Renner Otto successfully obtained a dismissal of an appeal to the US Court of Appeals for the Federal Circuit (CAFC) on behalf of client MacroPoint, citing an extraordinary real-time US Supreme Court decision in Thryv v. Click to Call Technologies

Located in Cleveland, Ohio, MacroPoint is the largest supply chain visibility network in the world. Their premier, patented, automated load monitoring and tracking technology provides location visibility, analytics and communication on a cloud-based SaaS platform. 

A competitor challenged two of MacroPoint’s patents in inter partes review (IPR), which is a trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board  to review the patentability of one or more claims, after filing and dismissing a declaratory judgement action. In 2019, the Renner Otto team successfully moved the USPTO to dismiss the IPR based on the CAFC’s own decision in Thryv.

In Thryv, the CAFC held that a patent suit dismissed without prejudice starts the one-year clock that an accused infringer has to file for IPR under 35 U.S.C. § 315(b). The Renner Otto team argued that similar logic should apply to declaratory judgment actions, that filing of a declaratory judgment suit triggers the ban on IPR set by 35 U.S.C. § 315(a). The USPTO agreed and dismissed. The challenger appealed the dismissal to the CAFC.

In the meantime, the CAFC’s decision in Thryv was challenged to the US Supreme Court, which ultimately decided that the CAFC does not have the authority to review USPTO’s decisions regarding institution of IPR. On this basis, the Renner Otto team successfully persuaded the CAFC to dismiss the appeal, resulting in dismissal of the IPR.

“I’m proud of the hard work our team at Renner Otto did to secure this ruling,” said Renner Otto Managing Partner Luis Carrion. “The technology involved is very important, and the case itself is unique in that it allowed us to reference a real-time Supreme Court decision to uphold MacroPoint’s patents as valid, clearing the path for MacroPoint to continue innovating and leading the market.”

Read the full Law360 review.