Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 1 of 18
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CPC PATENT TECHNOLOGIES PTY LTD.,
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` Plaintiff,
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` v.
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`APPLE INC.,
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` Defendant.
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`Case No. 6:21-cv-00165-ADA
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`JURY TRIAL DEMANDED
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`APPLE INC.’S MOTION TO DISMISS COMPLAINT FOR LACK OF STANDING
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 2 of 18
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION............................................................................................................. 1
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`II.
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`FACTUAL BACKGROUND ........................................................................................... 1
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`A.
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`B.
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`C.
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`The Asserted Patents Were Originally Assigned to Securicom.............................. 1
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`Mr. Burke Became Involved with Charter Pacific Around 2016 ........................... 2
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`The Asserted Patents Were Assigned from Securicom to CJ Burke Nominees in
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`November 2017 ....................................................................................................... 3
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`D.
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`Legal Proceedings Commenced in Australia Between Charter Pacific, Mr. Burke,
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`and Microlatch/Securicom in December 2017 ....................................................... 4
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`E.
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`The Asserted Patents Were Assigned from CJ Burke Nominees to Securicom in
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`December 2019 ....................................................................................................... 6
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`F.
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`Litigation Continues in Australia Regarding Ownership of the Asserted Patents .. 7
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`III.
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`LEGAL STANDARD ....................................................................................................... 8
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`IV. ARGUMENT ..................................................................................................................... 9
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`A.
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`The Court Should Dismiss Because Plaintiff Cannot Establish It Owned the
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`Asserted Patents at the Time of Suit ....................................................................... 9
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`B.
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`CPC’s Assertion of Ownership Also Contradicts the Public’s Right to Rely Upon
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`Deeds Registered at the Patent Office .................................................................. 10
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`C.
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`Arguments Regarding the Propriety of the Assignment to CJ Burke Nominees
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`Cannot Confer Standing ........................................................................................ 11
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`V.
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`CONCLUSION ............................................................................................................... 13
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`i
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 3 of 18
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
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`Abraxis Bioscience, Inc. v. Navinta LLC,
`625 F.3d 1359 (Fed. Cir. 2010)............................................................................................8, 10
`
`Alps S., LLC v. Ohio Willow Wood Co.,
`787 F.3d 1379 (Fed. Cir. 2015)............................................................................................8, 12
`
`Alzheimer’s Inst. of Am., Inc. v. Avid Radiopharmaceuticals,
`952 F. Supp. 2d 740 (E.D. Pa. 2013) .......................................................................................10
`
`DDB Techs., L.L.C. v. MLB Advanced Media, L.P.,
`517 F.3d 1284 (Fed. Cir. 2008)............................................................................................8, 12
`
`FilmTec Corp. v. Allied–Signal, Inc.,
`939 F.2d 1568 (Fed. Cir. 1991)......................................................................................8, 10, 12
`
`FilmTec Corp. v. Hydranautics,
`982 F.2d 1546-50 (Fed. Cir. 1992) ..........................................................................................10
`
`Rite-Hite Corp. v. Kelley Co.,
`56 F.3d 1538 (Fed. Cir. 1995) (en banc) ...................................................................................8
`
`Schreiber Foods, Inc. v. Beatrice Cheese, Inc.,
`402 F.3d 1198 (Fed. Cir. 2005)..................................................................................................8
`
`SiRF Tech., Inc. v. International Trade Commission,
`601 F.3d 1319 (Fed. Cir. 2010)................................................................................................11
`
`Waterman v. Mackenzie,
`138 U.S. 252 (1891) ...................................................................................................................8
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`
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`ii
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 4 of 18
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`I.
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`INTRODUCTION
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`The plaintiff in this case, CPC, does not have legal title to own the patents-in-suit. At the
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`time of the purported assignment to CPC, the assignor had already assigned the patents to someone
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`else. This case must therefore be dismissed for lack of standing, which is a legal issue for the
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`Court to decide.
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`II.
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`FACTUAL BACKGROUND
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`A.
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`The Asserted Patents Were Originally Assigned to Securicom
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`Plaintiff CPC Patent Technologies Pty Ltd. (“CPC”) asserts three patents (“the Asserted
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`Patents”) in this case against Apple Inc. (“Apple”).1 ECF 1 [Complaint]. The sole named inventor
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`of each of the Asserted Patents is Christopher Burke, who currently resides in Hong Kong and has
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`no current affiliation with CPC. Kete Decl. ¶ 2. Around the time of his work on the Asserted
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`Patents, Mr. Burke was involved with several companies, including Securicom NSW Pty Limited
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`(an Australian entity) (“Securicom”), Microlatch Pty Limited (an Australian entity) (“Microlatch
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`Australia”), and Microlatch Limited (a UK entity) (“Microlatch UK”).2 Ex. 1 [8/14/2020 Supreme
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`Court of NSW Decision] at ¶ 53); Ex. 2 [10/7/2016 Charter Pacific Presse Release] at 1. These
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`three entities together formed the Microlatch Group (collectively, “Microlatch/Securicom”). Ex.
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`2 [10/7/2016 Charter Pacific Press Release] at 1.
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` According to public documents,
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`Microlatch/Securicom was at one time a product company that worked on the “design,
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`development and manufacture of mobile biometrics solutions” with technology focused on use of
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`biometrics with “RF (Radio Frequency), NFC (Near Field Communication), and Bluetooth
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`payment technology for secure access to mobile computing devices.” Id. at 2.
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`1 The Asserted Patents are U.S. Patent Nos. 8,620,039 (“the ’039 patent”), 9,269,208 (“the ’208
`patent”), and 9,665,705 (“the ’705 patent”).
`2 Today, Mr. Burke is affiliated with another Microlatch entity based in Hong Kong called
`Microlatch Limited (“Microlatch Hong Kong”).
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`1
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 5 of 18
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`Mr. Burke originally assigned each of the Asserted Patents to Securicom. First, Mr. Burke
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`filed the application for the ’039 patent on February 12, 2008 (Application No. 12/063,650). Ex.
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`3 [’039 Patent] at 1. The prosecution history lists Securicom as assignee, and on August 21, 2008,
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`an assignment of the application from Mr. Burke to Securicom was recorded with the United States
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`Patent and Trademark Office (“USPTO”). Ex. 4 [’039 File History] at 6; Ex. 5 [Assignment
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`Records]. On December 31, 2013, the ’039 patent issued listing Securicom as assignee. Ex. 3
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`[’039 Patent] at 1. Second, Mr. Burke filed the application for the ’208 patent on August 10, 2012
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`(Application No. 13/572,166). Ex. 6 [’208 Patent] at 1. The prosecution history lists Securicom
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`as assignee, and on February 23, 2016, the ’208 patent issued listing Securicom as assignee. Id.;
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`Ex. 7 [’208 File History] at 1. Finally, Mr. Burke filed the application for the ’705 patent on
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`January 19, 2016 (Application No. 15/000,818). Ex. 8 [’705 Patent] at 1. The prosecution history
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`again lists Securicom as assignee, and on May 30, 2017, the ’705 patent issued listing Securicom
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`as assignee. Id.; Ex. 9 [’705 File History] at 2.
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`B. Mr. Burke Became Involved with Charter Pacific Around 2016
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`At some point around 2016, Mr. Burke became involved with an Australian investment
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`company called Charter Pacific Corporation Limited (“Charter Pacific”). Charter Pacific is the
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`parent company of Plaintiff CPC. ECF 1 [Complaint] ¶ 16. Charter Pacific was interested in
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`investing in and/or acquiring Microlatch/Securicom. On June 17, 2016, Charter Pacific announced
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`that it had entered into a non-binding term sheet under which Charter Pacific would acquire a
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`100% interest in Microlatch/Securicom, which would include Microlatch/Securicom’s patent
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`portfolio. Ex. 2 [10/7/2016 Charter Pacific Press Release] at 1. On October 7, 2016, Charter
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`Pacific announced that it had executed a Share Purchase Agreement with Microlatch/Securicom.
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`Id. In a section of the announcement titled “commercialisation,” Charter Pacific described its plans
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`to license the Microlatch/Securicom patent portfolio, including by approaching “potential
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`2
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 6 of 18
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`infringers who are best seen as potential licensees.” Id. The announcement also summarizes the
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`key terms of the deal, and notes that there are certain conditions that must be satisfied before the
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`transaction is complete. Id. at 3-4. These conditions included (i) that Charter Pacific satisfy the
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`requirements to be listed on the Australian stock exchange, and (ii) that a public offering be
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`completed. Id.
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`At some point after the announcement of the Share Purchase Agreement, the relationship
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`between Charter Pacific and Mr. Burke began to deteriorate. Several things appear to have gone
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`wrong, but a central issue was that Charter Pacific was unable to get listed on the Australian stock
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`exchange (one of the conditions for completion of the Share Purchase Agreement). See, e.g., Ex.
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`1 [8/14/2020 Supreme Court of NSW Decision]; Ex. 10 [5/29/18 Supreme Court of Queensland
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`Decision]. Additionally, Securicom/Microlatch was loaned money by Charter Pacific that it
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`ultimately was unable to pay back. This set into motion a series of events which led to multiple
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`legal proceedings in Australia, some of which are still ongoing today (as discussed in more detail
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`below). Id.
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`C.
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`The Asserted Patents Were Assigned from Securicom to CJ Burke Nominees
`in November 2017
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`On November 18, 2017, the Asserted Patents were assigned from Securicom (which at that
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`point owned the patents) to an Australian entity called CJ Burke Nominees Pty Limited (“CJ Burke
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`Nominees”). Ex. 11 [Assignment No. 1]. CJ Burke Nominees appears to be an entity both formed
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`and controlled by Mr. Burke. Ex. 1 [8/14/2020 Supreme Court of NSW Decision] at ¶ 10. The
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`assignment of the Asserted Patents to CJ Burke Nominees was recorded with the USPTO on
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`August 5, 2019. Ex. 11 [Assignment No. 1]. As discussed in more detail below, the propriety of
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`the assignment of the Asserted Patents to CJ Burke Nominees was subsequently challenged in
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`3
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 7 of 18
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`legal proceedings in Australia, and is significant because it creates a break in the chain of
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`assignment of the Asserted Patents to Plaintiff CPC.
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`D.
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`Legal Proceedings Commenced in Australia Between Charter Pacific, Mr.
`Burke, and Microlatch/Securicom in December 2017
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`In December 2017, legal proceedings began between Charter Pacific, Mr. Burke, and
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`Microlatch/Securicom. Kete Decl. at ¶ 3. Those legal proceedings are still ongoing today, and
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`will be resolved in a trial that is scheduled to take place in Australia in December 2021. Id. To
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`briefly summarize some of the relevant events, on December 22, 2017, Charter Pacific served a
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`demand on Securicom. According to Charter Pacific, that demand sought “repayment of hundreds
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`of thousands of dollars loaned by Charter Pacific in good faith to assist Microlatch to develop and
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`maintain its patent portfolio.” Ex. 12 [2/1/2018 Charter Pacific Press Release] at 1. On January
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`12, 2018, Securicom applied to the Queensland Supreme Court to set aside the demand. Id. The
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`Queensland Supreme Court delivered a judgment on May 29, 2018, finding that Securicom was
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`required to re-pay the loan to Charter Pacific within seven days, noting that failure to do so would
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`lead to the presumption in insolvency. Ex. 10 [5/29/18 Supreme Court of Queensland Decision]
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`at 22; Ex. 13 [5/29/2018 Charter Pacific Press Release]. Securicom was unable to re-pay the loan
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`and was eventually placed into liquidation in 2019. Ex. 14 [ASIC Notice re Resolution].
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`On February 20, 2018, Charter Pacific commenced a separate legal action in the Supreme
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`Court of New South Wales for specific performance by Mr. Burke of the Share Purchase
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`Agreement. In a press release that same day, Charter Pacific claimed that Mr. Burke “covertly
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`transferred certain patents owned by the Microlatch group to a company controlled by him, CJ
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`Burke Nominees Pty Ltd, without notice to his other shareholders and in breach of Charter Pacific
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`4
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 8 of 18
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`Share Purchase Agreement.”3 Ex. 15 [2/20/2018 Charter Pacific Press Release]. On March 9,
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`2018, the Supreme Court of New South Wales made orders by consent (meaning that both parties
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`agreed to the form and content of the orders) prohibiting Mr. Burke from instructing any patent
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`attorneys to record the assignment of any of the patents covered by the Share Purchase Agreement.
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`Ex. 16 [3/9/2018 Charter Pacific Press Release]. On August 10, 2018, the Supreme Court of New
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`South Wales issued a judgment that the Share Purchase Agreement be specifically performed
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`meaning that each party had to comply with its obligations under the Share Purchase Agreement.
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`Ex. 17 [8/10/2018 Supreme Court of NSW Decision]. Then, on September 4, 2018, the Supreme
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`Court of New South Wales made orders, including that Mr. Burke restore (i.e., transfer back)
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`certain patent rights to Securicom. Ex. 18 [9/4/2018 Decision]; see also Ex. 19 [9/4/2018 Charter
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`Pacific Press Release]. However, this was not done at this time for the Asserted Patents.
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`Instead, the Asserted Patents were purportedly assigned from Securicom to Plaintiff CPC
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`Patent Technologies in July 2019, even though at that time Securicom had already assigned these
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`patents to CJ Burke Nominees. On August 2, 2019, a document titled “Confirmation of
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`Assignment of Patent Rights” was executed between Securicom and CPC Patent Technologies.
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`Ex. 20 [Assignment No. 2]. The document references a “Deed of Assignment” between Securicom
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`and CPC Patent Technologies dated July 31, 2019, and states that this document is intended to
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`confirm that assignment. Id. at 3-4. The document includes a schedule titled “The IP Rights,”
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`which lists several patents, including the Asserted Patents. Id. at 6-7. The assignment was
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`recorded with the USPTO on September 17, 2019, i.e., after the assignment of the Asserted Patents
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`to CJ Burke Nominees was recorded with the USPTO. Id. at 1.
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`3 Charter Pacific was therefore aware that the Asserted Patents had been assigned to CJ Burke
`Nominees at least by February 20, 2018, prior to any assignment of the Asserted Patents to CPC.
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`5
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 9 of 18
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`E.
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`The Asserted Patents Were Assigned from CJ Burke Nominees to Securicom
`in December 2019
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`Apparently recognizing that the assignment of the Asserted Patents from Securicom to
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`CPC was ineffective because CJ Burke Nominees still owned the Asserted Patents, a new “Deed
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`of Intellectual Property” was executed between CJ Burke Nominees, Securicom, and Mr. Burke
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`on December 13, 2019. Ex. 21 [Assignment No. 3]. This Deed states that the Assignor – defined
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`as CJ Burke Nominees – “acknowledge that it was never entitled to the transfer of the Intellectual
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`Property and has agreed to assign and transmit all such Right, title, and interest as it may have in
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`the Intellectual Property, in all jurisdictions worldwide, to the Assignee [Securicom], and the
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`Assignee has agreed to accept such assignment, on the terms of this Deed.” Id. at 6 (¶ L). It then
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`states that the 2017 assignment from Securicom to CJ Burke Nominees “is hereby rescinded, and
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`is of no force or effect whatsoever” and that it will be treated as if it ‘had never been entered.” Id.
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`at 7 (§ 2.2). The agreement then purports to assign all rights in the Asserted Patents (and other
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`patents), to the “Assignee” – which is defined as Securicom. Id. (§ 2.1). The agreement also
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`contains warranties from Mr. Burke and CJ Burke Nominees, including that the Asserted Patents
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`“has [sic] been and continues to be owned by the Assignee” – again, which is defined as
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`Securicom. Id. at 8 (§ 4.1(a)). This assignment was recorded with the USPTO on March 11, 2020.
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`Id. at 1. This is the most recent assignment to have been recorded, and there is no record that
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`Securicom ever made a subsequent assignment to CPC. Thus, CJ Burke Nominees or
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`Securicom— but not plaintiff CPC—is the current owner of the patents. This is summarized in
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`the below timeline.
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`6
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 10 of 18
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`
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`F.
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`Litigation Continues in Australia Regarding Ownership of the Asserted
`Patents
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`Litigation remains ongoing between Charter Pacific, Mr. Burke, Microlatch/Securicom,
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`along with several other entities with which Mr. Burke has been associated. To understand the
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`impact of the Australian litigation on CPC’s ownership of the asserted patents, including with
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`respect to the assignment to CJ Burke Nominees and what appear to be attempts to correct it, Apple
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`made a formal request to the relevant Australian Court for access to the case documents in June of
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`2021. Kete Decl. ¶ 4. This request was delayed by the current COVID-19 situation in Australia,
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`which has caused the courts to operate with limited staffing. Id. Apple received the Court
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`documents in September 2021, and following review of the documents to confirm that the chain
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`of assignment issue had not been cured by the Court in Australia, proceeded to prepare and file
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`this motion.4 Id.
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`4 Review of the Australian court file also shows that a Microlatch entity affiliated with Mr. Burke
`and based in Hong Kong has asserted that it has an exclusive license to the Asserted Patents. Kete
`Decl. ¶ 5. This issue will be decided by the Court in Australia following a trial scheduled for
`December of 2021, and may present a further standing issue for CPC if the exclusive license is
`found to be valid. Id.
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`7
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 11 of 18
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`III. LEGAL STANDARD
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`Standing to sue is foundational to federal subject matter jurisdiction. In the case of patents,
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`only the patent owner (or in some cases an exclusive licensee) may sue for damages; suits by others
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`must be dismissed for lack of standing. Waterman v. Mackenzie, 138 U.S. 252, 255 (1891); Rite-
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`Hite Corp. v. Kelley Co., 56 F.3d 1538, 1551-52 (Fed. Cir. 1995) (en banc). Plaintiff bears the
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`burden to demonstrate ownership and standing. Rite-Hite, 56 F.3d at 1551.
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`Timing: Standing requires legal ownership at the time of the alleged infringement. “The
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`general rule is that one seeking to recover money damages for infringement of a United States
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`patent (an action ‘at law’) must have held the legal title to the patent during the time of the
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`infringement.” Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579 (Fed. Cir. 1991)
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`(emphasis in original). Thus, “[n]unc pro tunc assignments are not sufficient to confer retroactive
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`standing.” Alps S., LLC v. Ohio Willow Wood Co., 787 F.3d 1379, 1384–85 (Fed. Cir. 2015).
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`Standing also requires legal ownership also at the time suit was filed. “A court may
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`exercise jurisdiction only if a plaintiff has standing to sue on the date it files suit.” Abraxis
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`Bioscience, Inc. v. Navinta LLC, 625 F.3d 1359, 1364 (Fed. Cir. 2010). The “jurisdictional defect
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`cannot be cured” if the plaintiff lacked standing at the time suit was filed. Schreiber Foods, Inc.
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`v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir. 2005).
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`Equitable versus Legal Title: Equitable title—e.g., the right to obtain legal title—is not
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`enough to confer standing. Arachnid, 939 F.2d at 1581 (“Although an agreement to assign in the
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`future inventions not yet developed may vest the promisee with equitable rights in those inventions
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`once made, such an agreement does not by itself vest legal title to patents on the inventions in the
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`promise….”).
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`For the Court: Standing is for the Court to decide. DDB Techs., L.L.C. v. MLB Advanced
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`Media, L.P., 517 F.3d 1284, 1290-91 (Fed. Cir. 2008) (“The sole jury trial issue in this case
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`8
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 12 of 18
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`concerns whether DDB is entitled to a jury trial on the jurisdictional issue of standing. We hold
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`that it is not.”).
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`IV. ARGUMENT
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`A.
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`The Court Should Dismiss Because Plaintiff Cannot Establish It Owned the
`Asserted Patents at the Time of Suit
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`The present litigation was filed on February 23, 2021. (Dkt. No. 1.) At that time, the
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`Asserted Patents were owned either by CJ Burke Nominees (pursuant to an assignment dated
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`November 18, 2017) or by Securicom (pursuant to an agreement dated December 13, 2019
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`purporting the rescind the 2017 assignment to CJ Burke Nominees). See Exs. 11 [Assignment No.
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`1], 20 [Assignment No. 2], 21 [Assignment No. 3]. Yet neither CJ Burke Nominees nor Securicom
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`is the plaintiff in this case. The plaintiff is CPC, and it cannot establish standing.
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`CPC relies upon a purported assignment from Securicom to CPC dated July 31, 2019. See
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`Ex. 20 [Assignment No. 3]. However, it is apparent from the timeline that this assignment cannot
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`be effective since it occurred after Securicom assigned its ownership rights to CJ Burke Nominees
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`on November 18, 2017 and before Securicom purported to rescind that assignment on December
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`13, 2019. In other words, at the time of the assignment to CPC, Securicom had no ownership
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`rights in the Asserted Patents left to assign.
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`These facts parallel the well-known Filmtec cases, and require dismissal. The Federal
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`Circuit explained:
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`In this case, if Cadotte granted MRI rights in inventions made during his employ,
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`and if the subject matter of the ’344 patent was invented by Cadotte during his employ with
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`MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec
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`is a nullity. Thus, FilmTec would lack both title to the ’344 patent and standing to bring
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`the present action.
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`9
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 13 of 18
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`FilmTec Corp. v. Allied–Signal, Inc., 939 F.2d 1568, 1572 (Fed. Cir. 1991); see also FilmTec
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`Corp. v. Hydranautics, 982 F.2d 1546-50, 1553-54 (Fed. Cir. 1992) (“Thus, when the invention
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`was conceived by Cadotte, title to that invention immediately vested in the United States by
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`operation of law. He had no right to assign it to FilmTec; the statute had divested him of all of his
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`interest.”; thus, the Court reasoned, the inventor never legally owned the patent, its purported
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`assignments were ineffective, and the suit by the purported assignee had to be dismissed); Abraxis,
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`625 F.3d at 1365 (“At that time AZ–UK could not assign the patents because it did not possess
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`their titles. AZ–UK had no legal title to assign and, therefore, lacked standing to commence this
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`litigation.”); Alzheimer’s Inst. of Am., Inc. v. Avid Radiopharmaceuticals, 952 F. Supp. 2d 740,
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`754 (E.D. Pa. 2013) (“When the rights to an invention are transferred or vested in another by
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`contract or by operation of law, a subsequent purported assignee of the inventor lacks legal title in
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`any ensuing patent because the inventor had nothing to assign at the time of the purported
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`assignment.”).
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`This case is the same. At the time Securicom allegedly assigned the Asserted Patents to
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`CPC, Securicom had no rights to assign. Therefore, the assignment to CPC is a nullity.
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`B.
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`CPC’s Assertion of Ownership Also Contradicts the Public’s Right to Rely
`Upon Deeds Registered at the Patent Office
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`The assignment of the Asserted Patents from Securicom to CJ Burke Nominees was
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`recorded with the USPTO on August 5, 2019. Ex. 11 [Assignment No. 1]. This was before the
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`purported assignment from Securicom to CPC was recorded on September 17, 2019. Ex. 20
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`[Assignment No. 2]. Reviewing this record, the public would reasonably conclude that CJ Burke
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`Nominees was the owner of the Asserted Patents, since the second assignment was recorded at a
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`time when Securicom had already transferred the patents to another.
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`10
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 14 of 18
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`In addition, the most recent assignment record in the USPTO is to Securicom. This
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`assignment was recorded on March 11, 2020. Ex. 21 [Assignment No. 3]. Based on this document,
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`the public might conclude that Securicom is the owner of the Asserted Patents (if the rescission is
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`effective).
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`Either way, the public would not conclude from USPTO records that plaintiff CPC is the
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`owner of the Asserted Patents. This creates a further obstacle to CPC establishing standing in this
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`case, as explained by the Federal Circuit:
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`The recording of an assignment with the PTO is not a determination as to
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`the validity of the assignment. However, we think that it creates a presumption of
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`validity as to the assignment and places the burden to rebut such a showing on one
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`challenging the assignment. Such an understanding is consistent and supported by
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`the provisions of 35 U.S.C. § 261. That section provides that the recordation of an
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`assignment with the PTO can be the basis for a bona fide purchaser defense.
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`SiRF Tech., Inc. v. International Trade Commission, 601 F.3d 1319, 1327-28 (Fed. Cir. 2010).
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`This Court should hold that the assignments recorded in the USPTO are not consistent with
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`ownership by CPC.
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`C.
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`Arguments Regarding the Propriety of the Assignment to CJ Burke Nominees
`Cannot Confer Standing
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`CPC’s parent, Charter Pacific, has publicly stated in a press release that the inventor of the
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`Asserted Patents, Mr. Burke, “covertly transferred certain patents owned by the Microlatch group
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`to a company controlled by him, CJ Burke Nominees Pty Ltd, without notice to his other
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`shareholders and in breach of Charter Pacific Share Purchase Agreement.” Ex. 15 [2/20/2018
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`Charter Pacific Press Release]. CPC may also argue that court rulings in the ongoing Australian
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 15 of 18
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`litigation support its view that the Asserted Patents should not have been assigned to CJ Burke
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`Nominees.
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`However, such arguments are irrelevant to standing in federal court. As the Federal Circuit
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`has repeatedly and emphatically explained, standing turns on legal title, not equitable title. For
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`example, this issue was squarely presented in Arachnid. See 939 F.2d at 1576 (“At issue here is
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`the standing of a plaintiff to recover money damages for patent infringement occurring at a time
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`when the plaintiff had a claim of ownership to the patented invention, but did not possess legal
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`title to the patent.”). The Federal Circuit held that legal title was required for standing. Id. at 1581
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`(“The issue in this case, however, is whether Arachnid had standing to sue in 1989 for money
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`damages for infringement that occurred in 1985-86, before Arachnid had obtained legal title to the
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`’781 patent. For the reasons set forth supra, we hold that it did not.”); see also DDB, 517 F.3d at
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`1290 (“Contracts that merely obligate the inventor to grant rights in the future, by contrast, ‘may
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`vest the promisee with equitable rights in those inventions once made,’ but do not by themselves
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`‘vest legal title to patents on the inventions in the promisee’) (quoting Arachnid).
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`Here, regardless of whether the Asserted Patents should have been assigned to CJ Burke
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`Nominees, the undisputed fact remains that they were so assigned. This is why the parties later
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`purported to “rescind” that assignment with an assignment from CJ Burke Nominees back to
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`Securicom. See Ex. 21 [Assignment No. 3] at 7 (§ 2.2).
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`But even if that rescission was effective, title transferred back to Securicom on December
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`13, 2019—five months after Securicom’s purported assignment of the Asserted Patents to CPC
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`on July 31, 2019. The December 13, 2019 assignment did not purport to grant (indeed, could not
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`have granted) Securicom title retroactively to July 13, 2019. See Ex. 21 [Assignment No. 3]; Alps
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`787 F.3d at 1384–85 (Fed. Cir. 2015) (“[n]unc pro tunc assignments are not sufficient to confer
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 16 of 18
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`retroactive standing”). There is also no evidence (such as a recorded deed) that Securicom
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`assigned the patents to CPC after Securicom regained title on December 13, 2019. CPC therefore
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`cannot establish legal ownership, and therefore it cannot establish standing.
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`V.
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`CONCLUSION
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`For the foregoing reasons, this Court should dismiss the present case for lack of standing
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`and subject matter jurisdiction.
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`Date: November 16, 2021
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`Respectfully submitted,
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`/s/ Seth M. Sproul
`Seth M. Sproul (admitted Pro Hac Vice)
`CA Bar No. 217711
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070
`Facsimile: (858) 678-5099
`sproul@fr.com
`
`Benjamin C. Elacqua
`TX Bar No. 24055443
`Tony Nguyen
`TX Bar No. 24083565
`Kathryn Quisenberry
`TX Bar No. 24105639
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, TX 90067
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`elacqua@fr.com
`nguyen@fr.com
`quisenberry@fr.com
`
`Joy B. Kete (admitted Pro Hac Vice)
`MA Bar No. 694323
`FISH & RICHARDSON P.C.
`One Marina Park
`Boston, MA 02210
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 17 of 18
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`Telephone: (617) 542-5070
`Facsimile: (617) 542-8906
`kete@fr.com
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`Betty H. Chen
`TX Bar No. 24056720
`FISH & RICHARDSON P.C.
`500 Arguello St.
`Redwood City, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`bchen@fr.com
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`Eda Stark
`Massachusetts Bar No. 703974
`FISH & RICHARDSON P.C.
`1180 Peachtree Street NE, 21st Floor
`Atlanta, GA 30309
`Telephone: (404) 892-5005
`stark@fr.com
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`J. Stephen Ravel
`TX Bar No. 16584975
`Kelly Ransom
`TX Bar No. 24109427
`KELLY HART & HALLMAN LLP
`303 Colorado, Suite 2000
`Austin, TX 78701
`Telephone: (512) 495-6429
`steve.ravel@kellyhart.com
`kelly.ransom@kellyhart.com
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`Attorneys for Apple Inc.
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`Case 6:21-cv-00165-ADA Document 45 Filed 11/16/21 Page 18 of 18
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`CERTIFICATE OF SERVICE
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`Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify
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`that, on November 16, 2021, all counsel of record who have appeared in this case are being
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`served with a copy of the foregoing via the Court’s CM/ECF system.
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`/s/ Seth M. Sproul
`Seth M. Sproul
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`15
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