hid global et. al. v. isonas et. al

7/30/2019 HID Global et. al. v. Isonas et. al.

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Michael T. Hornak (State Bar No. 81936)email: [email protected] P. Oines State Bar No. 145016)email: [email protected] A. Chapin (State Bar No. 232885)email: Ipchapin rutan.comTimothy Spivey State Bar No. 269084)RUTAN & TUCKER, LLP611 Anton Boulevard, Fourteenth FloorCosta Mesa, California 92626-1931Telephone: 714-641-5100Facsimile: 714-546-9035Attorneys for Plaintiffs HID GLOBALCORPORATION, ASSA ABLOY AB andDESTRON FEARING CORPORATION

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

HID GLOBAL CORPORATION, aDelaware corporation; ASSA ABLOYAB, a Swedish Limited LiabilityCompany; and DESTRON FEARINGCORPORATION, a Delawarecorporation,Plaintiffs,

VS.ISONAS, INC., a Colorado corporation;and DOES 1 through 10, inclusive,

Defendants.

Case No. SACV 13 - 01301 JVS (MANx)COMPLAINT FOR INJUNCTIONAND DAMAGES FOR PATENTINFRINGEMENTDEMAND FOR JURY TRIAL

2118/025100-00075831035.1 a08/06/13

COMPLAINT FOR PATENTINFRINGEMENT

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Plaintiffs HID GLOBAL CORPORATION ("HID"), ASSA ABLOY AB("AAAB") and DESTRON FEARING CORPORATION ("Destron") (collectively,"Plaintiffs"), for their Complaint against defendants ISONAS, INC. ("Isonas"), andDOES 1 through 10, inclusive (collectively, "Defendants"), allege as follows:

JURISDICTION AND VENUE1 . This is an action involving claims of patent infringement under Title

35, United States Code. This Court has jurisdiction pursuant to 28 U.S.C. 1331and 1338(a).

2. Venue is proper with this Court pursuant to 28 U.S.C. 1391(b) and(c), as Defendants reside in this judicial district, a substantial part of the events,omissions and acts which are the subject matter of this action occurred within theCentral District of California, and a substantial part of the property that is thesubject of the action is located in the Central District of California.

THE PARTIES3 . HID is a Delaware corporation having its principal place of business

located at 15370 Barranca Parkway, Irvine, California.4 . AAAB is a Limited Liability Company established under the laws of

Sweden and having a principal place of business in Stockholm, Sweden. AAAB isHID's parent company.

5 . Destron is a Delaware corporation having its principal place of businesslocated in St. Paul, Minnesota.

6 . Plaintiffs are informed and believe, and thereon allege, that Isonas is aColorado corporation having its principal place of business located at 4720 WalnutStreet, Suite 200, Boulder, Colorado, 80301.

7 . The true names and capacities, whether individual, corporate, associateor otherwise, of defendants DOES 1 through 10, inclusive, are unknown toPlaintiffs, which therefore sue said defendants by such fictitious names. Plaintiffswill seek leave of this Court to amend this Complaint to include their proper names

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and 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 BUSINESS1 0 . HID is a leader in the delivery of secure identity solutions for millions

of customers throughout the world. 1-11D'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 of1-11D's products, solutions and services include businessesand organizations in virtually all industry sectors, including government, healthcare,retail, industrial, commercial, airports, ports, finance and education.

1 1 . HID's physical access control products and solutions are sold under1-11D's well-known brands, including iCLASSC, SmartID, HID Prox andIndalat Prox. These industry leading products, include radio frequencyidentification ("RFID") readers and credentials that operate at low frequency(i.e., 125 kHz), high frequency (i.e., 13.56 MHz), or both.

COMPLAINT FOR PATENTINFRINGEMENT2118 /025100-000758310 35 .1 a 0 8 /0 6 /1 3



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THE PATENTS AT ISSUE1 2 . HID owns or is a licensee to numerous patents and other intellectual

property 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.

1 3 . 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.

1 4 . 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.

1 5 . 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.

1 6 . The '935 Patent generally discloses an RFID reader that is capable ofCOMPLAINT FOR PATENTINFRINGEMENT

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reading 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.

ISONAS' INFRINGEMENT1 7 . Isonas also is in the business of providing physical access control

solutions, including RFID readers that operate at 125 kHZ and 13.56 MHz carrierfrequencies. Isonas 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 Isonas' readers incorporate inventions that aredisclosed in and protected by the '862 and '935 patents.

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

1 8 . Plaintiffs reallege each and every allegation set forth in paragraphs 1through 17, inclusive, and incorporate them herein by this reference.

1 9 . 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.

20 . 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.

21 . 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.

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22. 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.

SECOND CLAIM FOR RELIEF(Patent Infringem ent '9 3 5 Patent)

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

24 . 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.

25 . 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.

26 . 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.

27 . 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:1 .hat Defendants, their officers, directors, agents, servants, employees,COMPLAINT FOR PATENT

2118 /025100-0007NFRINGEMENT

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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.

RUTAN & TUCKER, LLPMICHAEL T. HORNAKRONALD P. OINESBRADLEY A. CHAPINTIMOTHY SPIVEYBy:

RonOinesAttorneys for Plaintiffs HID GLOBALCORPORATION, ASSA ABLOYAB, and DESTRON FEARINGCORPORATIONDated: August 23, 2013COMPLAINT FOR PATENTINFRINGEMENT

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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 23, 2013 RUTAN & TUCKER, LLPMICHAEL T. HORNAKRONALD P. OINESBRADLEY A. CHAPINTIMOTHY SPIVEY

By:onald P. OinesAttorneys for Plaintiffs HID GLOBALCORPORATION, ASSA ABLOY ABand DESTRON FEARINGCORPORATION

COMPLAINT FOR PATENTINFRINGEMENT2118/025100-00075831035.1 a08/06/13 -7-

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UNITED STATES DISTRICT C OURTCENTRAL D ISTRICT OF CALIFORN IA

N OTIC E OF A SSIGN M EN T TO U N ITED STA TES J U D GES

This case has b een assigned to District JudgeMagistrate Judge isargaret A. Nagle James V. Selna nd the assignedThe case numb er on all docum ents filed with the C ourt should read as follows:SACV 13-01301 JVS (MANx)

Pursuant to General Order 05 -07 of the U nited 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 23, 2013 By D. VoDeputy Clerkate

N OTIC E TO C OU N SELA copy of this notice must be served with the summ ons and com plaint on all defendants (if a removal action isfiled, a copy of this notice mu st be served on all plaintiffs).

Subsequen t docum ents must be filed at the following location:0 Western Division31 2 N . Spring Street, G-8Los Angeles, CA 9 001 2

1 3 Southern Division411 West Fourth St., Ste 1053Santa Ana, CA 927 010 Eastern Division34 70 Twelfth Street, Room 13 4Riverside, CA 92501

Failure to file at the proper location will result in your docum ents being returned to you.NOTICE OF ASSIGNMENT TO UNITED STATES JUDGESV-18 (08/13)



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UNITED S" ES DISTRICT COURT, CENTRAL DISTRICTALIFORNIACIVIL COVER SHEET(a) PLAINTIFFS ( Check box if you are representing yourself L)EFENDANTS Check box if you are representing yourself 0 )HID GLOBAL CORPORATION, a Delaware corporation;SONAS, INC., a Colorado corporation; and DOES 1 through 10and ASSA ABLOY AB, a Swedish Limited Liabilitynclusive,Company, and DESTRON FEARING CORPORATION, aDelaware corporation b) Attorneys (Firm Name, Address and Telephone Number. If you) Attorneys (Firm Name, Address and Telephone Number. If youMichael T. Hornak SBN 81936 / Ronald P. Dines SBN 145016Bradley A. Chapin SBN 232885/ Timothy Spivey SBN 269084RUTAN & TUCKER, LLP, 611 Anton Boulevard, 14 th FloorCosta Mesa, CA 92626Telephone: (714) 641-5100

BASIS OF JURISDICTION (Place an X in one box only.). Federal Question (U.S.Plaintiffovernment Not a Party). U.S. Government4. Diversity (Indicate CitizenshipDefendantf Parties in Item III) III. CITIZENSHIP OF PRINCIPAL PARTIES-For Diversity Cases Only(Place an X in one box for plaintiff and one for defendant)PT FEFTFCitizen of This State1ncorporated or Principal Placel 4of Business in this StateCitizen of Another State] 22ncorporated and Principal Place ofLi 5Business in Another StateCitizen or Subject of aForeign Countryoreign Nation11 6 DE FEl 4ri06

. ORIGIN (Place an X in one box only.)2. Removed from3. Remanded from. Reinstated or. Transferred from Another11 6. Multi- DistrictProceedingtate Courtppellate Courteopenedistrict (Specify)itigationREQUESTED IN COMPLAINT: JURY DEMAND:es 0 No (Check "Yes" only if demanded in complaint.)S ACTION under F.R.Cv.P. 23: El Yes a NoONEY 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 RIGHTS

375 False Claims Act400 StateReapportionment

10 Antitrust430 Banks and Banking450 Commerce/ICCRates/Etc.460 Deportation

I I 470 Racketeer Influ-enced & Corrupt Org.480 Consumer Credit490 Cable/Sat TV

modities/Excha ngel90 Other Statutory

Actions

893 EnvironmentalMatters895 Freedom of Info.Act896 Arbitration899 Admin. ProceduresAct/Review of Appeal ofAgency Decision

1 950 Constitutionality ofState Statutes

110 Insurance120 Marine130 Miller Act140 NegotiableInstrument

ElI 150 Recovery ofOverpayment &Enforcement ofJudgment151 Medicare Act152 Recovery ofDefaulted StudentLoan (Excl. Vet.)153 Recovery ofOverpayment ofVet. Benefits160 Stockholders'Suits190 OtherContract195 ContractProduct Liability196 Franchise

240 Torts to Land245 Tort ProductLiability

462 NaturalizationApplication465 OtherImmigration Actions

Habeas Corpus:463 Alien Detainee

El 510 Motions to VacateSentence530 General535 Death Penalty

Other:540 Mandamus/Other550 Civil Rights555 Prison Condition,__I 560 Civil DetaineeConditions ofConfinement

11 820 Copyrights1 830 Patent

840 Trademark11190 All Other RealProperty TORTS SOCIAL SECURITY

TORTS PERSONAL PROPERTY 861 HIA (1395ff)862 Black Lung (923)863 DIWC/DIVVW (405 (g))864 SSID Title XVI865 RSI (405 (g))

PERSONAL INJURY L j 370 Other Fraud371 Truth in Lending380 Other PersonalProperty Damage385 Property DamageProduct Liability

L J 310 Airplane315 AirplaneProduct Liability320 Assault, Libel &Slander330 Fed. Employers'Liability

L I 340 Marine345 Marine ProductLiability350 Motor Vehicle

L I 3 5 5 Motor VehicleProduct Liability360 Other PersonalInjury362 Personal Injury-Med Malpratice365 Personal Injury-Product Liability367 Health Care/PharmaceuticalPersonal InjuryProduct Liability368 AsbestosPersonal InjuryProduct Liability

FEDERAL TAX SUITSBANKRUPTCY FORFEITURE/PENALTY 870 Taxes (U.S. Plaintiff or

Defendant)871 IRS-Third Party 26 USC7609

Li 422 Appeal 28USC 158423 Withdrawal 28USC 157

625 Drug RelatedSeizure of Property 21USC 881690 OtherIVIL RIGHTS

440 Other Civil Rights44 1 Voting442 Employment443 Housing/Accomodations44 5 American withDisabilities-Employment446 American withDisabilities-Other448 Education

LABOR1 710 Fair Labor Standards

Act720 Labor/Mgmt.Relations740 Railway Labor Act

D751 Family and MedicalLeave Act790 Other LaborLitigation

REAL PROPERTY210 LandCondemnation220 Foreclosure230 Rent Lease &Ejectment 1 791 Employee Ret. Inc.Security Act

R OFFICE USE ONLY: Case Number: SACV 13 - 01301 JVS (MANx)AFTER COMPLETING PAGE 1 OF FO RM CV-71, COMPLE I E THE INFORM ATION REQUESTED ON PAGE 2.

IVIL COVER SHEET age 1 of 2

are representing yourself, provide same.)



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or San Luis Obispo CountiesIn land condemnation cases, use the location of the tract of land involved

UNITEDTES DISTRICT COURT, CENTRAL D RICT OF CALIFORNIACIVIL COVER SHEETIDENTICAL CASES: Has this action been previously filed in this court and dismissed, remanded or closed?M NOl YESIf yes, list case number(s): Have any cases been previously filed in this court that are related to the present case?11 NOYESIf yes, list case number(s):: 10-CV-01954-JVS-RN B; 8:13-cv-01272-JVS-JCG

Civil cases are deemed related if a previously filed case and the present case:(Check all boxes that apply)A. Arise from the same or closely related transactions, happenings, or events; orB. Call for determination of the same or substantially related or similar questions of law and fact; or

C. For other reasons would entail substantial duplication of labor if heard by different judges; orAL. D. Involve the same patent, trademark or copyright and one of the factors identified above in a, b or c also is present.

VENUE: (When completing the following information, use an additional sheet if necessary.)) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named

1 Check here if the government, its agencies or employees is a named plaintiff. If this box is checked, go to item (b).California County outside of this District; State, if other than California; or ForeignCountryAssa Abloy AB: SwedenDestron Fearing Corproation: Minnesota

) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named

Check here if the government, its agencies or employees is a named defendant. If this box is checked, go to item (c),California County outside of this District; State, if other than California; or ForeignCountry

List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH claim arose

California County outside of this District' State, if other than California; or ForeignCountry

DATE; August 23, 2013Ronal P. Oines

herein neither replace nor supplement the filing and service of pleadings orhe Court for the purpose of statistics, venue and initiating the civil docket sheet. (For more detailed instructions, see separate instructions sheet).

Nature of Suit Code Abbreviationubstantive Statement of Cause of ActionAll claims for health insurance benefits (Medicare) under Title 18, Part A, of the Social Security Act, as amended. Also,

86 1IAnclude claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under the program.(42 U.S.C. 1935FF(b))862Lll claims for "Black Lung" benefits under Title 4, Part B, of the Federal Coal Mine Health and Safety Act of 1969. (30 U.S.C.923)All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as amended; pluall claims filed for child's insurance benefits based on disability. (42 U.S.C. 405 (g))All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social Security Act, asamended. (42 U.S.C. 405 (g))All claims for supplemental security income payments based upon disability filed under Title 16 of the Social Security Act, aamended.

86 5SIll claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended.(42 U.S.C. 405 (g))CIVIL COVER SHEETage 2 of 286 3IWC86 3IVVW86 4SID


hid global et. al. v. isonas et. al

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