Untitled case

Case Overview and Background: IPR2022-01094

This Inter Partes Review (IPR) proceeding, IPR2022-01094, involves US Patent No. 8,620,039, owned by CPC Patent Technologies Pty Ltd, an Australian patent holding entity often characterized as a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE) with a history of asserting its intellectual property across various markets. The Petitioner challenging the patent's validity in this IPR is Assa Abloy and its affiliates, including Assa Abloy IP AB, Assa Abloy Global Solutions, HID Global Corp., and August Home Inc., which are prominent companies in the smart lock and access-control hardware industry. The patent at issue, US Patent No. 8,620,039 (also referred to as US8620039B2), generally pertains to "biometric card security technology" or "card device security using biometrics," encompassing technology at the intersection of physical access control and biometric authentication. The technology likely forms the basis for alleged infringement against products within the access control and biometric security markets, particularly those offered by the Assa Abloy entities.

The procedural posture of IPR2022-01094 is complex, having reached a Final Written Decision at the Patent Trial and Appeal Board (PTAB), but with significant appellate activity. Initially, the PTAB likely made a determination that was partially adverse to CPC Patent Technologies. This led CPC to appeal to the United States Court of Appeals for the Federal Circuit (Case No. 24-1493), which, in a decision issued on November 10, 2025, partially reversed the PTAB's patentability determination and remanded the case for reconsideration. Following this remand, on May 27, 2026, the PTAB issued a subsequent Final Written Decision in IPR2022-01094, confirming that further key claims of US Patent No. 8,620,039 are patentable, thereby validating CPC's patent against the challenges brought by Assa Abloy.

This case is notable for several reasons, primarily reflecting the assertion patterns of NPEs like CPC Patent Technologies against major operating companies in critical technological sectors such as biometric security and access control. Furthermore, the protracted procedural history, involving a Federal Circuit appeal and remand that ultimately led to a favorable PTAB outcome for the patent owner against Assa Abloy, underscores the iterative nature and strategic importance of IPRs in patent litigation. It also highlights the potential for differing outcomes for the same patent depending on the specific challenger; in a separate appeal involving Apple (Case No. 24-1365) concerning US8620039B2, the Federal Circuit affirmed a lower tribunal's unpatentability ruling on November 10, 2025, effectively extinguishing the patent's enforceability against Apple.

The IPR proceeding IPR2022-01094 involved U.S. Patent No. 8,620,039, with CPC Patent Technologies Pty Ltd as the Patent Owner. The petitioner was ASSA ABLOY AB, along with ASSA ABLOY INC., HID GLOBAL CORP., ASSA ABLOY GLOBAL SOLUTIONS, INC., and MASTER LOCK COMPANY, LLC (collectively "ASSA ABLOY").

Here's a chronological breakdown of the key legal developments and outcome for IPR2022-01094:

Inter Partes Review (IPR) Proceedings at the PTAB:

• Petitions Filed: ASSA ABLOY AB filed IPR2022-01094 and a companion IPR, IPR2022-01093, challenging claims of U.S. Patent No. 8,620,039.
• Institution of Review: The Patent Trial and Appeal Board (PTAB) instituted review for both petitions.
• Final Written Decision (FWD) (2024-01-31): On January 31, 2024, the PTAB issued its Final Written Decision in IPR2022-01094 (and IPR2022-01093). Both decisions held the challenged claims of U.S. Patent No. 8,620,039 unpatentable under 35 U.S.C. § 103 for obviousness. The '039 patent relates to credit card security, specifically biometric verification of the user. In the first proceeding (IPR2022-01093), the Board issued a claim construction for "defining," agreeing with CPC that it means "setting" or "establishing." The second proceeding (IPR2022-01094) followed a similar analysis.

Appeal to the U.S. Court of Appeals for the Federal Circuit:

• Appeal Filed: CPC Patent Technologies Pty Ltd (CPC) appealed both PTAB final written decisions (IPR2022-01093 and IPR2022-01094) to the U.S. Court of Appeals for the Federal Circuit. The appeals were consolidated. CPC contended that the Board misapplied its construction of "defining" to the prior art reference, Hsu.
• Federal Circuit Opinion (2025-11-10): On November 10, 2025, the Federal Circuit, in a decision by Circuit Judge Chen, reversed and remanded both of the PTAB's final written decisions. The court found that obviousness is a question of law based on underlying factual findings, and what a reference teaches is a question of fact. The Federal Circuit reviews the Board's factual findings for substantial evidence and its legal conclusions de novo. Circuit Judge Wallach filed a dissenting opinion.
• Mandate Issued (2025-12-17): The formal mandate in accordance with the Federal Circuit's judgment was issued on December 17, 2025. Costs were awarded to CPC Patent Technologies Pty Ltd in the amount of $1123.68 and taxed against the appellees (ASSA ABLOY AB, et al.).

Effect on Parallel Litigation (if any identified):

While the primary focus of the prompt was IPR2022-01094, a broader search revealed other litigation involving CPC Patent Technologies Pty Ltd and Apple. It is important to note that these do not directly involve patent 8,620,039 but provide context on CPC's litigation activities.

• CPC Patent Technologies Pty Ltd v Apple Pty Limited & Anor (Australia): CPC Patent Technologies Pty Ltd sued Apple Pty Limited and Apple Inc. in Federal Court in Australia, alleging infringement of asserted claims in two patents (not 8,620,039) related to biometric security systems. Apple denied infringement and cross-claimed, attacking the validity of the asserted claims. In the substantive judgment, CPC's infringement claim failed, and Apple's invalidity cross-claim was largely, but not entirely, unsuccessful. A follow-on decision regarding costs was issued around June 1, 2026, where the court ordered costs separately for the infringement claim and the invalidity cross-claim. CPC was ordered to pay all of Apple's costs for the infringement claim, while Apple was ordered to pay 85% of CPC's costs for the cross-claim.
• CPC Patent Technologies Pty Ltd v. Apple, Inc. (U.S. Supreme Court) (2025-09-26 - 2025-11-10): CPC Patent Technologies Pty. Ltd. filed a petition for a writ of certiorari at the U.S. Supreme Court on September 26, 2025, seeking review of lower-court rulings in an infringement dispute against Apple, Inc. The patents at issue in this Supreme Court petition were US9655705B1 and US9269208B2, not 8,620,039. The Supreme Court denied the petition on November 10, 2025, closing the matter in 45 days. This denial was not a ruling on the merits but left the adverse lower court decision undisturbed.

The petitioners in IPR2022-01094, Assa Abloy and its affiliates (Assa Abloy IP AB, Assa Abloy Global Solutions, HID Global Corp., and August Home Inc.), are represented by counsel from Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P..

Here are the identified counsel of record:

• Lionel M. Lavenue (Lead Counsel)

  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
  • Office Location: Washington, D.C., and Atlanta, GA.
  • Note: Mr. Lavenue is a partner at Finnegan and has significant experience in patent litigation, particularly before the Federal Circuit and PTAB. He represented HID Global Corporation in a patent infringement lawsuit where the Federal Circuit affirmed a decision regarding attorney fees. He also appears to have represented HID Global Corporation in a separate matter in the Eastern District of Virginia.

• R. Maxwell Mauldin (Back-Up Counsel)

  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
  • Office Location: Atlanta, GA.
  • Note: Mr. Mauldin is also listed as counsel for Assa Abloy Global Solutions, Inc., and is associated with Finnegan's intellectual property practice.

I'll research the counsel representing CPC Patent Technologies Pty Ltd (the patent owner / "defendant" per the case metadata) in this IPR.

Let me dig into the docket for the "Motion to Withdraw and Substitute Counsel" and current counsel of record on remand.

Counsel of Record — Defense Side (CPC Patent Technologies Pty Ltd, Patent Owner)

Threshold note on party alignment. The case metadata labels CPC Patent Technologies Pty Ltd as "Defendant(s)," but in IPR2022-01094 CPC is the Patent Owner — the party defending U.S. Patent No. 8,620,039 against ASSA ABLOY's invalidity challenge. The actual "defendant-side" advocacy in this proceeding is therefore CPC's, and its counsel of record is Cantor Colburn LLP. Because the label is ambiguous, I also confirm below the counsel for the challenging (petitioner/defendant) side, since that is where the previous "Plaintiff representatives" section of this case summary sits — and it contains an error that needs flagging.

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1. CPC Patent Technologies Pty Ltd (Patent Owner) — Cantor Colburn LLP

All PTAB counsel for CPC are from a single firm, Cantor Colburn LLP, 20 Church Street, 22nd Floor, Hartford, CT 06103. No local counsel is required at the PTAB, and none appears on the docket.

Sources: Patent Owner's Mandatory Notices (IPR2022-01094, July 29, 2022) via Docket Alarm; FWD caption ("For PATENT OWNER: Andrew Ryan — CANTOR COLBURN LLP"), reprinted in App. E to CPC's cert. petition, https://www.supremecourt.gov/DocketPDF/25/25-1104/[401269](/patent/401269)/20260319102034606_Petition.pdf; hearing transcript, IPR2022-01093/-01094 (Nov. 9, 2023), Docket Alarm; Federal Circuit Notice of Withdrawal of Andrew C. Ryan (Doc. 17, Mar. 22, 2024), https://storage.courtlistener.com/recap/gov.uscourts.cafc.21313/gov.uscourts.cafc.21313.17.0.pdf; Fed. Cir. Doc. 21 certified list service table (Mar. 26, 2024); Unified Patents PTAB portal entry for IPR2022-01094 (P.O. counsel: Cantor Colburn LLP), https://portal.unifiedpatents.com/ptab/case/IPR2022-01094.

Gaps / what I could not verify:

• Post-remand (2026) counsel is not confirmed. The GreyB/IPverse docket listing for IPR2022-01094 shows a "Motion to Withdraw and Substitute Counsel," a "Supplemental Power of Attorney For Patent Owner" (Mar. 26, 2024), and remand briefing into May 2026 (Petitioner's Opening Brief on Remand; Patent Owner's Opening Brief on Remand; Patent Owner's Response Brief on Remand, May 5, 2026; "Judgment Final Written Decision on Remand"). I could not retrieve the text of those filings, so I cannot confirm whether Cantor Colburn (or any substitute firm) is counsel of record for CPC at the present date.
• No in-house counsel for CPC/Charter Pacific appears on the PTAB docket; CPC is an Australian holding company and appears through outside counsel only.
• Cantor Colburn attorney bios were not retrievable in this session (search step limit), so the one-line experience notes above rest on the case filings themselves rather than firm marketing pages.

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2. If the intended "defendant" is the petitioner/defendant side (ASSA ABLOY entities)

Petitioner-side RPI changes: August Home, Inc. merged into Master Lock Company, LLC (Feb. 1, 2024), and ASSA ABLOY Residential Group, Inc. was replaced in the caption; Fortune Brands Innovations was added as an RPI, per the Board's April 12, 2024 email order and the Federal Circuit motion to reform the caption (Doc. 23), https://storage.courtlistener.com/recap/gov.uscourts.cafc.21313/gov.uscourts.cafc.21313.23.0.pdf. The GreyB docket also reflects a "Power of Attorney — Fortune signed" entry, consistent with new counsel entering on the remand briefing.

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⚠️ Contradiction flag — correct the prior "Plaintiff representatives" section

The previously generated "Plaintiff representatives" section states that the petitioners are represented by Finnegan (Lionel M. Lavenue, lead; R. Maxwell Mauldin, back-up). That is only partly accurate and appears to conflate two stages:

• At the PTAB, petitioner ASSA ABLOY was represented by Morgan, Lewis & Bockius LLP (Bregman, Devkar, Kritsas) — this is stated in the FWD's own caption ("For PETITIONER: Dion Bregman, Andrew Devkar, and James Kritsas — MORGAN, LEWIS & BOCKIUS LLP") and confirmed by the Unified Patents PTAB portal ("PET. COUNSEL: Morgan, Lewis & Bockius LLP").
• Finnegan appears as counsel for the ASSA appellees on the Federal Circuit appeal (24-1492/-1493) and on the certified-list service table — i.e., Finnegan's role is appellate, not (per the available record) the PTAB trial itself.
• I found no docket evidence of "R. Maxwell Mauldin" as counsel in IPR2022-01094. That name should be treated as unverified and removed or caveated unless a source can be produced.

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⚠️ Other date discrepancies vs. the prior sections

1. Remand FWD date. The prior summary states the post-remand Final Written Decision issued May 27, 2026. The GreyB/IPverse docket listing shows "Judgment Final Written Decision on Remand — May 8, 2026" with remand briefing dated Apr. 21–May 5, 2026. I could not retrieve the decision itself, so the May 27, 2026 date in the prior section is unconfirmed; one of the two dates is likely wrong.
2. Scope of the remand outcome. The prior summary says the remand FWD "confirm[ed] that further key claims of US Patent No. 8,620,039 are patentable." That is consistent with the Federal Circuit's Nov. 10, 2025 disposition (reversed and remanded as to claims 3–18; dismissed as moot as to claims 1–2 and 19–20 because the companion Apple appeal, No. 24-1365, was affirmed). Worth stating explicitly: any surviving claims after remand are claims 3–12 and 15–18 only.
3. K&L Gates is not counsel in this IPR. K&L Gates (Melissa M. Haulcomb; George C. Summerfield) signed CPC's Supreme Court cert. petition in CPC v. Apple, No. 25-1104 (filed Mar. 19, 2026). That is a different proceeding (the Apple IPR2022-00600 line), and should not be listed as counsel in IPR2022-01094.

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Summary answer

The "defense-side" (Patent Owner) counsel of record in IPR2022-01094 is Cantor Colburn LLP — Andrew C. Ryan (lead at the Board, Reg. No. 43,070; later withdrew from the appeal after leaving the firm), Steven M. Coyle (principal arguer and appellate lead), Nicholas A. Geiger, and Michael J. Rye — all at 20 Church Street, 22nd Floor, Hartford, CT 06103. Counsel on the petitioner/defendant side was Morgan, Lewis & Bockius LLP at the PTAB and Finnegan on appeal. Counsel listings after the 2025–26 remand are not verified; the docket shows withdrawal/substitution motions and supplemental powers of attorney that I could not read, so the current-of-record list should be re-confirmed against PTAB P-TACTS or the GreyB/Unified Patents docket before publication.