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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`RUIZ FOOD PRODUCTS INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`
`________________________________
`
`IPR2017-02018
`
`Patent 9,429,659 B1
`
`
`________________________________
`
`PETITIONER’S OPPOSITION TO MOTION TO DISMISS
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`BACKGROUND ............................................................................................. 2
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`A. MacroPoint Sued FourKites in Ohio and Lost ...................................... 2
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`B. MacroPoint then Sued FourKites’ Customer in East Texas ................. 3
`
`C.
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`FourKites Countersued MacroPoint in Ohio......................................... 3
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`D. MacroPoint Moved to Dismiss the Countersuit as Non-
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`Justiciable and Argued It Should Be Stayed As A Second-Filed
`
`Case ....................................................................................................... 4
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`The Countersuit Was Dismissed Without Prejudice ............................. 4
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`Ruiz Filed These Petitions Without Objection from MacroPoint ......... 4
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`E.
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`F.
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`III. ARGUMENT ................................................................................................... 5
`
`A.
`
`Click-to-Call Did Not Overrule Existing § 315(a) Precedent ............... 5
`
`1.
`
`2.
`
`Click-to-Call Turned on the Specific Language of §
`315(b) .......................................................................................... 5
`
`The “Dismissal Without Prejudice” Legal Principle May
`Not Have Applied to § 315(b), But It Applies to § 315(a) ......... 7
`
`B.
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`Section 315(a)(1) Does Not Bar Institution in These
`
`Circumstances ....................................................................................... 9
`
`1.
`
`2.
`
`3.
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`Chevron Analysis Is Not Appropriate Before This Body ........... 9
`
`Dismissal Without Prejudice Renders the FourKites
`Action As If It Had Never Been Filed ......................................10
`
`According to MacroPoint, FourKites Never Brought a
`Justiciable Civil Action .............................................................12
`
`C.
`
`The FourKites Action Was a Counterclaim Under § 315(a)(3) .......... 13
`
`
`
`
`ii
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`
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`D. MacroPoint Waived Its Objections to Institution ............................... 14
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`IV. CONCLUSION .............................................................................................. 15
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`iii
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`
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`LIST OF ADDED EXHIBITS
`
`
`1024
`
`1025
`
`1026
`
`
`Complaint and Attached Exhibits, FourKites, Inc. v. MacroPoint,
`LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio)
`Defendant MacroPoint LLC’s Motion to Dismiss or, in the
`Alternative, to Stay, FourKites, Inc. v. MacroPoint, LLC, Case No.
`1:16-cv-02703-CAB (N.D. Ohio)
`Reply in Support of Defendant MacroPoint LLC’s Motion to Dismiss
`or, in the Alternative, to Stay, FourKites, Inc. v. MacroPoint, LLC,
`Case No. 1:16-cv-02703-CAB (N.D. Ohio)
`
`1027
`
`Notice of Dismissal without Prejudice
`
`1028
`
`Black’s Law Dictionary, 353 (7th ed. 1999)
`
`iv
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`
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`I.
`
`INTRODUCTION
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`The Board should deny MacroPoint’s motions to dismiss these proceedings
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`because controlling precedent holds that dismissal without prejudice renders an
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`action as if it had never been filed for purposes of § 315(a)(1). The authority on
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`which MacroPoint relies, the Federal Circuit’s decision in Click-to-Call, was
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`strictly and purposely limited to § 315(b). The Court could have interpreted § 315
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`as a whole, but it specifically chose to limit its decision to § 315(b). This
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`interpretation was proper because the subsections use different terms and have
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`different and distinct legal effects. Section 315(b) focuses on “service” and has a
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`clock-starting effect, whereas § 315(a) merely refers to “filing” and has a
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`preclusive effect. The background legal principle that the Court refused to apply to
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`§ 315(b) is applicable to § 315(a). Therefore, Click-to-Call should not be
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`improperly extended to § 315(a), and the Board should not overrule its own prior
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`decisions. If MacroPoint wants to change the well-established law of § 315(a), it
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`can seek to appeal to the Federal Circuit after the Board’s final written decision.
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`Alternatively, the Board should find that the FourKites countersuit was not a
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`“civil action” for purposes of the statute. MacroPoint moved to dismiss FourKites’
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`declaratory judgment claims, which were a direct response to MacroPoint’s suit
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`against Ruiz, as not directed to an Article III case or controversy. Taking
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`MacroPoint at its allegation there, claims that could not pass Article III muster
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`1
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`
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`cannot constitute a “civil action” for purposes of § 315(a)(1). Moreover, the
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`FourKites case did not constitute a “civil action” for purposes of § 315(a)(1)
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`because it was a countersuit brought in direct response to MacroPoint’s
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`infringement claims. See 35 U.S.C. § 315(a)(3).
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`Finally, MacroPoint’s motions should be denied because, unlike the patent
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`owner in Click-to-Call, it repeatedly waived its objections to the institution of these
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`proceedings. Only now, after Ruiz filed its replies, and the Board and the parties
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`have expended substantial resources, has MacroPoint first raised a challenge under
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`§ 315(a)(1). MacroPoint’s objection is untimely. At this stage, the institution
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`decisions are final, and the Board is statutorily obligated to proceed to final written
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`decisions. For all these reasons, MacroPoint’s motions should be denied.
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`II. BACKGROUND
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`A. MacroPoint Sued FourKites in Ohio and Lost
`
`These proceedings are part of a long-running dispute between Patent Owner
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`MacroPoint, LLC and FourKites, Inc., a real-party-in-interest with Petitioner Ruiz
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`Food Products, Inc. In May 2015, MacroPoint sued FourKites in the Northern
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`District of Ohio—where MacroPoint is located—for infringement of five of its
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`patents. See MacroPoint, LLC v. FourKites, Inc., Case No. 15-cv-1002 (N.D.
`
`Ohio). The district court in that case held all the claims of all the patents invalid
`
`under § 101, a decision that was summarily affirmed by the Federal Circuit. See
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`
`
`2
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`
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`
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`MacroPoint, LLC v. FourKites, Inc., 671 Fed. App’x 780 (Fed. Cir. Dec. 8, 2016).
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`B. MacroPoint then Sued FourKites’ Customer in East Texas
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`Unhappy with its chosen forum in Ohio, MacroPoint sued Ruiz, which it
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`knew to be a FourKites customer, in the Eastern District of Texas for infringement
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`of the ’659 and ’358 patents. See MacroPoint, LLC v. Ruiz Food Products, Inc.,
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`Case No. 6:16-cv-1133 (E.D. Tex.). The suit was an effort to forum shop and avoid
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`the court that had just invalidated the bulk of its patent portfolio. Rather than suing
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`FourKites, which had no connections with East Texas, MacroPoint sued Ruiz, a
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`California company that happened to have a manufacturing facility in the district.
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`C.
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`FourKites Countersued MacroPoint in Ohio
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`On November 4, 2016—before Ruiz answered or otherwise pleaded in
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`response to MacroPoint’s complaint—FourKites countersued MacroPoint in the
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`Northern District of Ohio. See FourKites, Inc. v. MacroPoint, LLC, Case No. 16-
`
`cv-2703 (N.D. Ohio). FourKites sought, among other things, declaratory relief that
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`the ’659 and ’358 patents were not infringed, invalid, and unenforceable.
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`FourKites’ countersuit was explicitly in response to the suit against Ruiz.
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`See Ex. 1024 at ¶¶ 40–41 (alleging MacroPoint’s suit against Ruiz was “designed
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`to intimidate FourKites’ current and prospective customers and partners” and “to
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`avoid this Court’s prior judgment” that MacroPoint’s patents were invalid under §
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`101); see also id. at ¶¶ 44–46 (specifically noting MacroPoint’s claims against
`
`
`
`3
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`
`
`
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`Ruiz as the basis for declaratory judgment); see also id. at ¶¶ 63, 80 (alleging
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`patent misuse based on assertions against Ruiz).
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`D. MacroPoint Moved to Dismiss the Countersuit as Non-Justiciable
`and Argued It Should Be Stayed As A Second-Filed Case
`
`On January 4, 2017, MacroPoint moved to dismiss the countersuit on the
`
`grounds that FourKites lacked Article III standing to bring declaratory judgment
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`claims and that it failed to plead a real, justiciable case or controversy. See Ex.
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`1025 at 6–10, 13–15; see also Ex. 1026 at 3–11. MacroPoint argued in the
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`alternative that the countersuit “create[d] the real risk of duplicative litigation” and
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`that its allegations “substantially overlap with the issues raised in the Texas
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`Litigation.” See Ex. 1025 at 22–23; see also Ex. 1026 at 17–20. That is,
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`MacroPoint recognized the Ohio countersuit as a response to its suit against Ruiz
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`and argued that all claims should be heard in Texas under the first-to-file rule.
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`E.
`
`The Countersuit Was Dismissed Without Prejudice
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`The parties filed motions in each court arguing over where the dispute
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`should proceed. Ultimately, given changes in venue law and the cases’ relative
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`progress, the countersuit was dismissed without prejudice. See Ex. 1027.
`
`F. Ruiz Filed These Petitions Without Objection from MacroPoint
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`Two months after the countersuit was dismissed without prejudice, Ruiz
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`filed petitions for inter partes review of the ’659 and ’358 patents. In its petitions,
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`Ruiz noted that the ’659 and ’358 patents were previously the subject of the
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`
`
`4
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`
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`FourKites countersuit, but noted that the case had “been terminated following the
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`dismissal of the complaint without prejudice.” In its certification of grounds for
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`standing, Ruiz stated the voluntary dismissal of the FourKites countersuit rendered
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`it as though it had never existed, and accordingly it could not act as a bar. Nowhere
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`in its Preliminary Responses or Responses did MacroPoint contest this point. Not
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`until September 2018, nearly a month after Click-to-Call was decided and after
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`Ruiz had filed its Replies, did MacroPoint first raise a question as to whether the
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`FourKites countersuit barred institution.
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`III. ARGUMENT
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`A. Click-to-Call Did Not Overrule Existing § 315(a) Precedent
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`MacroPoint argues that the proceedings are barred by 35 U.S.C. § 315(a)(1)
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`and should be dismissed in view of the Federal Circuit’s decision in Click-to-Call
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`Tech, LP. v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). That case, however,
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`specifically concerned § 315(b). If the Federal Circuit intended to interpret § 315
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`as a whole, or to overrule the Board’s interpretation of § 315(a), it could have done
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`so. But it did not, instead expressly and purposely limiting its holding to § 315(b).
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`Click-to-Call is not controlling and should not be extended to § 315(a).
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`1.
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`Click-to-Call Turned on the Specific Language of § 315(b)
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`In Click-to-Call, the Federal Circuit was not announcing a broad new
`
`principle to be applied generally in different circumstances. To the contrary, the en
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`5
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`
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`banc Court carefully defined the specific issue before it:
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`The en banc court . . . considered whether 35 U.S.C. § 315(b)’s time
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`bar applies to bar institution when an IPR petitioner was served with
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`a complaint for patent infringement more than one year before filing
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`its petition, but the district court action in which the petitioner was so
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`served was voluntarily dismissed without prejudice. The en banc court
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`holds that § 315(b)’s time bar applies in such a scenario.
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`899 F.3d at 1328, n.3 (emphasis added).
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`Throughout its Chevron analysis, the Federal Circuit focused extensively on
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`the phrase “served with a complaint.” Id. at 1330–31. It relied on “[t]he ‘ordinary,
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`contemporary, common meaning[s]’ of
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`the operative
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`terms ‘served’ and
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`‘complaint’” to defend its conclusion that “§ 315(b)’s time bar is implicated once a
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`party receives notice through official delivery of a complaint in a civil action,
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`irrespective of subsequent events.” Id. at 1330. The Court distinguished the
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`Board’s reliance on Bonneville and Graves, noting that “[t]hese cases do not delve
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`into the meaning of the terms ‘serve’ or ‘complaint.’” Id. at 1335; see also id. at
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`1333 (characterizing Bonneville and Graves as “shed[ding] no light on ‘whether
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`service of a complaint can be nullified.’” (emphasis original) (quoting Shaw Indus.
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`Group, Inc. v. Automated Creel Syst., Inc., 817 F.3d 1293, 1301 (Fed. Cir. 2016)).
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`In contrast, the application of § 315(a) does not depend on “service” of a
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`complaint. Instead, it focuses on “filing”: “An inter partes review may not be
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`
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`6
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`
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`instituted if, before the date on which the petition for such a review is filed, the
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`petitioner or real party in interest filed a civil action challenging the validity of a
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`claim of the patent.” 35 U.S.C. § 315(a)(1) (emphasis added). Thus, on its face,
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`Click-to-Call is not controlling of the Board’s interpretation of § 315(a).
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`2.
`
`The “Dismissal Without Prejudice” Legal Principle May
`Not Have Applied to § 315(b), But It Applies to § 315(a)
`
`MacroPoint argues that “§ 315(a)(1) is identical to § 315(b),” but that is not
`
`correct. The two subsections are not identically worded, and they have different
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`legal effects. Section 315(b) is akin to a statute of limitations—it starts a period
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`during which an accused infringer must seek inter partes review to prevent
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`potential prejudice to a patent owner that might arise if later petitions were
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`permitted. Click-to-Call, 899 F.3d at 1335; see also id. at 1344–47 (Taranto, C.J.,
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`concurring) (discussing § 315(b)’s “clock-starting” legal effect). Section 315(a), in
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`contrast, has a “preclusive” legal effect. It is intended to make a petitioner choose
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`between challenging a patent before the Board or in district court. If a petitioner
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`seeks one, it is precluded from simultaneously also pursuing relief in the other.
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`In Click-to-Call—as it and other appellate courts have in other cases—the
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`Federal Circuit recognized a “background legal principle” that dismissal of an
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`action without prejudice leaves the action as if it had never been filed for at least
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`some purposes. See Click-to-Call, 899 F.3d at 1334–36; see also id. at 1345–46
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`(Taranto, C.J., concurring op., collecting cases) and at 1351–52 (Dyk, Lourie, C.J.,
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`
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`7
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`
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`
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`dissenting op., collecting cases). The question in Click-to-Call, though, was
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`whether the “clock-starting” legal effect of § 315(b) was one of those purposes,
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`and the Court held that it was not. Id. at 1335; see also id. at 1345 (Taranto, C.J.,
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`concurring) (“the main line of authority invoking the ‘as if never brought’ rationale
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`does not apply to the circumstances addressed by § 315(b)”).
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`The preclusive legal effect of § 315(a), however, is the kind of circumstance
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`to which this background legal principle applies. See, e.g., id. at 1345–46 (Taranto,
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`C.J., concurring) (recognizing the application of the background legal principle to
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`preclusive legal effect “as indicated by the ‘without prejudice’ language,
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`invocation of issue or claim preclusion is generally not available based on the
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`action that was voluntarily dismissed without prejudice” and collecting cases at
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`footnote 3); see also Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1364 (Fed.
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`Cir. 2000) (“Dismissal without prejudice indicates that judgment is not on the
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`merits and will have no preclusive effect.”).
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`As the Board has recognized, a petitioner can elect to “unmake” that choice.
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`See Clio USA, Inc. v. The Procter and Gamble Co., IPR2013-00438, Paper 9 at 8
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`(P.T.A.B. Jan, 9, 2014) (“[W]hen a court permits the challenger to dismiss the
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`declaratory judgment action voluntarily and without prejudice, the petitioner
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`effectively unmakes that choice, because the action is considered never to have
`
`existed”). As Judge Taranto noted, “the point of a dismissal ‘without prejudice’ is
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`
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`8
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`
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`to preserve, rather than eliminate, the ability of the plaintiff to sue the defendant
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`again on the same claim,” Click-to-Call, 899 F.3d at 1348 (Taranto, C.J.,
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`concurring). So, too, dismissal without prejudice of a claim challenging a patent
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`preserves, and does not eliminate, the ability of an accused infringer to challenge a
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`patent before the Board rather than in court.
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`Therefore, the reasoning of Click-to-Call cannot properly be extended from
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`§ 315(b) to § 315(a)(1). The Board’s existing interpretation of the effect of a
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`dismissal without prejudice on the application of § 315(a)(1) should remain.
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`B.
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`Section 315(a)(1) Does Not Bar Institution in These Circumstances
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`1.
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`Chevron Analysis Is Not Appropriate Before This Body
`
`MacroPoint argues that “a Chevron analysis of 35 U.S.C. § 315(a)(1)
`
`precludes the creation of any exception to the statutory bar.” Chevron, however, is
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`a framework for reviewing courts to assess an agency’s statutory interpretation by
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`(1) determining if the plain language and purpose of the statute demonstrates
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`Congress’ clear and unambiguous intent; and if not then by (2) determining if an
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`agency’s interpretation is arbitrary, capricious or manifestly contrary to the
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`statute’s purpose. See Sebelius v. Auburn Reg'l Med. Ctr., 568 U.S. 145, 157
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`(2013). The question at this time is the statutory construction of § 315(a), an issue
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`MacroPoint largely ignores beyond arguing that Click-to-Call applies to § 315 as a
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`whole. As discussed above, the Court intentionally stopped well short of that.
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`
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`9
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`
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`MacroPoint also incorrectly suggests that the Federal Circuit “continued to
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`step two” of Chevron and rejected the Board’s interpretation under that standard as
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`well. In fact, the Court never reached Chevron step two. Rather, it held that
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`“[a]ssuming arguendo that the phrase is ambiguous, none of the authorities on
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`which the Board relied help resolve this ambiguity because they each concern
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`fundamentally different contexts, and consequently shed no light on whether
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`service of a complaint can be nullified.” Id. at 1333 (emphasis original). Thus, far
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`from striking down the Board’s interpretation as arbitrary or capricious or
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`manifestly against the statutory purpose, the Court explained only why Graves and
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`Bonneville did not apply to the question of service posed by § 315(b).
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`2.
`
`Dismissal Without Prejudice Renders the FourKites Action
`As If It Had Never Been Filed
`
`The Board’s prior decisions correctly interpret § 315(a)(1). See, e.g., Resmed
`
`Ltd. v. Fisher & Paykel Healthcare Ltd., IPR2016-01714, Paper 12 (P.T.A.B. Mar.
`
`10, 2017). As the Supreme Court has recognized, “where a common-law principle
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`is well established,” like here, “the courts may take it as a given that Congress has
`
`legislated with an expectation that the principle will apply.” Astoria Fed. Sav. &
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`Loan Ass’n v. Solimino, 501 U.S. 104, 108 (1991) (emphasis added); see also
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`Raney v. Fed. Bureau of Prisons, 222 F.3d 927, 932 (Fed. Cir. 2000) (“Congress is
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`presumed to enact legislation with knowledge of the law and a newly-enacted
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`statute is presumed to be harmonious with existing law and judicial concepts.”).
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`
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`10
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`“The normal rule of statutory construction is that if Congress intends for legislation
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`to change the interpretation of a judicially created concept, it makes that intent
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`specific.” Midlantic Nat. Bank v. N.J. Dep’t of Environ. Prot., 474 U.S. 494, 501
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`(1986) (emphasis added).
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`The Board has repeatedly—and correctly—recognized that § 315(a)(1) must
`
`be interpreted in the context of the background legal principle that dismissal
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`without prejudice renders an action as if never “filed.” At the time § 315(a)(1) was
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`enacted, every U.S. Court of Appeals that had addressed the issue had recognized
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`and adopted this principle. See 9 Wright, Miller, et al., FEDERAL PRAC. AND
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`PROC. CIV. § 2367, 559 (3d ed.).
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`To interpret § 315(a)(1) in a way that changes this widely adopted judicial
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`concept, requires Congress to indicate a specific intent to do so. Yet, as the Board
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`has correctly concluded, “[n]othing in the legislative history . . . indicates any
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`intent on the part of Congress to set aside long-established case law holding that, in
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`most cases, dismissals without prejudice leave the parties as though the action had
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`never been filed.” Gordon * Howard Assoc. v. Lunareye, Inc., IPR2014-01213,
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`Paper 11 at 11 (P.T.A.B. Feb. 3, 2015).
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`The Board has also correctly recognized that §315(a)(1)’s purpose is to
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`provide an accused infringer a choice of forum (district court or Board) to
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`challenge the validity of a patent while preventing it from seeking relief in both
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`
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`11
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`
`
`
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`simultaneously. Cyanotech Corp., IPR2013-00401, Paper 17, at 11; Cong. Rec.
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`S1034-S1051 (daily ed. Mar. 1, 2011) (statement of Sen. Kyl) (“The present bill …
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`bar[s] use of these proceedings if the challenger seeks a declaratory judgment that
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`a patent is valid.”) (emphasis added). It would be inconsistent with that purpose to
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`bar institution where an accused infringer no longer seeks review in a district court.
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`Therefore, as the Board has consistently and correctly held, § 315(a)(1) is
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`not triggered here because the countersuit was voluntarily dismissed without
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`prejudice. E.g., Tristar Prods., Inc. v. Choon’s Design, LLC, IPR2015-01883,
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`Paper 6 (P.T.A.B. Mar. 9, 2016); Emerson Elec. Co. v. Sipco, LLC, IPR2015-
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`01579, Paper 7 (P.T.A.B. Jan. 14, 2016).
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`3.
`
`According to MacroPoint, FourKites Never Brought a
`Justiciable Civil Action
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`MacroPoint’s actions before the district court illustrate why the Board’s
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`existing interpretation of § 315(a)(1) is correct and why the new interpretation that
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`MacroPoint is advocating would be flawed. After FourKites filed its countersuit,
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`MacroPoint moved to dismiss it on the grounds that there was not a sufficient case
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`or controversy under Article III. See Ex. 1025. FourKites dismissed the countersuit
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`before the court reached the merits of MacroPoint’s motion, but, had it been
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`granted, § 315(a)(1) would not apply under previous Board decisions.
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`In InVue, the petitioner filed a declaratory judgment action that was
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`dismissed without prejudice for lack of subject matter jurisdiction. InVue Security
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`12
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`
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`Products, Inc. v. Merchandising Techs., Inc., IPR2013-00122, Paper 17 at 9. The
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`Board noted that the outcome of the case—dismissed for lack of subject matter
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`jurisdiction—“indicates that the Court never had authority to hear the case.” Id.
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`(citing Gould, Inc. v. United States, 67 F.3d 925, 929 (Fed. Cir. 1995)). Applying
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`the background legal principle that dismissal without prejudice renders an action as
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`if never “filed,” the Board held that § 315(a)(1) was not triggered. Id.
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`To hold otherwise would lead to absurd results where accused infringers are
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`unable to seek relief either from district courts or from the Board. This potential
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`effect illustrates why MacroPoint’s interpretation cannot be correct. Without
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`jurisdiction there can be no “civil action.” At a minimum, the Board should take
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`MacroPoint at its word when it filed its motion to dismiss, and hold that the
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`countersuit was never a “civil action” under § 315(a)(1). Finally, the counterclaims
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`were also pleaded alternatively and could have been limited to patent eligibility
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`under § 101. E.g., Ex. 1024 at ¶ 58. Thus, § 315(a)(1) was not triggered because no
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`challenge to validity was ever elected.
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`C. The FourKites Action Was a Counterclaim Under § 315(a)(3)
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`Section 315(a)(1) does not preclude these proceedings because the only
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`challenges
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`to validity
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`in FourKites’ countersuit against MacroPoint are
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`counterclaims within the meaning of § 315(a)(3). Section 315(a)(3) provides that
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`“[a] counterclaim challenging the validity of a claim of a patent does not constitute
`
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`13
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`
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`a civil action challenging the validity of a claim of a patent for purposes of this
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`subsection.” FourKites’ countersuit was a direct response to MacroPoint’s suit
`
`against Ruiz. Thus, it would be considered a “counterclaim” under the common
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`legal definition of the word. See Ex. 1028, Black’s Law Dictionary, 353 (7th ed.
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`1999) (defining “counterclaim” as “[a] claim for relief asserted against an opposing
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`party after an original claim has been made”). Therefore, the countersuit should not
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`constitute a “civil action” for the purposes of § 315(a)(1).
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`Nothing in § 315 requires that a “counterclaim” be asserted in the same
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`proceeding as an allegation of infringement. Nor could such an interpretation be
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`correct as it would render § 315 internally inconsistent. See Dolan v. Postal
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`Service, 546 U. S. 481, 486 (2006) (statutory interpretation “depends upon reading
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`the whole statutory text, considering the purpose and context of the statute”).
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`Section 315(a)(1) makes clear that either the petitioner or the real party in interest
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`can file the “civil action.” Yet, a real party in interest could not readily avail
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`themselves of the protections of § 315(a)(3) under such an interpretation, which is
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`inconsistent with the purpose of the statutory provision and the legislative history.
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`D. MacroPoint Waived Its Objections to Institution
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`MacroPoint failed to preserve any objections to institution under § 315(a)(1).
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`MacroPoint was well aware of FourKites’ countersuit—indeed, Ruiz specifically
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`acknowledged it in its petitions. Yet, unlike the patent owner in Click-to-Call
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`14
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`MacroPoint did not object to institution under § 315(a)(1) in either its Preliminary
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`Responses or its Responses. Not until Ruiz filed and served its replies did
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`MacroPoint raise § 315(a)(1) for the first time. Ultimately, the applicability of §
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`315(a)(1) is a question of statutory construction that can be waived. Return Mail,
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`Inc. v. United States Postal Service, 868 F.3d 1350, 1365 (Fed. Cir. 2017).
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`Moreover, the Board’s decision to institute these proceedings were “final
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`and non-appealable.” 35 U.S.C. § 314(d). In declaring such decisions final, the
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`rules afford a single remedy for those who seek to challenge the Board’s institution
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`decisions—a request for rehearing to be filed within 14 days of the entry of the
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`“decision to institute a trial as to at least one ground of unpatentability asserted in
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`the petition,” pursuant to 37 C.F.R. § 42.71(d)(1). By failing to avail itself of the
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`exclusive available remedy of timely filing a rehearing request, MacroPoint waived
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`its right to challenge the Board’s “final and nonappealable” decision. See 35
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`U.S.C. § 314(d); 37 C.F.R. § 42.71(c). Once instituted, the Board “shall issue a
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`final written decision” under 35 U.S.C. § 318(a).
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`Accordingly, the Board should reject MacroPoint’s untimely arguments
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`regarding § 315(a)(1) and proceed to final written decisions in these proceedings.
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`IV. CONCLUSION
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`Ruiz respectfully requests the Board deny MacroPoint’s motions to dismiss.
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`15
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`Respectfully submitted,
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`/James P. Murphy/
`POLSINELLI PC
`James P. Murphy
`Reg. No. 55,474
`Matthew Frontz
`Reg. No. 65,198
`Ryan Murphy
`Reg. No. 66,285
`
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`
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`Date: October 10, 2018
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`POLSINELLI PC
`1000 Louisiana Street,
`Suite 6400
`Houston, Texas 77002
`P: 713-374-1600
`F: 713-374-1601
`
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`16
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the accompanying
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`
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`Petitioner’s Opposition to Motion to Dismiss and all associated exhibits, has been
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`served on October 10, 2018 via email directed to the following email addresses of
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`record::
`
`Mark Johnson
`mjohnson@rennerotto.com
`
`Luis Carrion
`lcarrion@rennerotto.com
`
`Kyle Fleming
`kfleming@rennerotto.com
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`
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`
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`
`/Sonia Ramirez/
`Sonia Ramirez
`POLSINELLI PC
`1000 Louisiana, Sixty-Fourth Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
`
`
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