Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 1 of 27
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
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`ASSA ABLOY AB,
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`ASSA ABLOY Inc.,
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`ASSA ABLOY Residential Group, Inc.,
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`August Home, Inc.,
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`HID Global Corporation, and
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`ASSA ABLOY Global Solutions, Inc.
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`Plaintiffs,
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`v.
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`CPC Patent Technologies Pty. Ltd., and
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`Charter Pacific Corporation Ltd.
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`Defendants.
`____________________________________:
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`Civil Action No. 3:22-cv-00694-MPS
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`September 16, 2022
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`DECLARATORY JUDGMENT PLAINTIFFS’
`OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 2 of 27
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`TABLE OF CONTENTS
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`Page
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`B.
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`C.
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`B.
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`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 3
`FACTUAL BACKGROUND ............................................................................................ 4
`A.
`It is Undisputed that the Declaratory Judgment Plaintiffs are Related
`Entities Within the ASSA ABLOY Corporate Family .......................................... 4
`There is an Extensive Public Record of Charter Pacific’s Past Litigation
`Campaigns and Statements Regarding Planned Future Enforcement
`Activities ................................................................................................................ 5
`Charter Pacific has Made Direct and Indirect Threats of Litigation Against
`the Declaratory Judgment Plaintiffs ....................................................................... 7
`The So-Called Contacted Entities (i.e., Yale and August) .................................... 7
`The So-Called Non-Contacted Entities (i.e., ASSA ABLOY AB, ASSA
`ABLOY Inc., HID, and Hospitality) ......................................................... 8
` ARGUMENT ..................................................................................................................... 9
`A.
`All Declaratory Judgment Plaintiffs Have Established a Justiciable Case or
`Controversy Under the MedImmune Legal Standard............................................. 9
`1.
`The Facts and Circumstances Alleged in the Complaint Establish a
`Reasonable Apprehension of Future Litigation for Each
`Declaratory Judgment Plaintiff .................................................................. 9
`Charter Pacific Errs as a Matter of Law in Requesting that Its
`Public-Facing Statements be Evaluated as Isolated Occurrences ............ 13
`The MedImmune Standard Does Not Strictly Require the Patentee
`to Engage in Affirmative Acts or Separate Affirmative Acts for
`Each Related Entity.................................................................................. 15
`Practical and Prudential Considerations Weigh in Favor the Court
`Exercising Declaratory Judgment Jurisdiction .................................................... 19
`CONCLUSION ................................................................................................................ 21
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`2.
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`3.
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`-i-
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 3 of 27
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Anthem Sports, LLC v. Under the Weather, LLC,
`320 F. Supp. 3d 399 (D. Conn. 2018) ........................................................................2, 4, 16, 19
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`Arrowhead Industrial Water, Inc. v. Ecolochem, Inc.,
`846 F.2d 731 (Fed. Cir. 1988)..................................................................................................10
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`Asia Vital Components Co., Ltd. v. Asetek Danmark A/S,
`837 F.3d 1249 (2016) .........................................................................................................10, 11
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`Atl. Mut. Ins. Co. v. Balfour Maclaine Int’l Ltd.,
`968 F.2d 196 (2d Cir. 1992).......................................................................................................3
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`Cat Tech LLC v. TubeMaster, Inc.,
`528 F.3d 871 (Fed. Cir. 2008)..................................................................................................17
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`Cellectis S.A. v. Precision Biosciences, Inc.,
`858 F. Supp. 2d 376 (D. Del. 2012) ...........................................................................................3
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`Conyers v. Rossides,
`558 F.3d 137 (2d Cir. 2009).......................................................................................................3
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`Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP,
`198 L. Ed. 2d 699, 137 S. Ct. 2267 (2017) ..............................................................................16
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`Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP,
`838 F.3d 1224 (Fed. Cir. 2016)................................................................................................16
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`Cox Commc’ns, Inc. v. Sprint Commc’ns Co. LP,
`No. 12-cv-487, 2013 WL 1226877 (D. Del. Mar. 27, 2013) ...............................................3, 16
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`Dow Jones & Co., Inc. v. Ablaise Ltd.,
`606 F.3d 1338 (Fed. Cir. 2010)................................................................................................18
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`Hewlett-Packard v. Acceleron LLC,
`587 F.3d 1358 (Fed. Cir. 2009)................................................................................................11
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`Innovative Therapies, Inc. v. Kinetic Concepts, Inc.,
`599 F.3d 1377 (Fed. Cir. 2010)..........................................................................................17, 18
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`Makarova v. United States,
`201 F.3d 110 (2d Cir. 2000).......................................................................................................3
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`ii
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 4 of 27
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`Matthews Int’l. Corp. v. Biosafe Eng’g, LLC,
`695 F.3d 1322 (Fed. Cir. 2012)................................................................................................19
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`MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118 (2007) ......................................................................................................... passim
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`Mey v. Frontier Commc’ns Corp.,
`No. 3:13-cv-01191-MPS, 2014 WL 6977746 (D. Conn. Dec. 9, 2014) ....................................3
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`Microsoft Corp. v. DataTern, Inc.,
`755 F.3d 899 (Fed. Cir. 2014)..................................................................................................19
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`Nike, Inc. v. Already, LLC,
`663 F.3d 89 (2d Cir. 2011).........................................................................................................4
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`Prasco, L.L.C. v. Medicis Pharma. Corp,
`537 F.3d 1329 (Fed. Cir. 2008)......................................................................................9, 10, 13
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`SanDisk Corp. v. STMicroelectronics, Inc,
`480 F.3d 1372(Fed. Cir. 2007).................................................................................................17
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`Teva Pharms. USA, Inc. v. Novartis Pharms. Corp.,
`482 F.3d 1330 (Fed. Cir. 2007)................................................................................................20
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`The New York Times Co. v. Gonzales,
`459 F.3d 160 (2d Cir. 2006).....................................................................................................19
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`iii
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 5 of 27
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`INTRODUCTION
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`There is no jurisdictional barrier for any of the named Declaratory Judgment Plaintiffs in
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`this case post-MedImmune. Each of the six Declaratory Judgment Plaintiffs are within the ASSA
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`ABLOY corporate family and, as alleged in the Complaint as an unrebutted fact: “each individual
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`Plaintiff has a unique role in the operations that lead to the making and selling of products,
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`platforms, and/or services provided by Yale, August, HID, and Hospitality to customers in the
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`United States.” Complaint, ECF No. 1 (“Complaint”), at ¶ 13. In other words, each individual
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`entity is involved in bringing products to the market. The relief sought by the ASSA ABLOY
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`Entities in this lawsuit is critical to maintain the market status quo and ensure that Charter Pacific
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`is not positioned to introduce unwarranted business interruptions now or in the future.
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`Declaratory Judgment Defendants CPC Patent Technologies Pty. Ltd. and Charter Pacific
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`Corporation Ltd. (collectively, “Charter Pacific”) do not challenge the standing of ASSA ABLOY
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`Residential Group, Inc. (“Yale”) or August Home, Inc. (“August”) because Charter Pacific has
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`formally accused these entities of infringement. Answer and Counterclaims, ECF No. 28
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`(“Answer”), at 6874 (asserting counterclaims of infringement against Yale and August). There
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`is little reason, however, to conclude that the allegations will end there. Charter Pacific has not
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`and will not provide the ASSA ABLOY Entities any assurances that the remaining entities, the so-
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`called “Non-Contacted Entities,”1 will not later be accused of infringement.
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`All six of the ASSA ABLOY Entities have an existing case or controversy with Charter
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`Pacific as to declarations of non-infringement of the Patents-in-Suit. To conclude otherwise would
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` 1
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` Plaintiffs sparingly apply Charter Pacific’s terms “Contacted” and “Non-Contacted” Entities as invoked
`in the Motion to Dismiss for simplicity and clarity only. Plaintiffs do not thereby intend to concede the
`“contacted” status of any entity as a matter of law or fact.
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 6 of 27
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`require the Court to break with precedent by ignoring many of the relevant circumstances pleaded
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`in the Complaint, including substantial threats to the economic and legal interests shared by the
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`interrelated corporate plaintiffs. See MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127
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`(2007) (finding that the jurisdictional analysis involves analyzing “the facts alleged, under all
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`circumstances”); Anthem Sports, LLC v. Under the Weather, LLC, 320 F. Supp. 3d 399, 408 (D.
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`Conn. 2018) (Shea, D.J.) (explaining that MedImmune “lowered the threshold for establishing the
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`existence of an actual case or controversy in intellectual property-related declaratory judgment
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`cases”). Charter Pacific’s incorrect legal theory is that MedImmune and its progeny demand a
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`rigid, one-size-fits-all rule that if multiple related entities seek a declaratory judgment together,
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`there must be a separate affirmative act towards each related corporate entity. Such a rule does
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`not exist in the case law, and Charter Pacific readily admits, in discussing MedImmune, that “no
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`bright line rule exists.” Defs. Mem., ECF No. 026 (“Motion”), at 6. Charter Pacific also discounts
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`its own public statements regarding its licensing and enforcement activities rather than
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`acknowledge the reasonableness of the ASSA ABLOY Entities’ apprehension of suit.
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`MedImmune ultimately requires the Court to evaluate “the facts alleged, under all the
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`circumstances” when deciding whether there is a substantial controversy between the parties.
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`MedImmune, 549 U.S. at 127 (emphasis added). Charter Pacific’s arguments for dismissal of
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`ASSA ABLOY AB, ASSA ABLOY Inc., HID Global Corporation (“HID”), and ASSA ABLOY
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`Global Solutions, Inc. (“Hospitality”) do not account for the totality of the uncontested facts and
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`undermine the realities of what is objectively reasonable when it comes to apprehension of suit.
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`Not only is there no legal barrier to each ASSA ABLOY Entity’s participation in this case,
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`but the inclusion of all Declaratory Judgment Plaintiffs also makes practical sense. Charter Pacific
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`seeks an outcome that would permit it to later sue the so-called Non-Contacted Entities in other
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`2
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 7 of 27
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`forums, which would risk inconsistent results, especially during the claim construction process.
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`That possibility would frustrate the interests of judicial and litigant economy and would serve no
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`purpose other than to allow Charter Pacific multiple opportunities to allege infringement as to
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`interconnected product lines after having the benefit of studying any discovery made available in
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`this action. Because an actual case or controversy exists for each of the Declaratory Judgment
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`Plaintiffs, streamlined litigation to “resolve declaratory judgment claims related to the same
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`patents” is the most appropriate outcome. Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, No.
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`12-cv-487, 2013 WL 1226877, at *2 (D. Del. Mar. 27, 2013) (citing Cellectis S.A. v. Precision
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`Biosciences, Inc., 858 F. Supp. 2d 376, 384 (D. Del. 2012)).
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`LEGAL STANDARD
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`When considering a motion to dismiss filed under Rule 12(b)(1) of the Federal Rules of
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`Civil Procedure, the Court “must accept as true all material facts alleged in the complaint and draw
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`all reasonable inferences in the plaintiff’s favor.” Mey v. Frontier Commc’ns Corp., No. 3:13-cv-
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`01191-MPS, 2014 WL 6977746, at *2 (D. Conn. Dec. 9, 2014) (quoting Conyers v. Rossides, 558
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`F.3d 137, 143 (2d Cir. 2009)). “However, argumentative inferences favorable to the party
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`asserting jurisdiction should not be drawn,” Atl. Mut. Ins. Co. v. Balfour Maclaine Int’l Ltd., 968
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`F.2d 196, 198 (2d Cir. 1992), and a “plaintiff asserting subject matter jurisdiction has the burden
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`of proving by a preponderance of the evidence that it exists.” Mey, 2014 WL 6977746, at *2
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`(quoting Makarova v. United States, 201 F.3d 110, 113 (2d Cir. 2000)).
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`Under MedImmune, there is a justiciable case or controversy so long as “the facts alleged,
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`under all the circumstances, show that there is a substantial controversy, between parties having
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`adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory
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`judgment.” MedImmune, 549 U.S. at 127 (internal quotations omitted). After MedImmune, the
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`3
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 8 of 27
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`inquiry into whether a case or controversy exists in intellectual property cases turns on “whether
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`the adversity of legal interests that exists between the parties is real and substantial and admits of
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`specific relief through a decree of conclusive character, as distinguished from an opinion advising
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`what the law would be on a hypothetical state of facts. Anthem Sports, 320 F. Supp. 3d at 408
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`(internal quotations omitted). Additionally, “the threat of future litigation remains relevant in
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`determining whether an actual controversy exists.” Id. (quoting Nike, Inc. v. Already, LLC, 663
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`F.3d 89, 95–96 (2d Cir. 2011)).
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`FACTUAL BACKGROUND
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`Charter Pacific has not disputed that Yale and August have established the existence of a
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`case or controversy regarding non-infringement of the Patents-in-Suit. Motion at 1, n. 1. The facts
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`and circumstances alleged in the Complaint also apply to the remaining ASSA ABLOY Entities
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`and compel a finding that a case or controversy regarding non-infringement exists as to all six
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`related Declaratory Judgment Plaintiffs.
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`A.
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`It is Undisputed that the Declaratory Judgment Plaintiffs are Related
`Entities Within the ASSA ABLOY Corporate Family
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`Plaintiff ASSA ABLOY AB is the grandparent company of operating entities worldwide
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`that are leaders in the delivery of secure identity solutions for millions of customers throughout
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`the world, and is the ultimate parent company of Plaintiff ASSA ABLOY Inc. See Complaint at
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`¶ 10. ASSA ABLOY Inc. is the main holding entity for Plaintiff ASSA ABLOY AB’s North and
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`South American assets, and is therefore the immediate parent company of Yale, August, HID, and
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`Hospitality. Complaint at ¶ 11. ASSA ABLOY AB is thus the ultimate parent company of Yale,
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`August, HID, and Hospitality by virtue of its ownership of ASSA ABLOY Inc. Complaint at ¶ 12.
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`Each ASSA ABLOY Entity named as a Declaratory Judgment Plaintiff shares a corporate
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`relationship with the other named ASSA ABLOY Entities and each individual Plaintiff has a
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 9 of 27
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`unique role in the operations that lead to the making and selling of products, platforms, and/or
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`services provided by Yale, August, HID, and Hospitality to customers in the United States.
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`Complaint at ¶ 13.
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`A family tree of the ASSA ABLOY Entities is depicted below for demonstrative purposes
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`to illustrate the facts pleaded in the Complaint:
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`ASSA ABLOY
`AB
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`ASSA ABLOY Inc.
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`HID Global
`Corporation
`(HID)
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`ASSA ABLOY
`Residential Group,
`Inc.
`(Yale)
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`August Home, Inc.
`(August)
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`ASSA ABLOY
`Global Solutions,
`Inc.
`(Hospitality)
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`B.
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`There is an Extensive Public Record of Charter Pacific’s Past Litigation
`Campaigns and Statements Regarding Planned Future Enforcement
`Activities
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`Charter Pacific has a history of alleging infringement of all three Patents-in-Suit—U.S.
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`Patent Nos. 9,269,208 (the ’208 Patent), 9,665,705 (the ’705 Patent), and 8,620,039 (the ’039
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`Patent). See Complaint at ¶ 43.2 For example, Charter Pacific has asserted all three Patents-in-Suit
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` 2
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` The Patents-in-Suit share a common, sole named inventor, Mr. Christopher John Burke. Complaint at
`¶ 42.
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`5
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 10 of 27
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`against the ASSA ABLOY Entities’ business partner, Apple, Inc. (“Apple”). See Complaint at
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`¶ 44. Likewise, Charter Pacific sued HMD Global OY (“HMD”) alleging infringement of the ’208
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`and ’705 Patents. See Complaint at ¶ 45. Charter Pacific later took the additional step of initiating
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`an ex parte discovery action against Apple under 28 U.S.C. § 1782 to pursue infringement
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`allegations against Apple in Germany. See Complaint at ¶ 46. All three actions remain pending.
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`Charter Pacific has also sought and obtained licenses to at least its biometric patents, as
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`confirmed by press releases by Charter Pacific’s Executive Chairman, Mr. Kevin Dart. See
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`Complaint at ¶¶ 48–49; May 20, 2021, Charter Pacific Press Release, ECF No. 001-04 (“Press
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`Release 5/20/21”), Ex. D to Complaint (“Charter Pacific is pleased to announce the first
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`commercial licence of its biometric technology in the United States . . . Charter Pacific’s Executive
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`Chairman Mr. Kevin Dart, expects the company to move to secure further technology licenses in
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`Australia and the United States.”); November 11, 2021, Charter Pacific Press Release, ECF No.
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`001-05 (“Press Release 11/1/21”), Ex. E to Complaint (“Charter Pacific Corporation Limited has
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`executed its second international biometric licence agreement with Canadian group, Tapplock
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`Corp.”). On or about November 11, 2021, Charter Pacific entered into a license agreement with
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`Tapplock Corp. which, on information and belief, included a license to the Patents-in-Suit. See
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`Complaint at ¶¶ 89–90; Press Release 11/1/21.
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`Charter Pacific has continually asserted and reasserted its intention to seek licenses to and
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`litigate its patent portfolio “in a wide variety of market sectors.” See Complaint at ¶¶ 50–51;
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`January 17, 2022, Public Statement, ECF No. 001-06 (“Public Statement 1/17/22”), Exhibit F to
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`Complaint (“We bought the patent to the intent of licensing, joint venturing and it’s pretty obvious
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`now that it will be a litigation action as well.”); February 2020, Public Statement, ECF No. 001-
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`07 (“Public Statement 2/5/20”), Exhibit G to Complaint (stating that Charter Pacific was
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 11 of 27
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`“finalizing its commercialization strategy for the portfolio . . . and ha[d] also received reports of
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`potential infringers of certain patents with the portfolio in ‘a wide variety of market sectors’”);
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`February 12, 2021 Shareholder Letter, ECF No. 001-14 (“Shareholder Letter 2/12/21”), Exhibit N
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`to Complaint (Charter Pacific “has engaged with some of the largest tech companies in the world
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`that are using biometrics with expectations of entering into license agreements with these
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`companies”).
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`C.
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`Charter Pacific has Made Direct and Indirect Threats of Litigation Against
`the Declaratory Judgment Plaintiffs
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`The So-Called Contacted Entities (i.e., Yale and August)
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`Charter Pacific, through counsel, sent its first assertion letter to “Yale Residential” in an
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`effort to contact Plaintiff ASSA ABLOY Residential Group, Inc. (“Yale”).3 See Complaint at
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`¶ 54. Charter Pacific sent Yale a first letter in October 2021 (“the First Assertion Letter”) and a
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`second, follow-up letter in November of 2021 (“the Second Assertion Letter”). First Assertion
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`Letter, ECF No. 001-08, Exhibit H to Complaint; Second Assertion Letter, ECF No. 001-11,
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`Exhibit K to Complaint; see Complaint at ¶¶ 53, 61.
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`The First Assertion Letter identified the Yale Assure Lock SL with the Yale Access
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`software solution and “Biometric Verification for August and Yale Locks” as among the “Accused
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`Instrumentalities.” Complaint at ¶ 55. The First Assertion Letter included specific accusations of
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`infringement of the ’705 and ’208 Patents by Yale and accompanying claim charts. Complaint at
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`¶¶ 57–59; Claim Charts, ECF Nos. 001-09 and 001-10, Exs. I, J to Complaint. The First Assertion
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`Letter also purported to include an attachment listing patent assets owned by Charter Pacific that
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`are “available for licensing” (“Charter Pacific Portfolio”). Complaint at ¶ 60. The Second
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` 3
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` Charter Pacific does not dispute that the goal of the outreach was to contact Plaintiff ASSA ABLOY
`Residential Group, Inc. Answer, ECF No. 28, at ¶ 54.
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 12 of 27
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`Assertion Letter restated Charter Pacific’s “willingness to have reasonable licensing discussions”
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`regarding the patent assets owned by CPC. See Complaint at ¶ 61.
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`The So-Called Non-Contacted Entities (i.e., ASSA ABLOY AB, ASSA ABLOY Inc.,
`HID, and Hospitality)
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`The litigation threats to the so-called “Non-Contacted Entities” are hardly hypothetical.
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`Charter Pacific has identified HID and Hospitality by name—either publicly or to its
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`shareholders—as market players, alleged infringers, potential license targets, and potential
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`litigation targets. See Complaint at ¶¶ 81–84. For example, in May of 2020, Charter Pacific issued
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`two press releases identifying, respectively, “Assa Abloy . . . as [a] key market player[]” in the
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`biometrics market and “HID Global” as one of the companies profiled in a market forecast report
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`regarding biometrics in automobiles. See Complaint at ¶¶ 82–83; May 4, 2020, Charter Pacific
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`Press Release, ECF No. 001-12 (“Press Release 5/4/20”), Exhibit L to Complaint; May 20, 2020,
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`Charter Pacific Press Release, ECF No. 001-13 (“Press Release 5/20/20”), Exhibit M to Complaint.
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`Charter Pacific continued to make public allegations and threats appearing to reference HID and
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`Hospitality, among others, through letters to its shareholders. See Complaint at ¶¶ 84–86. For
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`example, in February of 2021, Charter Pacific released a letter to its shareholders expressing its
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`desire to commercialize its biometric patent portfolio against “a number of known global entities
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`which currently utilize [Charter Pacific’s] patented technology and to “establish and accelerate
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`license driven revenue growth through securing license agreements with companies using or
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`planning to utilize the [patented] technology.” Shareholder Letter 2/12/21. In another shareholder
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`update, Charter Pacific outlined its plan “to both commercialize and monetise the patent portfolio,”
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`identifying as “Key Applications” use cases that parallel the use cases of HID’s identification and
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`authentication technologies. See Complaint at ¶¶ 86–87; Charter Pacific Shareholder Presentation,
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`ECF No. 001-15 (“Shareholder Presentation”), Exhibit O to Complaint.
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 13 of 27
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`Charter Pacific’s ongoing litigation campaigns against Apple and HMD and past public
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`statements regarding monetization efforts demonstrate its willingness to enforce the Patents-in-
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`Suit “broadly, generically, and globally.” Complaint at ¶ 51. These acts, including Charter
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`Pacific’s specific references to ASSA ABLOY and HID Global, cast a cloud of uncertainty over
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`the entire ASSA ABLOY portfolio of products such that the products identified in the First
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`Assertion Letter appear to represent an opening salvo rather than a definitive list of targets. The
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`widespread uncertainty the ASSA ABLOY Entities face regarding the scope of the potential
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`infringement allegations is what drove the Declaratory Judgment Plaintiffs to file this suit to
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`protect the interests of each operating company and its corporate parent and grandparent.
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` ARGUMENT
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`The Complaint details specific facts that establish by a preponderance of the evidence the
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`existence of a case or controversy as to each of the six related ASSA ABLOY Entities. The
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`Declaratory Judgment Plaintiffs have thus carried their burden of demonstrating an actual case or
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`controversy, and the only real question for the Court is whether, in its discretion, to exercise
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`jurisdiction under the Declaratory Judgment Act.
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`A.
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`All Declaratory Judgment Plaintiffs Have Established a Justiciable Case or
`Controversy Under the MedImmune Legal Standard
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`1. The Facts and Circumstances Alleged in the Complaint Establish a
`Reasonable Apprehension of Future Litigation for Each Declaratory
`Judgment Plaintiff
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`
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`Following the Supreme Court’s ruling in MedImmune, a party’s reasonable apprehension
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`of suit is no longer the sole test for declaratory judgment jurisdiction. However, the decision did
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`not do away with “the relevance of a reasonable apprehension of suit.” Prasco, L.L.C. v. Medicis
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`Pharma. Corp, 537 F.3d 1329, 1336 (Fed. Cir. 2008). Indeed, “the threat of future litigation
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`remains relevant in determining whether an actual controversy exists.” Nike v. Already, 663 F.3d
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`9
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 14 of 27
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`at 95–96. The facts alleged in the Complaint demonstrate the ASSA ABLOY Entities’ reasonable
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`apprehension of suit, and this showing is “one of multiple ways that a declaratory judgment
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`plaintiff can satisfy the more general all-the-circumstances test to establish that action presents a
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`justiciable Article III controversy.” Prasco, 537 F.3d at 1336. Charter Pacific does not contest
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`the relevance of a reasonable apprehension of suit as a legal basis to establish a justiciable
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`controversy. Charter Pacific instead disputes the factual basis for the apprehension by seeking to
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`interject its subjective characterization of the facts in the Complaint. Yet the Charter Pacific Press
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`Releases and public statements to shareholders, including those referencing ASSA ABLOY and
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`HID, speak for themselves. See supra Section III.B–C. (discussing various Charter Pacific Public
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`Statements, Press Releases, and Shareholder communications). The Court has access to the
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`relevant public record as attachments to the Complaint and the Court can gauge whether the ASSA
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`ABLOY Entities’ apprehension of suit was reasonable in view of Charter Pacific’s history of
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`aggressive litigation coupled with the charges of infringement sent to Yale and directed at August
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`in October and November of 2021.
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`The Court can also weigh these objective and publicly available statements of Mr. Kevin
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`Dart regarding Charter Pacific’s desire to monetize the patent portfolio by enforcing against “key
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`market players” against the subjective statements Mr. Dart makes in the Declaration attached to
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`the Motion after the onset of this litigation.4 Charter Pacific relies heavily on the post-litigation
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` 4
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` Charter Pacific’s contention that it had not evaluated the Non-Contacted Entities’ products prior to the
`suit is not relevant under the Federal Circuit precedent. The Federal Circuit has explained that “a court
`may find a clear basis for a reasonable apprehension in all the circumstances, even when a patentee first
`learns of plaintiff’s conduct upon receipt of the complaint.” Asia Vital Components Co., Ltd. v. Asetek
`Danmark A/S, 837 F.3d 1249, 1254 (2016) (quoting Arrowhead Industrial Water, Inc. v. Ecolochem, Inc.,
`846 F.2d 731, 738 (Fed. Cir. 1988)). As particularly salient here, “the question of jurisdiction does not turn
`on [the patent owner’s] knowledge of the specific [Plaintiff] products or whether [the patent owner]
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`10
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 15 of 27
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`statements of its Chief Executive Officer, but importantly, this Declaration indicates that Mr. Dart
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`was aware of the Non-Contacted Entities, Dart Decl., ECF No. 27, ¶ 4, and provides no assurances
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`that Charter Pacific is not seeking to enforce its patents against the so-called Non-Contacted
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`Entities in the future.5 In fact, Charter Pacific’s avoidance of ASSA ABLOY’s request for a
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`covenant not to sue to avoid litigating this Motion, underscores the reasonableness of the
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`apprehension of suit by all of the ASSA ABLOY Entities at the time this Complaint was filed.
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`The Complaint, however, pleads additional circumstances beyond the record of public
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`statements that inform the ASSA ABLOY Entities’ reasonable apprehension of suit.
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` As discussed above, Charter Pacific made overt charges of infringement against the
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`related entities Yale and August that make it more likely that each of the named
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`Declaratory Judgment Plaintiffs would also be accused of infringement now or in
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`the future.
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` Charter Pacific’s license with Tapplock apparently covering the Tapplock one+
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`evidences Charter Pacific’s efforts to follow through on a licensing and
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`monetization campaign. Importantly, the uncontested facts in the Complaint
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`demonstrate that the Tapplock one+ is similar to HID’s Signo 25B. See Complaint
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`specifically alleged that the products infringed the asserted patents; instead, the question is whether, under
`all the circumstances, [the patent owner’s] actions can be reasonably inferred as demonstrating intent to
`enforce a patent.” Id. (quoting Hewlett-Packard v. Acceleron LLC, 587 F.3d 1358, 1363 (Fed. Cir. 2009)).
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` 5
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` In an effort for the Parties to resolve this Motion on their own without taxing the Court’s resources,
`counsel for the ASSA ABLOY Entities wrote to counsel for Charter Pacific on August 30, 2022, offering
`that the Complaint could be amended to name only Yale and August as Declaratory Judgment plaintiffs if
`Charter Pacific would provide the remaining ASSA ABLOY Entities with a covenant not to sue. Ex. 1,
`August 30, 2022, Email from Bennett to Coyle (“ASSA ABLOY Email Request 8/30/22”). Charter Pacific
`waited 16 days until 48 hours before this brief was due to indicate that Charter Pacific would provide no
`assurance that other ASSA ABLOY Entities would not later be accused of infringement. Ex. 2, September
`15, 2022, Email from Coyle to Bennett (“Charter Pacific Response 9/15/22”). This lack of willingness to
`engage in a discussion regarding a potential covenant not to sue only bolsters the reasonable apprehension
`pleaded in the Complaint.
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`11
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`Case 3:22-cv-00694-MPS Document 36 Filed 09/16/22 Page 16 of 27
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`at ¶ 97. Charter Pacific was not only pursuing licenses in a space HID actively
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`occupies, but HID and Hospitality are located in and conduct business activities
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`respectively in the Western District of Texas, a prolific patent infringement venue
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`where Charter Pacific has already filed two past lawsuits. Complaint at ¶¶ 89,
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`4445.
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` The Complaint also presents details as to Charter Pacific’s broad infringement
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`allegations against HID and Hospitality’s business partner Apple, which heightened
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`concerns that Charter Pacific would consider HID and Hospitality’s products and
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`software solutions to be covered by the Patents-in-Suit. See Complaint at ¶¶ 98–
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`99. These concerns were validated by the infringement charts Charter Pacific
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`provided to Yale where Charter Pacific indicated that the alleged “Accused
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`Instrumentalities include . . . Apple iPhones, iPads equipped with Apple Card or
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`device that is substantially or reasonably similar to the functionality set forth
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`below.” See Complaint at ¶ 100.