hid global v. isonas et. al

8/13/2019 HID Global v. Isonas et. al.

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HID GLOBAL CO RPORATION, aDelaware corporation,Plaintiff,

VS.ISON AS, INC., a Colorado corporation;and DO ES 1 through 10, inclusive

Defendant.

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Michael T. Hom ak (State Bar No. 8 193 6 )email: mhomak rutan.comRonald P. Oines State Bar No. 145016)email: [email protected] A. Chapin (State Bar No. 23 28 8 5 )email: bchapin rutan.cornTimothy Spivey State Bar No. 269084)RUTAN & TUC6 11 A nton Boulevard,' Fourteenth FloorCosta Mesa, California 92 6 26 -193 1Telephone: 714-641-5100Facsimile: 714-546-9035

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Attorneys for Plaintiff HID GLO BALCORPORATIONUNITED STATES D ISTRICT COURT

CENTRAL D ISTRICT OF CALIFORNIA

Case No SACV14-00052 D OC (ANx)COMPLAINT Foa E CL TORYRELIEF RE PATENTDEMAND FOR JURY TRIAL

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Plaintiff HID GL OB AL CO RPO RAT ION ( HID ), for its Com plaint againstdefendant ISONA S, INC . ( Isonas ), alleges as follows:

JURISDICTION AND VENUE1. This is an action seeking a declaration of invalidity andnoninfringement of a United S tates patent, and thus arises under the U nited States

patent laws, Title 35 , United States Code. This Court has jurisdiction pursuant to 28U.S.C. 133 1, 133 8 (a), 2201 and 2202.

2. Venue is proper in this judicial district pursuant to 28 U.S.C. 13 9 1(b)and (c), as De fenda nts reside in this judicial district, a substantial part of the events,omissions and acts w hich are the subject m atter of this action occurred w ithin theCen tral District of California, and a sub stantial part of the prop erty that is thesubject of the action is located in the Central District of California. Venue may alsobe proper pursuant to 28 U.S.C. 1400(b).

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

located at 153 7 0 Barranca Parkway, Irvine, California.4. Plaintiffs are informed and believe, and thereon allege, that Isonas is a

Colorado corporation having its principal place of business located at 47 20 W alnutStreet, Suite 200, Boulder, Colorado, 8 03 01.

HID'S BUSINES S5. HID is a leader in the delivery of secure identity solutions for millions

of customers throughout the w orld. HID' s identity solutions are used in a variety ofapplications, including physical access control, logical access control, access cardprinting and personalization, highly secure governme nt identification and anim alidentification. HID's products, solutions and services are sold through a well-established ne twork o f O EM s, developers, systems integrators and distributorsworldwide. En d users of IIED 's products, solutions and services include businessesand organizations in virtually all industry sectors, including government, healthcare,

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retail, industrial, comm ercial, airports, ports, finance and ed ucation.6. FLD 's physical access control products and solutions are sold un der

HID's w ell-known brands, including iCLA SSO, Sm artIDO, H ID Prox andIndalat Prox.

ACTS GIVING RISE TO NEED FOR DECLARA TORY RELIEF7. Isonas also is in the business of providing physical access control

solutions, and com petes in some areas w ith HID.8. On information and belief, Isonas owns U nited States Patent

no. 7 ,77 5 ,42 9 , entitled M ethod and System for Controlling Access to an EnclosedArea (the '429 Patent ). On information and belief, the '429 Patent issued onAugust 17, 2010.

9. During Septem ber, 2013 , senior executives of Isonas advised seniorexecutives of BID , that Isonas believes H ID is infringing, and needs a license to,Isonas 429 Patent.

10. Shortly thereafter, on O ctober 9, 2 013 , an investment bankerexclusively representing Isonas informed A ssa Abloy, H ID's parent company, in anemail that hide believe it is imperative for either HID o r Assa Abloyparent] to acquire Isonas because BID's Edge Series directly infringes on Isonas'patent. On information and belief, prior to the October 9, 2013 email, Isonasinformed the investment banker of Isonas' belief that HID infringes the '42 9 Patent.

11. In light of Isonas' claims of infringement, HID believes Isonas intendsto sue HID for infringemen t of such patent.

FIRST CLAIM FOR RELIEF(Declaratory Judgment Invalidity of the '429 Patent)

12. HID realleges each and every allegation set forth in paragraphs 1through 11, inclusive, and incorporates them herein by this reference.

13. On information and belief, Isonas believes the '42 9 Patent is valid.14. An actual justiciable controversy has arisen and now exists between

COMPLAINT

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HID and Isonas concerning the validity of the '429 Patent. HID denies that the '429Patent is valid, and asserts that it is invalid under one or more of the following,among others: 35 U.S.C. 101, 102, 103, 112, 116 and/or 120.

15. HID desires a judicial determination of the respective rights andobligations of the parties, and a declaratory judgment and order that the '429 Patentis invalid.

SECOND CLAIMFOR RELIEF(Declaratory Judgment Noninfringement of the '429 Patent)

16. HID realleges each and every allegation set forth in paragraphs 1through 11, inclusive, and incorporates them herein by this reference.

17. As set forth above, Isonas has informed HID that Isonas believes HIDinfringes the '429 Patent. HID denies that it infringes any claim of the '429 Patent.

18. An actual justiciable controversy has arisen and now exists betweenHID and Isonas concerning Isonas' claim of infringement.

19. HID desires a judicial determination of the respective rights andobligations of the parties, and a declaratory judgment and order that HID does notinfringe, and has not infringed, the '429 Patent, directly, indirectly, literally, underthe doctrine of equivalents, or otherwise.

PRAYER FOR RELIEFWHEREFORE, HID prays for judgment against Isonas as follows:1. For a Declaratory Judgment that each and every claim of the '429

Patent is invalid;2 . For a Declaratory Judgment that HID does not infringe, and has notinfringed, in any manner any claim of the '429 Patent;3 . Preliminary and permanent relief enjoining Isonas and its officers,

directors, employees and agents from asserting that HID infringes the '429 Patent;4 . A determination that this case is exceptional under 35 U.S.C. 285,

and an award of Plaintiffs' reasonable attorneys' fees;COMPLAINT

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By:RonalP. OinesAttorneys for Plaintiff HID GLO BA LCORPORATION

5. For costs of suit; and6. For such o ther and further relief as the Court deem s just and proper.

RUTAN & TU CKER, LLPMICHAEL T. HORNAKRONALD P. OINESBRADLEY A . CHAPINTIMOTHY SPIVEY

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Dated: January 13, 2014

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By: ; OnesAttorneys for Plaintiffs HID G LOB ALCORPORATION

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

Court for the Central District of California, HID hereby demands a jury trial.RUTAN & TU CKER, LLPMICHAEL T. HORNA KRONALD P. OINESBRADLEY A . CHAPINTIMOTHY SPIVY

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Dated: January 13, 2014

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UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

NOTICE OF ASSIGNMENT TO UNITED STATES JUDGES

This case has been assigned to District Judge avid 0. Carter nd the assignedMagistrate Judge is rthur Nakazato

The case number on all documents filed with the Court should read as follows:

SACV14-00052 DOC ANx)

Pursuant to General Order 05 07 of the United States District Court for the Central District ofCalifornia, the Magistrate Judge has been designated to hear discovery related motions.All discovery related motions should be noticed on the calendar of the Magistrate Judge.

Clerk, U. S. District Court

Date eputy Clerk

NOTICE TO COUNSELA copy of this notice must be served with the summons and complaint on all defendants if a removal action isfiled, a copy of this notice mu st be served on all plaintiffs).

Subsequent docu ments m ust be filed at the following location:

January 13, 2014 By Lori Wagers

El Western Division312 N. Spring Street, G-8Los Angeles, CA 90012Southern Division411 W est Fourth St., Ste 1053Santa Ana, CA 92 701

El Eastern Division34 70 Tw elfth Street, Room 134Riverside, CA 925 01

Failure to file at the proper location will result in your documents being returned to youNOTICE OF ASSIGNMENT TO UNITED STATES JUDGESV-18 (08/13)


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UNITED ES DISTRICT COURT, CENTRAL DISTRICT C ,ALIFORNIACIVIL COVER SHEET

PLAINTIFFS ( Check box if you are representing yourself1

County of Residence of First Listed Plaintiff OrangeEXCEPT IN US. PLAINTIFF CASES)

Attorneys Firm Name, Address and Telephone Number) If you are

ichael T. Hornak SBN 81936/ Ronald P. Oines SBN 145016. Chapin SBN 232885/ Timothy Spivey SBN 269084

DEFENDANTS Check box if you are representing yourself Li )ISONAS, INC., a Colorado corporation; and DOES 1 through10, inclusive,County of Residence of First Listed Defendanti i v US. PLAINTIFF CASES ONLY)

Attorneys Firm Name, Address and Telephone Number) If you arerepresenting yourself, provide the same information.

III. CITIZENSHIP OF(Place an X in one

PRINCIPAL PARTIES-For Diversity Cases Onlybox for plaintiff and one for defendant)(Place an X in one box only.) -

Citizen of This StateCitizen of Another S tateCitizen or Subject of aForeign Country

Government 3. Federal Question (U.S.Plaintiff overnment Not a Party)

i 4. Diversity (Indicate CitizenshipDefendant f Parties in Item III)

PTF EFDi Di2 i2

0 L1

Incorporated or Principal Placeof Business in this StateIncorporated and Principal Placeof Business in Another StateForeign Nation

PTF EF4 1s . 1 1

El 6 l

ORIGIN (Place an X in one box only.)1. Original 2. Removed from i 3 Remanded from

Proceeding tate Court ppellate CourtEl 4 Reinstated or . Transferred from Another

Reopened istrict (Specify)6. Multi-

DistrictLitigation

. REQUESTED IN COMPLAINT: JURY DEMAND:D Yes o Yes Li No (Check Yes only if demanded in complaint.)MONEY DEMANDED IN COMPLAINT: $ Fees and Costs.(Cite the U.S. Civil Statute under which you are filing and w rite a brief statement of cause. Do not cite jurisdictional statutes unless diversity.)

This is an action seeking a declaration of invalidity and noninfringement of a United States patent, and thus arises under theUnited States patent laws, Title 35, United States Code.OTHER STATUTES CONTRACT REAL PROPERTY CONT. IMMIGRATION PRISONER PETITIONS PROPERTY RIGHTS375 False Claims Act400 StateReapportionment410 Antitrust430 Banks and Banking450 Commerce/ICCRates/Etc.460 Deportation470 Racketeer Influ-enced & Corrupt Org.480 Consumer Credit490 Cable/Sat TV850 Securities/Corn-modities/Exchange890 Other StatutoryActions891 Agricultural Acts893 EnvironmentalMatters895 Freedom of Info.

Act1 896 Arbitration

899 Admin. ProceduresAct/Review of Appeal ofAgency Decision950 Constitutionality of 230State Statutes

110 InsuranceLi 120 Marine

Li 130 Miller Act140 NegotiableInstrument150 Recovery ofOverpayment &Enforcement ofJudgment

L i 151 Medicare Act152 Recovery ofDefaulted StudentLoan (Excl. Vet .)153 Recovery ofOverpayment ofVet. Benefits160 Stockholders'Suits190 OtherContract195 Contract

II Product Liability196 Franchise

240 Torts to LandLi 245 Tort Product

Liabilityi1 290 All Other Real

Property

462 NaturalizationApplication465 OtherU mmigration Actions

Habeas Corpus:463 Alien Detainee

n 510 Motions to VacateUJ SentenceLi 530 General

535 Death Penalty

820 CopyrightsI 830 Patent

L i 840 TrademarkTORTS

PERSONAL PROPERTYSOCIAL SECURITY

TORTSPERSONAL INJURY L i 861 HIA (1395ff)862 Black Lung (923 )310 Airplane

315 AirplaneLi Product Liability

320 Assault, Libel &L i SlanderImi 330 Fed Employers'NI Liability

340 Marine345 Marine ProductLi Liability

L i 350 Motor Vehicle355 Motor VehicleProduct Liability360 Other Personal

Li Injury362 Personal Injury-Med Malpratice365 Personal Injury-L i Product Liability367 H ealth Care/

ri PharmaceuticalPersonal InjuryProduct Liability368 AsbestosPersonal Injury

, lict Liability

370 Other FraudL i 71 T ruth in Lending

380 Other PersonalProperty Damage385 Property DamageProduct Liability

Other:LI 540 Mandamus/OtherLi 550 Civil Rights555 Prison Condition

560 Civil DetaineeConditions ofConfinement

863 DIWC/DIWW (405 (g))864 SSID Title XVI865 PSI (405 (g))

FEDERAL TAX SUITSBANKRUPTCY 870 Taxes (U.S. Plaintiff or

Defendant)871 IRS-Third Party 26 USC7609

.

422 Appeal 28L i USC 158423 Withdrawal 28

L i USC 157FORFEITURE/PENALTY

625 Drug RelatedSeizure of Property 21USC 881690 OtheriIVIL RIGHTS

L i 440 Other Civil RightsLi 441 Voting

L i 442 Employment443 Housing/L .J Accomodations

445 American withDisabilities-EmploymentL i 446 American withDisabilities-Other448 Education

LABORLi 710 Fair Labor Standards

Act720 Labor/Mgmt.Relations

L i 740 Railway Labor ActL i 751 Family and MedicalLeave ActL i 790 Other LaborLitigation

791 Employee Ret. Inc.Security Act

REAL PROPERTY:210 LandCondemnationL i 220 Foreclosure

Rent Lease &Ejectment ,,

ase NumbeIVIL COVERSHEET age 1 of 3


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UNITED F: ES DISTRICT COURT, CENTRAL DISTRICT ALIFORNIACIVIL COVER SHEET

Has this action been previously filed in this court and dismissed, remanded or closed?If yes, list case number(s):

R E LATE D C AS E S : Have any cases been previously filed in this court that are related to the present case?If yes, list case number(s):

NO I YES

NO ES

Civil cases are deemed related if a previously filed case and the present case:(Check all boxes that apply) El A. Arise from the same or closely related transactions, happenings, or events; or

El B. Call for determination of the same or substantially related or similar questions of law and fact; orEl C. For other reasons would entail substantial duplication of labor if heard by different judges; orLI D. Involve the same patent, trademark or copyright and one of the factors identified above in a, b or c also is present.

ATURE OF ATTORNEYDATE: January 13, 2014

Ronald P. Ines

Nature of Suit Code Abbreviation ubstantive Statement of Cause of ActionAll claims for health insurance benefits (Medicare) under Title 18, Part A, of the Social Security Act, as amended. Also,861 IA nclude claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under the program.(42 U.S.C. 1935FF(b))

862 L ll claims for Black Lung benefits under Title 4, Part B, of the Federal Coal Mine Health and Safety Act of 1969. (30 U.S.C.923)All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as amended; plu863 IWC ll claims filed for child's insurance benefits based on disability. (42 U.S.C. 405 (g))All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social Security Act, as863 IVVW mended. (42 U.S.C. 405 (g))

864 SID ll claims for supplemental security income payments based upon disability filed under Title 16 of the Social Security Act, aamended.865 SI ll claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended.(42 U.S.C. 405 (g))

C IVIL COVER SHEET age 3 of 3American LegalNet, Inc.

hid global v. isonas et. al

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