Case: 1:16-cv-02703-CAB Doc #: 3 Filed: 11/04/16 1 of 27. PageID #: 3
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`FOURKITES, INC.,
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` Plaintiff,
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`v.
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`
`
`CASE NO.
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`JUDGE:
`
`MACROPOINT, LLC,
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` Defendant.
`
`
`DEMAND FOR JURY TRIAL
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`
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`Plaintiff FourKites, Inc. (“FourKites”), for its Complaint against Defendant MacroPoint,
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`COMPLAINT
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`LLC (“MacroPoint”) alleges as follows:
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`INTRODUCTION
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`1.
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`This is an action for declaratory relief regarding United States Patent Nos.
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`8,275,358 (“the ’358 patent”) and 9,429,659 (“the ’659 patent”), and for injunctive relief and to
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`recover damages as a result of unfair competition and anticompetitive practices by MacroPoint.
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`2.
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`FourKites seeks by the present action to terminate MacroPoint’s continuing
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`threats and actions, including not only against FourKites, but against FourKites’ customers as
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`well, despite this Court—less than one year ago—ruling that the alleged “invention” of
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`MacroPoint’s relevant patents was not patentable.
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`3.
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`As discussed in greater detail below, despite this Court’s prior ruling, which
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`remains pending appeal, MacroPoint has continued a pattern and practice of anticompetitive
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`behavior that misrepresents the status of legal proceedings in this and the United States Court of
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`Appeals of the Federal Circuit, which threatens FourKites’ customer relationships and business
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`development efforts. At the same time, MacroPoint has continued to seek new patents from the
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`1
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`
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`United States Patent and Trademark Office (“USPTO”) directed to the same unpatentable
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`concepts that this Court previously held invalid. On August 30, 2016, it was successful in
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`obtaining such a new patent, and immediately asserted that patent – in a different court – against
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`one of FourKites’ customers.
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`4.
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`The facts and circumstances of MacroPoint’s actions establish an improper course
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`of conduct that, unless and until abated, will continue to interfere with and threaten FourKites’
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`legitimate business relationships. The Court should act quickly to put an end to MacroPoint’s
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`conduct.
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`PARTIES
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`5.
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`FourKites is a Delaware corporation having a principal place of business in
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`Chicago, Illinois.
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`6.
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`On information and belief, MacroPoint is a limited liability company organized
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`and existing under the laws of the State of Ohio with a principal place of business in Cleveland,
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`Ohio.
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`JURISDICTION AND VENUE
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`7.
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`This Court has subject matter jurisdiction over this action under 28 U.S.C. §§
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`1331 and 1338 over FourKites’ claims under the Patent Laws of the United States, 35 U.S.C. §§
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`100 et seq., and its claims for False Advertising and Unfair Competition under the Lanham Act,
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`15 U.S.C. §§ 1051 et seq. In addition, under 28 U.S.C. § 1367, this Court has supplemental
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`jurisdiction over FourKites’ state-law unfair competition and deceptive trade practices claims.
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`These state-law claims arise out of the same nucleus of operative facts giving rise to FourKites’
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`Lanham Act claims and are so related to the federal antitrust claim that they form part of the
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`same case or controversy.
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`2
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`
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`8.
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`This Court has personal jurisdiction over MacroPoint because it is organized
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`under the laws of the State of Ohio and it has its headquarters and primary places of business in
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`the State of Ohio. MacroPoint also has previously availed itself of this Court’s jurisdiction on
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`two prior occasions. In February 2014, MacroPoint sued in this Court Salebug.com, LLC,
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`GoStrat LLC, Pegasus TransTech Corporation, and Prasad Gollapalli for infringement of United
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`States Patent No. 8,604,943 (“the ’943 patent”). In May 2015, MacroPoint sued FourKites in
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`this Court for infringement of the ’943 patent, and later amended its complaint to additionally
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`assert United States Patent Nos. 9,070,295 (“the ’295 patent”), 9,082,097 (“the ’097 patent”),
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`9,082,098 (“the ’098 patent”), and 9,087,313 (“the ’313 patent”) (collectively, together with the
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`’943 patent, “the ’943 patent family”).
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`9.
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`Venue is proper in this District under 28 U.S.C. §1391 because MacroPoint
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`resides in this District and a substantial part of the events or omissions giving rise to the claims
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`FourKites asserts occurred in this District.
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`FACTUAL ALLEGATIONS
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`I.
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`MacroPoint’s Previous Suit Against FourKites.
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`10.
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`In May 2015, MacroPoint sued FourKites in this Court for infringement of the
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`’943 patent, but MacroPoint did not serve FourKites. Instead, MacroPoint sent threatening
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`letters to FourKites’ existing and potential customers and partners.
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`11.
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`Despite not being served with a summons and complaint, FourKites voluntarily
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`appeared in this Court and immediately filed a motion to dismiss MacroPoint’s claims because,
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`among other reasons, the ’943 patent was invalid under 35 U.S.C. § 101 for claiming
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`unpatentable subject matter.
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`12.
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`Shortly thereafter, MacroPoint amended its claims against FourKites to assert the
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`3
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`four additional patents of the ’943 patent family. FourKites renewed its motion and challenged
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`the patentability of all of the claims of all of the patents in the ’943 patent family.
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`13.
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`In November 2015, this Court ruled in favor of FourKites. See Case No. 1-15-cv-
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`01002, Dkt. # 25. The Court agreed that all of the claims of all of the patents in the ’943 patent
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`family were invalid. First, the Court found that the claims of the ’943 patent family were directed
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`to the abstract idea of tracking freight. Second, the Court found that the claims of the ’943 patent
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`family did not include an inventive concept sufficient to transform the claimed abstract idea into
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`a patent-eligible application. A true and correct copy of the Court’s memorandum opinion and
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`order is attached hereto as Exhibit A and is incorporated by reference.
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`14.
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`As set forth in its memorandum opinion and order, this Court determined that the
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`’943 patent family did no more than instruct the use of a conventional computer and preexisting
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`technology and the incorporation of pre-existing industry standards for notice and consent in
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`relation to the use of tracking systems. This Court further held that, although the patents in the
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`’943 patent family did not entirely foreclose all tracking of freight, the steps in the claimed
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`invention did involve well-understood, routine, conventional activity, and that upholding the
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`patents would risk disproportionately tying up the use of the underlying conventional steps.
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`15.
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`In December 2015, MacroPoint appealed the Court’s decision to the United States
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`Court of Appeals for the Federal Circuit. As of the date of this complaint, that appeal is fully
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`briefed and oral argument is scheduled for December 6, 2016.
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`II. MacroPoint’s Conduct at the Patent Office.
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`16.
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`At the time of this Court’s judgment invalidating claims of the ’943 patent family,
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`MacroPoint had a pending United States Patent Application No. 14/752,005 (“the ’005
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`application”) that claimed priority to the ’943 patent family. Pursuant to a December 3, 2015
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`4
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`office action, the applied-for claims of the ’005 application were allowable provided MacroPoint
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`corrected a typographical error and filed a terminal disclaimer.
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`17.
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`On January 27, 2016, FourKites sent to the USPTO a Protest under 37 C.F.R. §
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`1.291, in which FourKites made the USPTO aware of the Court’s November 2015 decision and
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`other additional prior art references that FourKites alleged made the claims of the ’943 patent
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`family obvious.
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`18.
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`On February 4, 2016, MacroPoint’s patent attorney filed a letter with the USPTO
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`stating that it was “working diligently to finish reviewing” FourKites Protest and that it would
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`“shortly file a Reply to the Protest detailing all reasons why the Protest should not be entered
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`into the record of the application.” MacroPoint requested that the USPTO “please delay
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`reaching a resolution to enter the Protest in the record of the application until you [have] had an
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`opportunity to review applicant’s Reply.” Instead, later that same day, MacroPoint expressly
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`abandoned the ’005 application despite its claims otherwise being found allowable by the
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`USPTO subject to corrections of objections and the filing of the terminal disclaimer.
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`19.
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`At that same time, MacroPoint also had pending United States Patent Application
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`Nos. 14/987,692 (“the ’692 application”) and 14/987,707 (“the ’707 application”), both of which
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`claim priority to the patents of the ’943 patent family, and to which FourKites also submitted
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`Protests under 37 C.F.R. § 1.291.
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`20.
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`The ’692 application was also abandoned. The circumstances of the abandonment
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`of the ’692 application are not presently known because it remains under seal at the USPTO.
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`21.
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`On March 4, 2016, the examiner at the USPTO responsible for reviewing the ’707
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`application issued an office action stating that the claims of the ’707 application were allowable
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`subject to corrections of objections and the filing of the terminal disclaimer. The examiner of the
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`5
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`’707 application is the same examiner who reviewed each and every issued patent in the ’943
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`patent family, including those subsequently invalidated by this Court. On March 7, 2016,
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`MacroPoint filed its terminal disclaimer, corrected the objections, and requested immediate
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`allowance of the ’707 application.
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`22.
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`On April 15, 2016, MacroPoint filed a petition with the USPTO Office of
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`Petitions requesting that FourKites’ Protest be struck from the record of the ’707 application.
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`While that petition was pending, the examiner instructed MacroPoint to file a response to
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`FourKites’ Protest. The USPTO denied MacroPoint’s petition to strike FourKites’ Protest on
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`May 4, 2016. The next day, MacroPoint conducted a telephone interview with the examiner
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`during which it discussed FourKites’ Protest with the examiner. On May 27, 2016, MacroPoint
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`filed its formal response to FourKites’ Protest, and the examiner thereafter entered a notice of
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`allowance.
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`23.
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`The consideration of FourKites’ protest was an ex parte proceeding in which
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`FourKites was not permitted an opportunity to argue its positions to the USPTO or to advocate,
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`including on the basis of this Court’s November 2015 decision. Indeed, pursuant to 37 C.F.R. §
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`1.291, FourKites was permitted to submit no more than a listing of the patents, publications, or
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`other information relied upon, together with a concise explanation of the relevance of each item
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`listed and a copy of the same. As stated in Section 1901 of the Manual of Patent Examining
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`Procedure, “[a] protestor does not, by the mere filing of a protest, obtain the ‘right’ to argue the
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`protest before the Office. Active participation by a protestor ends with the filing of the protest,
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`and no further submission on behalf of the protestor will be considered.”
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`24.
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`On August 30, 2016, despite this Court’s ruling that the other patents in the ’943
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`patent family were invalid, the ’707 application issued as the ’659 patent. A true and correct
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`6
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`
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`copy of the ’659 patent is attached hereto as Exhibit B.
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`III. MacroPoint’s Public Statements Before & After Issuance of the ’659 Patent.
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`25.
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`In May 2015, after MacroPoint originally sued FourKites – but had not served
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`FourKites with process – MacroPoint sent letters to FourKites’ then-current and potential
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`customers and partners. For example, in a letter dated May 29, 2015, MacroPoint’s counsel
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`wrote to Ruan Transportation Management Systems (“Ruan Transportation”) “because of
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`MacroPoint’s concern that its intellectual property rights are infringed by a company offering a
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`software solution that Ruan may be considering using.” See Exhibit C at 1. MacroPoint’s
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`counsel was “[s]pecifically . . . referring to a software solution provided by FourKites, Inc.” Id.
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`While MacroPoint did not explicitly accuse Ruan Transportation of infringement, the letter
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`constituted a thinly-veiled threat as it noted MacroPoint’s filing of a complaint for infringement
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`against FourKites, coupled with a suggestion that Ruan Transportation conduct its own analysis
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`to determine whether working with FourKites would be an act of infringement. As FourKites
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`and MacroPoint continued to compete head-to-head for new customers, MacroPoint continued to
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`send additional threatening letters to new potential customers.
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`26.
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`During this same time, MacroPoint also published press releases regarding its
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`patents and caused recurring news coverage of its lawsuit against FourKites, creating the
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`impression MacroPoint had filed suit more often or more recently than it had. When quoted in
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`these announcements and press coverage, MacroPoint’s representatives would characterize the
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`scope of their patents as encompassing the broad concepts of tracking or monitoring freight or
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`vehicles. MacroPoint’s statements falsely led the industry and customers to believe MacroPoint
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`had a legal right to a monopoly on tracking or monitoring freight or vehicles generally.
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`27.
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`At the same time, however, MacroPoint was making contrary representations to
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`7
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`this Court and to the United States Court of Appeals for the Federal Circuit, to whom
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`MacroPoint was alleging its patent rights were directed to a specific, narrow application that did
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`not preempt the broader concept of tracking freight. For example, in the opposition briefed it
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`filed with this Court, MacroPoint contended that “[t]he claims of the patents-in-suit include
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`limitations that substantially narrow the claims, which prevents preemption and allows for the
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`practice of other solutions for ‘tracking freight with a computer’ to be practiced.” Similarly, in
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`its appellate reply brief filed on July 20, 2016, MacroPoint argued that its patent claims “are
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`directed to a specific way of monitoring shipments.” Case No. 16-1286, Dkt. # 28 at 6.
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`MacroPoint contended that “[t]he claims are confined to the inventor’s unique contribution and
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`don’t preempt the general idea of tracking freight.” Id. MacroPoint further represented to the
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`Federal Circuit that “MacroPoint’s claims cover only a specific way of tracking freight by
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`obtaining the location information of a communications device from a third party while also
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`obtaining consent from the communications device.” Id. at 11. These statements are contrary to
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`the broad statements it made in the press and to the customers and partners for which the parties
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`are respectively competing.
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`28. MacroPoint also disseminated information directly to FourKites’ potential
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`customers and partners during sales pitches and at industry conventions and tradeshows. Before
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`it had even filed its opening appellate brief in connection with its appeal of this Court’s prior
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`decision invalidating the ’943 patent family patents, MacroPoint was providing written
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`assurances to FourKites’ customer prospects that MacroPoint would prevail in the appeal, and
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`threatening those prospects if they decided to work with FourKites instead of MacroPoint.
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`MacroPoint went so far as to distribute sales materials with an “Intellectual Property Notice” that
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`mischaracterized the status of its by-then-dismissed case against FourKites:
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`8
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`29.
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`The “Intellectual Property Notice” claim, namely, that “MacroPoint [was]
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`currently pursuing federal litigation against FourKites in the [C]ourt of [A]ppeals for the
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`[F]ederal [C]ircuit” was false and misleading. At most, MacroPoint could only “pursue” an
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`appeal of a decision from this district court that had found its patent claims invalid. The
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`selectively bolded statement “Federal Circuit agreeing with MacroPoint” falsely suggested that
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`the Federal Circuit had already or would decide MacroPoint’s appeal in its favor. Likewise, the
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`statement that “the trial court’s decision will be forthcoming on whether FourKites infringes
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`MacroPoint’s patents” suggests that a district court decision limited solely to the issue of
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`infringement by FourKites would necessarily follow Federal Circuit reversal of this court’s prior
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`invalidity judgment.
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`30.
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`The wording and formatting of MacroPoint’s “Intellectual Property Notice”
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`created an overall impression that was inaccurate and misleading. The Notice suggested that
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`MacroPoint had at that time valid, enforceable, and presently existing patent rights; that
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`MacroPoint was actively pursuing live claims against FourKites for infringement of those patent
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`rights; and that the Federal Circuit had upheld the validity of those patents rights.
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`31.
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`Following the issuance of the ’659 patent, MacroPoint continued its course of
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`conduct. Despite not filing suit against FourKites for infringement of the ’659 patent,
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`MacroPoint has repeatedly threatened FourKites’ current and potential customers and partners,
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`stating that working with FourKites would infringe the ’659 patent, and suggesting that
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`FourKites may be unable to continue operating in any capacity due to the issuance of the ’659
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`9
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`
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`patent.
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`32. Moreover, in addition to threatening unfounded legal claims, MacroPoint has
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`misappropriated FourKites’ creative works to confuse and deceive the public about the parties’
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`respective freight tracking services and product offerings. For example, FourKites advertises its
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`freight tracking services and product offerings on its website www.fourkites.com. FourKites’
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`website includes descriptions of the user interfaces through which it provides customers and
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`partners with access to its freight tracking services and product offerings. FourKites’ user
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`interfaces are sophisticated and user-friendly, and they are frequently praised by its customers
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`and partners. FourKites predominantly advertises its user interfaces on its website, including by
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`displaying screenshots of the same.
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`33.
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`One such screen shot of a user interface is the FourKites Product ELD Screenshot.
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`The Product ELD Screenshot is featured on the “Products” page of FourKites’ website at
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`https://www.fourkites.com/products. The Product ELD Screenshot depicts a FourKites’ user
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`interface for tracking and managing freight displayed on a laptop computer. A reproduction of
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`the Product ELD Screenshot appears below:
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`10
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`34. MacroPoint has misappropriated the FourKites Product ELD Screenshot to
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`advertise its own freight tracking services and product offerings. Below is a screenshot of a
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`MacroPoint advertisement that incorporates an identical copy of the Product ELD Screenshot:
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`35.
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`A larger reproduction focusing on MacroPoint’s use of the FourKites Product
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`ELD Screenshot (the “MacroPoint Rebranded Product ELD Screenshot”) appears below:
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`11
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`36.
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` MacroPoint has copied the FourKites Product ELD Screenshot and used it in its
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`own advertising. For example, the MacroPoint Rebranded Product ELD Screenshot incorporates
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`the same five tabs across the top of the user interface as in the FourKites Product ELD
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`Screenshot, with the second tab selected as denoted by contrasting colors. Similarly, the
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`MacroPoint Rebranded Product ELD Screenshot incorporates the information dashboard
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`consisting of a first row with one horizontal box spanning the length of the dashboard and a
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`second row with three boxes as in the FourKites Product ELD Screenshot. Similarly, the
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`MacroPoint Rebranded Product ELD Screenshot incorporates the check calls dashboard,
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`including three entries, depicted alongside a map interface displaying tracking pins as in the
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`FourKites ELD Screenshot is visible in each depiction.
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`37.
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`These similarities are merely exemplary and demonstrate that MacroPoint copied
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`the FourKites Product ELD Screenshot and used it to advertise freight tracking services and
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`product offerings that compete with FourKites’ freight tracking services and product offerings.
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`They evidence that MacroPoint intentionally uses the MacroPoint Rebranded Product ELD
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`Screenshot to create a false or misleading description of fact or false or misleading representation
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`of fact likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
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`connection, or association of MacroPoint with FourKites, or as to the origin, sponsorship, or
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`approval of the parties’ respective freight tracking services and product offerings, and to
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`misrepresent the nature, characteristics, qualities, or geographic origin of the parties’ respective
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`freight tracking services and product offerings in commercial advertising or promotion.
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`38.
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`In addition to falsely advertising its own freight tracking services and product
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`offerings, MacroPoint has interfered with FourKites’ ability to advertise its own freight tracking
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`services and product offerings. For example, FourKites tried to enter into an advertising
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`12
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
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`

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`arrangement with an independent third party. On information and belief, MacroPoint interfered
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`with that arrangement, using threats of litigation and bullying to intimidate the third party into
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`withdrawing from the arrangement. MacroPoint’s attempts to monopolize advertising channels
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`to the exclusion of FourKites is another form on unfair competition damaging to FourKites.
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`39. MacroPoint’s course of conduct often delayed or diminished, and in some cases
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`may have caused the loss of, FourKites’ entry into business relationships with new customers,
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`thereby damaging FourKites.
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`IV. MacroPoint Sues FourKites’ Customer, Ruiz Food Products.
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`40. Within hours of the ’659 patent issuing on August 30, 2016, MacroPoint filed suit
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`against Ruiz Food Products, Inc. (“Ruiz Food Products”) in the United States District Court for
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`the Eastern District of Texas. A true and correct copy of the complaint against Ruiz Food
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`Products is attached hereto as Exhibit D. In its complaint, MacroPoint contends that Ruiz Food
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`Products infringes the ’659 patent by using a machine or group of machines “to monitor location
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`of at least one vehicle carrying freight of Ruiz, freight of Ruiz carried by the vehicle, or both the
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`vehicle and freight carried by the vehicle.” MacroPoint also contends that Ruiz Food Products
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`infringes United States Patent No. 8,275,358 (“the ’358 patent”) by engaging in a method “to
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`receive consent from at least one operator of a vehicle carrying freight of Ruiz who is a user of a
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`mobile device to obtain location information of the mobile device.” A true and correct copy of
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`the ’358 patent is attached hereto as Exhibit E.
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`41.
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`On information and belief, prior to filing that suit, MacroPoint was aware that
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`Ruiz Food Products is a customer of FourKites. MacroPoint’s suit against Ruiz Food Products is
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`designed to intimidate FourKites’ current and prospective customers and partners. MacroPoint’s
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`decision to sue Ruiz Food Products in the Eastern District of Texas, rather than to sue FourKites
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`13
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
`
`

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`in this Court, is designed to avoid this Court’s prior judgment that the patents of the ’943 patent
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`family are invalid under 35 U.S.C. § 101.
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`V. MacroPoint’s Alleged Inventions.
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`42.
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`On information and belief, MacroPoint did not invent the subject matter claimed
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`in MacroPoint’s patents. The sole named inventor of the MacroPoint patents is Bennett H.
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`Adelson. All of MacroPoint’s patents claim priority to applications originally filed in March
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`2012. MacroPoint has publicly stated that the MacroPoint patents are directed to MacroPoint’s
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`freight tracking services and product offerings. However, on information and belief, MacroPoint
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`does not – and has never – operated the entire systems or performed all the steps of the methods
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`claimed in the MacroPoint patents.
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`43.
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`On information and belief, MacroPoint does not make phone calls to drivers to
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`obtain their consent to track them. On information and belief, MacroPoint does not receive
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`location information from those drivers’ cell phones. On information and belief, MacroPoint
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`does not use GPS signals, advanced forward link trilateration, observed time difference, Cell-ID,
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`or any other algorithm to determine the location of a mobile device. Instead, on information and
`
`belief, MacroPoint merely relies on the services of third parties who operate the actual
`
`infrastructure and perform the actual steps that are the subject of MacroPoint’s alleged
`
`inventions.
`
`VI.
`
`Present Controversy Between MacroPoint and FourKites.
`
`44. MacroPoint filed a lawsuit claiming that FourKites’ customer, Ruiz Foods,
`
`infringes one or more of the claims of the ’659 patent and the ’358 patent.
`
`45.
`
`Although MacroPoint has not sued FourKites for infringement of the ’659 patent
`
`or the ’358 patent, on information and belief, MacroPoint has made statements to various
`
`14
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 3 Filed: 11/04/16 15 of 27. PageID #: 17
`
`
`
`industry stakeholders and other entities, including to FourKites’ current or potential customers or
`
`partners such as Ruiz Food Products, that FourKites’ freight tracking services and product
`
`offerings infringe the ’659 patent and/or the ’358 patent.
`
`46.
`
`On information and belief, MacroPoint has made statements to various industry
`
`stakeholders and other entities, including to FourKites’ current or potential customers or partners
`
`such as Ruiz Food Products, that the ’659 patent and the ’358 patent are valid and enforceable.
`
`47.
`
`On information and belief, MacroPoint contends that making, using, offering for
`
`sale, or selling FourKites product offerings infringes one or more claims of the ’659 patent.
`
`48.
`
`On information and belief, MacroPoint contends that making, using, offering for
`
`sale, or selling FourKites product offerings infringes one or more claims of the ’358 patent.
`
`49. MacroPoint’s actions have placed a cloud on FourKites’ freight tracking services
`
`and product offerings, and threatened FourKites’ business and relationships with its customers
`
`and partners, as well as its sale of FourKites’ freight tracking services and product offerings.
`
`50.
`
`In light of all the circumstances, an actual, substantial, and continuing justiciable
`
`controversy exists having sufficient immediacy and reality to warrant the issuance of a
`
`declaration of rights by the Court between FourKites and MacroPoint as to whether FourKites
`
`infringes one or more claims of the ’659 patent or whether any valid claim of the ’659 patent
`
`exists.
`
`51.
`
`In light of all the circumstances, an actual, substantial, and continuing justiciable
`
`controversy exists having sufficient immediacy and reality to warrant the issuance of a
`
`declaration of rights by the Court between FourKites and MacroPoint as to whether FourKites
`
`infringes one or more claims of the ’358 patent or whether any valid claim of the ’358 patent
`
`exists.
`
`15
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 3 Filed: 11/04/16 16 of 27. PageID #: 18
`
`
`
`COUNT I
`
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT – ’659 PATENT)
`
`52.
`
`FourKites repeats and realleges each of the allegations in the foregoing
`
`paragraphs as if fully set forth herein.
`
`53.
`
`FourKites’ manufacture, use, offer for sale, sale, and/or importation into the
`
`United States of FourKites’ freight tracking services and product offerings does not infringe any
`
`valid claim of the ’659 patent, directly or indirect, literally or under the doctrine of equivalents.
`
`54.
`
`There is an actual, substantial, and continuing justiciable case or controversy
`
`between FourKites and MacroPoint regarding infringement of the ’659 patent in connection with
`
`FourKites’ freight tracking services and product offerings.
`
`55.
`
`FourKites is entitled to a judicial determination that FourKites’ freight tracking
`
`services and product offerings do not infringe any valid, properly construed claim of the ’659
`
`patent.
`
`56.
`
`This case is an exceptional one, and FourKites is entitled to an award of its
`
`reasonable attorneys’ fees and costs under 35 U.S.C. § 285.
`
`COUNT II
`
`(DECLARATORY JUDGMENT OF INVALIDITY – ’659 PATENT)
`
`57.
`
`FourKites repeats and realleges each of the allegations in the foregoing
`
`paragraphs as if fully set forth herein.
`
`58.
`
`The claims of the ’659 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.
`
`16
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 3 Filed: 11/04/16 17 of 27. PageID #: 19
`
`
`
`59.
`
`An actual and justiciable case or controversy exists between FourKites and
`
`MacroPoint as to whether one or more claims of the ’659 patent is invalid.
`
`60.
`
`61.
`
`FourKites is entitled to a declaration that the claims of the ’659 patent are invalid.
`
`This case is an exceptional one, and FourKites is entitled to an award of its
`
`reasonable attorneys’ fees and costs under 35 U.S.C. § 285.
`
`COUNT III
`
`(DECLARATORY JUDGMENT OF PATENT MISUSE – ’659 PATENT)
`
`62.
`
`FourKites repeats and realleges each of the allegations in the foregoing
`
`paragraphs as if fully set forth herein.
`
`63. MacroPoint has and is misusing the ’659 patent by asserting or threatening claims
`
`of infringement against Ruiz Food Products and other current and potential customers of
`
`FourKites.
`
`64. MacroPoint knows that the claims of the ’659 patent are directed to unpatentable
`
`subject matter as previously found by this Court with respect to nearly identical claims of patents
`
`in the ’943 patent family.
`
`65. MacroPoint’s assertion of the ’659 patent against these entities is an attempt to
`
`impermissibly broaden the scope of the ’659 patent grant and to block open and fair competition
`
`in the market, which constitutes a knowing, anticompetitive misuse of the ’659 patent.
`
`66.
`
`The ’659 patent was obtained and is being exploited and used by MacroPoint in
`
`an improper manner. Accordingly, the claims of the ’659 patent are unenforceable for patent
`
`misuse.
`
`67.
`
`An actual and justiciable controversy exists between the parties with respect to the
`
`’659 patent, and FourKites is entitled to a declaratory judgment that the ’659 patent is
`
`17
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1024
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 3 Filed: 11/04/16 18 of 27. PageID #: 20
`
`
`
`unenforceable for patent misuse.
`
`68.
`
`This case is an exceptional one, and FourKites is entitled to an award of its
`
`reasonable attorneys’ fees and costs under 35 U.S.C. § 285.
`
`COUNT IV
`
` (DECLARATORY JUDGMENT OF NON-INFRINGEMENT – ’358 PATENT)
`
`69.
`
`FourKites repeats and realleges each of the allegations in the foregoing
`
`paragraphs as if fully set forth herein.
`
`70.
`
`FourKites’ manufacture, use, offer for sale, sale, and/or importation into the
`
`Unite