`571.272.7822
`
`
`
`
`
`Paper No. 26
`Filed: May 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUIZ FOOD PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`____________
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`____________
`
`Before MEREDITH C. PETRAVICK, TREVOR M. JEFFERSON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`ENGELS, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`
`
`In a Decision (Paper 251) granting Patent Owner’s Motion to Dismiss
`(Paper 18) and terminating the proceedings, the Board determined that the
`Petitions were untimely under 35 U.S.C. § 315(a)(1) and that the Board
`therefore lacked jurisdiction over the proceedings. More specifically, the
`Board determined that a complaint for declaratory judgment filed before the
`Petitions triggered the time bar of § 315(a)(1) even though the complaint
`was dismissed without prejudice after its filing. Decision at 2–3.
`Petitioner filed a Request for Rehearing of our Decision. Paper 26. In
`the Request, Petitioner argues the Board (i) “ignored the background legal
`principle at issue—the effect of a dismissal without prejudice” (id. at 1; see
`id. at 2–7) and (ii) “failed to determine whether the district court declaratory
`judgment action was a ‘civil action’ under [§ 315(a)(1)]” (id. at 1; id. at 7–
`12).
`
`Contrary to Petitioner’s arguments regarding the purported
`background legal principle (id. at 2–7), the Decision considers the principle
`but follows the Federal Circuit’s guidance that the principle is not “firmly
`established and unequivocal” and therefore cannot justify applying an
`exception to the unambiguous language of § 315(a)(1). Decision 9–10
`(citing Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1335 (Fed.
`Cir. 2018) (explaining that a “background legal principle” must be both
`“firmly established and unequivocal before it can justify ignoring the plain
`text of the statute”; holding that the principle that “a dismissal without
`prejudice leaves the parties as if the underlying complaint had never been
`filed” is “anything but unequivocal”)).
`
`
`1 We refer to the papers in IPR2017-02016 as representative, unless
`otherwise noted.
`
`
`
`2
`
`
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`
`
`Regarding whether the declaratory-judgment action qualifies as a
`“civil action” under § 315(a)(1), Petitioner argues for the first time in its
`Request for Rehearing that “its certification that the declaratory judgment
`action was not a bar was entitled to a presumption of being correct.”
`Request at 7–8 (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1241–44
`(Fed. Cir. 2018)). Even if that argument were timely, which it is not, the
`Petition itself reflects why that argument fails; Petitioner’s “certification”
`was premised on “the dismissal without prejudice . . . of the declaratory
`judgment action” and case law that no longer applies under Click-to-Call.
`See Pet. 6–7 (citing, e.g., Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir.
`2002) and Oracle Corp. v. Click-to-Call Tech. LP, Case IPR2013-00312,
`Paper 26 at 17 (PTAB Oct. 30, 2013)). Further, Petitioner stopped short of
`arguing that subject-matter jurisdiction did not exist; Petitioner instead
`argued that “had [Patent Owner’s district-court motion to dismiss] been
`granted, § 315(a)(1) would not apply” and “the Board should take [Patent
`Owner] at its word when it filed its motion to dismiss, and hold that the
`countersuit was never a ‘civil action’ under § 315(a)(1).” Paper 20 at 13–14.
`As explained in the Decision, nothing on the record before us indicates that
`the declaratory-judgment action was defective for lack of subject-matter
`jurisdiction.
`Accordingly, because Petitioner has not persuasively identified any
`matters that the Board misapprehended or overlooked (37 CFR § 42.71(d)),
`Petitioner’s Request for Rehearing is denied.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`3
`
`
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`
`For PETITIONER:
`
`James P. Murphy
`Matthew Frontz
`Ryan Murphy
`POLSINELLI PC
`jmurphy@polsinelli.com
`mfrontz@polsinelli.com
`rmurphy@polsinelli.com
`
`For PATENT OWNER:
`Mark C. Johnson
`Luis A. Carrion
`Kyle Fleming
`RENNER OTTO
`mjohnson@rennerotto.com
`lcarrion@rennerotto.com
`kfleming@rennerotto.com
`
`
`
`4
`
`
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