HID Global Corp. et al. v. CPC Patent Technologies Pty Ltd.

This case involves an Inter Partes Review (IPR) proceeding, IPR2022-01093, initiated by a consortium of companies against a patent holding entity. The Petitioners, HID Global Corp., Assa Abloy Residential Group Inc., August Home Inc., Assa Abloy Global Solutions Inc., Assa Abloy Inc., and Assa Abloy AB, are all part of the Assa Abloy Group, a global leader in access solutions, manufacturing and supplying products and services related to locks, doors, gates, entrance automation, and secure identity products. August Home Inc., for example, focuses on Wi-Fi connected door locks and doorbell cameras and was acquired by Assa Abloy. The Defendant, CPC Patent Technologies Pty Ltd., is an Australian patent-holding entity, often referred to as a Non-Practicing Entity (NPE) or Patent Assertion Entity (PAE), known for acquiring and asserting patents, including against major technology companies like Apple, concerning biometric security and remote entry systems.

The IPR challenges the validity of U.S. Patent No. 8,620,039, which generally relates to biometric card security technology. While this IPR itself is a challenge to the patent's validity rather than an infringement suit, the Petitioners, as manufacturers of security and access control products, are likely challenging the patent due to potential infringement allegations or licensing demands related to their products. However, the specific accused product, service, or technology manufactured by HID Global or its co-petitioners that may be implicated by patent 8620039 is not directly identified in the context of this IPR proceeding.

This case is procedurally situated at the Patent Trial and Appeal Board (PTAB), a specialized administrative court within the U.S. Patent and Trademark Office, which is the primary venue for challenging the validity of issued patents through IPRs. The PTAB provides a faster and often less expensive alternative to district court litigation for patent validity challenges. The IPR has reached a "Final Written Decision" stage, which is notable because the PTAB previously found that key claims of patent 8,620,039 are patentable, confirming the patent's validity. This decision followed an appeal by CPC to the United States Court of Appeals for the Federal Circuit, which overturned an earlier PTAB ruling and remanded the matter for reconsideration, ultimately leading to the PTAB again ruling in favor of CPC. This outcome is significant as it validates CPC's technology and intellectual property position in the U.S., potentially strengthening its ability to pursue licensing and enforcement opportunities.

The provided case, IPR2022-01093, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a district court patent infringement litigation. Therefore, many of the typical litigation milestones such as initial pleadings, pre-trial motions, claim construction (Markman), discovery, trial, verdict, and post-trial motions do not directly apply to this IPR.

However, I can provide the key legal developments and outcome specific to the IPR and any related district court litigation if identified.

The case IPR2022-01093 is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) challenging the validity of U.S. Patent No. 8,620,039 (the '039 patent). It is not a district court patent infringement litigation. Therefore, the typical litigation milestones like initial pleadings, pre-trial motions, claim construction (Markman), discovery, trial, verdict, and post-trial motions do not directly apply to this IPR.

However, related district court litigation involving the '039 patent and other patents owned by CPC Patent Technologies Pty Ltd. against entities including Assa Abloy and HID Global has occurred.

Here's a chronological summary of the key legal developments and outcome for IPR2022-01093 and its related litigation:

Parallel PTAB IPR Proceedings and Related Litigation Affecting the '039 Patent:

• 2021-12 (approximate): HID Global initiated a patent infringement case in district court.
• 2022-05-04: Unified Patents publicly sought prior art for at least claim 13 of US8620039-B2, noting the patent is owned by CPC Patent Technologies Pty Ltd., a Non-Practicing Entity (NPE), and had been asserted against Apple.
• 2022-06-13: HID Global Corp. and related entities (Assa Abloy Residential Group Inc., August Home Inc., Assa Abloy Global Solutions Inc., Assa Abloy Inc., and Assa Abloy AB) filed the petition for IPR2022-01093, challenging the '039 patent. Another IPR, IPR2022-01094, also challenged claims from the '039 patent.
• 2023-09-27: A hearing was held in a related IPR (IPR2022-01006) which also mentioned IPR2022-01093 and IPR2022-01094 as challenges to the '039 patent.
• 2024-01-23: In a separate, but related, district court case, a Delaware jury found in favor of HID Global against former employees and their new company for trade secret misappropriation and patent infringement (though not specifically mentioning the '039 patent in this context, it highlights HID Global's activity in intellectual property enforcement).
• 2024-02-16: CPC Patent Technologies Pty Ltd. filed an appeal at the U.S. Court of Appeals for the Federal Circuit, challenging a PTAB determination concerning US8620039B2.
• 2024-03-19: The U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated previous PTAB decisions (from November and December of the prior year) in cases involving Assa Abloy and HID Global against CPC Patent Technologies. The rulings were vacated because they introduced new terminology, specifically regarding the claim construction of "biometric signal," which neither party had proposed a definition for. The cases were sent back to the PTAB for further briefing. This likely impacted IPRs related to CPC's biometric patents, although the report specifically mentioned patents 9,665,705 and 9,269,208 in the context of the vacated decisions. However, it was also noted that "Assa Abloy has already defeated a CPC patent infringement suit over patent number 8,620,039, which was found to make claims too obvious to be patented."
• 2025-11-10: The Federal Circuit closed the appeal filed by CPC Patent Technologies Pty Ltd. concerning US8620039B2. The appeal was dismissed in part, reversed in part, and remanded for further proceedings, indicating a split decision on the PTAB's original determination.
• 2025-12-17: A formal mandate was issued by the U.S. Court of Appeals for the Federal Circuit for appeals 2024-1492 and 2024-1493, which included appeals from IPR2022-01093 and IPR2022-01094. Costs were awarded to CPC Patent Technologies Pty Ltd. in the amount of $1123.68 and taxed against the appellees.
• Outcome for IPR2022-01093: The status of IPR2022-01093 is "Final Written Decision." However, the Federal Circuit's action on 2025-11-10 to dismiss in part, reverse in part, and remand the appeal related to the '039 patent means that the ultimate validity determination for some claims of the '039 patent is subject to further proceedings at the PTAB following the remand. The earlier report from 2024-03-19 also indicated that Assa Abloy had "defeated a CPC patent infringement suit over patent number 8,620,039, which was found to make claims too obvious to be patented." This suggests that at some point prior to March 2024, in a district court setting, claims of the '039 patent were found unpatentable.

In summary, IPR2022-01093 reached a Final Written Decision, which was subsequently appealed to the Federal Circuit. The Federal Circuit issued a split decision, leading to a partial reversal and a remand of the case back to the PTAB for further proceedings regarding the '039 patent. Parallel to these IPR proceedings, there were related district court litigations where the '039 patent was involved, with at least one instance where the patent was found to contain claims that were too obvious.

The Petitioners, HID Global Corp. et al., in IPR2022-01093 were represented by attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.

The counsel of record for the plaintiff(s) (Petitioners) are:

• Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
  • Office Locations: Finnegan is a global intellectual property law firm with numerous offices, including Atlanta, Boston, London, Munich, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo, and Washington, D.C. They are one of the largest IP law firms in the world, specializing in all aspects of patent, trademark, copyright, and trade secret law. The firm is particularly known for its extensive experience in post-grant review proceedings before the PTAB.

While specific individual attorneys from Finnegan representing HID Global et al. in IPR2022-01093 were not identified in the search results, Finnegan is widely recognized for its intellectual property litigation practice, including IPRs. They have a deep bench of attorneys with scientific and engineering backgrounds, many of whom are registered to practice before the USPTO. The firm has been consistently ranked among the most prestigious law firms for intellectual property globally.

In the IPR2022-01093 case, CPC Patent Technologies Pty Ltd. was represented by counsel from Fish & Richardson P.C. and the Law Office of Scott C. Harris.

Here are the details for the identified counsel:

Fish & Richardson P.C.

• Firm Profile: Fish & Richardson is a global patent, intellectual property, and commercial litigation law firm with over 400 attorneys. They are highly active in patent litigation and prosecution, particularly for Fortune 100 companies, and are recognized for their work before the PTAB and Federal Circuit.
• Relevant Experience: The firm has handled over 2,000 PTAB proceedings and more Federal Circuit IP appeals than any other firm in the last five years. They are known for their deep technical knowledge and strategic approach to patent law, encompassing prosecution, counseling, and litigation.

Law Office of Scott C. Harris

• Attorney: Scott C. Harris
  • Role: Counsel.
  • Firm: Law Office of Scott C. Harris (Rancho Santa Fe, CA).
  • Experience: Scott C. Harris has over 39 years of experience in patent law and is recognized as a Super Lawyer in Intellectual Property. His practice focuses on writing patent claims and prosecuting patent applications, with a high success rate in obtaining patents. He has also been listed as an inventor on various patents.

It is worth noting that in other related patent litigation, such as disputes against Apple, CPC Patent Technologies Pty Ltd. has been represented by other firms, including K&L Gates LLP and potentially Morrison & Foerster LLP. However, for this specific IPR, the available information points to Fish & Richardson P.C. and the Law Office of Scott C. Harris.