`571-272-7822
`
` Date: September 25, 2018
`
`
`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.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`
`
`In a telephone conference between the parties and the Board on
`September 21, 2018, Patent Owner requested leave to file motions to dismiss
`these proceedings in light of Click-to-Call Techs., LP v. Ingenio, Inc., No.
`2015-01242 (Fed. Cir. Aug. 16, 2018) (en banc in relevant part) and relevant
`facts. Citing Petitioner’s identification of FourKites, Inc. as a real party in
`interest (IPR2017-02016 Paper 2, p. 3; IPR2017-02018, Paper 2, pp. 3–4)
`and a complaint for declaratory judgment of invalidity filed by FourKites,
`Inc., FourKites, Inc. v. MacroPoint, LLC, No. 1:16-cv-02703-CAB (N.D.
`Ohio), Patent Owner contends that the holding of Click-to-Call applies to the
`facts of these proceedings such that 35 U.S.C. § 315(a)(1) bars Petitioner
`from pursuing inter partes review of the challenged patents.
`Section 315(a)(1) states that “[a]n 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 the Petition, Petitioner contends that
`FourKites, Inc.’s declaratory-judgment complaint does not bar inter partes
`review because the complaint was dismissed without prejudice and dismissal
`without prejudice nullifies the effect of the service of the complaint.
`IPR2017-02016 Paper 2, 5–6 (citing Oral Corp. et al. v. Click-to-Call Tech.
`LP, IPR2013-00312, Paper 26, 17 (PTAB Oct. 30, 2013) (precedential)).
`The Federal Circuit’s decision in Click-to-Call addressed the time bar of 35
`U.S.C § 315(b) as it applies to service of a complaint for infringement that
`was subsequently dismissed without prejudice. In light of the Federal
`Circuit’s decision in Click-to-Call, additional briefing on whether the time
`bar of 35 U.S.C. § 315(a)(1) applies to these proceedings is warranted. See
`37 C.F.R. § 42.104(a).
`
`
`
`2
`
`
`
`IPR2017-02016 (Patent 8,275,358 B1)
`IPR2017-02018 (Patent 9,429,659 B1)
`
`It is:
`
`ORDERED that Patent Owner is authorized to file a motion to dismiss
`
`limited to addressing the time bar of 35 U.S.C. § 315(a) and limited to 15
`pages, no later than September 28, 2018;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`opposition to the motion to dismiss, limited to 15 pages, no later than
`October 10, 2018;
`FURTHER ORDERED that Patent Owner is authorized to file a reply,
`limited to 5 pages, no later than October 17, 2018; and
`FURTHER ORDERED that Patent Owner will file a transcript of the
`September 21, 2018 telephone conference as an exhibit in these proceedings.
`
`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
`RENNER OTTO
`mjohnson@rennerotto.com
`lcarrion@rennerotto.com
`
`
`
`
`3
`
`
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