hid global et. al. v. applied wireless identifications group et. al

7/27/2019 HID Global Et. Al. v. Applied Wireless Identifications Group Et. Al.

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HID GLOBAL COR PORATION, aDelaware corporation; ASSA ABLOYAB , a Swedish Limited LiabilityCompany; and DESTRON FEARINGCORPO RATION, a Delawarecorporation,Plaintiffs,

VS.APPLIED WIRELESSIDENTIFICATIONS G ROU P, INC., aDelaware corporation; and DOE S 1through 10, inclusive,

Defendants.

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Michael T. Homak (State Bar No. 819 3 6 )[email protected] P. Oines State Bar No. 145016)email: [email protected] A. Chapin (State Bar No. 2 32 8 8 5 )email: bchapin rutan.comTimothy Spivey State Bar No. 269084)RUTAN & TUC6 11 Anton Boulevard, Fourteenth FloorCosta Mesa, California 9 26 26 -19 31Telephone: 714-641-5100Facsimile: 714-546-9035Attorneys for Plaintiffs HID GLO BALCORPORATION, ASSA ABLOY AB andDESTRON FEARING CORPORATION

UNITED STATES DISTRICT COURTCENTRA L DISTRICT OF CALIFORNIA

SACV 13 - 01272 JVS (JCGx)Case No.COMPLAINT FOR INJUNCTIONAND DAMAGES FOR PATENTINFRINGEMENTDEM D FOR JURY TRIAL

2118/025100-00075831072.1 a07/02/13

COMPLAINT FOR PATENTINFRINGEMENT

Case 8:13-cv-01272-JVS-JCG Document 1 Filed 08/20/13 Page 1 of 11 Page ID #:7


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will seek leave of this Court to amend this Complaint to include their proper namesand capacities when they have been ascertained. Plaintiffs are informed and believe,and based thereon allege, that each of the fictitiously named defendants participatedin and is in some manner responsible for the acts described in this Complaint andthe damage resulting therefrom.

8 . Plaintiffs allege on information and belief that each of the defendantsnamed herein as Does 1 through 10, inclusive, performed, participated in, or abettedin some manner, the acts alleged herein, proximately caused the damages allegedhereinbelow, and are liable to Plaintiffs for the damages and relief sought herein.

9 . Plaintiffs allege on information and belief that, in performing the actsand omissions alleged herein, and at all times relevant hereto, each of theDefendants was the agent and employee of each of the other Defendants and was atall times acting within the course and scope of such agency and employment withthe knowledge and approval of each of the other Defendants.

HID'S BUSINESS10. HID is a leader in the delivery of secure identity solutions for millions

of customers throughout the world. HID's identity solutions are used in a variety ofapplications, including physical access control, logical access control, access cardprinting and personalization, highly secure government identification and animalidentification. HID's products, solutions and services are sold through a well-established network of OEMs, developers, systems integrators and distributorsworldwide. End users of HID's products, solutions and services include businessesand organizations in virtually all industry sectors, including government, healthcare,retail, industrial, commercial, airports, ports, finance and education.

11. HID's physical access control products and solutions are sold underHID's well-known brands, including iCLASS, SmartID, HIDO Prox andIndala Prox. These industry leading products, include radio frequencyidentification ("RFID") readers and credentials that operate at low frequency


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(i.e., 125 kHz), high frequency (i.e., 13.56 MHz), or both.THE PATENTS AT ISSUE

12 . HID owns or is a licensee to numerous patents and other intellectualproperty that relate to various aspects of HID's business. The patents that are thesubject of this action, United States patent nos. 7,439,862 (the "`862 Patent") and5,952,935 (the '935 Patent"), relate generally to multi-technology readers andcredentials.

13 . The '862 Patent, entitled "Antenna Array For an RFID ReaderCompatible With Transponders Operating At Different Carrier Frequencies," issuedon October 21, 2008. AAAB owns by assignment, and HID is a licensee of, the'862 Patent.

14 . The '862 Patent generally discloses, among other things, an RFIDreader that includes at least two reader antennas that operate at different carrierfrequencies. The reader antennas are arranged in a configuration that optimizesperformance of the RFID system, while maintaining a compact size.

15 . The '935 Patent, entitled "Reprogrammable Channel Search Reader,"issued on September 14, 1999. Destron owns the '935 Patent. Pursuant to a licenseagreement dated September 21, 2007 (the "License Agreement"), Destron'spredecessor granted to Assa Abloy Identification Technology Group AB("AAITG") an exclusive license in certain fields to the '935 Patent. Destron'spredecessor further granted to AAITG the right to enforce the '935 Patent to the fullextent of the license granted, including the right to file actions for patentinfringement for any current or past infringement. By assignment, AAAB owns therights granted to AAITG pursuant to the license from Destron's predecessor.Pursuant to the License Agreement, Destron's predecessor, as owner of the '935Patent, agreed to participate in any infringement action brought by AAITG, or itssuccessor to the rights under the License Agreement, AAAB. Destron is named as aplaintiff in this action for that reason alone.


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16 . The '935 Patent generally discloses an RFID reader that is capable ofreading identification signals from transponders that use different frequencies,different methods of modulation, and/or different methods of encoding tocommunicate with the RFID reader. Another key aspect of the '935 Patent providesthat the RFID reader is programmable.

AWID'S INFRINGEMENT17 . AWID also is in the business of providing physical access control

solutions, including RFID readers that operate at 125 kHZ and 13.56 MHz carrierfrequencies. AWID competes directly with HID, and sells and seeks to sell its RFIDreaders to various industry sectors, including those to which HID sells its products.As set forth below, certain of AWID's readers incorporate inventions that aredisclosed in and protected by the '862 and '935 patents.

FIRST CLAIM FOR RELIEF(Patent Infringement '8 6 2 Patent)

18 . Plaintiffs reallege each and every allegation set forth in paragraphs 1through 17, inclusive, and incorporate them herein by this reference.

19 . Defendants make, use, sell, offer for sale, and/or import into the UnitedStates products that meet each and every element of one or more claims of the '862patent. As such, Defendants have infringed and are infringing the '862 patent.

2 0. Plaintiffs have marked relevant products and/or product literature withthe '862 Patent pursuant to 35 U.S.C. 287. On information and belief, Defendantshave had actual knowledge of the '862 Patent before and during their infringementof the '862 Patent. On information and belief, Defendants' infringement of the'862 patent has been and will continue to be willful, wanton and deliberate with fullknowledge and awareness of Plaintiffs' patent rights.

2 1. Plaintiffs have been damaged in an amount to be determined at trial,but which is no less than a reasonable royalty, and irreparably injured byDefendants' infringing activities. Plaintiffs will continue to be so damaged and

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irreparably injured unless such infringing activities are enjoined by this Court.2 2 . Moreover, in light of the willful nature of Defendants' conduct, this

case should be deemed "exceptional" under the Patent Laws. As a result, in additionto damages, Plaintiffs are entitled to enhanced damages and their attorneys' fees andcosts incurred herein.

SECOND CLAIM FOR RELIEF(Patent Infringement '9 3 5 Patent)

2 3 . Plaintiffs reallege each and every allegation set forth in paragraphs 1through 17, inclusive, and incorporate them herein by this reference.

2 4 . Defendants make, use, sell, offer for sale, and/or import into the UnitedStates products that meet each and every element of one or more claims of the '935Patent. As such, Defendants have infringed and are infringing the '935 Patent.

2 5 . Plaintiffs have marked relevant products and/or product literature withthe '935 Patent pursuant to 35 U.S.C. 287. On information and belief, Defendantshave had actual knowledge of the '935 Patent before and during their infringementof the '935 Patent. On information and belief, Defendants' infringement of the'935 patent has been and will continue to be willful, wanton and deliberate with fullknowledge and awareness of Plaintiffs' patent rights.

2 6 . Plaintiffs have been damaged in an amount to be determined at trial,but which is no less than a reasonable royalty, and irreparably injured byDefendants' infringing activities. Plaintiffs will continue to be so damaged andirreparably injured unless such infringing activities are enjoined by this Court.

2 7 . Moreover, in light of the willful nature of Defendants' conduct, thiscase should be deemed "exceptional" under the Patent Laws. As a result, in additionto damages, Plaintiffs are entitled to enhanced damages and their attorneys' fees andcosts incurred herein.

P YER FOR RELIEFWHEREFORE, Plaintiffs pray for judgment against Defendants as follows:

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1. That Defendants, their officers, directors, agents, servants, employees,and all persons and entities in active concert or participation with them, or any ofthem, be preliminarily and permanently enjoined and restrained from furtherinfringement of the '862 Patent and the '935 Patent;2 . A judgment by the Court that Defendants have infringed and areinfringing the '862 Patent and the '935 Patent;

3 . An award of damages for infringement of the '862 Patent and the '935Patent, together with prejudgment interest and costs, said damages to be trebled byreason of the intentional and willful nature of Defendants' infringement, as providedby 35 U.S.C. 284;

4 . A determination that this case is "exceptional" under 35 U.S.C. 285,and an award of Plaintiffs' reasonable attorneys' fees;

5 . That any monetary award include pre- and post-judgment interest at thehighest rate allowed by law;

6 . For costs of suit; and7 . For such other and further relief as the Court may deem just and proper.

Dated: August 19, 2013 RUTAN & TUCKER, LLPMICHAEL T. HORNAKRONALD P. OINESBRADLEY A. CHAPINTIMOTHY SPIVEYBy:

on aidAttorneys for Plaintiffs HID GLOBALCORPORATION, ASSA ABLOYAB, and DESTRON FEARINGCORPORATION


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DEMAND FOR JURY TRIALPursuant to Local Rule 38-1 of the Local Rules of the United States District

Court for the Central District of California, Plaintiffs hereby demand a jury trial inthis action.Dated: August 19, 2013UTAN & TUCKER, LLPMICHAEL T. HORNAKRONALD P. OINESBRADLEY A. CHAPINTIM THY SPIVEYRonainesAttorneys for Plaintiffs HID GLOBALCORPORATION, ASSA ABLOY AB

and DESTRON FEARINGCORPORATION

COMPLAINT FOR PATENTINFRINGEMENT2118/025100-00075831072,1 a07/02/13

By:

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ITED STATES DIST:ACT CO URTCENTRA L DISTRICT OF CALIFORNIA

NOTICE OF ASSIGNM ENT TO UNITED STATES JUDGES

This case has been assigned to District Judgeames V. Selna nd the assignedMagistrate Judge isay C. GandhiThe case number on all documents filed with the Court should read as follows:SACV 13-01272 JVS (JCGx)Pursuant to General Order 05 -07 of the United States District Court for the Central District ofCalifornia, the Magistrate Judge has been designated to hear discovery related motions.All discovery related motions should be noticed on the calendar of the Magistrate Judge.

Clerk, U. S. District Court

August 20, 2013 By D. VoDateeputy ClerkNOTICE TO COUNSELA copy of this notice must be served w ith the summons a nd complaint on all defendants (if a removal action isfiled, a copy of this no tice must be served on all plaintiffs).

Subsequent documents must be filed at the following location:Western Divisionouthern Divisionastern Division312 N. Spring Street, G-811 West Fourth St., Ste 105 347 0 Twelfth Street, Room 134Los Angeles, CA 9 0012anta Ana, CA 9 27 01iverside, CA 92 5 01Failure to file at the proper location w ill result in your docum ents being returned to yo u.

NOTICE OF ASSIGNMENT TO UNITED STATES JUDGESV-I8 (08/13)



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UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIACIVIL COVER SHEET

(a) PLAINTIFFS ( Check box if you are representing yourself Li)HID GLOBAL CORPORATION, a Delaware corporation;and ASSA ABLO Y AB, a Swedish Limited LiabilityCompany, and DESTRON FEARING CORPO RATION, aDelaware corporation

Vlichael T. Homak SBN 81936 / Ronald P. Oines SBN 145016BradleyA, Chapin SBN 232885/ Timothy Spivey SBN 269084RUTAN & TUCKER, LLP, 611 Anton Boulevard, 14th FloorCosta Mesa, CA 92626Telephone: (714) 641-5100

BASIS OF JURISDICTION (Place an X in one box only.) III. CITIZENSHIP OF PRINCIPAL PARTIES -For Diversity Cases Only(Place an X in one box for plaintiff and one for defendant)PT FEFTF DE F3. Federal Question (U.S.Government Not a Party) Citizen of This State L ii iI 1ncorporated or Principal Place E 4 E 4of Business in this StateCitizen of Another State Ell 2l 2ncorporated and Principal Place ofEl 5 El

Business in Another State4. Diversity (Indicate Citizenship Citizen or Subject of aof Parties in Item III) Foreign Country El 3oreign Nation606DEFENDANTS Check box if you are representing yourself EI )APPLIED WIRELESS IDENTIFICATIONS GROUP, INC., aDelaware corporation; and DOES 1 through 10, inclusive,(b) Attorneys (Firm Name, Address and Telephone Number. If youare representing yourself, provide same.)1. U.S. GovernmentPlaintiff1 2. U.S. GovernmentDefendant

E l 4. Reinstated orReopened

1. Original. Removed from3. Remanded fromProceedingtate Courtppellate Court 5 . T r a n s f e r re d f r o m A n o t h e ri 6. Multi - DistrictDistrict ( S p e c i f y )itigation

REQUESTED IN COMPLAINT: JURY DEMAND: IZ Yes Li i No (Check "Yes" only if demanded in complaint.)El YesoONEY DEMANDED IN COMPLAINT: $ According to proof.. CAUSE OF ACTION (Cite the U.S. Civil Statute under which you are filing and write a brief statement of cause. Do not cite jurisdictional statutes unless diversity.)This action involves claims of patent infringement under Title 35, United States Code.NATURE OF SUIT (Place an X in one box only).

OTHER STATUTES CONTRACT REAL PROPERTY CONT. IMMIGRATION PRISONER PETITIONS PROPERTY RIGHTS375 False Claims Acti 400 StateReapportionment

410 Antitrust 430 Banks and Banking450 Commerce/ICCRates/Etc.

460 Deportation470 Racketeer Influ-enced & Corrupt Org.

480 Consumer Credit1 490 Cable/Sat TV

850 Securities/Com-modities/Exchange7 890 Other StatutoryActions891 Agricultural Acts

Mattersi 895 Freedom of Info.Acti 896 Arbitration99 Admin. Procedures

Act/Review of Appeal ofAgency Decision950 Constitutionality ofState Statutes

Li 110 InsuranceLi 120 Marine

130 Miller Act140 NegotiableInstrument

Li 150 Recovery ofOverpayment &Enforcement ofJudgment

LI 151 M edicare Act152 Recovery ofDefaulted StudentLoan (Excl. Vet.)

Li 240 Torts to Land245 Torti ProductLiabilityLi90 All Other RealProp erty

Li 462 NaturalizationApplicationLi 465 OtherImmigration ActionsHabeas Corpus:

463 Alien DetaineeLi 510 Motions to VacateSentenceLi 530 General0 535 Death Penalty

Other:540 Mandamus/OtherLi 550 Civil Rights555 Prison Condition

Li 560 Civil DetaineeConditions ofConfinement

Li 820 Copyrights830 PatentLi 840 Trademark

TORTS SOCIAL SECURITYTORTS PERSONAL PROPERTY 861 HIA (1395ff)

862 Black Lung (923)863 DIWC/DIVVVV (405 (g))864 SSID Title XVI865 RSI (405 (g))

PERSONAL INJURY H 370 Other Fraud371 Truth in Lending380 Other PersonalProperty DamageLi 385 Property DamageProduct Liability

LI 310 AirplaneLII 315 AirplaneProduct LiabilityLI 320 Assault, Libel &Slander

330 Fed. Employers'Liability340 MarineLi 345 Marine ProductLiability350 Motor Vehicle355 Motor VehicleProduct Liability360 Other PersonalInjury362 Personal Injury-Med Malpratice

Li 365 Personal Injury-Product Liability367 Health Care/PharmaceuticalPersonal InjuryProduct Liability368 AsbestosPersonal InjuryProduct Liability

FEDERAL TAX SUITSBANKRUPTCY FORFEITURE/PENALTY Ill 870 Taxes (U.S. Plaintiff or=IN 153 Recovery of Li 422 Appeal 28USC 158

423 Withdrawal 28USC 157

625 Drug RelatedSeizure of Property 21USC 881

Li 690 OtherDefendant)Li 871 IRS-Third Party 26 USC7609

Overpayment ofVet. Benefits

Li 160 Stockholders 'Suits190 OtherContractLi 195 ContractProduct Liability

Li 196 Franchise

CIVIL RIGHTS

Li 440 Other Civil Rights441 Voting442 Employment443 Housing/AccomodationsLi 445 American withDisabilities-Employment

LABOR710 Fair Labor StandardsActLi 720 Labor/Mgmt.Relations

IIII 740 Railway Labor ActREAL PROPERTY Li 751 Family and MedicalLeave Act790 Other LaborLitigation791 Employee Ret. Inc.Security Act

210 LandCondemnationLi 220 Foreclosure

Li 230 Rent Lease &Ejectment

111 446 American withDisabilities-OtherLi 448 EducationSACV 13 -01272 JV

AFTER COMPLETING PAGE 1 OF FORM CV-71, COMPLETE THE INFORMATION REQUESTED ON PAGE 2.IVIL COVER SHEET age 1 of 2



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hid global et. al. v. applied wireless identifications group et. al

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