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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
`
`_________________________________________________
`
`U.S. Patent No. 9,429,659
`
`Case No.: IPR2017-02018
`_________________________________________________
`
`MANDATORY NOTICE BY PATENT OWNER
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`MacroPoint LLC’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 9,429,659
`
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`Pursuant to 37 C.F.R. § 42.8, the patent owner, MacroPoint, LLC (“Patent
`
`Owner”), hereby submits the following Mandatory Notices in response to the
`
`Petition for Inter Partes Review of U.S. Patent No. 9,429,659 (“the ’659 Patent”).
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest is MacroPoint LLC, which was recently acquired
`
`by The Descartes Systems Group Inc., 120 Randall Drive, Waterloo, Ontario,
`
`Canada N2V 1C6.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`There is a currently pending litigation in the Eastern District of Texas styled
`
`MacroPoint, LLC v Ruiz Food Products, Inc., 6:16-cv-01133 (E.D. TX) involving
`
`the ’659 Patent. The complaint for this litigation was served on Petitioner on
`
`August 31, 2016. The ’659 Patent was previously the subject of FourKites, Inc. v
`
`MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio). The action
`
`involving FourKites, Inc. has been terminated following the dismissal of the
`
`complaint without prejudice on June 27, 2017.
`
`On August 31, 2017, Ruiz Food Products, Inc. filed a Petition for Inter
`
`Partes Review regarding U.S. Patent No. 8,275,358 in IPR2017-02016.
`
`C.
`
`Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`The Patent Owner designates the following lead and back-up counsel:
`
`1
`
`
`
`Lead Counsel
`Mark C. Johnson, Reg. No. 51,854
`mjohnson@rennerotto.com
`Renner Otto
`1621 Euclid Avenue
`Floor 19
`Cleveland, Ohio 44115
`t: 216.621.1113
`f: 216.621.6165
`
`
`
`
`
`
`
`MacroPoint LLC’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 9,429,659
`
`
`First Back-up Counsel
`Kyle B. Fleming, (will seek pro hac vice)
`kfleming@rennerotto.com
`Renner Otto
`1621 Euclid Avenue
`Floor 19
`Cleveland, Ohio 44115
`t: 216.621.1113
`f: 216.621.6165
`Back-up Counsel
`Luis A. Carrion, Reg. No. 61,255
`lcarrion@rennerotto.com
`Renner Otto
`1621 Euclid Avenue
`Floor 19
`Cleveland, Ohio 44115
`t: 216.621.1113
`f: 216.621.6165
`
`
`
`An appropriate Power of Attorney is being filed concurrently herewith.
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Please direct all correspondence regarding this proceeding to the lead and
`
`back-up counsel at the addresses listed above. Patent Owner also consents to
`
`electronic service by email to mjohnson@rennerotto.com,
`
`kfleming@rennerotto.com, lcarrion@rennerotto.com and
`
`litigation@rennerotto.com.
`
`Date: October 25, 2017
`
`
`Respectfully submitted,
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`
`
`
`2
`
`
`
`
`
`
`
`
`
`MacroPoint LLC’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 9,429,659
`
`
`Cleveland, Ohio 44115
`t: 216.621.1113
`f: 216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`3
`
`
`
`MacroPoint LLC’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 9,429,659
`
`
`CERTIFICATE OF SERVICE
`(37 C.F.R. §§ 42.6(e) and 42.105(a))
`
`
`
`
`
`The undersigned hereby certifies that the above-captioned MANDATORY
`NOTICE BY PATENT OWNER UNDER 37 C.F.R. § 42.8 is being served in its
`entirety on October 25, 2017, by filing this document through the Patent Review
`Processing System as well as delivering a copy via electronic mail upon the
`following at:
`
`Lead Counsel
`James P. Murphy (Reg. No. 55,474)
`Polsinelli PC 1000 Louisiana Street
`Fifty-Third Floor
`Houston, Texas 77002
`Telephone: 713.374.1631
`jpmurphy@polsinelli.com
`
`First Back-up Counsel
`Matt Frontz (Reg. No. 65,198)
`Polsinelli PC 1000 Louisiana Street
`Fifty-Third Floor
`Houston, Texas 77002
`Telephone: 713.374.1662
`mfrontz@polsinelli.com
`
`Additional Back-up Counsel
`Ryan Murphy (Reg. No. 66,285)
`Polsinelli PC
`1401 I Street NW
`Suite 800
`Washington, DC 20005
`Telephone: 202.626.8373
`rmurphy@polsinelli.com
`
`Respectfully submitted,
`
`
`
` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: 216.621.1113
`f: 216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
`
`4
`
`
`Date: October 25, 2017
`
`
`
`
`
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