1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 INDECT USA CORP., a Texas Case No.: 3:18-cv-02409-BEN-DEB corporation, 12 ORDER ON DEFENDANT’S Plaintiff, 13 MOTION TO RECONSIDER v. MOTIONS IN LIMINE 14 PARK ASSIST, LLC, a Delaware limited 15 [ECF No. 263] liability company, 16 Defendant. 17 PARK ASSIST, LLC, a Delaware limited 18 liability company, 19 Counterclaimant, 20 v. 21 INDECT USA CORP., a Texas corporation, 22 Counterdefendant. 23 24 25 Defendant Park Assist, LLC (“Park Assist”) moves this Court to reconsider, or 26 clarify, its rulings on the Plaintiff Indect USA Corp.’s (Indect) seventh and twelfth 27 motions in limine. For the reasons discussed herein, the Court declines to reconsider its 28 1 prior rulings, but does take this opportunity to clarify matters related to the parties’ 2 dispute. 3 I. LEGAL STANDARD 4 Local Civil Rule 7.1(i)(1) provides that an application for reconsideration must set 5 forth the material facts and circumstances surrounding each prior application, including, 6 “what new or different facts and circumstances are claimed to exist which did not exist, 7 or were not shown, upon such prior application.” 8 II. MOTION FOR RECONSIDERATION 9 Here, Park Assist argues that this Court should reconsider because the “Notice 10 Letters” were not presented by Indect to this Court. The Court disagrees. First, the 11 letters were apparently in Park Assist’s possession at the time of briefing. Had Park 12 Assist failed to present the letters, this Court would view that as a strategic omission. 13 Seeking reconsideration after the fact would delay proceedings and unfairly burden 14 scarce judicial resources. 15 Park Assist’s allegations, however, that the letters were not part of the record to be 16 considered by this Court is not entirely accurate. Park Assist included the letters in its 17 motions in limine submission. ECF No. 228, Exs. 3-8. The Court was aware of the 18 content of the letters Park Assist sent to other airports when it made its decision. 19 Accordingly, Park Assist fails to demonstrate facts or circumstances that would warrant 20 reconsideration of this Court’s prior ruling. 21 The Court further declines to reconsider Indect’s twelfth motion in limine. Joint, 22 or divided, infringement occurs where the acts of one are attributable to the other such 23 that a single entity is responsible for the infringement. Akamai Techs., Inc. v. Limelight 24 Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015). In Akamai, the Federal Circuit 25 created a framework for addressing divided infringement. “We will hold an entity 26 responsible for others' performance of method steps in two sets of circumstances: (1) 27 where that entity directs or controls others' performance, and (2) where the actors form a 28 joint enterprise. Id. On summary judgment, this Court previously stated in the context 1 of induced infringement, “Park Assist provides no evidence Indect has or ‘will induce 2 infringement of the ‘956 Patent under 35 U.S.C. § 271(b) by continuing to supply future 3 customers with its UPSOLUT system that could be configured to perform the steps that 4 infringe the ‘956 Patent when the systems are in operation.’” ECF No. 195 at 22. 5 Similarly, there is no evidence Indect controlled the performance of their potential 6 partners or formed a joint enterprise. Park Assist’s letters do nothing to prove otherwise. 7 This Court will not allow the parties to confuse the jury and waste their time. 8 Park Assist’s Motion for Reconsideration is DENIED. 9 III. CLARIFICATION OF INDECT’S MOTIONS IN LIMINE 10 Based on the parties’ pleadings, the Court finds it necessary to clarify the scope of 11 its ruling on Indect’s seventh motion in limine. ECF No. 248 at 7-8. In its order, this 12 Court stated, “[t]he Court is [] unpersuaded by Park Assist’s argument that capability of 13 infringement is relevant to the unfair competition claim. The plain language of Indect’s 14 third claim for relief states, “[P]ark Assist has claimed and continues to claim falsely and 15 in bad faith that INDECT’s products infringe the ‘956 Patent and has communicated and 16 continues to communicate such malicious claims at industry events, trade shows, and 17 elsewhere . . . .” FAC, ECF No. 7, 28-29. This Court interprets Indect’s Unfair 18 Competition claim to be based on assertions made by Park Assist that Indect is directly 19 infringing the ‘956 patent. Thus, this Court found that capability of infringement was not 20 relevant to the Unfair Competition claim. 21 How Indect chooses to present its case on this issue, though, may make capability 22 relevant. Should Indect introduce the “Notice Letters” as evidence in support of its 23 Unfair Competition claim, the Court will allow Park Assist to explain the context of the 24 letters and the rationale for sending them to potential Indect customers. The Court will 25 not allow Park Assist, though, to argue capability as it relates to the Airport Case, as the 26 27 28 | || plain language of Park Assist’s complaint in that case clearly states that the system 2 || already in place was directly infringing the ‘956 patent. Park Assist LLC v. San Diego 3 || County Regional Airport Authority, et al., 3:18-cv-02068-BEN-DEB, ECF No. 1, 4. 4 5 || IT ISSO ORDERED. 6 7 || DATED: April 14, 2022 Mypotsie, 9 on. Roger T. Benitez United States District Court 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28