IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`HANGZHOU LANGHONG TECHNOLOGY CO. LTD and LANGHONG
`TECHNOLOGY USA INC.,
`
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS, INC.,
`
`Patent Owner
`_________________
`
`Case IPR2015-01263
`Patent No. 8,896,447
`
`Before Brian J. McNamara, Neil T. Powell, and Daniel J. Galligan,
`Administrative Patent Judges
`
`
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`PETITIONER’S REQUEST FOR REFUND OF FEES
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`DB1/ 84260853.2
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`HANGZHOU LANGHONG TECHNOLOGY CO. LTD and LANGHONG
`TECHNOLOGY USA INC.,
`
`Petitioner,
`
`v.
`
`INVUE SECURITY PRODUCTS, INC.,
`
`Patent Owner
`_________________
`
`Case IPR2015-01263
`Patent No. 8,896,447
`
`Before Brian J. McNamara, Neil T. Powell, and Daniel J. Galligan,
`Administrative Patent Judges
`
`
`
`PETITIONER’S REQUEST FOR REFUND OF FEES
`
`
`DB1/ 84260853.2
`
`
`
`
`
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`PETITIONER’S REQUEST FOR FULL REFUND OF FEES OR,
`I.
`ALTERNATIVELY, FOR PARTIAL REFUND OF THE FEE FOR
`REQUESTING INTER PARTES REVIEW PURSUANT TO 37 C.F.R. §§
`1.26(C)(2) AND 1.925, AND THE POST-INSTITUTION FEE
`
`
`
`On May 22, 2015, Hangzhou Langhong Technology Co., Ltd. and Langhong
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`Technology USA Inc. (collectively, “Petitioner”) submitted a Petition for review of
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`U.S. Pat. No. 8,896,447 B2 (“Petition”). Petitioners paid a total of $26,200 in fees
`
`for twenty-two (22) challenged claims, i.e., $9,400 in fees for requesting inter
`
`partes review and $16,800 in post-institution fees (collectively, “Fees”). On July
`
`8, 2015, the Patent Trial and Appeal Board (“Board”) held a conference with
`
`counsel for the parties during which it indicated that a corrected Petition was
`
`required to obtain a filing date. See Paper 6 at 2. On July 16, 2015, the Board
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`ordered that a corrected Petition with a copy of the Subject Patent be submitted
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`within five days. See Paper 5. On August 4, 2015, the Board entered a Dismissal
`
`of Petition order pursuant to 37 C.F.R. § 42.5. See Paper 6. In the Dismissal of
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`Petition order, the Board stated that “the Petition has not been accorded a filing
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`date and the Petition is dismissed.” Paper 6 at 2. Petitioner respectfully requests a
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`full refund of the $26,200 in Fees it paid.
`
`
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`Here, Petitioner did not submit a corrected Petition. See Paper 6 at 2. As a
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`result, in accordance with its July 16, 2015 order, the Board denied the Petition a
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`filing date. See id. Indeed, the Petition was dismissed before it was even accorded
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`DB1/ 84260853.2
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`1
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`a filing date. See id. The Board did not review the Petition on the merits; the
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`Patent Owner did not file a Preliminary Response; and the Decision to Dismiss the
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`Petition was not one premised on the merits of Petitioner’s grounds or bases for
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`instituting a proceeding. Given the extremely early stage in which this proceeding
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`was dismissed, Petitioner respectfully submits that because of the unique facts of
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`this case, good cause exists for the Board to waive the general rule to not refund
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`the fee for requesting inter partes review, and to refund the Fees in full. See 78
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`Fed. Reg. 4212, 4233 (January 18, 2013). Accordingly, Petitioner respectfully
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`requests that the Board grant such relief and refund the entire $26,200 in Fees paid.
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`
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`Alternatively, and to the extent the Board will not grant a full refund of the
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`Fees, i.e., both the $9,400 in fees for requesting inter partes review and the post-
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`institution fee of $16,800, Petitioner hereby respectfully requests a partial refund
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`of the fees for requesting inter partes review, and the full post-institution fees. See
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`37 C.F.R. § 1.26(c)(2) (“For an inter partes reexamination request, a refund of
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`$7,970 will be made to the reexamination requester if the Director decides not to
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`institute an inter partes reexamination proceeding.”); § 1.925 (“Where inter partes
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`reexamination is not ordered, a refund of a portion of the fee for requesting inter
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`partes reexamination will be made to the requester in accordance with § 1.26(c).”).
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`
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`Here, as discussed above, the Board dismissed the Petition before even
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`according it with a filing date. See Paper 6 at 2. Therefore, it is clearly
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`DB1/ 84260853.2
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`2
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`permissible for the Petitioner to receive at least a partial refund of the fees for
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`requesting inter partes review, and the full post-institution fees. See 37 C.F.R. §§
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`1.26(c)(2) and 1.925; 78 Fed. Reg. 4212, 4233 (January 18, 2013).
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`
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`Finally, to the extent the Board will not grant a partial refund of the fees for
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`requesting inter partes review, and the full post-institution fees, Petitioner hereby
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`respectfully requests refund of at least the full $16,800 in post-institution fees. The
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`Rules and precedent permit at least such relief under the circumstances described
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`above. See 78 Fed. Reg. 4212, 4233 (January 18, 2013) (“The USPTO also sets
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`the inter partes review post-institution fee at $14,000 for a review of up to 15
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`claims. This fee would be returned to the petitioner if the Office does not institute a
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`review.”); IPR2014-00244 at Paper 11 (“The new structure permits a refund of [the
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`post-institution] fee if the requested inter partes review is not initiated.”).
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`
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`Petitioner, through the undersigned, authorizes the Office to refund the
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`requested fees to Deposit Account No. 50-0310 (Order No. 102838-3003).
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`DB1/ 84260853.2
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`3
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`II. CONCLUSION
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`
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant the relief sought.
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`Dated: August 6, 2015
`
`
`
`
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`Respectfully submitted,
`
`/ Dion M. Bregman /
`Dion M. Bregman (Reg. No. 45,645)
`MORGAN, LEWIS & BOCKIUS LLP
`Postal and Hand Delivery Address
`2 Palo Alto Square, Suite 700
`3000 El Camino Real
`Palo Alto, CA 94306
`T: 650.843.4000
`F: 650.843.4001
`dbregman@morganlewis.com
`
`
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`DB1/ 84260853.2
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`4
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of the foregoing Request was
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`served by FedEx delivery to the attorney of record for the patent owner, at the
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`following address:
`
`Trent A. Kirk
`InVue Security Products Inc.
`15015 Lancaster Highway
`Charlotte, NC 28277
`704.752.6513
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`
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`Respectfully submitted,
`
`
`
`
`By / Dion M. Bregman /
`Dion M. Bregman
`Registration No.: 45,645
`Counsel for Petitioners
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`Date: August 6, 2015
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`DB1/ 84260853.2
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