Microsoft Corporationv.Enfish, LLC

Patent Trial and Appeal Board

Sep 29, 2014

09035510 (P.T.A.B. Sep. 29, 2014)

Trials@uspto.gov Paper 14
571-272-7822 Entered: September 29, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

ENFISH, LLC,
Patent Owner.
____________

Case IPR2014-00574
Patent 6,151,604

Before THOMAS L. GIANNETTI, BRYAN F. MOORE,
SCOTT A. DANIELS, and BARBARA A. PARVIS, Administrative Patent
Judges.

DANIELS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
Case IPR2014-00574
Patent 6,151,604

2
I. INTRODUCTION
A. Background
On April 4, 2014, Microsoft Corporation (“Microsoft”) filed four
petitions for inter partes review of patents owned by Enfish, LLC
(“Enfish”), IPR2014-00574, IPR2014-00575, IPR2014-00576 and IPR2014-
00577. Each petition was accompanied by a motion for joinder. This
decision addresses the petition in this case IPR2014-00574. Concurrently,
separate decisions are being issued on the other petitions.
In this proceeding, the Petition (Paper 1) requests inter partes review
of certain claims of U.S. Patent No. 6,151,604 (the “’604 patent”). On April
16, 2014, Microsoft filed a Corrected Petition (Paper 5, “Corrected Petition”
or “Pet.”). Microsoft also filed a Motion for Joinder (Paper 3, “Motion”),
seeking to join this case with a previously instituted proceeding, (IPR2013-
00562) involving the ʼ604 patent. Patent Owner, Enfish, filed an Opposition
to the Joinder Motion (Paper 9, “Opp.”), and a Preliminary Response to the
Petition (Paper 11, “Prelim. Resp.”). As explained in our Decision on
Microsoft’s Joinder Motion in this proceeding, Microsoft’s request to join
these proceedings with a previously instituted inter partes review has been
denied.
Section 315 of Title 35 of the United States Code provides in pertinent
part:
Case IPR2014-00574
Patent 6,151,604

3
(b) PATENT OWNER'S ACTION.—An inter partes review
may not be instituted if the petition requesting the proceeding is
filed more than 1 year after the date on which the petitioner,
real party in interest, or privy of the petitioner is served with a
complaint alleging infringement of the patent. The time
limitation set forth in the preceding sentence shall not apply to a
request for joinder under subsection (c).
For the reasons that follow, we determine that neither the Initial
Petition nor the Corrected Petition was filed within the statutory period of 35
U.S.C. § 315(b) and, therefore, deny institution of an inter partes review.

B. Related Proceedings
Microsoft indicates the ’604 patent is asserted presently against
Microsoft in Enfish LLC v. Microsoft Corporation, Case No. 12-cv-7360
MRP in the Central District of California (“California Lawsuit”). Pet. 2–3.
II. ANALYSIS
Microsoft asserts that it is not barred from requesting inter partes
review because Microsoft timely filed its Initial Petition accompanied by a
request for joinder. Pet. 2. Under 37 C.F.R. § 42.122(b), the one-year time
bar “shall not apply when the petition is accompanied by a request for
joinder.” Microsoft acknowledges, however, that Enfish served its
Complaint in the California Litigation Lawsuit on September 4, 2012, more
than a year before the Initial Petition was filed. Motion 2. Thus, in light of
our decision denying joinder of this proceeding with a previously instituted
review, IPR2013-00562, the Corrected Petition is time-barred.
III. CONCLUSION
For the forgoing reasons, we determine that Microsoft has not filed a
petition in this proceeding within the one-year-statutory period of 35
Case IPR2014-00574
Patent 6,151,604

4
U.S.C. § 315(b). Accordingly, we deny institution of an inter partes review
in this proceeding.
IV. ORDER
For the reasons given, it is
ORDERED that pursuant to 35 U.S.C. § 315(b) Microsoft’s Corrected
Petition is denied as to all challenged claims, and no trial is instituted.

Case IPR2014-00574
Patent 6,151,604

5

For PETITIONER:

Amy E. Simpson
Chad Campbell
Theodore H. Wimsatt
PERKINS COIE LLP
ASimpson@perkinscoie.com
CCampbell@perkinscoie.com
TWimsatt@perkinscoie.com

For PATENT OWNER:

Frank Pietrantonio
Matt Leary
COOLEY LLP
fpietrantonio@cooley.com
mleary@cooley.com