Microsoft Corporationv.Enfish, LLCDownload PDFPatent Trials and Appeals BoardSep 29, 201409035187 - (D) (P.T.A.B. Sep. 29, 2014) Copy Citation Trials@uspto.gov Paper 13 571-272-7822 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 IPR2014-00577 Patent 6,163,775 Before THOMAS L. GIANNETTI, BRYAN F. MOORE, SCOTT A. DANIELS, and BARBARA A. PARVIS, Administrative Patent Judges. PARVIS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 37 C.F.R. § 42.108 Case IPR2014-00577 Patent 6,163,775 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, IPR2014-00577. Concurrently, separate decisions are being issued on the other petitions. In this proceeding, the Petition (Paper 1, “Initial Petition”) requests inter partes review of certain claims of U.S. Patent No. 6,163,775 (the “’775 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 (IPR2013-00561) involving the ʼ775 patent. As explained in our Decision on Microsoft’s Joinder Motion in this proceeding, Microsoft’s request to join this proceeding with the previously instituted inter partes review has been denied. Case IPR2013-00577 Patent 6,163,775 3 Section 315 of Title 35 of the United States Code provides in pertinent part: (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 ’775 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 filed its Initial Petition accompanied by a request for joinder. Pet. 1–2. 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 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, IPR2013-00561, the Corrected Petition is time-barred. III. CONCLUSION For the forgoing reasons, we determine that Microsoft has not filed a Case IPR2013-00577 Patent 6,163,775 4 petition in this proceeding within the one-year-statutory period of 35 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 IPR2013-00577 Patent 6,163,775 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 Copy with citationCopy as parenthetical citation