Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 1 of 35
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
`
`ASSA ABLOY AB,
`ASSA ABLOY Inc.,
`ASSA ABLOY Residential Group, Inc.,
`August Home, Inc.,
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`HID Global Corporation, and
`ASSA ABLOY Global Solutions, Inc.
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`Plaintiffs,
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`Defendants.
`____________________________________:
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`v.
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`CPC Patent Technologies Pty. Ltd., and
`Charter Pacific Corporation Ltd.
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`Civil Action No.
`
`Demand for Jury Trial
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`COMPLAINT FOR DECLARATORY JUDGMENT
`OF PATENT NON-INFRINGEMENT
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`1.
`
`The above-named Plaintiffs (collectively, the “ASSA ABLOY Entities”), hereby
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`allege against CPC Patent Technologies Pty. Ltd. (“CPC”) and Charter Pacific Corporation Ltd.
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`(“Charter Pacific Corp.”) (collectively, “Charter Pacific”) on personal knowledge as to their own
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`activities and on information and belief as to the activities of others as follows:
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`NATURE OF THE ACTION
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`2.
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`This is a declaratory judgment action arising under the Declaratory Judgment Act,
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`28 U.S.C. § 2201, § 2202, and the Patent Laws of the United States, 35 U.S.C. § 1 et seq. The
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`ASSA ABLOY Entities seek a declaration of non-infringement of U.S. Patent Nos. 9,269,208
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`(“the ’208 Patent”), 9,665,705 (“the ’705 Patent”), and 8,620,039 (“the ’039 Patent”)
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`(collectively, the “Patents-in-Suit”).
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`3:22-cv-694
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`CPC Ex. 2007 – Page 001
`ASSA ABLOY AB v. CPC Patent Technologies Pty Ltd.
`IPR2022-01006
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`

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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 2 of 35
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`3.
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`The ASSA ABLOY Entities bring this action to resolve the conflict between
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`Charter Pacific and the ASSA ABLOY Entities regarding the Patents-in-Suit. A judicial
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`declaration is necessary to determine the respective rights of the parties regarding the Patents-in-
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`Suit, and the ASSA ABLOY Entities respectfully seek a judicial declaration that the Patents-in-
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`Suit are not infringed by any of their market offerings, including products, platforms, and/or
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`services.
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`THE PARTIES
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`4.
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`Plaintiff ASSA ABLOY AB is a company organized under the laws of Sweden
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`with its principal place of business at Klarabergsviadukten 90, Stockholm, 111 64, Sweden.
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`5.
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`Plaintiff ASSA ABLOY Inc. is an Oregon Corporation with its principal place of
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`business located at 110 Sargent Drive, New Haven, Connecticut 06511.
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`6.
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`Plaintiff ASSA ABLOY Residential Group, Inc. (“Yale”) is a California
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`corporation with its principal place of business located at 110 Sargent Drive, New Haven, CT
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`06511.
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`7.
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`Plaintiff August Home, Inc. (“August”) is a Delaware corporation with its
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`principal place of business located at 657 Bryant Street, San Francisco, CA 94107.
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`8.
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`Plaintiff HID Global Corporation (“HID”) is a Delaware corporation with its
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`principal place of business located at 611 Center Ridge Drive, Austin, TX 78753.
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`9.
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`Plaintiff ASSA ABLOY Global Solutions, Inc. (“Hospitality”) is a Texas
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`corporation with its principal place of business located at 631 International Parkway, Suite 100
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`Richardson, Texas 75081.
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`- 2 -
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`CPC Ex. 2007 – Page 002
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 3 of 35
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`10.
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`ASSA ABLOY AB is the parent company of several entities worldwide, that are
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`leaders in the delivery of secure identity solutions for millions of customers throughout the
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`world. ASSA ABLOY AB is the ultimate parent company of ASSA ABLOY Inc.
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`11.
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`ASSA ABLOY Inc. is the main holding entity for ASSA ABLOY AB’s North
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`and South American assets. ASSA ABLOY Inc. is therefore the immediate parent company of
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`Yale, August, HID, and Hospitality, and the New Haven, CT headquarters of ASSA ABLOY
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`Inc. is a registered address for each of these entities.
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`12.
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`ASSA ABLOY AB is the ultimate parent company of Yale, August, HID, and
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`Hospitality by virtue of its ownership of ASSA ABLOY Inc.
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`13.
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`Each ASSA ABLOY Entity named as a Plaintiff shares a corporate relationship
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`with the other named ASSA ABLOY Entities and each individual Plaintiff has a unique role in
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`the operations that lead to the making and selling of products, platforms, and/or services
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`provided by Yale, August, HID, and Hospitality to customers in the United States. By virtue of
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`the related nature of the above-named Plaintiffs and the facts alleged herein, a case or
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`controversy has arisen between Charter Pacific and each of the ASSA ABLOY Entities as to
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`whether any of the ASSA ABLOY Entities have infringed any asserted valid and enforceable
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`claim of the Patents-in-Suit. Therefore, this declaratory judgment action seeks to resolve Charter
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`Pacific’s patent infringement allegations with respect to all above-named Plaintiffs.
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`14.
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`The ASSA ABLOY family of brands provides identity solutions used in a variety
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`of applications, including physical access control, logical access control, access card printing and
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`personalization, highly secure government identification, and commercial and residential
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`opening solutions. These products, solutions, and services are sold through a well-established
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`network of OEMs, developers, systems integrators, and distributors worldwide. End users of
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`- 3 -
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`CPC Ex. 2007 – Page 003
`ASSA ABLOY AB v. CPC Patent Technologies Pty Ltd.
`IPR2022-01006
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 4 of 35
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`these products, solutions, and services include businesses and organizations in virtually all
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`industry sectors, including government, healthcare, retail, industrial, commercial, consumer,
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`airports, ports, finance, and education.
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`15.
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`Yale protects millions of homes and businesses worldwide and is the brand
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`behind locks of every design and function in over 125 countries. Yale products have been
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`helping people to secure their favorite belongings since 1840. As one of the oldest international
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`brands, Yale is among the best-known and most respected names in the lock industry. Yale
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`offers a broad portfolio of door hardware and locks to secure both homes and businesses.
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`16.
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`August is the leading provider of smart locks and smart home access products and
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`services. August’s products and services give customers total control over the front door from a
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`smartphone.
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`17.
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`August unveiled the August Smart Lock in May 2013. The August Smart Lock
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`attaches to existing deadbolts on the inside of the door. Since its debut, August’s technology has
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`advanced to become the most intelligent, secure way for consumers to manage access to their
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`homes. August pairs its August Smart Lock with its August Home software solution.
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`18.
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`On December 5, 2017, ASSA ABLOY Inc. completed its acquisition of August.
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`In a press release, ASSA ABOLY Inc. announced “[t]he company sees opportunities to leverage
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`the strengths of the two teams and already have a project underway to bring August Access
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`technology to the Yale lock platforms and see many more product opportunities in the future.”
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`The December 5, 2017, Press Release is available at
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`https://www.yalehome.com/us/en/stories/news/assa-abloy-completes-acquisition-of-august-
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`home--collaboration-commences.
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 5 of 35
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`19.
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`HID is a worldwide leader in trusted identity solutions. Its products range from
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`physical access control products, like ID cards and readers for opening doors, to solutions for
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`accessing digital networks, verifying transactions, and tracking assets. Millions of people around
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`the world use HID products and services to navigate their everyday lives, and over 2 billion
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`things are connected through HID technology. HID Global has over 3,000 employees worldwide
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`and operates international offices that support more than 100 countries.
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`20.
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`Hospitality similarly provides advanced electronic locking and access solutions to
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`hotels, cruise ships, construction, critical infrastructure, education, senior care, and multi-family
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`residential industries worldwide. Hospitality has been an industry pioneer and global brand for
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`over forty years, with more than 5,000 employees globally.
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`21.
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`HID and Hospitality offer the HID Mobile Access and ASSA ABLOY Mobile
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`Access software solutions, respectively. Each allows an individual’s mobile device (e.g.,
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`smartphone or wearable) to be used to gain access to secured doors, gates, networks, services,
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`and more. For example, a user with employee badges or hotel keys in an Apple Wallet can
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`unlock their doors with an iPhone or Apple Watch.
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`22.
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`HID also provides physical access control products that incorporate biometric
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`authentication, allowing customers to incorporate two-factor authentication for additional
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`security, or use biometric authentication alone to obviate the need to carry a mobile or physical
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`credential.
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`23.
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`Upon information and belief, defendant CPC is an Australian corporation having
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`its principal place of business located at Level 1, 18 Tedder Avenue, Main Beach, Queensland
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`4217, Australia.
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 6 of 35
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`24.
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`Upon information and belief, Charter Pacific Corp. is an Australian corporation
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`having its principal place of business located at 9/50 Cavill Ave, Surfers Paradise, Queensland
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`4217, Australia.
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`25.
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`Upon information and belief, defendant CPC is a wholly-owned subsidiary of
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`Charter Pacific Corp.
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`26.
`
`Upon information and belief, Charter Pacific Corp. and CPC are each intellectual
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`property licensing companies that do not practice the alleged inventions claimed in the Patents-
`
`in-Suit.
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`JURISDICTION AND VENUE
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`27.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202,
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`and under the patent laws of the United States, 35 U.S.C. §§ 1 et seq.
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`28.
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`This Court has subject matter jurisdiction over the claims alleged in this action at
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`least under 28 U.S.C. §§ 1331, 1332, 1338, 2201 and 2202, because this Court has exclusive
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`jurisdiction over declaratory judgment claims arising under the patent laws pursuant to 28 U.S.C.
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`§§ 1331, 1338, 2201, and 2202.
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`29.
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`This Court can provide the relief sought in this Declaratory Judgment Complaint
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`because an actual case and controversy exists between the parties within the scope of this Court’s
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`jurisdiction pursuant to 28 U.S.C. §§ 2201, at least because Charter Pacific has accused certain
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`ASSA ABLOY Entities’ products of infringement when these products do not infringe any
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`claims of the Patents-in-Suit.
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`30.
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`Charter Pacific is also engaged in an aggressive litigation campaign that includes
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`Apple Inc. (“Apple”), a business partner of the ASSA ABLOY Entities, and the Charter Pacific
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`litigation campaign is likely to expand to include the ASSA ABLOY Entities and other potential
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 7 of 35
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`defendants in a variety of market sectors. Charter Pacific’s actions indicate that it is highly
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`likely that Charter Pacific will sue the ASSA ABLOY Entities on the same patents that have
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`been asserted against Apple. Charter Pacific’s actions have created a real, live, immediate, and
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`justiciable case or controversy between the ASSA ABLOY entities and Charter Pacific.
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`31.
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`This Court has personal jurisdiction over Charter Pacific under the laws of the
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`State of Connecticut because Charter Pacific has consciously and purposefully directed activities
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`at Yale, a company that resides and operates in this District.
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`32.
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`Charter Pacific has purposefully availed itself of the benefits and protections of
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`Connecticut’s laws such that it should reasonably anticipate being haled into court here. Charter
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`Pacific has made written overtures, as described below, indicating a willingness to enforce the
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`Patents-in-Suit against Yale and other above-named Plaintiffs and has offered to license the
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`Patents-in-Suit to Yale in two letters mailed to an address in Connecticut.
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`33.
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`This action arises out of and directly relates to Charter Pacific’s contact with Yale
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`in this District. In doing so, Charter Pacific has established sufficient minimum contacts with the
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`District of Connecticut such that Charter Pacific is subject to specific personal jurisdiction in this
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`action. The exercise of personal jurisdiction based on these repeated and pertinent contacts does
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`not offend traditional notions of fairness and substantial justice.
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`34.
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`As discussed above, this Court has personal jurisdiction over Charter Pacific
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`because Charter Pacific has engaged in actions in this District that form the basis of the
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`allegations against the ASSA ABLOY Entities.
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`35.
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`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), (c), and (d) with
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`respect to the ASSA ABLOY Entities’ declaratory judgment claims. Under Second Circuit and
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`Federal Circuit law, venue in declaratory judgment actions for non-infringement of patents is
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`determined under the general venue statute, 28 U.S.C. § 1391.
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`THE LITIGATION HISTORY OF THE PATENTS-IN-SUIT
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`36.
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`The ’208 Patent, entitled “Remote entry system,” states on its face that it issued
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`on February 23, 2016. A true and correct copy of the ’208 Patent is attached as Exhibit A.
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`37.
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`38.
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`CPC purports to be the current owner of the ’208 Patent.
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`The ’705 Patent, entitled “Remote entry system,” states on its face that it issued
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`on May 30, 2017. A true and correct copy of the ’705 Patent is attached as Exhibit B.
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`39.
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`40.
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`CPC purports to be the current owner of the ’705 Patent.
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`The ’039 Patent, entitled “Card device security using biometrics,” states on its
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`face that it issued on December 31, 2013. A true and correct copy of the ’039 Patent is attached
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`as Exhibit C.
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`41.
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`42.
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`CPC purports to be the current owner of the ’039 Patent.
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`All three of the Patents-in-Suit are part of the same family with the same inventor:
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`Mr. Christopher John Burke.
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`43.
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`Charter Pacific has a history of alleging infringement of all three Patents-in-Suit,
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`including against Apple, the ASSA ABLOY Entities’ business partner.
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`44.
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`On February 23, 2021, CPC asserted all three of the Patents-in-Suit against Apple.
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`See CPC Patent Technologies Pty Ltd. v. Apple, Inc., No. 6:21-cv-00165 (W.D. Tex., Waco
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`Division) (“the Apple Action”). Following claim construction, the Apple Action was transferred
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`from the Western District of Texas to the Northern District of California pursuant to the Federal
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`Circuit granting Apple’s petition for a writ of mandamus. In re Apple Inc., No. 2022-128, 2022
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`WL 1196768 (Fed. Cir. Apr. 22, 2022). The Apple Action is now pending as CPC Patent
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`Technologies Pty Ltd. v. Apple, Inc., No. 5:22-cv-02553-NC (N.D. Cal., San Jose Division).
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`45.
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`On the same date that CPC sued Apple, CPC also accused HMD Global Oy
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`(“HMD”) of infringing the ’208 Patent and the ’705 Patent. See CPC Patent Technologies Pty
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`Ltd. v. HMD Global Oy, No. 6:21-cv-00166 (W.D. Tex., Waco Division) (“the HMD Action”).
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`The HMD Action remains pending in the Western District of Texas.
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`46.
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`After initiating the two lawsuits in the Western District of Texas, CPC also
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`initiated an ex parte discovery action against Apple under 28 U.S.C. § 1782 to pursue
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`infringement allegations against Apple in the Federal Republic of Germany. See In re Ex Parte
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`Apple Inc., No. 5:21-mc-80091-JST (N.D. Cal., San Jose Division) (“the Apple 1782 action”).
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`Following an appeal to the Ninth Circuit and a recent remand on procedural grounds (CPC
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`Patent Technologies Pty Ltd. v. Apple, Inc., No. 21-16212 (9th Cir. May 18, 2022), the Apple
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`1782 action remains pending in the Northern District of California.
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`47.
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`On information and belief, CPC has also threatened enforcement of the Patents-
`
`in-Suit against a number of third parties.
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`48.
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`On May 20, 2021, Charter Pacific announced it entered into a “commercial
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`license of its biometric technology in the United States” with “a key player in the touchless ID
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`space.” Charter Pacific states that the license “allows for quick and secure identity confirmation
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`to utilize Charter Pacific’s suite of biometric patents.” Charter Pacific also states, “Charter
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`Pacific’s Executive Chairman, Mr. Kevin Dart, expects the company to move to secure further
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`technology licenses in Australia and the United States, reflecting growing consumer acceptance
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`of biometric identification – including fingerprint, voice and facial ID.” The May 20, 2021
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`Charter Pacific Press Release is attached as Exhibit D.
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`49.
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`On November 11, 2021, Charter Pacific announced it and Tapplock Corp.
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`executed an “international biometric license agreement” and that “[t]he license agreement is for
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`Tapplock to utilize Charter Pacific’s biometric patent in its signature fingerprint-based smart
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`padlocks that are fast to access and easy to manage.” Charter Pacific also announced it “is
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`currently in discussion with targeted companies for either joint venture or license agreements to
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`further commercialise the biometric patent portfolio.” The November 11, 2021 Charter Pacific
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`Press Release is attached as Exhibit E.
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`50.
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`Chart Pacific has announced that litigating its patents is part of its enforcement
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`strategy. On or about January 17, 2022, Charter Pacific’s chief executive Kevin Dart was quoted:
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`“We bought the patent to the intent of licensing, joint venturing and it’s pretty obvious now that
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`it will be a litigation action as well.” This public statement is attached as Exhibit F.
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`51.
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`These actions, in combination with Charter Pacific’s public statements, indicate
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`that Charter Pacific intends to enforce its patent portfolio broadly, generically, and globally.
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`When interviewed for an article published on biometricupdate.com in February 2020, Charter
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`Pacific Corp.’s Executive Chairman stated that the Company is “finalizing its commercialization
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`strategy for the portfolio … and has also received reports of potential infringers of certain patents
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`with the portfolio in ‘a wide variety of market sectors.’” This public statement is attached hereto
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`as Exhibit G.
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`52.
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`Charter Pacific’s previous lawsuits, licensing campaign, and stated intent to
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`pursue infringers “in a wide variety of market sectors,” demonstrate that it intends to continue to
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`assert the three Patents-in-Suit against the targeted defendants such as the ASSA ABLOY
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`Entities. As discussed herein, Charter Pacific has overtly made such a threat, placing a cloud of
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`CPC Ex. 2007 – Page 010
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`uncertainty over the products, platforms, and services provided by Yale, August, HID, and
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`Hospitality.
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`THE PARTIES’ DISPUTE CONCERNING THE PATENTS-IN-SUIT
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`Charter Pacific’s Infringement Assertions Giving Rise to This Controversy
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`53.
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`On October 18, 2021, Charter Pacific, through counsel, sent its first assertion
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`letter to Yale. Although the letter is dated October 18, 2020, the letter was received in the year
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`2021 and, on information and belief, the date of the letter contains a typographical error and
`
`should have read October 18, 2021. Hereinafter, the first letter from Charter Pacific to Yale will
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`be referred to as “the First Charter Pacific Assertion Letter” and it is attached hereto as Exhibit
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`H.
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`54.
`
`The First Charter Pacific Assertion Letter is addressed to “Yale Residential,” but
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`such an entity does not exist. On information and belief, Charter Pacific was directing the letter
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`to ASSA ABLOY Residential Group, Inc. (“Yale”), located in New Haven Connecticut, the
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`entity that designs and sells the “Yale Smart Locks” referred to in the First Charter Pacific
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`Assertion Letter.
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`55.
`
`Claim charts attached to the First Charter Pacific Assertion Letter identify the
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`Yale Assure Lock SL with the Yale Access software solution as one of the “Accused
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`Instrumentalities” as shown in the excerpt below:
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`56.
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`Claim charts attached to the First Charter Pacific Assertion Letter also identifies
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`“Biometric Verification for August and Yale Locks” as part of the “Accused Instrumentalities”
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`as shown in the excerpt below:
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`57.
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`In the First Charter Pacific Assertion Letter, Charter Pacific specifically accuses
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`Yale of infringement, stating:
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`
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`“A claim chart showing how claims l, 2 10, 11, 14, 15, inter alia, of the ’705
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`Patent reads on Yale Smart Locks as attached hereto as [Exhibit I], also reflected
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`In Yale’s products below. . .”
`
`
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`“A claim chart showing how claim 9 of the ’208 Patent, among others, reads on
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`Yale Smart Locks attached hereto as [Exhibit J].”
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`58.
`
`The claim chart for the ’705 Patent that is alleged to “read on” Yale products – as
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`discussed in the First Charter Pacific Assertion Letter – is attached hereto as Exhibit I.
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`59.
`
`The claim chart for the ’208 Patent that is alleged to “read on” Yale products – as
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`discussed in the First Charter Pacific Assertion Letter – is attached hereto as Exhibit J.
`
`60.
`
`The First Charter Pacific Assertion Letter also purported to attach a list of patent
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`assets owned by Charter Pacific that are “available for licensing” (“Charter Pacific Portfolio”),
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`but that attachment was missing in the package that Yale received. On information and belief,
`
`the ’039 Patent is one of the assets that Charter Pacific points out as being “available for
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`licensing.”
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`61.
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`On November 4, 2021, Charter Pacific, again through counsel, sent a second letter
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`to Yale at the same Connecticut address. Therein, Charter Pacific expressly stated its
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`“willingness to have reasonable licensing discussions” regarding the patent assets allegedly
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`owned by CPC. Charter Pacific also expressly states allegations that the Yale products are
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`“infringing CPC’s intellectual property.” Hereinafter, the second letter from Charter Pacific to
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`Yale will be referred to as “the Second Charter Pacific Assertion Letter” and it is attached hereto
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`as Exhibit K.1
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`August’s and Yale’s Reasonable Apprehension of Suit – Assure Locks and Yale Access
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`62.
`
`Based on Charter Pacific’s broad interpretation of the claims in the First and
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`Second Charter Pacific Assertion Letters, Charter Pacific’s broad interpretation of the claims in
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`the allegations brought against Apple (Apple Action, Dkt. Nos. 1-6 through 1-10), and Charter
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`Pacific’s enforcement campaign against a diverse set of products, the ASSA ABLOY Entities
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`have a well-formed and reasonable expectation that Charter Pacific will assert the Patents-in-Suit
`
`against Yale, August, HID, and Hospitality products and other functionality in the Western
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`District of Texas just as Charter Pacific did against Apple and HMD.
`
`63.
`
`Indeed, the Apple Touch ID and Face ID features were a prominent focus of the
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`claim charts presented to Yale in attached Exhibits I and J.
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`64.
`
`The Yale Access software solution identified as part of the “Accused
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`Instrumentalities” by Charter Pacific is the result of a collaboration between Yale and August. In
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`fact, the Yale Access software solution was developed by August.
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`65.
`
`The download page for the Yale Access application identifies August as the
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`developer in the Apple App Store:
`
`1 The Second Charter Pacific Assertion Letter refers to the “most recent correspondence dated
`October 18, 2021,” confirming the typographical error in the First Charter Pacific Assertion
`Letter noted supra, ¶ 53.
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 15 of 35
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`66.
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`In 2018, Yale and August launched a line of smart locks called Assure Locks –
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`Connected by August, which enables users to control, monitor, and share access from anywhere
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`through the August mobile app. This new smart lock was the first product collaboration between
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`Yale and August; it combined Yale’s secure lock hardware with August’s app and cloud-based
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`software to create the most full-featured smart locks. The 2018 Yale Press Release is available at
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`https://www.yalehome.com/us/en/stories/news/yale-assure-locks-now-connected-by-august.
`
`67.
`
`A representative image of one of the jointly developed Assure Locks is shown
`
`below:
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 16 of 35
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`68.
`
`The jointly developed Assure Locks are identified as “Accused Instrumentalities”
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`by Charter Pacific.
`
`69.
`
`The jointly developed Assure Locks identified as “Accused Instrumentalities” are
`
`advertised on August’s website:
`
`(https://august.com/pages/yale)
`
`70.
`
`The collaboration between Yale and August also resulted in development of the
`
`Yale Access software solution.
`
`71.
`
`In addition to controlling the Assure Locks, the Yale Access software solution can
`
`control a variety of other products offered by both Yale and August.
`
`72.
`
`For example, the Yale Access software solution can control the August WiFi
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`Smart Lock.
`
`73.
`
`Given that Yale and August jointly developed the Assure Locks, advertise the
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`Assure Locks on their websites, the Yale Access software solution works with both Yale’s and
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`August’s market offerings, and because the Assure Locks and Yale Access software solution
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 17 of 35
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`were identified as part of the “Accused Instrumentalities” by Charter Pacific, there is a cloud of
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`uncertainty over Yale and August and their market offerings. Charter Pacific’s claims and
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`allegations have injured and are injuring Yale’s and August’s business and business
`
`relationships, and have created a concrete and immediately justiciable controversy between Yale
`
`and August and Charter Pacific.
`
`HID’s and Hospitality’s Reasonable Apprehension of Suit – Charter Pacific’s
`Commercialization Strategy
`
`74.
`
`Charter Pacific filed the Apple Action and the HMD Action in the U.S. District
`
`Court for the Western District of Texas.
`
`75.
`
`Apple moved to transfer the Apple Action to the Northern District of California
`
`and Charter Pacific opposed Apple’s motion.
`
`76.
`
`It was not until the Federal Circuit granting Apple’s petition for a writ of
`
`mandamus that the case was transferred from the Western District of Texas to the Northern
`
`District of California.
`
`77.
`
`78.
`
`The HMD Action remains pending in the Western District of Texas.
`
`HID’s principal place of business is in Austin, Texas, within the jurisdiction of
`
`the Western District of Texas.
`
`79.
`
`Hospitality is a Texas corporation with its principal place of business in
`
`Richardson, Texas.
`
`80.
`
`Charter Pacific has demonstrated that the Western District of Texas is its
`
`preferred venue to bring suit. It is therefore highly likely that when CPC were to sue the ASSA
`
`ABLOY Entities for infringement of the Patents-in-Suit, it would name HID and Hospitality as
`
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 18 of 35
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`defendants and rely on HID’s location in Austin, Texas and Hospitality’s business activities in
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`Texas as a basis to attempt to establish venue in the Western District of Texas.
`
`81.
`
`Charter Pacific has also publicly identified HID and Hospitality as potential
`
`litigation targets.
`
`82.
`
`Charter Pacific issued a press release announcing “[t]he biometrics market will be
`
`worth $76.64 billion by 2027 after increasing from $17.28 billion in 2018.” The press release
`
`identifies “ASSA Abloy…as [a] key market player[]” in the biometrics market. The May 4,
`
`2020 Charter Pacific Press Release is attached as Exhibit L.
`
`83.
`
`Charter Pacific also issued a press release announcing “[t]he market for
`
`biometrics in automobiles will grow at a 10.1 percent CAGR from 2020 to 2027 and reach $329
`
`billion, according to a new market forecast.” The press release identifies “HID Global” as one of
`
`the “[c]ompanies profiled in the report.” The May 20, 2020 Charter Pacific Press Release is
`
`attached as Exhibit M.
`
`84.
`
`Charter Pacific has also expressed its desire to commercialize the Patents-in-Suit
`
`against global entities such as HID and Hospitality. For example, in a February 12, 2021 letter to
`
`its shareholders, Charter Pacific stated: “Charter Pacific is actively developing its biometric
`
`patent portfolio and working closely with our legal advisers K&L Gates, Chicago and Australia,
`
`as well as our Australian Patent Attorney to commercialize our patent portfolio” and that “[t]here
`
`are a number of known global entities which currently utilise our biometric patented
`
`technology.” The February 12, 2021 shareholder letter is attached hereto as Exhibit N.
`
`85.
`
`The shareholder letter also stated “Charter Pacific has plans to establish and
`
`accelerate license driven revenue growth through securing license agreements with companies
`
`using or planning to utilise the technology.” The shareholder letter further explains that
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 19 of 35
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`“[l]itigation with some of the patent infringers will be unavoidable and it is intended that the
`
`Company will utilise any number of litigation funding methodologies to enforce its patent rights
`
`when necessary.” Exhibit N.
`
`86.
`
`In a separate shareholder update, Charter Pacific outlined its plan “to both
`
`commercialise and monetise the patent portfolio.” This shareholder update is attached hereto as
`
`Exhibit O. In that shareholder update, Charter Pacific also provided an investor presentation
`
`with the following graphic:
`
`87.
`
`The “Key Applications” that Charter Pacific identified in Exhibit O parallel the
`
`use cases of HID’s identification and authentication technologies:
`
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`Case 3:22-cv-00694-MPS Document 1 Filed 05/23/22 Page 20 of 35
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`(https://www.hidglobal.com/solutions/identity-authentication-verification-
`technologies/biometric-technologies)
`
`88.
`
`Charter Pacific’s website identifies “Standalone Biometric Authentication” under
`
`the heading “Our Technologies.” A screenshot of Charter Pacific’s website at the time of filing is
`
`attached as Exhibit P.
`
`89.
`
`On or about November 11, 2021, Charter Pacific entered into a license agreement
`
`with Tapplock Corp.
`
`90.
`
`On information and belief, the Charter Pacific-Tapplock Corp. license agreement
`
`included a license to the Patents-in-Suit.
`
`91.
`
`On information and belief, the Charter Pacific-Tapplock Corp. license agreement
`
`covered Tapplock Corp.’s Tapplock one+.
`
`92.
`
`According to Charter Pacific, the Tapplock one+ “is a smart padlock using
`
`fingerprint access with encrypted smartphone-standard fingerprint sensor” and is “[a] smart lock
`
`that can be unlocked with just a tap.” Exhibit E.
`
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