UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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 Partes Review No.: IPR2014-00574
`
`Petition Filed: Agril 4, 2014
`
`
`
`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 Partes Review No.: IPR2014-00574
`
`Petition Filed: Agril 4, 2014
`
`
`
`IPR Case No.:
`
`lPR2014-00574
`
`Attorney Docket No.: ENFI-002/02US
`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 April 4, 2014:
`
`1.
`
`Real Party-ln-Interest under 37 C.F.R. § 42.8(b)(1).
`
`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)(2).
`
`The following judicial or administrative matters may affect or be affected by a
`
`decision in this proceeding:
`
`U.S. Patent No. 6,151,604 (“‘604 Patent”) was asserted in a patent litigation in the
`
`U.S. District Court Central District of California, Western Division (“Litigation”).
`
`The
`
`Litigation, which was filed by the Patent Owner on August 27, 2012,
`
`is Enflsh, LLC. v.
`
`Microsoft Corporation, et al., Case No. CV12-7360 MRP (MRWX). Claims 1, 2, 16, 17, 31,
`
`32, 46 and 47 of the ‘604 Patent were asserted in the Litigation. The present Petition
`
`requests review of claims 1-2, 6-7, 11-13, 31-32, 36-37 and 41-43 of the ‘604 Patent.
`
`A second petition for inter parfes review of the ‘604 Patent was filed by Microsoft
`
`Corporation (“Petitioner”) on April 4, 2014. That petition is pending and has been assigned
`
`the following case number by the Patent Trial and Appeal Board: lPR2013—00575 (requests
`
`review of claims 16-18, 24-29, 46-48 and 54-59 of the ‘604 Patent). Additionally, two other
`
`
`
`IPR Case No.:
`
`lPR2014—0O574
`
`Attorney Docket No.: ENFl-002/02US
`Patent Owner’s Mandatory Notices
`
`petitions for inter partes review of the ‘604 Patent were filed by Petitioner on September 3,
`
`2013. These petitions are pending and have been assigned the following case numbers by
`
`the Patent Trial and Appeal Board: lPR2013-00563 (review instituted for claims 16-26, 30,
`
`46-56 and 60) and lPR2013-00562 (review instituted for claims 1-15 and 31-45).
`
`Patent Owner also asserted related U.S. Patent No. 6,163,775 (‘"775 Patent”) in the
`
`Litigation. Petitioner has filed a total of five petitions for inter partes review of the ‘775
`
`Patent — three petitions were filed on September 3, 2013 and two were filed on April 4,
`
`2014. These petitions are pending and have been assigned the following case numbers by
`
`the Patent Trial and Appeal Board:
`
`lPR2013-00559,
`
`lPR2013—00560,
`
`lPR2013—0561,
`
`lPR2014-00576 and lPR2014—O0577.
`
`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)
`fpietrantonio@cooley.com
`zpatdcdocketing@cooley.com
`
`Matt Leary (Reg. No. 58,593)
`mleary@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) 566-4021
`Fax: (202)842-7899
`
`
`
`IPR Case No.:
`
`lPR2014-00574
`
`Attorney Docket No.: ENFl—002/02US
`Patent Owner's Mandatory Notices
`
`4.
`
`Service Information under 37 C.F.R. § 42.8lb)(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 e-mail addresses and a general
`
`docketing e-mail address.
`
` Respectfully submitted,
`COOLEY LLP
`
` COOLEY LLP
`
`s
`Fran
`Reg. No. 32,289
`
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite
`Washington, DC 20004
`
`By:
`
`Tel: (703) 456-8567
`Fax: (202) 842-7899
`
`
`
`IPR Case No.:
`
`lPR2014—O0574
`
`Attorney Docket No.: ENFI-O02/O2US
`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;
`
`0 Patent Owner’s Power of Attorney; and
`
`0
`
`this Certificate of Service
`
`are being served electronically (as consented to by the Petitioner), on the 251“ day of April,
`2014, 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
`asimpson@perkinscoie.com
`Microsoft-Enfish—Team
`erkinscoiecom
`
`
`
`Chad Campbell (pro hac vice)
`Perkins Coie LLP
`
`ccampbell@perkinscoie.com
`
`Theodore H. Wimsatt
`
`Perkins Coie LLP
`
`twimsatt
`
`erkinscoie.com
`
`«
`
`106379444 vl
`
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`gar/N
`
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`»
`
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`M/zé::(.2
`
`Frank Pietrantonio
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