Microsoft Corporationv.Enfish, LLC

Patent Trials and Appeals Board

Sep 29, 2014

09035187 - (D) (P.T.A.B. Sep. 29, 2014)

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