`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`
`RUIZ FOOD PRODUCTS, INC.,
`
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`
`Patent Owner.
`
`__________
`
`Case IPR2017-02016
`U.S. Patent No. 8,275,358 B1
`__________
`
`
`MOTION TO DISMISS
`
`
`
`
`
`UPDATED LIST OF EXHIBITS
`Description
`Expert Declaration of David Hilliard Williams
`David Hilliard Williams CV
`Ruiz Food Products, Inc.’s Initial Invalidity Contentions,
`Civil Action 6:16-cv-1133
`Expert Report of Dr. Stephen B. Heppe dated January
`25, 2017, Civil Action 6:16-cv-1133
`
`Ruiz Food Products, Inc.’s Final Election of Asserted
`Prior Art, Civil Action 6:16-cv-1133
`
`Declaration of Kyle B Fleming, Esq.
`
`Kyle B. Fleming CV
`
`Complaint filed in FourKites, Inc. v MacroPoint,
`LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio)
`
`Exhibit Number
`2001
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`
`
`
`
`
`
`Petitioner lacks standing and is barred from bringing and maintaining this
`
`proceeding under 35 U.S.C. § 315(a)(1) because a Real Party In Interest,
`
`FourKites, Inc., filed an action challenging the validity of the claims of the ’358
`
`Patent prior to the filing of the petition. Board precedent had previously held that a
`
`prior action is not a bar under § 315 if it is voluntarily dismissed without prejudice
`
`before the Petition is filed. However, a recent Federal Circuit decision en banc
`
`reversed this PTAB precedent and held that a prior civil action, even if voluntarily
`
`dismissed without prejudice, triggers the standing bars of § 315.
`
`Accordingly, Petitioner lacks standing and the Board lacks jurisdiction, and
`
`therefore this proceeding must be dismissed.
`
`I.
`
`BACKGROUND
`
`Petitioner Ruiz Food Products, Inc. filed the instant Petition on August 31,
`
`2017. Paper 2 (“Petition”). Petitioner identified FourKites, Inc. as an additional
`
`Real Party In Interest. Id. at 3.
`
`Petitioner further disclosed that the ’358 Patent was the subject of prior,
`
`related proceedings, including an action for declaratory judgment of invalidity filed
`
`by FourKites on November 4, 2016, FourKites, Inc. v MacroPoint, LLC, Case No.
`
`1:16-cv-02703-CAB (N.D. Ohio). Id. A copy of the Complaint from this action is
`
`submitted as Ex. 2008. Count IV challenged the validity of all claims of the ’358
`
`Patent, and specifically alleged:
`
` 1
`
`
`
`
`
`
`
`75. The claims of the ’358 patent are invalid for failure to comply
`with the requirements of patentability specified in Title 35 of the
`United States Code, including but not limited to 35 U.S.C. §§ 101,
`102, 103, 112, 116 and/or 120, and/or based on other judicially
`created bases for invalidation.
`
`Ex. 2008 at 18-19.
`
`Despite this previously filed declaratory judgment action challenging the
`
`validity of the ’358 Patent, Petitioner argued that it was not barred from filing the
`
`Petition under Board precedent because the earlier action had been voluntarily
`
`dismissed prior to the filing of the Petition:
`
`As such, the dismissal without prejudice of the declaratory judgment
`“nullifies the effect of the service of the complaint and, as a
`consequence, does not bar” Petitioner from pursuing this IPR under
`35 U.S.C. § 315(a)(1). Oracle Corp. et al. v Click-to-Call Tech. LP,
`IPR 2013-00312, Paper #26 at 17 (PTAB Oct. 30, 2013)
`(Precedential).
`
`Petition at 5-6.
`
`
`On August 16, 2018, the Federal Circuit en banc vacated the Board’s
`
`precedent on this issue and remanded IPR2013-00312 for dismissal, holding that
`
`the Board “committed legal error” in concluding that the petition was not time-
`
`barred by a prior, voluntarily dismissed action. Click-to-Call Tech, LP. v. Ingenio,
`
`Inc., —F. 3d—, Case No. 15-1242 (Fed. Cir. August 16, 2018) (en banc). Notably,
`
`the order vacated by the Federal Circuit is the same authority upon which
`
`Petitioner relied as supporting its claim that it was not barred from pursuing a
`
` 2
`
`
`
`
`
`
`
`petition for IPR. The vacatur and reversal of this precedent now requires dismissal
`
`of this proceeding.
`
`II. ARGUMENT
`
`Section 315 contains two parallel bars based on prior civil actions, one for
`
`actions brought by the petitioner or a real party in interest, and one for actions
`
`brought by the patent owner:
`
`(a) Infringer’s Civil Action.—
`
`(1) Inter partes review barred by civil action.—
`
`An inter partes review may not be instituted if, before the date
`on which the petition for such a review is filed, the petitioner or
`real party in interest filed a civil action challenging the validity
`of a claim of the patent.
`
` *
`
` * *
`
`
`(b) Patent Owner’s Action.—
`
`An inter partes review may not be instituted if the petition
`requesting the proceeding is filed more than 1 year after the
`date on which the petitioner, real party in interest, or privy of
`the petitioner is served with a complaint alleging infringement
`of the patent. The time limitation set forth in the preceding
`sentence shall not apply to a request for joinder under
`subsection (c).
`
`
`
`The major difference between the two provisions is the date on which the
`
`bar attaches: under subsection (a)(1) it attaches on the date that the petitioner (or a
`
`real party in interest) files the action challenging validity, and under subsection (b)
`
` 3
`
`
`
`
`
`
`
`the bar attaches one (1) year after the date on which the infringement action is
`
`served on petitioner (or certain others).
`
`The Board previously created an exception to these statutory bars, holding
`
`that the voluntary dismissal of the triggering civil action rendered it a nullity for
`
`purposes of § 315. For example:
`
`Accordingly, the dismissal of the infringement suit brought by
`Inforocket against Keen—now Ingenio, LLC—nullifies the effect of
`the service of the complaint and, as a consequence, does not bar
`Ingenio, LLC or any of the other Petitioners from pursuing an inter
`partes review of the ’836 patent.
`
`Oracle Corp. et al. v Click-to-Call Tech. LP, IPR 2013-00312, Paper 26 at 17
`
`(PTAB Oct. 30, 2013). However, the Federal Circuit has now rejected this
`
`“voluntary dismissal” exception as contrary to and unsupported by the plain and
`
`unambiguous statutory language of § 315.
`
`A. A Chevron Analysis of 35 U.S.C. § 315(a)(1) Precludes The
`Creation Of Any Exception To The Statutory Bar
`
`The Federal Circuit in Click-to-Call analyzed the Board’s dismissal
`
`exception to § 315 pursuant to Chevron, U.S.A. Inc. v. Natural Resources Defense
`
`Counsel, Inc., 467 U.S. 837 (1979):
`
`Chevron requires that a court reviewing an agency’s construction of a
`statute it administers first discern “whether Congress has directly
`spoken to the precise question at issue.” 467 U.S. at 842. If the answer
`is yes, the inquiry ends, and the reviewing court must give effect to
`Congress’s unambiguous intent. Id. at 842–43.
`
`
` 4
`
`
`
`
`
`
`
`Click-to-Call, Slip Op. at 10. Click-to-Call concerned the § 315(b) bar based on a
`
`prior action served on petitioner, and the Federal Circuit concluded that the plain
`
`and unambiguous language of the statute and the legislative history did not permit
`
`any exception. Id. at 12-17.
`
`Turning first to the statutory language, the Federal Circuit stated that the
`
`plain language of the statue does not create any exceptions, and the time-bar was
`
`unambiguously triggered by the service of a complaint:
`
`The statute does not contain any exceptions or exemptions for
`complaints served in civil actions that are subsequently dismissed,
`with or without prejudice. Nor does it contain any indication that the
`application of § 315(b) is subject to any subsequent act or ruling.
`Instead, the provision unambiguously precludes the Director from
`instituting an IPR if the petition seeking institution is filed more than
`one year after the petitioner, real party in interest, or privy of the
`petitioner “is served with a complaint” alleging patent infringement.
`Simply put, § 315(b)’s time bar is implicated once a party receives
`notice through official delivery of a complaint in a civil action,
`irrespective of subsequent events.
`
`Id. at 13 (emphasis added).
`
`The statutory of language of § 315(a)(1) is equally plain and unambiguous:
`
`An inter partes review may not be instituted if, before the date on
`which the petition for such a review is filed, the petitioner or real
`party in interest filed a civil action challenging the validity of a claim
`of the patent.
`
`In this regard § 315(a)(1) is identical to § 315(b). It does not contain any
`
`exceptions or exemptions for civil actions that are subsequently dismissed, with or
`
`without prejudice. Nor does it contain any indication that the application of §
`
` 5
`
`
`
`
`
`
`
`315(a)(1) is subject to any subsequent act or ruling. Instead, the provision
`
`unambiguously precludes the Director from instituting an IPR if the petition
`
`seeking institution is filed after the petitioner, or real party in interest, files a civil
`
`action challenging the validity of a claim of the patent. Simply put, the bar of §
`
`315(a), like the time bar of § 315(b), is implicated once the triggering event occurs,
`
`irrespective of subsequent events. Under § 315(a) the triggering event is when a
`
`party files an action challenging validity.
`
`The Federal Circuit further noted that Congress elsewhere included, for
`
`example in § 315(a)(2), a clause directed to the effect of dismissals on an action
`
`filed after the petition, and that Congress could have easily included a similar
`
`exemption or exception in other subsections had it so chosen. The fact that
`
`Congress could have, but did not, include such an exception is further evidence
`
`that such an exception does not and was never intended to exist:
`
`Similarly, Congress could have chosen to include a variation of the
`phrase “unless the action in which the complaint was served was later
`dismissed without prejudice,” but it did not do so. We reject the
`Board’s effort to graft this additional language into § 315(b).
`
`Id. at 15. Congress did not add any exception to § 315(a)(1) either, and Chevron
`
`prohibits grafting on one now.
`
`The Federal Circuit also cited the legislative history of § 315, and
`
`particularly the statements of Sen. Kyl, to confirm that Congress did not
`
`contemplate an exception to the plain language of the statute. Id. at 16 (citing 157
`
` 6
`
`
`
`
`
`
`
`Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (Statement of Sen Kyl)). In the same
`
`remarks cited by the Federal Circuit, Senator Kyl also referenced the then pending
`
`version of § 315(a):
`
`Subsections (a) and (b) of sections 315 and 325 impose time limits
`and other restrictions when inter partes and post-grant review are
`sought in relation to litigation. Sections 315(a) and 325(a) bar a party
`from seeking or maintaining such a review if he has sought a
`declaratory judgment that the patent is invalid.
`
`Similar to his comments regarding § 315(b) that the Federal Circuit cited,
`
`Sen. Kyl’s statement on § 315(a)(1) is clear that a party is barred from seeking
`
`review “if he has sought a declaratory judgment that the patent is invalid.” See also
`
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (Statement of Sen Kyl) (“The final
`
`bill will still bar seeking IPR or PGR after a declaratory-judgment action has been
`
`filed, but [§ 315(a)(2)] will allow a declaratory-judgment action to be filed on the
`
`same day or after the petition for IPR or PGR was filed.”). No exception is
`
`mentioned and, as noted by the Federal Circuit in Click-to-Call, this is further
`
`evidence that Congress did not contemplate any subsequent events somehow
`
`“nullifying” § 315(a)(1)’s bar.
`
`The Federal Circuit concluded that the language of § 315 clearly and
`
`unambiguously expresses Congressional intent that there is no “dismissal”
`
`exception to the time bar, and it is not within the agency’s power to add one:
`
`Because a statute’s text is Congress’s final expression of its intent, if
`the text answers the question, that is the end of the matter.” Here, the
`
` 7
`
`
`
`
`
`
`
`text of § 315(b) clearly and unmistakably considers only the date on
`which the petitioner, its privy, or a real party in interest was properly
`served with a complaint. Because “the statutory language is
`unambiguous and ‘the statutory scheme is coherent and consistent,’ ”
`our inquiry ceases and we need not proceed to Chevron’s second step.
`Simply put, there is no gap to fill or ambiguity to resolve: “[w]here a
`statute’s language carries a plain meaning, the duty of an
`administrative agency is to follow its commands as written, not to
`supplant those commands with others it may prefer.”
`
`Click-to-Call, Slip Op. at 17 (citations omitted). The Federal Circuit’s foregoing
`
`conclusion applies equally, and for the same reasons, to §315(a)(1).
`
`B. Graves and Bonneville Do Not Support a Dismissal Exception to
`the Bar of § 315(a)
`
`Although Chevron step one conclusively answered—and rejected—whether
`
`any exception to the § 315 bars existed, the Federal Circuit nevertheless continued
`
`to step two and rejected the Board’s argument that the exception was proper and
`
`judicially created by the Federal Circuit in Graves v. Principi, 294 F.3d 1350 (Fed.
`
`Cir. 2002) and Bonneville Associates, Ltd. Partnership v. Barram, 165 F.3d 1360
`
`(Fed. Cir. 1999). The Board argued that those cases support the exception and
`
`showed that “[t]he Federal Circuit consistently has interpreted the effect of such
`
`dismissals as leaving the parties as though the action had never been brought.”
`
`Click-to-Call, Slip Op. at 6.
`
`The Federal Circuit rejected the Board’s interpretation and reading of those
`
`cases, finding the Board’s reliance on these cases to be “erroneous.” Id. at 18. Both
`
`Bonneville and Graves addressed whether the jurisdictional deadline in which to
`
` 8
`
`
`
`
`
`
`
`file an appeal is tolled by the filing and dismissal of a first appeal when the later
`
`appeal is otherwise after the deadline. These cases answered in the negative:
`
`[T]he background legal principle in these cases [Bonneville and
`Graves] is that a party’s voluntary dismissal of its action or appeal
`will not toll a statute of limitations, and, as a result, a subsequently
`filed action or appeal must still be brought within the original
`limitations period.
`
`The Federal Circuit further explained that these cases not only fail to support
`
`
`
`the Board’s arguments, but are actually antithetical to the Board’s position:
`
`Here, by contrast, the appropriate question is whether the voluntary,
`without prejudice dismissal of a civil action in which a complaint had
`been served nullifies an administrative time bar that is triggered by
`service of that complaint. It does not. Yet the Board, without
`explanation, extended the background principle of Graves and
`Bonneville to conclude that such a dismissal “nullifies the effect of the
`service of the complaint.” It then relied on this erroneous conclusion
`to “un-ring” § 315(b)’s time bar. In effect, the Board relied on cases
`holding that the voluntary dismissal of an action or appeal does not
`toll a statute of limitations to conclude that the voluntary dismissal
`without prejudice of a civil action does indefinitely toll § 315(b) and
`permitted an otherwise untimely IPR to proceed, turning Bonneville
`and Graves on their head.
`
`Id. at 22. Thus, instead of supporting an exception to the time bars, Bonneville and
`
`Graves instead stand for the proposition that a voluntary dismissal does not “un-
`
`ring” the bell and does not toll the running of a time bar. The Federal Circuit’s
`
`decision was clear: the bars of § 315, once started, cannot not be tolled or negated
`
`by subsequent events or dismissals.
`
` 9
`
`
`
`
`
`III. CONCLUSION
`
`
`
`Sections 315(a)(1) and 315(b) are substantively identical for purposes of the
`
`Chevron analysis in Click-to-Call. Both provisions contain plain, clear, and
`
`unambiguous statements that the bar is triggered when certain events occur (the
`
`filing of an action or the service of a complaint), and neither provision contains any
`
`exception to “un-ring” the bar.
`
`It is further undisputed that Petitioner filed the Petition on August 31, 2017,
`
`nearly 10 months after FourKites, a designated Real Party In Interest, filed a
`
`declaratory judgment seeking invalidity of the ’358 Patent. Petitioner is therefore
`
`time-barred under § 315(a)(1) and the Board lacks jurisdiction to review the claims
`
`of the ’358 Patent.1 Accordingly, the IPR must be dismissed.
`
`
`
`
`
`
`1 The Click-to-Call IPR had already proceeded to a Final Written Decision.
`Nevertheless, the Federal Circuit concluded that, because the time bar, “the Board
`lacked jurisdiction to institute the IPR,” vacating the Decision and remanding with
`instructions to dismiss. Slip Op. at 3.
`
` 10
`
`
`
`
`
`Date: September 28, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Kyle B. Fleming (admitted pro hac vice)
`Luis A. Carrion, Reg. No. 61,255
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
` 11
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
`
`The undersigned hereby certifies that the above-captioned MOTION TO DISMISS
`
`is being served in its entirety on this date by filing this document through the
`
`Patent Review Processing System as well as delivering a copy via electronic mail
`
`upon the following at:
`
`James P. Murphy jpmurphy@polsinelli.com
`Matt Frontz mfrontz@polsinelli.com
`Ryan Murphy rmurphy@polsinelli.com
`
`
`
`Date: September 28, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorney for Patent Owner
`MacroPoint, LLC
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
