`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`V.
`
`ENFISH, LLC
`Patent Owner
`
`Patent No. 6,151,604
`Filing Date: March 5, 1998
`Issue Date: November 21, 2000
`
`Title: METHOD AND APPARATUS FOR IMPROVED INFORMATION STORAGE AND
`
`RETRIEVAL SYSTEM
`
`
`
`Inter Panes Review No.: lPR2013—00563
`
`Petition Filed: September 3, 2013
`
`
`
`
`
`Case No.:
`
`|PR2013-00563
`
`Patent Owner’s Mandatory Notices
`
`PATENT OWNER’S MANDATORY NOTICES
`
`UNDER 37 C.F.R. § 42.8
`
`Pursuant to.37 C.F.R. § 42.8,
`
`the patent owner, Enfish, LLC (“Patent Owner”),
`
`hereby submits the following mandatory notices in response to the Petition for Inter Partes
`
`Review of United States Patent No. 6,151,604 (“Petition”) filed on September 3, 2013:
`
`1.
`
`Real Party-ln-lnterest under 37 C.F.R. § 42.81blt1 ).
`
`Enfish, LLC is the patent owner and the real party-in-interest in this proceeding.
`
`2.
`
`Related Matters under 37 C.F.R. §42.8(b)12).
`
`The following judicial or administrative matters may affect or be affected by a
`decision in this proceeding:
`I
`
`US. Patent No. 6,151,604 (“‘604 Patent”) was asserted in a patent litigation in the
`
`US. District Court Central District of California, Western Division (“Litigation”).
`
`The
`
`Litigation, which was filed by the Patent Owner on August 27, 2012,
`
`is Enfish, LLC. v.
`
`Microsoft Corporation, et a/., Case No. CV12-7360 MRP (MRWX). Claims 1, 2, 16, 17, 31,
`
`32, 46 and 47 of the ‘604 Patent are asserted in the Litigation. The Petition requests review
`
`of claims 16-30 and 46-60 of the ‘604 Patent.
`
`A second petition for inter partes review of the ‘604 Patent was filed by Microsoft
`
`Corporation (“Petitioner”) on September 3, 2013. This petition is pending and has been
`
`assigned the following case number by the Patent Trial and Appeal Board: lPR2013-00562
`
`(requests review of claims 1—15 and 31-45 of the ‘604 Patent).
`
`
`
`Case No.:
`
`lPR2013-00563
`
`Patent Owner’s Mandatory Notices
`
`Patent Owner also asserted related US. Patent No. 6,163,775 (“’775 Patent”) in the
`
`Litigation.
`
`Petitioner filed three petitions for inter partes review of the ‘775 Patent on
`
`September 3, 2013. These petitions are pending and have been assigned the following
`
`case numbers by the Patent Trial and Appeal Board: lPR2013-00559, lPR2013—00560 and
`
`lPR2013-0561.
`
`3.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
`
`The Patent Owner designates the following lead and back-up counsel.
`
`
`
`LEAD COUNSEL
`BACK-UP COUNSEL
`
`Frank Pietrantonio (Reg. No. 32,289)
`Orion Armon (Reg. No. 65,421)
`fpietrantonio@cooley.com
`oarmon@cooley.com
`zpatdcdocketing@cooley.com
`zpatdcdocketing@cooley.com
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8567
`Fax: (202) 842—7899
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (720) 566—41 19
`Fax: (202) 842-7899
`
`4.
`
`Service Information under 37 C.F.R. § 42.8(b)(4).
`
`Please address all correspondence to the lead counsel and the back—up counsel as
`
`shown above. The Patent Owner consents to electronic service by e-mail at the e-mail
`
`addresses provided above, which include both individual email addresses and a general
`
`docketlng e-mail address.
`
`
`
`Case No.:
`
`lPR2013—00563
`
`Patent Owner’s Mandatory Notices
`Respectfully submitted,
`COOLEY LLP
`
`1"
`
`1121/
`
`Frank Pi
`Reg. No. 32,289
`
`DATE: ggkméu 2% $2013
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite
`Washington, DC 20004
`
`By:
`
`Tel: (703) 456-8133
`Fax: (202) 842-7899
`
`
`
`Case No.:
`
`lPR2013—00563
`
`Patent Owner’s Mandatory Notices
`
`CERTIFICATE OF SERVICE
`
`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) and 42.206(b) that a complete copy of:
`
`0 Patent Owner’s Mandatory Notices Under 37 C.F.R. § 42.8;
`
`. Patent Owner’s Power of Attorney; and
`
`.
`
`this Certificate of Service
`
`are being served electronically (as consented to by the Petitioner), on the 24m day of
`September, 2013, the same day as the filing of the above-identified documents in the United
`States Patent and Trademark Office (USPTO), upon:
`
`Amy E. Simpson
`Perkins Coie LLP
`
`11988 El Camino Real, Suite 200
`San Diego, California 92130
`asim son
`erkinscoiecom
`
`Microsoft-Enfish-Team@perkinscoie.com
`
`Chad Campbell (pro hac vice)
`Perkins Coie LLP
`
`ccampbell@perkinscoie.com
`
`Theodore H. Wimsatt
`
`Perkins Coie LLP
`
`twimsatt
`
`erkinscoiecom
`
` Frank Pietrantonio
`
`575565 vl/RE
`
`
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