Trademark Office on February 22, 2011. A true and correct copy of the ’848 patent is attached as
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`Exhibit 1.
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`17.
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`On information and belief, Defendant makes, uses, offers for sale, sells, and/or
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`imports certain products and services (“Accused Products”) that directly infringe, literally and/or
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`under the doctrine of equivalents, claims 1-16 of the ’848 patent. These Accused Products
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`include, for example, the M4 Smart-Sensor, L4 Lightpipe Sensor, S1 Outdoor Solution, Sparx
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`platform, Park Alerts, Park Finder, and Park Surveillance products and services, as well as
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`parking guidance systems incorporating such products and services.
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`18.
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`The Accused Products satisfy all claim limitations of claims 1-16 of the ’848
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`patent. An exemplary claim chart comparing independent claim 4 of the ’848 patent to a
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`representative accused parking guidance system incorporating Defendant’s M4 Smart-Sensors is
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`attached as Exhibit 2.
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`19.
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`Defendant also knowingly and intentionally induces infringement of claims 1-16
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`in violation of 35 U.S.C. § 271(b). Defendant has known of the ’848 patent since at least October
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`8, 2014, when U.S. Patent Publication No. 2009/0309760 (which later issued as the ’848 patent)
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`was cited by the Examiner during the prosecution of Defendant’s U.S. Patent No. 9,594,956. In
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`fact, the ’848 patent was applied by the Examiner against Defendant’s application in at least five
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`subsequent Office Actions, including those dated January 28, 2015; May 1, 2015; October 9,
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`2015; February 9, 2016; and June 9, 2016. Despite this detailed knowledge of the ’848 patent
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`and the infringing nature of the Accused Products, Defendant continues to actively encourage
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`and instruct its customers and end users (for example, through its user manuals and online
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`instruction materials on its website) to use the Accused Products in ways that directly infringe
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`the ’848 patent. Defendant does so knowing and intending that its customers and end users will
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`commit these infringing acts. Defendant also continues to make, use, offer for sale, sell, and/or
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`import the Accused Products, despite its knowledge of the ’848 patent, thereby specifically
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`intending for and inducing its customers to infringe the ’848 patent through the customers’
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`normal and customary use of the Accused Products.
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`20.
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`Defendant continues to make, use, offer for sale, sell, and/or import the Accused
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`Products, despite having detailed knowledge of the ’848 patent and despite the objectively high
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`likelihood that Defendant’s actions constitute infringement of the ’848 patent. Defendant has
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`known or should have known of this risk at least as early as 2014. Accordingly, Defendant’s
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`infringement of the ’848 patent has been and continues to be willful.
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`21.
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`By making, using, offering for sale, selling, and/or importing into the United
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`States the Accused Products without license or authorization from PTH, Defendant has injured
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`PTH and is liable for infringement of the ’848 patent pursuant to 35 U.S.C. § 271.
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`22.
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`As a result of Defendant’s infringement of the ’848 patent, PTH is entitled to
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`monetary damages in an amount adequate to compensate for Defendant’s infringement, but in no
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`event less than a reasonable royalty for the use made of the invention by Defendant, together
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`with interest and costs as fixed by the Court.
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`23.
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`Defendant’s infringing activities have injured and will continue to injure PTH,
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`unless and until this Court enters an injunction prohibiting further infringement of the ’848
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`patent, and, specifically, enjoining further manufacture, use, sale, importation, and/or offers for
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`sale that come within the scope of the patent claims.
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`PRAYER FOR RELIEF
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`WHEREFORE, Parking Technology Holdings LLC (“PTH”) respectfully requests that
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`this Court enter:
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`a.
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`b.
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`A judgment in favor of PTH that Defendant has infringed the ’848 patent;
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`A permanent injunction prohibiting Defendant from further acts of infringement
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`of the ’848 patent;
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`c.
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`A judgment that awards PTH all appropriate damages under 35 U.S.C. § 284 for
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`Defendant’s past infringement, and any continuing or future infringement of the ’848 patent, up
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`until the date such judgment is entered, including interest, costs, and disbursements as justified
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`under 35 U.S.C. § 284 and, if necessary, to adequately compensate PTH for Defendant’s
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`infringement;
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`d.
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`An adjudication that Defendant’s infringement of the ’848 patent has been willful
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`and deliberate;
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`e.
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`An adjudication that PTH be awarded treble damages and pre-judgment interest
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`under 35 U.S.C. § 284 as a result of, inter alia, Defendant’s willful and deliberate infringement
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`of the ’848 patent;
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`f.
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`An adjudication that this case is exceptional within the meaning of 35 U.S.C. §
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`285;
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`g.
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`An adjudication that PTH be awarded the attorneys’ fees, costs, and expenses it
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`incurs in prosecuting this action; and
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`h.
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`An adjudication that Plaintiff be awarded such further relief at law or in equity as
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`the Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`PTH, under Rule 38 of the Federal Rules of Civil Procedure, requests a trial by jury of all
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`issues so triable.
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`DATED: April 21, 2020
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`RUSS, AUGUST & KABAT
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`/s/ Kristopher R. Davis
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` Marc A. Fenster (pro hac vice application to be filed)
` mfenster@raklaw.com
` Reza Mirzaie (pro hac vice application to be filed)
`rmirzaie@raklaw.com
`Kristopher R. Davis (pro hac vice application to be filed)
`kdavis@raklaw.com
`Jonathan Ma (pro hac vice application to be filed)
`jma@raklaw.com
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`
`Attorneys for Plaintiff Parking Technology Holdings LLC
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