Indect USA Corp. v. Park Assist, LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
INDECT USA CORP.,
Plaintiff-Appellant
v.
PARK ASSIST, LLC,
Defendant-Cross-Appellant
______________________
2024-1023, 2024-1127
______________________
Appeals from the United States District Court for the
Southern District of California in No. 3:18-cv-02409-BEN-
DEB, Senior Judge Roger T. Benitez.
______________________
Decided: January 7, 2026
______________________
P AUL V. STORM , Foley & Lardner LLP, Dallas, TX, ar-
gued for plaintiff-appellant. Also represented by RANDY
P UMMILL ; MICHELLE A. MORAN, Milwaukee, WI.
T OD MATHEW MELGAR, Lippes Mathias LLP, New York,
NY, argued for defendant-cross-appellant. Also argued by
S COTT STIMPSON, Sills Cummis & Gross PC, New York, NY.
______________________
Case: 24-1023 Document: 59 Page: 1 Filed: 01/07/2026

-- 1 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 2
Before H UGHES , STARK, Circuit Judges, and WANG,
District Judge.1
STARK, Circuit Judge.
Park Assist LLC (“Park Assist”) is the owner of
U.S. Patent No. 9,594,956, (the “’956 patent”) directed to
methods of using camera-based technology for the manage-
ment of parking spaces. In 2018, Indect USA Corp. (“In-
dect”) sued Park Assist, seeking declaratory judgments
that it and its customers do not infringe the ’956 patent and
that the patent’s claims are invalid. Indect further alleged
that Park Assist engaged in unfair competition under the
Lanham Act by threatening to sue Indect’s customers and
bringing and maintaining suit against one such customer,
the San Diego County Regional Airport Authority (“Air-
port”). Park Assist responded with counterclaims alleging
Indect directly infringed and induced others to infringe the
’956 patent.
Neither party obtained all the relief it sought in the
district court. Following a jury trial and post-trial motions,
the district court entered a declaratory judgment that In-
dect did not infringe the ’956 patent, but denied Indect’s
requests for judgments of invalidity and unfair competi-
tion. Park Assist’s requests for declaratory judgments of
infringement were denied. Both parties now appeal. While
we agree with the district court on many of the disputed
issues, and largely affirm, we vacate and remand for fur-
ther proceedings.
I
Park Assist’s ’956 patent, entitled “Method and system
for managing a parking lot based on intelligent imaging,”
1 Honorable Nina Y. Wang, District Judge for the
United States District Court for the District of Colorado,
sitting by designation.
Case: 24-1023 Document: 59 Page: 2 Filed: 01/07/2026

-- 2 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 3
teaches a camera-based parking lot management system
capable of determining whether a parking space is occu-
pied, and methods of using such systems. J.A. 17397.2 The
disclosed method provides a means for determining
whether a parked car is parked in a parking space and
whether such car is authorized to use that space.
Representative claim 1 of the ’956 patent recites:
A method of managing a plurality of parking
spaces, comprising:
(a) monitoring a parking space with an im-
aging device of an imaging unit;
(b) detecting, by said imaging unit, occu-
pancy of said parking space;
(c) assigning said parking space, in which
said occupancy was detected, an occupied
status . . .;
(d) obtaining . . . as a result of said . . . oc-
cupied status, a single high resolution im-
age of a vehicle occupying said parking
space . . .;
(e) storing at least part of said high resolu-
tion image . . .;
(f) displaying a thumbnail image of said
parking space on a graphic user interface
(GUI) . . .;
(g) deciding whether said occupied status is
incorrect, based on a visual review of said
thumbnail image on said GUI;
2 “J.A.” refers to the Non-Confidential Joint Appendix
filed by Indect (ECF No. 34).
Case: 24-1023 Document: 59 Page: 3 Filed: 01/07/2026

-- 3 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 4
(h) correcting said occupied status . . . if
said parking space shown in said thumb-
nail image is vacant . . .;
(i) extracting from said high resolution im-
age . . . a permit identifier for said vehicle,
and comparing said permit identifier with
at least one parking permit identification
stored on said storage to determine a per-
mit status of said parked vehicle; and
(j) initiating an infringement process for
said vehicle having said permit identifier
that fails to coincide with at least one park-
ing permit identification.
’956 pat. at 22:30-23:4.
Indect sells a parking system, the UPSOLUT (the “Ac-
cused System”), which Park Assist alleges infringes at least
claim 1 of the ’956 patent. Park Assist shared its accusa-
tions about the UPSOLUT system in letters it sent to In-
dect’s customers and potential customers, writing, in
pertinent part:
Park Assist is aware that [Indect] ha[s] submitted
a [p]roposal . . . offering to sell the INDECT
UPSOLUT system. . . . The [Indect] Proposal looks
to offer a system having features and functionality
that if implemented . . . may infringe the ’956 Pa-
tent claims. Accordingly, Park Assist . . . requests
that in awarding any contracts [you] avoid imple-
menting a system that would infringe on Park As-
sist’s valuable intellectual property rights. . . .
[F]ailure to do so will expose the seller and/or user
of an infringing system to liability for actual dam-
ages, treble damages for willful[] infringement and
injunctive relief against the sale or use of infring-
ing systems.
J.A. 17330-31.
Case: 24-1023 Document: 59 Page: 4 Filed: 01/07/2026

-- 4 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 5
Park Assist also sued one of Indect’s customers, the
Airport, alleging that it infringed the ’956 patent by using
Indect’s Accused System. That suit prompted Indect to file
this action against Park Assist, seeking declaratory judg-
ments that: (i) Indect did not infringe the ’956 patent, (ii)
Indect did not induce its customers to infringe the ’956 pa-
tent, and (iii) the claims of the ’956 patent are invalid as
obvious. Indect also alleged that Park Assist engaged in
unfair competition in violation of Section 43(a) of the Lan-
ham Act, 15 U.S.C. § 1125(a), through its written commu-
nications to Park Assist’s actual and potential customers
and based on its suit against the Airport. Park Assist coun-
terclaimed, alleging Indect directly infringed the claims of
the ’956 patent, induced such infringement, and would con-
tinue to induce infringement.
At summary judgment, the district court held that the
claims of the ’956 patent are not invalid due to indefinite-
ness. The case proceeded to trial, where a jury found: (i)
Park Assist failed to prove Indect directly infringed claim
1 of the ’956 patent, (ii) Indect failed to prove any of the
claims of the ’956 patent invalid due to obviousness, and
(iii) Indect failed to prove Park Assist acted with the bad
faith required to prevail on its Lanham Act unfair compe-
tition claim. Following trial, the district court denied In-
dect’s motion for judgment as a matter of law as to
invalidity. The district court likewise denied Park Assist’s
post-trial motion to amend the judgment, which sought to
clarify that Indect was not entitled to a broad declaratory
judgment that neither Indect’s Accused System nor its cus-
tomers will be found liable for infringement of the ’956 pa-
tent in the future. Both parties timely appealed from the
district court’s entry of judgment against them. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
II
We review a district court’s ruling on motions for judg-
ment as a matter of law according to the law of the
Case: 24-1023 Document: 59 Page: 5 Filed: 01/07/2026

-- 5 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 6
applicable regional circuit. See Omega Pats., LLC v.
CalAmp Corp., 13 F.4th 1361, 1368 (Fed. Cir. 2021). The
Ninth Circuit reviews the denial of a motion for judgment
as a matter of law de novo. See Applied Med. Res. Corp. v.
U.S. Surgical Corp., 435 F.3d 1356, 1364 (Fed. Cir. 2006)
(citing Lytle v. Carl, 382 F.3d 978, 982 (9th Cir. 2004)). The
Ninth Circuit “will not disturb a jury verdict if it is sup-
ported by substantial evidence.” Lytle, 382 F.3d at 982.
The Ninth Circuit reviews district courts’ evidentiary
determinations for abuse of discretion. See
S. Cal. Darts Ass’n v. Zaffina, 762 F.3d 921, 933 (9th Cir.
2014). “A court abuses it[s] discretion when it applies an
incorrect legal rule or relies upon a factual finding that [is]
illogical, implausible, or without support in inference that
may be drawn from the record.” Valle del Sol Inc. v. Whit-
ing, 732 F.3d 1006, 1014 (9th Cir. 2013) (internal quotation
marks omitted; second alteration in original).
However, “where a district court rules, as a matter of
patent law, that a party is precluded from introducing evi-
dence,” Federal Circuit law applies, and our review of this
sort of dispute is de novo. TecSec, Inc. v. Adobe Inc., 978
F.3d 1278, 1286 (Fed. Cir. 2020). Our own law also sup-
plies the substantive standards for findings of patent in-
fringement and patent invalidity. See Fujifilm Corp. v.
Benun, 605 F.3d 1366, 1370 (Fed. Cir. 2010) (per curiam).
Assessing infringement involves a two-step process: (i) con-
struing any material, disputed terms, which presents a
question of law that may be based on subsidiary factual
findings; and (ii) applying the properly construed claim
language to the accused device or method and determining
if every limitation of the claim is present in or practiced as
part of such device or method, which presents a question of
fact that we review for clear error. See
EMI Grp. N. Am., Inc. v. Intel Corp., 157 F.3d 887, 891
(Fed. Cir. 1998); see also Philip Morris Prods. S.A. v.
Int’l Trade Comm’n, 63 F.4th 1328, 1348 (Fed. Cir. 2023).
Case: 24-1023 Document: 59 Page: 6 Filed: 01/07/2026

-- 6 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 7
Patent claims may be invalid for a variety of reasons,
including obviousness, indefiniteness, and lack of enable-
ment. A patent claim is obvious where the differences be-
tween the claim and the prior art are such that the claim
as a whole would have been evident to a skilled artisan at
the time of the invention. See, e.g., Spectrum Pharms., Inc.
v. Sandoz Inc., 802 F.3d 1326, 1333 (Fed. Cir. 2015). Obvi-
ousness is a question of law based on subsidiary factual
findings. See id. “[A] patent is invalid for indefiniteness if
its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with
reasonable certainty, those skilled in the art about the
scope of the invention.” Nautilus, Inc. v. Biosig Instru-
ments, Inc., 572 U.S. 898, 901 (2014). Indefiniteness is a
question of law to which we accord de novo review, with
any subsidiary factual findings based on extrinsic evidence
reviewed for clear error. See Synchronoss Techs., Inc. v.
Dropbox, Inc., 987 F.3d 1358, 1365 (Fed. Cir. 2021). Patent
claims are invalid for lack of enablement if a person of or-
dinary skill in the art, reviewing the entire patent, would
be unable to practice them without engaging in undue ex-
perimentation. See Genentech, Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1365-66 (Fed. Cir. 1997). “Whether a claim
satisfies the enablement requirement of 35 U.S.C. § 112 is
a question of law that we review without deference, alt-
hough the determination may be based on underlying fac-
tual findings, which we review for clear error.” Amgen Inc.
v. Sanofi, Aventisub LLC, 987 F.3d 1080, 1084 (Fed. Cir.
2021).
“To prevail on an unfair-competition claim under [S]ec-
tion 43(a) of the Lanham Act stemming from a patentee’s
marketplace activity in support of his patent, the claimant
must first establish that the activity was undertaken in
bad faith.” Judkins v. HT Window Fashion Corp., 529 F.3d
1334, 1338 (Fed. Cir. 2008). Proof of such bad faith re-
quires “a showing that the claims asserted were objectively
baseless, meaning no reasonable litigant could realistically
Case: 24-1023 Document: 59 Page: 7 Filed: 01/07/2026

-- 7 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 8
expect to prevail in a dispute over infringement of the pa-
tent.” Id. at 1338-39 (internal quotation marks omitted).
This bad-faith element of a Lanham Act unfair competition
claim must be proven by clear and convincing evidence.
See Golan v. Pingel Enter., 310 F.3d 1360, 1371-72 (Fed.
Cir. 2002).
III
A
Indect raises numerous patent issues in its appeal. It
challenges the district court’s judgment upholding validity
by arguing (i) claim 1 of the ’956 patent is invalid for indef-
initeness and lack of enablement because the claimed
method is impossible to perform; (ii) claim 1 is also invalid
because the “high resolution image” limitation is indefinite;
(iii) the district court improperly allowed the jury to resolve
claim construction disputes; and (iv) the district court
abused its discretion by excluding evidence that Park As-
sist had offered to sell a parking system embodying the
claimed invention more than a year before filing its patent
application, thereby invalidating the patent under the on-
sale bar. We agree with the district court on the first three
of these issues but vacate and remand for a new trial with
respect to the on-sale bar.
1
Indect contends that claim 1 of the ’956 patent is im-
possible to perform in its entirety and, therefore, is invalid
for indefiniteness and lack of enablement. According to In-
dect, “[i]t is undisputed that step (h) of claim 1 can only be
taken when a space is vacant and step (i) can only be taken
when a space is occupied. Thus, it is impossible for all the
steps of the method to be taken.” Indect Open. Br. at 27;
see also id. at 13 (describing “fatal impossibility”). The dis-
trict court rejected these arguments. We do as well.
For purposes of both indefiniteness and lack of enable-
ment, Indect’s argument is that the claims, read literally,
Case: 24-1023 Document: 59 Page: 8 Filed: 01/07/2026

-- 8 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 9
require the same parking space to be both occupied and va-
cant at the same time, which is of course a physical impos-
sibility. Yet there is no basis in the record for the
conclusion that a person of ordinary skill in the art would
read the claims in this nonsensical manner.
An initial flaw with Indect’s position is that it rests on
an unstated, and incorrect, assumption that the steps of
claim 1 of must be undertaken in the order in which they
are written.3 Indect assumes that step (i), requiring ex-
tracting a permit identifier from a high resolution image
associated with a vehicle occupying a space – must occur
after or concurrently with step (h), which requires correct-
ing the occupied status indicated for a space if its thumb-
nail image shows the space is actually vacant. However,
“[u]nless the steps of a method actually recite an order, the
steps are not ordinarily construed to require one.” Al-
tiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003) (internal quotation marks omitted). Here, neither
“as a matter of logic or grammar” must the steps of claim
1, and particular steps (h) and (i), “be performed in the or-
der written.” Id.
In any event, there is simply no evidence, much less
clear and convincing evidence, that a skilled artisan would
read the steps of claim 1’s method in the manner Indect
proposes. Naturally, we recognize it would be impossible,
at a single moment in time, to: (i) obtain an image of a ve-
hicle in a parking spot the system has identified as occu-
pied (step (d)), (ii) correct the status of that same space to
vacant because a visual review the image shows it is actu-
ally vacant (step (h)), and also (iii) extract a permit
3 Although the district court did not rely on this conclu-
sion, and Park Assist does not make this argument, “we
may affirm a district court judgment on any ground shown
by the record.” Hydril Co. LP v. Grant Prideco LP,
474 F.3d 1344, 1351 (Fed. Cir. 2007).
Case: 24-1023 Document: 59 Page: 9 Filed: 01/07/2026

-- 9 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 10
identifier from the image of the vehicle occupying the space
(step (i)). If a space is occupied then it cannot also be va-
cant, and if it is vacant there is no vehicle from which to
extract a permit identifier. But the record provides no ba-
sis to conclude that a person of ordinary skill in the art
would view the claims as requiring this impossibility. In-
stead, we agree with the district court that “if the space is
occupied, step (h) is skipped and steps (i) and (j) are done;
if the space is vacant, step (h) is performed.” J.A. 76
(cleaned up). Under this understanding of the claims, the
claimed method can be entirely performed, although per-
formance, for any single parking space at any single mo-
ment, will only involve undertaking either step (h) or step
(i).
Moreover, like the district court, we acknowledge that
the claim language “could have been more clearly written .
. . to avoid this confusion,” but we are also “mindful that
courts ‘strive, where[ever] possible, to avoid nonsensical re-
sults in construing claim language.’” J.A. 48 (quoting
AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264,
1276 (Fed. Cir. 2011)). “[C]onstruction[s] that render[] all
embodiments inoperable” are viewed “skeptically.” Net-
work-1 Techs., Inc. v. Hewlett-Packard Co., 981 F.3d 1015,
1025 (Fed. Cir. 2020).
Indect analogizes this case to two in which we held that
“impossible” claims were invalid due to indefiniteness. In
Trustees of Boston University v. Everlight Electronics Co.,
896 F.3d 1357, 1362 (Fed. Cir. 2018), we “safely conclude[d]
that the specification does not enable what the experts
agree is physically impossible.” The claim at issue there
was not enabled because the “specification [did] not teach
one of skill in the art how to make the claimed semiconduc-
tor device with a monocrystalline growth layer directly on
an amorphous buffer layer” because “it is impossible to ep-
itaxially grow a monocrystalline film directly on an amor-
phous structure.” Id. Similarly, in Process Control Corp.
v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999),
Case: 24-1023 Document: 59 Page: 10 Filed: 01/07/2026

-- 10 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 11
we found the challenged claims invalid because they “em-
bodie[d] an inoperable method that violates the principle of
conservation of mass.” In each of these cases, the specifi-
cation could not teach a skilled artisan how to do the im-
possible; nor could the claims be reasonably construed in
any manner other than to require accomplishing these im-
possibilities. Here, by contrast, Park Assist’s claims are
not physically impossible to perform; a skilled artisan
would not read them as requiring the physical impossibil-
ity of a parking space being simultaneously occupied and
vacant.
Thus, the situation here is unlike the one we con-
fronted in Chef America, Inc. v. Lamb-Weston, Inc.,
358 F.3d 1371, 1374 (Fed. Cir. 2004), on which Indect also
relies, because there is a reasonable interpretation of the
claims that leads to a sensible result. Indeed, “Chef Amer-
ica does not require us to depart from common sense in
claim construction.” AlterWAN v. Amazon.com, Inc., 63
F.4th 18, 24 (Fed. Cir. 2023). In this case, common sense
leads us to determine that one of skill in the art would rea-
sonably understand Park Assist’s claim to be one that is
entirely possible to perform.
Hence, the district court did not err in failing to find
claim 1 of the ’956 patent invalid due to indefiniteness or
lack of enablement.
2
Limitation (d) recites “obtaining . . . as a result of said
occupied status, a single high resolution image of a vehicle
occupying said parking space . . . .” Indect argues that this
limitation renders claim 1 indefinite because a person of
ordinary skill in the art would lack reasonable certainty as
to what is, and is not, a “high resolution image.” The dis-
trict court was not persuaded and neither are we.
“Claim language employing terms of degree has long
been found definite where it provide[s] enough certainty to
Case: 24-1023 Document: 59 Page: 11 Filed: 01/07/2026

-- 11 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 12
one of skill in the art when read in the context of the inven-
tion.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370 (Fed. Cir. 2014) (two-judge panel). “[W]hen a claim
limitation is defined in ‘purely functional terms,’ a deter-
mination of whether the limitation is sufficiently definite
is ‘highly dependent on context (e.g., the disclosure in the
specification and the knowledge of a person of ordinary
skill in the relevant art area).’” Biosig Instruments, Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1378 (Fed. Cir. 2015). This
merely requires that the patent provide “some standard for
measuring that [term of] degree.” Mentor Graphics Corp.
v. EVE-USA, Inc., 851 F.3d 1275, 1290 (Fed. Cir. 2017) (al-
teration in original). That requirement is satisfied here.
The district court correctly construed “high resolution
image,” as used in steps (d), (e), and (i) of claim 1, as an
“image of sufficient resolution to extract a permit identifier
such as a license plate number.” J.A. 1692; see also J.A. 26.
In making this determination, the district court relied on
the “specification[’s] discuss[ion] [of] ‘high resolution im-
age’ in the context of reading and extracting a permit iden-
tifier, such as a license plate, and [its] distinguish[ing]
between an ‘occupancy image’ and an ‘identification im-
age,’” which differ in terms of their required readability.
J.A. 27 (quoting ’956 pat. at 1:48-55, 20:62-65). We agree
with the district court that this specification support is suf-
ficient to permit a person of skill in the art to distinguish
between “high resolution images,” which are those of such
resolution that one is able to extract and read a license
place from the image, and those that are not “high resolu-
tion,” because they cannot be read in this manner. This is
sufficiently reasonable certainty as to the scope of the
claims.
Therefore, we affirm the district court’s determination
that claim 1 is not indefinite based on its “high resolution”
limitation.
Case: 24-1023 Document: 59 Page: 12 Filed: 01/07/2026

-- 12 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 13
3
Indect next accuses the district court of failing in its
responsibility to construe all material, disputed claim
terms, see O2 Micro Int’l Ltd. v. Beyond Innova-
tion Tech. Co., 521 F.3d 1351, 1373 (Fed. Cir. 2008), and
instead improperly delegating the task of claim construc-
tion to the jury. In particular, Indect asserts that the court
should have defined the resolution terms of steps (a) and
(b), and also determined whether steps (i) and (j) are lim-
ited to identifying cars prohibited from certain parking
spaces (“blacklisting”) or also extend to identifying cars
permitted to be in certain spaces (“whitelisting”). The dis-
trict court committed no error.
With respect to steps (a) and (b), Park Assist requested
that the district court construe these steps as applying only
to low resolution images, but instead the district court told
the jury to apply the “plain and ordinary meaning” of the
terms. J.A. 6429. In doing so, the district court adopted
the position advocated by Indect. J.A. 7761-62 (Indect ar-
guing “[t]he monitoring (step (a)) and detecting (step (b))
steps should not be construed to require any particular res-
olution”). When the district court rejected Park Assist’s
proposed construction at trial, Indect agreed with the dis-
trict court that it should not give any specific construction
of this term. J.A. 13400-03 (district court stating it had
“made [its] claim construction [already] and [was] not
about to dabble with [it] anymore,” after which Indect
counsel stated “[w]e agree”); J.A. 8273 (joint proposed jury
instructions providing that “[f]or any words in the claim for
which [the district court] ha[s] not provided you with a def-
inition, you should apply the plain and ordinary mean-
ing”).4 Nor did Indect ever object to any of the testimony
4 Indect insists it presented this issue to the district
court “through motions in limine and proposed jury
Case: 24-1023 Document: 59 Page: 13 Filed: 01/07/2026

-- 13 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 14
elicited by Park Assist relating to steps (a) and (b). Indect’s
arguments on appeal that the district court should have
nonetheless construed these steps, or that the district court
should have sua sponte excluded Park Assist’s expert’s tes-
timony that assumed these steps are limited to low resolu-
tion images,5 are waived. See Conoco, Inc. v.
Energy & Evt. Int’l, L.C.¸ 460 F.3d 1349, 1359-60 (Fed. Cir.
2006) (“[A] party may not introduce new claim construction
arguments on appeal or alter the scope of the claim con-
struction positions it took below.”); see also Marbled Murre-
let v. Babbitt, 83 F.3d 1060, 1066 (9th Cir. 1996) (“By
instructions,” Indect Open. Br. at 25; see also id. at 53, but
none of the record citations to which it directs us shows In-
dect asking the district court to construe claim steps (a)
and (b) and define the steps as not restricted to low resolu-
tion images. See J.A. 130, 6503, 7618, 7750, 8220, 8646
(non-substantive title pages); J.A. 7761-68 (Indect oppos-
ing construction “requir[ing] any particular resolution”);
J.A. 6517-21 (discussing steps (h) and/or (j)), 7639-42
(same); J.A. 7973 (requesting court address, and reject,
Park Assist’s proposed construction requiring particular
resolution but not offering any alternative construction);
J.A. 8271-72 (noting objection to Park Assist’s construction
requiring lower resolution image for steps (a) and (b) but
not proposing alternative other than “plain and ordinary
meaning”); J.A. 8654-55 (final jury instructions);
J.A. 13387-403 (Indect agreeing no further construction
was needed regarding the resolution of images in steps (a)
and (b)).
5 Park Assist’s invalidity expert opined that the image
used in step (a) has to be lower in resolution than the image
collected at step (d) and, further, that her opinions concern-
ing certain prior art references (the M3 brochure and In-
tertraffic article) depended on steps (a) and (b) being
limited to low resolution images. J.A. 14525-27, 14584-85.
Case: 24-1023 Document: 59 Page: 14 Filed: 01/07/2026

-- 14 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 15
failing to object to evidence at trial and request a ruling on
such an objection, a party waives the right to raise admis-
sibility issues on appeal.”).
With respect to steps (i) and (j), Indect asserts error in
the district court’s refusal to determine whether these
steps are limited to “whitelisting” or if they also extend to
include “blacklisting.” J.A. 14373, 14520. Claim steps (i)
and (j) recite “initiating an infringement process for said
vehicle having said permit identifier that fails to coincide
with at least one parking permit identification.” ’956 pat.
at 23:1-4. The district court construed “infringement pro-
cess” as “a notice of unauthorized parking.” J.A. 33. The
parties agree that the court’s construction encompasses
whitelisting. The district court rejected Indect’s request to
construe step (j) as also encompassing the “blacklisting”
feature taught in the prior art, but neither did the court
rule that blacklisting was excluded from the claim.
J.A. 7973.
The scope of steps (i) and (j) was relevant to Indect’s
obviousness defense, and specifically to the question of
whether Indect’s “blacklisting” prior art references disclose
an “infringement process” consistent with the court’s con-
struction. The district court properly viewed this as a fact
question requiring the jury to apply its construction of “in-
fringement process” to the prior art, rather than a new
claim construction dispute requiring judicial resolution as
a matter of law. See Sage Prods., LLC v. Stewart, 133 F.4th
1376, 1381 (Fed. Cir. 2025) (“What the prior art discloses
is a fact question.”) (cleaned up). Thus, the district court
did not err in failing to further construe its already-estab-
lished construction or by instructing the jury to evaluate
the prior art based on the construction the court provided.
See generally Function Media, LLC v. Google, Inc.,
708 F.3d 1310, 1325 (Fed. Cir. 2013) (“[T]he district court
[did not] delegate[] claim construction to the jury . . . espe-
cially . . . where, as here, the jury was instructed to apply
the district court’s claim constructions.”).
Case: 24-1023 Document: 59 Page: 15 Filed: 01/07/2026

-- 15 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 16
4
Indect also attempted to prove that the claims of the
’956 patent are invalid as obvious based on the on-sale bar.
To be precise, Indect contended in the district court that a
Park Assist document memorializing an offer to sell Park
Assist’s “M3 Parking System” – whose method the parties
“do[] not dispute. . . is indistinguishable from [Park As-
sist’s] ’956 patent,” J.A. 52 – to the Cadillac Fairview Chi-
nook Centre in Calgary, Canada (“Chinook Document” or
“Chinook”) more than one year before the filing date of the
’956 patent invalidates each of the patent’s claims. J.A. 53,
15606-10. It is undisputed that, for the ’956 patent, “the
critical date to constitute prior art is May 8, 2010, or one
year before the filing date of the claimed invention.”
J.A. 52.
The district court excluded the Chinook Document
from evidence on the ground that it “only offers the M3
Parking System product, not the method the M3 Parking
System relies upon.” J.A. 53-54. But the court’s conclusion
that an offer to sell a product is inadmissible when the pa-
tent also covers a process is erroneous as a matter of law.
“Where a product embodies essential features of the pa-
tented invention, a sale of the product is tantamount to a
sale of the process performed by that product and thus cre-
ates an on-sale bar to the process claims as well.” BASF
Corp. v. SNF Holding Co., 955 F.3d 958, 970
(Fed. Cir. 2020) (cleaned up); see also Robotic Vision Sys. v.
View Eng’g, Inc., 249 F.3d 1307, 1311 (Fed. Cir. 2001)
(holding that product can be invalidating prior art to
method claim if product itself discloses some or all steps of
claimed method); Quest Integrity USA, LLC v. Cokebust-
ers USA Inc., 924 F.3d 1220, 1228 (Fed. Cir. 2019) (“Perfor-
mance of a claimed method for compensation, or a
commercial offer to perform the method, can also trigger
the on-sale bar, even where no product is sold or offered for
sale.”).
Case: 24-1023 Document: 59 Page: 16 Filed: 01/07/2026

-- 16 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 17
In reaching its decision, the district court relied on
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1550 (Fed. Cir. 1983). There, we applied the longstanding
principle that “method patents [a]re exhausted by the sale
of an item that embodie[s] the method.”
Quanta Comp., Inc. v. LG Elecs., Inc., 553 U.S. 617, 629
(2008). While the product in W.L. Gore did not sufficiently
embody the steps of the patented method at issue, here a
reasonable factfinder could find that Park Assist’s M3
Parking System does sufficiently disclose the steps of the
method of claim 1, especially given that in the district court
the parties did “not dispute” that the Chinook document
was “indistinguishable from [the] ’956 patent.” J.A. 52; but
see Park Assist Open. Br. at 53 (contending, on appeal, that
“Chinook document did not disclose steps of the patented
method”).
The exclusion of the potentially invalidating Chinook
Document, which could be reasonably found to constitute
an offer for sale of a product sufficiently disclosing the pa-
tented process more than a year prior to the filing of the
patent application, was based on a clear error of law and,
thus, an abuse of discretion. Therefore, we reverse the dis-
trict court’s exclusion of the Chinook Document, vacate the
judgment that the claims of the ’956 patent are not invalid,
and remand for a new trial on obviousness based on the on-
sale bar.
B
Indect next appeals the district court’s denial of its mo-
tion for judgment as a matter of law on its unfair competi-
tion claim. Indect sought to prove that Park Assist violated
Section 43(a) of the Lanham Act by sending letters to In-
dect’s current and potential customers and by suing one of
its customers, the Airport, despite Park Assist’s alleged
lack of evidence that the Airport was actually infringing
any claim of the ’956 patent. Indect faults the district court
for excluding evidence relating to the Airport litigation.
Case: 24-1023 Document: 59 Page: 17 Filed: 01/07/2026

-- 17 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 18
See J.A. 14153 (instructing jury to “disregard everything
about the San Diego Airport with the exception that there
were letters that were sent out referencing the fact that
there was that litigation pending and that they considered
it to . . . [have] substantial commercial value”). We agree
with Indect that the district court’s decision to exclude this
evidence was an abuse of discretion.
To prevail on its claim under Section 43(a) of the Lan-
ham Act, Indect was required to prove that Park Assist
acted in bad faith, which Indect tried to show by proving
that Park Assist brought “objectively baseless” patent liti-
gation against the Airport. See generally Dominant Semi-
conductors Sdn. Bhd. v. OSRAM GmbH, 524 F.3d 1254
(Fed. Cir. 2008). In an effort to meet its burden, Indect
proffered evidence that Park Assist had filed suit against
the Airport, an Indect customer, based on the Airport’s use
of Indect’s UPSOLUT system, notwithstanding that Park
Assist had no affirmative evidence of infringement. Indect
further alleged that Park Assist knew or should have
known from publicly available information that the Airport
was not, in fact, infringing. The district court cited Indect’s
evidence when it denied Park Assist’s motion for summary
judgment of no unfair competition, explaining that “Indect
ha[d] at least created a triable issue of fact as to whether
Park Assist’s continued pursuit of the Airport Case was ob-
jectively baseless.” J.A. 65; see also J.A. 80 (denying Park
Assist motion in limine that sought “categorical exclusion
of evidence related to the airport lawsuit and patent notice
letters sent, items th[e] Court found relevant to Indect’s
claims”).
Then, at trial, the district court changed course, in-
structing Indect:
You can certainly put on evidence to show that the
letters were sent out, and you can maybe put on
some evidence as to the fact that they [i.e., Park
Assist] thought that they got some commercial
Case: 24-1023 Document: 59 Page: 18 Filed: 01/07/2026

-- 18 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 19
advantage out of the litigation, but we’re not going
to talk about whether or not the lawsuit itself had
merit.
J.A. 137; see also J.A. 133 (“[B]ecause, if we’re going to
go into that, we’re going to be here for a lot longer.”);
J.A. 6193-97 (explaining need to avoid “trial within a
trial”); J.A. 13379 (“[W]e’re not going to relitigate that
case.”). The district court cited as support for its eviden-
tiary decision the fact that the Airport case had, subse-
quent to the summary judgment ruling, settled and could
not be appealed.
Park Assist insists that the district court properly ex-
cluded the evidence under Federal Rule of Evidence 403 ,
but the district court did not cite Rule 403 nor expressly
weigh the probative value of the evidence against the coun-
tervailing concerns of the Rule (e.g., unfair prejudice, con-
fusion, waste of time). Nor was the Airport case ever
resolved on the merits, as Park Assist mistakenly suggests.
Park Assist continued to press its counterclaim that Indect
induced the Airport to infringe even after the Airport case
itself was dismissed. Most importantly, as the district
court correctly held at the summary judgment stage, In-
dect’s evidence, if credited by the jury, could have sup-
ported a verdict in favor of Indect on its unfair competition
claim, as it could have led to a finding that Park Assist’s
suit against the Airport was objectively baseless and,
hence, Park Assist acted in bad faith.
The court should have allowed introduction of evidence
about the Airport litigation to permit the jury to fully eval-
uate whether Indect proved its claim. See generally
Tex. Digit. Sys., Inc. v. Telegenix, Inc.,
308 F.3d 1193, 1216-19 (Fed. Cir. 2002), abrogated on other
grounds by Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.
2005) (en banc). By instead excluding such evidence, the
district court abused its discretion. Therefore, we reverse
the district court’s admissibility determination, vacate the
Case: 24-1023 Document: 59 Page: 19 Filed: 01/07/2026

-- 19 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 20
judgment of no liability for unfair competition, and remand
for a new trial on the bad faith element of Indect’s Lanham
Act claim.6
IV
We turn now to Park Assist’s cross-appeal. Park Assist
challenges the district court’s (i) determination that the
preamble of claim 1 is limiting; (ii) construction of “display-
ing a thumbnail image” as requiring “near real-time” feed-
back; and (iii) grant of Indect’s request for a declaratory
judgment of no infringement by any of Indect’s past, pre-
sent, or future customers. We agree with the district court
on the first two of these issues but vacate its declaratory
judgment of non-infringement and remand for further pro-
ceedings.
A
“We review claim construction de novo, except for sub-
sidiary facts based on extrinsic evidence, which we review
for clear error.” Power Integrations, Inc. v. Fairchild Sem-
iconductor Int’l, Inc., 904 F.3d 965, 971 (Fed. Cir. 2018)
6 Park Assist asks that if we decide to order further
proceedings on Indect’s unfair competition claim, as we
have, we also “revise[]” the district court’s order to “allow
in Park Assist’s strong evidence that the Airport was in-
fringing;” it further asks us to vacate the jury’s finding that
Indect met its burden on the non-bad faith elements of its
claim. Park Assist Open. Br. at 30. As Park Assist did not
include these requests in its cross-appeal, and only ad-
dressed them in passing in its response to Indect’s appeal,
we cannot grant this relief. See AquaTex Indus., Inc. v.
Techniche Sols., 419 F.3d 1374, 1379 (Fed. Cir. 2005) (“Be-
cause [a party] failed to cross appeal [an issue] properly,
we decline to consider it.”). The district court will deter-
mine in the first instance what evidence relating to the Air-
port litigation should be admitted at the new trial.
Case: 24-1023 Document: 59 Page: 20 Filed: 01/07/2026

-- 20 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 21
(citing Teva Pharms. USA, Inc. v. Sandoz Inc. 574 U.S. 318
(2015)). We agree with the district court’s challenged claim
constructions.
1
The district court determined that claim 1’s preamble,
“[a] method of managing a plurality of parking spaces,” is
limiting. Under this view of the claims, the patented
method is not practiced if it is applied to just a single park-
ing space. J.A. 7625 (“The claim language makes no sense
divorced from management of parking facilities.”). We
agree with the district court.
“Whether to treat a preamble as a limitation is a deter-
mination resolved only on review of the entire[] . . . patent
to gain an understanding of what the inventors actually in-
vented and intended to encompass by the claim.” Cata-
lina Mktg. Int’l Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 808 (Fed. Cir. 2002) (internal quotation
marks omitted; alterations in original). A preamble may
be limiting “if it recites essential structure or steps, or if it
is necessary to give life, meaning, and vitality to the claim.”
Id. (internal quotation marks omitted).
Here, the preamble gives “life, meaning, and vitality”
to the claims. As is evident from the intrinsic evidence, the
claims were intended by the inventors to apply only to a
“plurality of parking spaces,” not to a single parking spot.
The specification repeatedly refers to “slots” and “spaces,”
which are both plural nouns, and explicitly teaches that the
patent “relates to the management of a parking lot,” which
necessarily consists of more than one parking spot. ’956
pat. at 1:12-31. Additional “objectives of the . . . invention”
are to “find available parking in a parking lot,” to “find[] [a]
car within a parking lot,” to “enable preferential parking .
. . within [a] parking lot,” to “reduce parking lot energy con-
sumption,” and to “improve parking lot security,” all of
which are plainly directed towards parking lots, and not to
single parking spaces. Id. at 2:1-26.
Case: 24-1023 Document: 59 Page: 21 Filed: 01/07/2026

-- 21 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 22
The systems and methods of the ’956 patent would not
be necessary for management of a single parking space.
The preamble, which introduces the concept of “managing
a plurality of parking spaces” and is the only portion of the
claim that does so, is necessary in order to give meaning to
the claim and prevent it from, improperly, reading on a sin-
gle parking space. We affirm the district court’s judgment
that the preamble is limiting.
2
The district court additionally adopted Indect’s pro-
posed construction of step (f)’s “displaying a thumbnail im-
age” as meaning “displaying a small near real-time image
of a picture of said parking space on the computer screen.”
J.A. 8266. In reaching this conclusion, the district court
observed that while the specification disclosed an embodi-
ment allowing for updates to occur as infrequently as every
ten minutes, it “also teaches that the thumbnail is updated
every time a vehicle enters or exits a parking space.”
J.A. 31. We agree with the district court that “the intent of
the invention is in part to ‘provide real-time feedback,’ and
the ten-minute threshold is merely a failsafe provision de-
signed as a back-up to an undetected entry or exit,” which
necessarily means that the reviews must occur, in the
usual course, in under ten minutes. J.A. 31 (quoting ’956
pat. at 14:58-61).
The near real-time construction does not improperly
import a limitation from the specification into the claims.
Rather, the district court correctly construed the claim lan-
guage in light of the specification, which specifies that the
’956 patent is clearly directed to “enabl[ing] all parking
slots 15 to be surveyed in real time.” ’956 pat. at 14:35-36;
see also Eon-Net LP v. Flagstar Bancorp,
653 F.3d 1314, 1321 (Fed. Cir. 2011) (finding no improper
importation of limitation from specification where “[t]he
written description repeatedly and consistently define[d]
the invention” as including the limitation). The steps of
Case: 24-1023 Document: 59 Page: 22 Filed: 01/07/2026

-- 22 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 23
claim 1 that follow step (f) – namely, steps (g) and (h),
which require review of the thumbnail image and, if neces-
sary, correction of the occupancy status of a parking spot
based on the image – cannot be performed if the thumb-
nails are outdated and inaccurate. Thus, we affirm the dis-
trict court’s construction.
B
Finally, Park Assist objects to the broad scope of the
district court’s declaratory judgment of non-infringement,
which extends to past, present, and future customers’ use
of Indect’s Accused System. In granting Indect’s Third
Claim for Declaratory Relief, the district court insulated
Indect from all liability for induced infringement relating
to the accused UPSOLUT system, no matter how the sys-
tem is implemented, by whom, or when. Because this ex-
tensive relief is not supported by sufficient findings, we
vacate the district court’s declaratory judgment and re-
mand for further proceedings.
Park Assist challenges the district court’s declaratory
judgment of non-infringement by Indect’s customers on
multiple grounds: the absence of findings that the
UPSOLUT system is incapable of infringing, Indect’s lack
of standing, and the district court’s lack of subject matter
jurisdiction.7 Indect responds principally by relying on the
“Kessler Doctrine,” which prohibits patentees from contin-
uing to assert infringement against users of a product that
7 Park Assist also contends that both judgments of non-
infringement (i.e., no direct infringement by Indect and no
induced infringement of Indect’s customers) should be re-
versed because they are based on incorrect claim construc-
tions (of the preamble and “displaying a thumbnail
image”). As we have affirmed the district court’s construc-
tions, this contention is unavailing.
Case: 24-1023 Document: 59 Page: 23 Filed: 01/07/2026

-- 23 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 24
has been found not to infringe. See Kessler v. Eldred,
206 U.S. 285 (1907).
The Kessler Doctrine “allow[s] an adjudged non-in-
fringer to avoid repeated harassment for continuing its
business as usual post-final judgment in a patent action
where circumstances justify that result.” Brain Life, LLC
v. Elekta Inc., 746 F.3d 1045, 1056 (Fed. Cir. 2014) (inter-
nal emphasis omitted). We have described the Kessler Doc-
trine as “granting a ‘limited trade right’ that attaches to [a]
product itself.” In re PersonalWeb Techs. LLC, 961 F.3d
1365, 1378 (Fed. Cir. 2020). Importantly, the scope of that
right is only so far as necessary “to protect any products as
to which the manufacturer established a right not to be
sued for infringement,” and discerning that extent requires
“an adjudication on the merits” of the claim of infringe-
ment. Id. at 1379.
Here, there has been no adjudication of whether the
UPSOLUT system, in all of its actual and potential imple-
mentations, is non-infringing. To the contrary, the district
court expressly refused to make such a determination. See
J.A. 163 (“[T]he [c]ourt will not delve into the evidence to
determine whether Indect’s Accused System is capable of
infringing.”). The sole infringement finding in the record
is the jury’s answer of “No” to the following question:
Has Park Assist LLC (“Park Assist”) proven by a
preponderance of the evidence that Indect has di-
rectly infringed or is directly infringing claim 1 of
the ’956 patent by performing every required step
of the claimed method?
J.A. 8520. This is not a finding that Indect’s UPSOLUT
system does not, and cannot, infringe claim 1. Thus, even
assuming Indect had standing, and further assuming the
district court had jurisdiction, the factual premise required
for the broad relief granted by the district court – a finding
that UPSOLUT cannot be used in an infringing manner –
is, at present, missing.
Case: 24-1023 Document: 59 Page: 24 Filed: 01/07/2026

-- 24 of 25 --

INDECT USA CORP . v. PARK ASSIST, LLC 25
Accordingly, we vacate the district court’s grant of In-
dect’s Third Claim for Declaratory Relief. On remand, the
district court, in its discretion, may, if asked, assess
whether the UPSOLUT is capable of infringement. Alter-
natively, the district court might wait to assess infringe-
ment until after the further proceedings we are ordering
with respect to validity. If those proceeding lead to a judg-
ment of invalidity, that determination would impact
whether the district court can exercise jurisdiction over the
infringement claims and counterclaims, given that an in-
valid claim cannot be infringed. See TypeRight Key-
board Corp. v. Microsoft Corp., 374 F.3d 1151, 1157 (Fed.
Cir. 2004) (“[I]nvalidity operates as a complete defense to
infringement for any product, forever.”) (internal quotation
marks omitted).
V
We have considered the parties’ remaining arguments
and find they lack merit. Accordingly, for the foregoing
reasons, the district court’s judgment is affirmed-in-part,
reversed-in-part, vacated-in-part, and remanded for fur-
ther proceedings consistent with this Opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART,
VACATED-IN-PART, AND REMANDED
COSTS
Each party to bear its own costs.
Case: 24-1023 Document: 59 Page: 25 Filed: 01/07/2026

-- 25 of 25 --