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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
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`RUIZ FOOD PRODUCTS, INC.,
`
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`
`Patent Owner.
`
`__________
`
`Case IPR2017-02018
`U.S. Patent No. 9,429,659
`__________
`
`
`PATENT OWNER’S REPLY BRIEF
`IN SUPPORT OF MOTION TO DISMISS
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`UPDATED LIST OF EXHIBITS
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`
`
`2004
`
`2005
`
`Exhibit No. Description
`2001
`Expert Declaration of David Hilliard Williams
`2002
`David Hilliard Williams CV
`2003
`“What are the differences in the technical specifications in the
`1988 automatic onboard recording device (AOBRD) Rule (49
`CFR 395.15) and the Electronic Logging Device (ELD) rule?”,
`https://www.fmcsa.dot.gov/faq/what-are-differences-specs-1988-
`aobrd-rule-and-eld-rule
`“ELD MANDATE: UPDATES, VIOLATION INFORMATION
`AND DEVICE INTRODUCTION PRICING & REVIEWS
`DRIVERS
`NEED
`TO
`KNOW,”
`https://unitedworldtransportation.com/eld-mandate-updates-
`violation-information-device-introduction-pricing-reviews-
`drivers-need-know/
`“Automatic On-Board Recording Devices (AOBRDs) Hand-
`Held, Commercial Vehicle Safety Alliance, June 6, 2012,
`http://www.ct.gov/dmv/lib/dmv/cv_bulletins/2012-05-automatic-
`on-board-recording-devices-aobrds-hand-held-created-06-06-
`12.pdf
`“Small Hardware Device Provides GPS Fleet Tracking
`Capabilities,”
`Fleet
`Financials, October
`14,
`2010,
`https://www.fleetfinancials.com/72619/small-hardware-device-
`provides-gps-fleet-tracking-capabilities
`“A Look at the Geotab GO Device: Past, Present, and Future,”
`Malene
`Johansen & Vincent Zhu,
`June 22, 2015,
`https://www.geotab.com/blog/geotab-go-device-past-present-
`future/
`“Announcing Geotab GO5 Premium Vehicle Tracking Device,”
`April 5, 2011, https://www.geotab.com/press-release/u-blox/
`“FMCSA Implementation of MAP-21,” Federal Motor Carrier
`Safety
`Administration,
`September
`28,
`2012,
`https://www.fmcsa.dot.gov/sites/fmcsa.dot.gov/files/docs/FMCS
`A%20Implementation%20of%20MAP-21-%20Overview-
`
`2006
`
`2007
`
`2008
`
`2009
`
` i
`
`
`
`
`
`
`
`
`
`2010
`
`Exhibit No. Description
`Agenda-Qs%209-28-12.pdf
`“The Future of Electronic On-board Recording Devices in the
`U.S.,” Michael Goldberg, July 3, 2011, https://www.frg-
`law.com/blog/the-future-of-electronic-on-board-recording-
`devices-in-the-u-s/
`Declaration of Kyle B Fleming, Esq.
`
`2011
`
`2012
`
`2013
`
`Kyle B. Fleming CV
`
`Complaint filed in FourKites, Inc. v MacroPoint, LLC,
`Case No. 1:16-cv-02703-CAB (N.D. Ohio)
`
` ii
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`
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`Petitioner’s Opposition (“Opp.”) advances irrelevant differences and
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`unpersuasive arguments to ignore the holding and principles of Click-to-Call. The
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`Federal Circuit found the plain language of § 315(b) to clearly and unambiguously
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`express Congress’ intent that no dismissal exception exists. The plain language of
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`§ 315(a) is equally clear and unambiguous, and the petition should be dismissed.
`
`I.
`
`The Federal Circuit’s Statements, Framework, And Conclusions From
`Click-To-Call Are Equally Applicable To § 315(a) And Petitioner Fails
`To Manufacture Any Material Distinction
`
`Petitioner first suggests that Click-to-Call’s silence on § 315(a) is a tacit
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`affirmance that there is a dismissal exception to § 315(a). Opp. at 5. But the
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`Federal Circuit did not address § 315(a) because it was not at issue, and the “case
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`or controversy” requirement forbids advisory opinions on legal questions not
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`actually in dispute. U.S. Const. art. III, § 2, cl. 1; Muskrat v. United States, 219
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`U.S. 346, 356 (1911). Suggesting that the Federal Circuit “could have” ruled on
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`§315(a) is constitutionally improper; therefore the lack of an advisory opinion
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`cannot be twisted into an implicit approval of Petitioner’s § 315(a) position.
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`Second is Petitioner’s unremarkable observation that the Federal Circuit’s
`
`decision on § 315(b) relied on the language of § 315(b) not (a). Opp. at 5-7. But
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`“serving” versus “filing” is a difference without distinction. These are different
`
`events, but this difference has no substantive impact on the Federal Circuit’s
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`holding, which has equal force and veracity if the language of § 315(a) is inserted:
`
` 1
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`
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`The statute does not contain any exceptions or exemptions for
`complaints served [filed] in civil actions that are subsequently
`dismissed, with or without prejudice.… Simply put, § 315(b)’s
`[§315(a)’s] time bar is implicated once a party receives notice through
`official delivery of a complaint in a civil action [files a civil action
`challenging the validity of a claim], irrespective of subsequent events.
`
`899 F.3d at 1330 (modification added). There is no dismissal exception anywhere
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`in § 315, and no subsequent event undoes any act—service or filing—once it has
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`occurred. Section 315(a) is no different from (b) on this decisive factor.
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`Third, Petitioner argues the “dismissal” exception nevertheless should be
`
`applied because § 315(a) is a “preclusion” provision whereas § 315(b) is a statute
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`of limitation. Opp. at 7-9. This is a false dichotomy because the result of the two
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`provisions is the same—petitioner cannot seek an IPR. If § 315(a) is “preclusive,”
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`then so is § 315(b)—and that was irrelevant in Click-to-Call. In any event, neither
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`provision is “preclusive” because neither triggers any claim or issue preclusion.
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`New Hampshire v. Maine, 532 U.S. 742, 748 (2001) (claim preclusion forecloses
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`“successive litigation of the very same claim” regardless of the issues); Taylor v.
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`Sturgell, 553 U.S. 880, 892 (2008) (issue preclusion forecloses successive
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`litigation of the very same issues regardless of the claim).
`
`After dismissing its declaratory judgment action, FourKites retained its
`
`ability to sue MacroPoint again on the same claims and on the same issues—
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`declaratory judgment of patent invalidity. That FourKites and Ruiz cannot file a
`
` 2
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`
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`different claim before a different tribunal is not legal preclusion because they are
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`free assert the same claims and raise the same issues in another district court
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`action. The lack of § 315 standing bars an IPR filing, but this is not the preclusion
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`discussed by Judge Taranto or by Jet. Opp. at 7-8. Applying Click-to-Call to §
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`315(a) is consistent with Judge Taranto’s assertion that “[t]he point of a dismissal
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`‘without prejudice’ is to preserve, rather than eliminate, the ability of the plaintiff
`
`to sue the defendant again on the same claim.” 899 F.3d at 1348 (emphasis added).
`
`Petitioner is simply repackaging the Bonneville/Graves argument expressly
`
`rejected by Click-to-Call (and Judge Taranto). This is confirmed by Petitioner’s
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`reliance on Clio USA, Opp. at 8, which itself was predicated on an application of
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`Bonneville/Graves that was rejected by the Federal Circuit in Click-to-Call.
`
`II. Chevron Applies Because The Board Must Also Give Effect To The
`Unambiguously Expressed Intent Of Congress
`
`Contrary to Petitioner’s argument, Opp. at 9-10, the Chevron framework is
`
`appropriate because the step one analysis applies to courts and agencies:
`
`If the intent of Congress is clear, that is the end of the matter; for the
`court, as well as the agency, must give effect to the unambiguously
`expressed intent of Congress. Chevron, U.S.A., Inc. v. Nat. Res. Def.
`Council, Inc., 467 U.S. 837, 842–43 (1984) (emphasis added).
`
`Petitioner fastidiously ignores the plain language of the statute and never provides
`
`any analysis of the express intent of Congress based on the language of § 315(a).
`
`Petitioner simply posits that Click-to-Call does not apply and then advances
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` 3
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`
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`various policy arguments unsupported by the statute. But policy considerations
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`(step two) are irrelevant when, as here, the statutory language is unambiguous.
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`Click-to-Call, 899 F.3d at 1332 (inquiry ends if step one answers the question).
`
`III. Petitioner’s Argument, Opp. At 10-12, That Congress Enacted § 315(a)
`With An Expectation That The Dismissal Exception Would Apply Is
`Unsupported By Any Evidence Or Legal Basis
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`First, the cited Board decisions came after Congress enacted § 315(a)—
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`therefore Congress could not have had any expectation vis-à-vis these decisions.
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`Second, if Congress enacted § 315 based on some understanding of “background
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`legal principles” concerning dismissals, it would have applied to § 315(b) too—but
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`this is rejected by Click-to-Call. Third, all of the Board decisions cited by
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`Petitioner—Gordon, Cyanotech, Tristar and Emerson—are predicated on the now
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`discredited reading of the Graves and/or Bonneville decisions.
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`IV. The Board Should Decline Petitioner’s Invitation, Opp. At 12-13, To
`Graft A New “Might Have Lacked Jurisdiction” Exception To § 315(a)
`Because It Is Not Supported By The Statute
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`The plain language of § 315 does not disclose or suggest such an exception.
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`Congress expressly and unambiguously chose “filing”—not some other event—as
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`the trigger under § 315(a), and there is no valid basis to graft this exception to the
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`unambiguous expression of Congressional intent. InVue’s underlying case was
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`dismissed for lack subject matter jurisdiction. FourKites was not, so whether there
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`might be an exception for lack of subject matter jurisdiction is not at issue here.
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` 4
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`V. A Declaratory Judgement Action Is Not A Counterclaim
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`A counterclaim is a claim brought in an existing action by a claim-defendant
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`against a claim-plaintiff, and a separate lawsuit is not a counterclaim to another
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`action. See Fed. R. Civ. P. 13; Canfield Scientific, Inc. v. Melanoscan, LLC,
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`IPR2017-02125, Paper No. 15 at 3-7 (PTAB Mar. 30, 2018). Subsection (a)(3)
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`expressly addresses counterclaims, so Congress knew the difference and, had it
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`wanted to treat some declaratory judgment actions as counterclaims, it could have
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`done so. It did not, and that is the end of the inquiry.
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`VI. Waiver Does Not Apply Because Standing/Jurisdiction Can Be Raised
`At Any Time During The Proceedings
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`“After institution, standing issues may still be raised during the trial. A
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`patent owner may seek authority from the Board to take pertinent discovery or to
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`file a motion to challenge the petitioner’s standing.” See 77 Fed. Reg. 48680,
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`48695, comment 8. This is consistent with the rule that subject matter jurisdiction
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`cannot be assumed or waived. Arbaugh v. Y&H Corp., 546 U.S. 500, 514 (2006).
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`Because § 315 is considered jurisdictional, it is not waivable. 899 F.3d at 1325.
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`The failure to raise a futile defense is not a waiver if there is a subsequent
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`change in the law. See In re Micron Tech., Inc., 875 F.3d 1091, 1096 (Fed. Cir.
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`2017) (no waiver in view of TC Heartland decision changing venue law). Prior to
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`Click-to-Call, Board precedent found a dismissal exception to § 315(a).
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` 5
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`
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`Date: October 17, 2018
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`Respectfully submitted,
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Kyle B. Fleming (admitted pro hac vice)
`Luis A. Carrion, Reg. No. 61,255
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above-captioned PATENT OWNER’S
`REPLY BRIEF IN SUPPORT OF MOTION TO DISMISS is being served in its
`entirety on this date by filing this document through the Patent Review Processing
`System as well as delivering a copy via electronic mail upon the following at:
`
`
`James P. Murphy jpmurphy@polsinelli.com
`
`Matt Frontz mfrontz@polsinelli.com
`
`Ryan Murphy rmurphy@polsinelli.com
`
`Date: October 17, 2018
`
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`Respectfully submitted,
`
`
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`
`
`
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