Case: 1:16-cv-02703-CAB Doc #: 13 Filed: 01/04/17 1 of 2. PageID #: 437
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`CASE NO. 1:16:-cv-02703-CAB
`
`JUDGE: CHRISTOPHER A. BOYKO
`
`DEFENDANT MACROPOINT LLC’S
`MOTION TO DISMISS OR, IN THE
`ALTERNATIVE, TO STAY
`
`)))))))))))
`
`FOURKITES, INC.,
`
`Plaintiff,
`
`v.
`
`MACROPOINT, LLC,
`
`Defendant.
`
`Defendant MacroPoint, LLC (“MacroPoint”), respectfully moves this Court for an order
`
`dismissing all of the claims asserted in the Complaint pursuant to Federal Rules of Civil
`
`Procedure 12(b)(1) and (6). Plaintiff FourKites, Inc. (“FourKites”) fails to state any claim
`
`against MacroPoint on which relief can be granted as to its affirmative claims. Further, the Court
`
`lacks subject matter jurisdiction over FourKites’ declaratory judgment claims. Alternatively,
`
`MacroPoint moves for an order staying this action pending the outcome of earlier filed litigation
`
`involving MacroPoint’s patents that is now proceeding in another jurisdiction.
`
`A Memorandum of Law in support of this Motion is attached.
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13 Filed: 01/04/17 2 of 2. PageID #: 438
`
`Respectfully submitted,
`
`/s/ Wayne M. Serra
`Timothy J. Coughlin (0019483)
`Thomas F. Zych (0019942)
`Arthur P. Licygiewicz (0068458)
`Wayne M. Serra (0074780)
`THOMPSON HINE LLP
`3900 Key Center
`127 Public Square
`Cleveland, Ohio 44114
`Telephone: (216) 566-5500
`Facsimile: (216) 566-5800
`Tim.Coughlin@ThompsonHine.com
`Tom.Zych@ThompsonHine.com
`Art.Licygiewicz@thompsonhine.com
`Wayne.Serra@thompsonhine.com
`
`Attorneys for Defendant MacroPoint, LLC
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 1 of 27. PageID #: 439
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`
`FOURKITES, INC.,
`
`Plaintiff,
`
`v.
`
`MACROPOINT, LLC,
`
`Defendant.
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`CASE NO. 1:16:-cv-02703-CAB
`
`JUDGE: CHRISTOPHER A. BOYKO
`
`MEMORANDUM OF LAW IN
`SUPPORT OF DEFENDANT
`MACROPOINT LLC’S MOTION TO
`DISMISS OR IN THE ALTERNATIVE
`TO STAY
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................................................... 1
`
`FACTUAL BACKGROUND ......................................................................................................... 1
`
`LAW AND ARGUMENT .............................................................................................................. 2
`
`I.
`
`FOURKITES LACKS STANDING TO ASSERT DECLARATORY
`JUDGMENT CLAIMS AGAINST MACROPOINT’S PATENTS ...................................... 2
`
`A. The Declaratory Judgment Claims Are Both Facially and Factually Deficient ............ 4
`
`1.
`
`The Complaint Itself Fails to Show that FourKites Is Entitled to Relief ............. 4
`
`a. Allegations Regarding Other Patents Fail to
`Show Standing For the Current Patents ...................................................... 5
`
`b. MacroPoint Is Entitled to Seek New Patents .............................................. 5
`
`c. MacroPoint is Entitled to Publicize Its Patent Rights ................................. 6
`
`2.
`
`The Facts Alleged Fail to Show that FourKites Has Standing to Sue .................. 7
`
`B. FourKites Failed to Plead A Case of Actual Controversy
`Under the Declaratory Judgment Act ............................................................................ 8
`
`C. FourKites Failed to Plead a Justiciable Case or Controversy Under Article III ........... 9
`
`
`
`1
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 2 of 27. PageID #: 440
`
`
`
`D. FourKites Failed to State Claims for False Advertising and False Affiliation ........... 10
`
`E.
`
`F.
`
`FourKites Failed to State a Claim for Deceptive Trade Practices ............................... 13
`
`FourKites Failed to Plead a Justiciable Case or Controversy Under Article III ......... 14
`
`II.
`
`IN THE ALTERNATIVE, THE COMPLAINT SHOULD BE STAYED,
`PENDING THE OUTCOME OF THE TEXAS LITIGATION .......................................... 17
`
`A. The First-to-File Rule Requires a Stay of this Action ................................................. 17
`
`B. The Customer-Suit Exception Does Not Apply. ......................................................... 18
`
`CONCLUSION ............................................................................................................................. 19
`
`
`
`TABLE OF AUTHORITIES
`
`
`Federal Cases
`
`
`800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1368 (Fed. Cir. 2008)
`
`Allen v. Wright, 468 U.S. 737, 750 (1984)
`
`Arris Group, Inc. v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011)
`
`Ass’n of Cleveland Fire Fighters v. City of Cleveland, 502 F.3d 545, 548 (6th Cir. 2007)
`
`B. & V. Distributing Co., Inc., v. Dottore Cos., LLC, No. 1: 05-cv-2900, 2006 U.S. Dist. LEXIS
`23410, at *6 (N.D. Ohio Apr. 26, 2006)
`10
`
`Baatz v. Columbia Gas Transmission, LLC, 814 F.3d 785, 789 (6th Cir. 2016)
`
`Baseball at Trotwood, LLC v. Dayton Prof'l Baseball Club, 2003 U.S. Dist. LEXIS 27460, at *17
`(S.D. Ohio Sep. 2, 2003)
`16
`
`
`Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)
`
`Cnty. of Oakland v. Detroit, 866 F.2d 839, 845 (6th Cir. 1989)
`
`Coyne v. American Tobacco Company, 183 F. 3d 488, 494 (6th Cir. 1999)
`
`Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1379 (Fed. Cir. 1999)
`
`Extracorporeal Alliance, L.L.C. v. Rosteck, 285 F. Supp. 2d 1028, 1043 (N.D. Ohio 2003)
`
`
`5
`
`3, 9
`
`9
`
`4
`
`17, 18
`
`
`
`4, 7, 11
`
`10
`
`7
`
`5
`
`16
`
`
`
`2
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 3 of 27. PageID #: 441
`
`
`
`
`
`3
`
`Feist Publ’ns Inc. v. Rural Tel. Serv. Co. Inc., 499 U.S. 340, 361 (1991)
`
`Fogerty v. MGM Group Holding Corp., Inc., 379 F.3d 348, 352 (6th Cir. 2004)
`
`Globetrotter Software, Inc. v. Elan Computer Grp., Inc., 362 F.3d 1367, 1374-75 (Fed. Cir. 2004)
`
`7
`
`Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 609 (6th Cir. 200
`
`Herman Miller, Inc. v. Palazzetti Imps. & Exps., Inc., 270 F.3d 298, 323 (6th Cir. 2001).
`
`Innovative Automation, LLC, 2012 U.S. Dist. LEXIS 114503 at *42-43
`
`In re Foreclosure Cases, 2007 U.S. Dist. LEXIS 84011, *2 (N.D. Ohio Oct. 31, 2007)
`
`Intel Corp. v. Future Link Sys., LLC, 2015 U.S. Dist. LEXIS 17176 (D. Del. Feb. 12, 2015)
`
`Johnson Ctls. v. Phoenix Ctl. Sys., 886 F.2d 1173 (9th Cir 1989)
`
`Katz v. Lear Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990).
`
`Laird v. Tatum, 408 U.S. 1 (1972)
`
`Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1387 (2014)
`
`Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992)
`
`MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007
`
`Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012)
`
`Mezibov v. Allen, 411 F.3d 712, 716 (6th Cir. 2005)
`
`Microsoft Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014)
`
`Plating Resources, Inc. v. UTI Corp., 47 F. Supp. 2d 899, 903 (N.D. Ohio 1999
`
`Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993)
`
`15
`
`Steel Co. v. Citizens for Better Environment, 523 U.S. 83, 94-95 (1998)
`
`Streck, Inc. v. Research & Diagnostic Sys., 665 F.3d 1269, 1284 (Fed.Cir. 2012)
`
`Super Sulky, Inc. v. United States Trotting Ass'n, 174 F.3d 733, 742 (6th Cir. 1999)
`
`United States v. Ritchie, 15 F.3d 592, 598 (6th Cir. 1994).
`
`
`12
`
`12
`
`11
`
`13
`
`19
`
`7
`
`9
`
`12
`
`19
`
`9
`
`4
`
`3
`
`8
`
`18
`
`4
`
`9
`
`18
`
`4
`
`8
`
`18
`
`5
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 4 of 27. PageID #: 442
`
`
`
`Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 37-38 (1913)
`
`RMI Titanium Co. v. Westinghouse Elec. Corp., 78 F.3d 1125, 1134-35 (6th Cir. 1996)
`
`Stromback v. New Line Cinema, 384 F.3d 283, 300 (6th Cir. 2004)
`
`TCG Detroit v. City of Dearborn, 206 F.3d 618, 622 (6th Cir. 2000)
`
`Tegic Commc’n Corp. v. Board of Regents of Tex. Univ. of Tex. Sys., 458 F.3d 1335, 1343 (Fed. Cir.
`2006)
`19
`
`Valley Forge Christian College v. Americans United for Separation of Church and State, Inc., 454
`U.S. 464, 475 (1982).
`3
`
`Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860 (Fed. Cir. 1997))
`
`Warth v. Seldin, 422 U.S. 490, 500 (1975)
`
`WiAV Solutions LLC v. Motorola, Inc., 631 F.3d 1257, 1264 (Fed. Cir. 2010)
`
`Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 456 (6th Cir.2001)
`Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1352-53 (Fed. Cir. 1999)
`
`State Cases
`
`7
`
`5, 7
`
`15
`
`10
`
`7
`
`4
`
`4
`
`15
`7, 13, 14
`
` A
`
` & B-Abell Elevator Co. v. Columbus/Cent. Ohio Bldg. & Constr. Trades Council, 73 Ohio St. 3d
`1, 14, 651 N.E.2d 1283, 1294 (Ohio 1995).
`
`Constitutions
`
`US Constitution, Article 3, Section 2
`
`
`Federal Statutes
`
`15 U.S.C. § 1125(a)
`17 U.S.C. § 101
`17 U.S.C. § 103
`17 U.S.C. § 106
`17 U.S.C. § 301(a)
`28 U.S.C. § 2201
`35 U.S.C. § 101
`35 U.S.C. § 271
`35 U.S.C. § 282
`
`State Statutes
`
`Ohio Rev. Code Ann. § 4165.02(A)(2)
`
`15
`
`3, 9
`
`2, 10, 12, 13
`14
`14
`12, 14
`12, 13, 15
`8
`6
`19
`5
`
`13, 14, 15
`
`
`
`4
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 5 of 27. PageID #: 443
`
`
`
`
`Rules of Court
`
`Federal Rule of Civil Procedure 8
`Federal Rule of Civil Procedure 12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`1
`
`
`
`5
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 6 of 27. PageID #: 444
`
`
`
`
`
`Plaintiff FourKites, Inc.’s (“FourKites”) Complaint alleges claims attacking two patents
`
`INTRODUCTION
`
`assigned to Defendant MacroPoint, LLC (“MacroPoint”). The first six claims are requests for
`
`declaratory judgments on patents validly issued to MacroPoint. The remaining claims are
`
`repackaged versions of those claims purportedly asserting other causes of action. FourKites lacks
`
`standing to assert its declaratory judgment claims because there is no present justiciable controversy
`
`between MacroPoint and FourKites as to the patents on which those claims are based, and as such
`
`those claims must be dismissed under Rule 12 (b)(1). Each of the remaining claims amount to
`
`nothing more than repackaged versions of FourKites patent-related allegations and each is legally
`
`defective on its face. These claims should be dismissed pursuant to Civil Rule 12(b)(6). Even if the
`
`Court does not dismiss the Complaint, the Complaint should be stayed pursuant to the first-to-file
`
`rule due to a previously filed case currently pending in the District Court for the Eastern District of
`
`Texas.
`
`FACTUAL BACKGROUND
`
`On August 30, 2016 MacroPoint, LLC (“MacroPoint”) filed a patent infringement action in
`
`the United States District Court for the Eastern District of Texas against Ruiz Food Products, Inc.
`
`(“Ruiz Foods”) as Civil Action No. 6:16-cv-1133-RWS-KNM (the “Texas Litigation”).
`
`MacroPoint alleges in that action that Ruiz Foods directly infringes United States Patent No.
`
`9,429,659 (the “‘659 Patent”) and United States Patent No. 8,275,358 (the “‘358 Patent”)
`
`(collectively, the “Patents”), both of which are assigned to MacroPoint. Neither of these patents has
`
`previously been asserted against any infringer.
`
`More than two months after MacroPoint filed its infringement claims in the Texas
`
`Litigation, FourKites filed this action seeking a declaration that the same two patents asserted by
`
`
`
`6
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 7 of 27. PageID #: 445
`
`
`
`MacroPoint in its suit against Ruiz Foods are not infringed, are invalid, and have been misused.1
`
`FourKites makes these allegations despite the lack of any previous action whatsoever by
`
`MacroPoint to enforce these patents against FourKites.
`
`The Complaint in this case also asserts several claims for violations of Section 42(a) of the
`
`Lanham Act (15 U.S.C. § 1125(a)), deceptive trade practices under Ohio Revised Code § 4165, and
`
`tortious interference. The Complaint alleges that MacroPoint violated Section 42(a) of the Lanham
`
`Act and engaged in deceptive trade practices by publishing an “Intellectual Property Notice.”
`
`Complaint, ¶¶ 87, 104. The Complaint also alleged that MacroPoint violated Section 42(a) of the
`
`Lanham Act and engaged in deceptive trade practices by reproducing a website screenshot that
`
`MacroPoint allegedly misappropriated from FourKites. Id. ¶¶ 88, 96, 104. Finally, the Complaint
`
`alleges that MacroPoint tortiously interfered with FourKites’ business relationships with current and
`
`potential customers. Id. ¶112. MacroPoint now moves to dismiss the Complaint, or, in the
`
`alternative, stay the Complaint pending a resolution in the Texas Litigation.
`
`LAW AND ARGUMENT
`
`I.
`
`FOURKITES LACKS STANDING TO ASSERT DECLARATORY JUDGMENT
`CLAIMS AGAINST MACROPOINT’S PATENTS
`
`Article III of the United States Constitution, at Section 2, limits the jurisdiction of federal
`
`courts to the adjudication of actual “cases” and “controversies.” See Allen v. Wright, 468 U.S. 737,
`
`750 (1984); Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992). The standing doctrine serves
`
`to identify which disputes meet the case-or-controversy requirement. Allen, 468 U.S. at 750.
`
`Parties who do not possess standing may not litigate in the courts of the United States. Valley
`
`Forge Christian College v. Americans United for Separation of Church and State, Inc., 454 U.S.
`
`464, 475 (1982).
`
`1 Patent misuse is an affirmative defense and cannot be ised as the basis for a cause of action See B. Braun Medical v. Abbott Lab.,
`124 F.3d 1419 (Fed. Cir. 1997). Any claim for misuse should be dismissed on this ground alone. To the extent the declaratory
`judgment claims can be viewed as claims for unenforceability, it should be dismissed as set out in this Motion.
`7
`
`
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 8 of 27. PageID #: 446
`
`
`
`To possess standing to sue, a litigant must allege that the putatively unlawful conduct of
`
`which it complains has caused the litigant to personally suffer a cognizable injury to its own legally
`
`protected interest. See Allen, 468 U.S. at 751; Valley Forge, 454 U.S. at 472. In addition, Article
`
`III requires the litigant to allege that there is a causal connection between the litigant’s alleged
`
`injury2 and the putatively unlawful conduct of the defendant, and that this injury is likely to be
`
`redressed should the court grant the relief requested. Allen, 468 U.S. at 751; Valley Forge, 454 U.S.
`
`at 472. The Supreme Court has established that “the irreducible constitutional minimum of standing
`
`contains three elements:” injury-in-fact, causation, and redressability. Lujan, 504 U.S. at 560.
`
`Except when the legally protected interests are grounded solely in the Constitution or in
`
`common law, a statute that creates the legally protected interest will dictate the standing analysis.
`
`Warth v. Seldin, 422 U.S. 490, 500 (1975); see, e.g., WiAV Solutions LLC v. Motorola, Inc., 631
`
`F.3d 1257, 1264 (Fed. Cir. 2010). The statute must be consulted to determine: (i) what class of
`
`plaintiffs; (ii) properly hold what kind of right; (iii) that may be subject to what kinds of injury; (iv)
`
`as a ‘fairly traceable’ result; (v) of what actions by a defendant. See WiAV Solutions, 631 F.3d at
`
`1264. “In sum, the question . . . is whether [this plaintiff] falls within the class of plaintiffs whom
`
`Congress has authorized to sue under [the statute at issue].” Lexmark Int’l, Inc. v. Static Control
`
`Components, Inc., 134 S. Ct. 1377, 1387 (2014).
`
`Standing, like other bases of subject matter jurisdiction, must be present at the inception of
`
`the lawsuit. Lujan, 504 U.S. at 570 n.5. Before proceeding to the merits, federal courts must
`
`
`2 The nature of the injury that must be established has been described by the Supreme Court
`variously as: a “judicially cognizable” injury, Allen, 468 U.S. at 754; a “personal” injury, Valley
`Forge, 454 U.S. at 485; a “distinct and palpable” injury, Warth, 422 U.S. at 501; a “particular
`concrete” injury, United States v. Richardson, 418 U.S. 166, 177 (1974); or a “specific present
`objective harm or a threat of specific future harm.” Laird v. Tatum, 408 U.S. 1, 14 (1972).
`“[A]bstract,” “conjectural,” or “hypothetical” injury is insufficient to meet the Article III
`requirement for injury. City of Los Angeles v. Lyons, 461 U.S. 95, 101-02 (1983).
`8
`
`
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 9 of 27. PageID #: 447
`
`
`
`determine whether standing was present when the lawsuit was first filed. Steel Co. v. Citizens for
`
`Better Environment, 523 U.S. 83, 94-95 (1998).
`
`A. The Declaratory Judgment Claims Are Both Facially and Factually Deficient
`
`A complaint must state a short plain statement of a claim showing that the pleader is entitled
`
`to relief. Fed. R. Civ. P. 8(a)(2). Conclusory allegations or legal conclusions cloaked as factual
`
`allegations will not suffice. Mezibov v. Allen, 411 F.3d 712, 716 (6th Cir. 2005). A complaint
`
`containing a statement of facts that merely creates a suspicion of a legally cognizable right of action
`
`is insufficient. Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007); see also Ass’n of
`
`Cleveland Fire Fighters v. City of Cleveland, 502 F.3d 545, 548 (6th Cir. 2007). “[F]actual
`
`allegations must be enough to raise a right to relief above the speculative level.” Twombly, 550
`
`U.S. at 555.
`
`1. The Complaint Itself Fails to Show that FourKites Is Entitled to Relief
`
`The Complaint filed by FourKites includes a number of misstatements. Other allegations
`
`describe actions that MacroPoint is legally entitled to take. Most notably, however, are the failures
`
`to allege any facts that show that FourKites is a proper party to bring declaratory judgment claims
`
`involving MacroPoint’s patents.
`
`A motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(1) challenges the
`
`court’s subject matter jurisdiction. Under Sixth Circuit law, Rule 12(b)(1) motions generally fall
`
`into two categories: facial attacks and factual attacks. Fed. R. Civ. P. 12(b)(1); United States v.
`
`Ritchie, 15 F.3d 592, 598 (6th Cir. 1994). A facial attack challenges the pleading itself. RMI
`
`Titanium Co. v. Westinghouse Elec. Corp., 78 F.3d 1125, 1134-35 (6th Cir. 1996). On such an
`
`attack, the Court must take all material allegations in the complaint as true, and construe them in the
`
`light most favorable to the nonmoving party. RMI, 78 F.3d at 1134.
`
`a. Allegations Regarding Other Patents Fail to Show Standing For the Current Patents
`
`
`
`9
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 10 of 27. PageID #: 448
`
`
`
`In a prior lawsuit against FourKites, this Court invalidated several of MacroPoint’s patents on
`
`the basis that the claims of those patents are not directed at patentable subject matter.3 FourKites
`
`now attempts to characterize this as a ruling that the invention itself is not patentable, as opposed to
`
`a ruling that the claims of the patents suffered from a legal defect. [ECF Doc. 3, ¶ 2]. Such a
`
`characterization is not sufficient to demonstrate that FourKites has standing to sue in this action.
`
`Under the patent statute, validity of each claim must be considered separately. 35 U.S.C. §
`
`282; see 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1368 (Fed. Cir. 2008). “[A] party may
`
`not avoid its burden of proof by making a blanket statement that its proofs with respect to one
`
`patent apply to another and not provide a formal analysis as to why that is true.” Enzo Biochem,
`
`Inc. v. Calgene, Inc., 188 F.3d 1362, 1379 (Fed. Cir. 1999). Allegations that MacroPoint’s newest
`
`patent is “directed to the same unpatentable concepts that this Court previously held invalid” are
`
`clearly wrong. [See ECF Doc. 3, ¶ 3]. Even if correct, the fact that MacroPoint obtained another
`
`patent directed to the same invention as previous patents does nothing to demonstrate that FourKites
`
`has standing to bring any declaratory judgment claim involving the ‘659 Patent. “While evidence
`
`of invalidity regarding the claims of one patent may certainly apply to those of another, a party may
`
`not avoid its burden of proof by making a blanket statement that its proofs with respect to one
`
`patent apply to another and not provide a formal analysis as to why that is true.” Enzo Biochem,
`
`188 F.3d at 1379.
`
`b. MacroPoint Is Entitled to Seek New Patents
`
`MacroPoint’s ability to obtain patents is a right granted by the Patent Act. “Whoever
`
`invents or discovers any new and useful process, machine, manufacture, or composition of
`
`matter … may obtain a patent therefor ….” 35 U.S.C. § 101. In its Complaint, FourKites alleges
`
`that MacroPoint sought and obtained a new patent for its invention. [ECF Doc. 3, ¶¶ 16 – 24].
`
`3 That opinion was upheld by the Court of Appeals for the Federal Circuit, but is not yet final because the time to pursue further
`appellate review has not yet passed.
`
`
`
`10
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 11 of 27. PageID #: 449
`
`
`
`Although certain events in the process are described in more detail, the sum total of these
`
`allegations is nothing more than a description of how MacroPoint exercised a right granted to it by
`
`statute. [See id.]. MacroPoint’s exercise of its legal right to obtain the ‘659 Patent is protected
`
`conduct that cannot provide FourKites with standing to sue regarding that patent. The same holds
`
`true for the ‘358 Patent. If anything, there is much less of a basis for standing to sue regarding the
`
`‘358 Patent because its prosecution history is not described anywhere in the Complaint.
`
`c. MacroPoint is Entitled to Publicize Its Patent Rights
`
`FourKites alleged that MacroPoint communicated information regarding its patent rights to
`
`third parties in the marketplace and that MacroPoint sent a letter to a potential customer of
`
`FourKites, informing it of MacroPoint’s patent rights and efforts to enforce those rights. [Id. at ¶
`
`25]. FourKites also alleged that MacroPoint published press releases and engaged in other acts of
`
`publicity, including publication of an “Intellectual Property Notice.” [Id. at ¶¶ 26 – 31]. As with its
`
`efforts to obtain patents, these are actions that MacroPoint is legally entitled to take.
`
`
`
`Although FourKites attempts to characterize these communications in the marketplace as
`
`improper, they are in fact protected and privileged. Communications to possible infringers
`
`concerning patent rights are not improper if the patentee has a good faith belief in the accuracy of
`
`the communication. Zenith Elecs. Corp. v. Exzec, Inc., 182 F.3d 1340, 1352-53 (Fed. Cir. 1999)
`
`(quoting Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 869, 45 U.S.P.Q.2D (BNA) 1225,
`
`1232 (Fed. Cir. 1997)). "[A] patentee must be allowed to make its rights known to a potential
`
`infringer so that the latter can determine whether to cease its allegedly infringing activities,
`
`negotiate a license if one is offered, or decide to run the risk of liability and/or the imposition of an
`
`injunction." Id. (citation omitted). “Patents would be of little value if infringers of them could not
`
`be notified of the consequences of infringement, or proceeded against in the courts. Such action,
`
`considered by itself, cannot be said to be illegal.” Globetrotter Software, Inc. v. Elan Computer
`
`
`
`11
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 12 of 27. PageID #: 450
`
`
`
`Grp., Inc., 362 F.3d 1367, 1374-75 (Fed. Cir. 2004) (quoting Virtue v. Creamery Package Mfg. Co.,
`
`227 U.S. 8, 37-38 (1913)). FourKites cannot be said to have standing to sue if such standing is
`
`based on a series of communications that MacroPoint is legally entitled to make.
`
`2. The Facts Alleged Fail to Show that FourKites Has Standing to Sue
`
`In contrast to a facial attack on a Complaint, a factual attack is a challenge to the factual
`
`existence of subject matter jurisdiction. RMI, 78 F.3d at 1135. The Court’s inquiry is limited to
`
`determining whether the challenged pleadings set forth allegations sufficient to show the Court that
`
`it has jurisdiction over the subject matter; “no presumptive truthfulness applies to the factual
`
`allegations, and the court is free to weigh the evidence and satisfy itself as to the existence of its
`
`power to hear the case.” Id. In response to a such a factual challenge, the plaintiff “bears the
`
`burden of demonstrating standing and must plead its components with specificity.” In re
`
`Foreclosure Cases, 2007 U.S. Dist. LEXIS 84011, *2 (N.D. Ohio Oct. 31, 2007) (Boyko, J.)
`
`(quoting Coyne v. American Tobacco Company, 183 F. 3d 488, 494 (6th Cir. 1999)); see Twombly,
`
`550 U.S. 544; Iqbal, 556 U.S. 662.
`
`Although FourKites alleged a number of actions performed by MacroPoint, none of those
`
`actions is alleged to have caused a legally cognizable injury to FourKites that can be redressed by
`
`this Court. FourKites generally alleged that MacroPoint engaged in an “improper course of
`
`conduct.” [ECF Doc. 3 ¶ 4]. As argued above, MacroPoint’s conduct is not improper, but rather it
`
`is privileged and specifically authorized by statute.
`
`MacroPoint’s acts to obtain a patent cannot be said to have caused a redressable harm to
`
`FourKites. The same is true for MacroPoint’s marketing efforts that publicized MacroPoint’s patent
`
`rights and enforcement efforts in the courts. At best and when interpreted in the light most
`
`favorable to FourKites, the allegation sin the Complaint do not show beyond a speculative level that
`
`
`
`12
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 13 of 27. PageID #: 451
`
`
`
`FourKites has a right to any relief. Therefore, FourKites lacks standing to sue on any claim related
`
`to the two patents-in-suit.
`
`B. FourKites Failed to Plead a Case of Actual Controversy Under the Declaratory Judgment
`Act
`
`A “case of actual controversy” must exist for a party to have standing to bring a declaratory
`
`judgment action. 28 U.S.C. § 2201(a). In order to establish a controversy for the purposes of
`
`declaratory judgments, the facts must show a “definite and concrete” dispute, “touching the legal
`
`relations of parties having adverse legal interests." MedImmune, Inc. v. Genentech, Inc., 549 U.S.
`
`118, 127 (2007). Importantly, in patent cases, “MedImmune does not stand for the proposition that
`
`an Article III case or controversy exists automatically whenever a competitor desires to mount a
`
`validity challenge” against a competitor’s patents. Streck, Inc. v. Research & Diagnostic Sys., 665
`
`F.3d 1269, 1284 (Fed.Cir. 2012) (finding the court lacked declaratory judgment jurisdiction over
`
`unasserted claims of the patents at issue).
`
`FourKites omits from its Complaint sufficient facts to show that there is a case of actual
`
`controversy between it and MacroPoint with respect to the two patents in suit. The Complaint does
`
`not allege that MacroPoint has asserted any claims against or sought any relief from FourKites for
`
`infringement of any claim of either of the patents. Any alleged threats or harms to business
`
`interests of FourKites are attributable not to wrongful acts of MacroPoint, but to actions that
`
`MacroPoint is legally entitled to take. These are not cognizable injuries for the Court to redress but
`
`rather the result of competition in the marketplace when patent rights are involved.
`
`A case of actual controversy does not exist between a patent owner and its competitor
`
`merely because the patent owner sued the competitor’s customer for patent infringement. See Intel
`
`Corp. v. Future Link Sys., LLC, 2015 U.S. Dist. LEXIS 17176 (D. Del. Feb. 12, 2015) (citing Arris
`
`Group, Inc. v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011) and Microsoft
`
`Corp. v. DataTern, Inc., 755 F.3d 899 (Fed. Cir. 2014)). For FourKites to have standing for its
`13
`
`
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 14 of 27. PageID #: 452
`
`
`
`declaratory judgment claims, MacroPoint’s suit against Ruiz Foods must imply that FourKites is
`
`directly infringing the Patents. Id. at *29. Nothing in the Complaint in this Court alleges that
`
`MacroPoint’s claims in the Texas Litigation include any reference to FourKites.
`
`"Allegations of a subjective chill are not an adequate substitute for a claim of specific
`
`present objective harm or a threat of specific future harm.” Laird v. Tatum, 408 U.S. 1, 13-14
`
`(1972)(internal quotations omitted). Thus, FourKites has not been threatened with any imminent
`
`injury in fact that is fairly traceable to MacroPoint. Because there is neither a concrete dispute
`
`between the parties nor a cognizable injury, FourKites lacks standing to sue for any claim related to
`
`the patents in this suit.
`
`C. FourKites Failed to Plead a Justiciable Case or Controversy Under Article III
`
`An action may not proceed in the absence of a real, justiciable controversy between the
`
`parties. This requirement is a basic tenet of a trial court’s subject matter jurisdiction. Article III, §
`
`2 of the United States Constitution confines the jurisdiction of federal courts to adjudication of
`
`actual “cases” and “controversies.” See Allen, 468 U.S. at 750. The arguments presented above
`
`with respect to the lack of a case of actual controversy under the Declaratory Judgment Act apply
`
`equally with respect to standing under Article III of the Constitution.
`
`To satisfy the "case or controversy" requirement of the Constitution, a complaint must
`
`describe some actual or threatened injury to the complainant, must allege a causal connection
`
`between that injury and the defendant's putatively illegal conduct, and must advance some legally
`
`cognizable claim for redress. Cnty. of Oakland v. Detroit, 866 F.2d 839, 845 (6th Cir. 1989). The
`
`allegations in the Complaint fail to describe any actual or threatened injury. No allegation
`
`sufficiently sets out a causal connection between any actual or threatened injury and any putatively
`
`illegal conduct. Additionally, there is no legally cognizable claim for redress. Without these
`
`showings, FourKites has failed to show it is entitled to bring this suit. Because FourKites lacks
`
`
`
`14
`
`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1025
`
`

`

`Case: 1:16-cv-02703-CAB Doc #: 13-1 Filed: 01/04/17 15 of 27. PageID #: 453
`
`
`
`standing, this Court has no subject matter jurisdiction over the declaratory judgment claims and
`
`should dismiss them. B. & V. Distributing Co., Inc., v. Dottore Cos., LLC, No. 1: 05-cv-2900, 2006
`
`U.S. Dist. LEXIS 23410, at *6 (N.D. Ohio Apr. 26, 2006) ("Where the Article III standing
`
`requirement is not satisfied, the Court lacks subject matter jurisdiction over the case") (citing TCG
`
`Detroit v. City of Dearborn, 206 F.3d 618, 622 (6th Cir. 2000)).
`
`D. FourKites Failed to State Claims for False Advertising and False Affiliation
`
`To be liable under Section 43(a) of the Lanham Act, a person must use in commerce any
`
`word, false designation of origin, false or misleading description, or representation of fact, which
`
`misrepresents the nature, characteristics, qualities, or geographic origin of his goods or services in
`
`commercial advertising. 15 U.S.C. § 1125(a)(1)(B). FourKites alleged that an Intellectual Property
`
`Notice published by MacroPoint created false impressions about MacroPoint’s patents. [ECF Doc.
`
`3, ¶¶ 28 – 32]. However, the “Intellectual Property Notice” is neither false nor misleading. At the
`
`time that MacroPoint published the notice, its appeal was pending in the Federal Circuit. The
`
`statement that “MacroPoint is currently pursuing federal litigation against FourKites in the court of
`
`appeals for the federal circuit” was true when MacroPoint made it, and it remains true now since the
`
`time to request an en banc review of the Federal Circuit’s decision has not elapsed. “Upon the
`
`Federal Circuit ag