`
`—————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————
`
`
`JOHN CRANE, INC., JOHN CRANE
`PRODUCTION SOLUTIONS, INC., & JOHN CRANE GROUP CORP.,
`
`
`
`Petitioners,
`
`v.
`
`FINALROD IP, LLC,
`Patent Owner.
`
`
`
`—————————————
`
`IPR No. IPR2016-00521
`U.S. Patent No. 8,851,162
`
`—————————————
`
`Before SALLY C. MEDLEY, LYNNE E. PETTIGREW, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`
`PETITIONER’S REQUEST FOR REFUND OF FEES
`
`
`
`
`Petitioners, John Crane, Inc., John Crane Production Solutions, Inc., and
`
`IPR2016-00521
`Patent No. 8,851,162
`
`
`
`
`John Crane Group Corp. (“Petitioners”) hereby requests a refund of the $24,000
`
`post-institution fee that they previously paid in connection with IPR2016-00521.
`
`Petitioners filed a petition for inter partes review of U.S. Patent No. 8,851,162 on
`
`January 29, 2016, and paid the USPTO $37,000 on that date, including a $9,000
`
`payment for the inter partes review request fee, a $14,000 payment for the post-
`
`institution fee, a $ 4,000 pre-institution payment for requesting IPR of 20 claims in
`
`excess of 20 claims ($200 x 20), and a $ 10,000 payment for requesting IPR of
`
`challenging 25 claims in excess of 15 claims for post-institution ($400 x 25), as
`
`required by 37 C.F.R. §42.15(a). On June 7, 2016, the Board denied Petitioners’
`
`request for IPR (Paper No. 7), and on August 8, 2016, the Board denied
`
`Petitioners’ request for rehearing (Paper 9).
`
`
`
`Based on the termination of this proceeding before institution, Petitioners
`
`requests a refund in the amount of the post-institution fees that it paid for post-
`
`institution services. See 78 FR 4212, 4233 (January 18, 2013), available at
`
`http://www.uspto.gov/sites/default/files/aia_implementation/AC54_Final_Rule_Se
`
`tting78FR4212-2013JAN18.pdf (“The entire post-institution fee would be returned
`
`to the petitioner if the Office does not institute a review.”); FAQ E7, available at
`
`http://www.uspto.gov/patents-application-process/appealing-patent-
`
`decisions/trials/patent-review-processing-system-prps-0#heading-10 (“[T]he
`1
`
`
`
`
`
`petitioner may file in PRPS a request for a refund of any post-institution fee
`
`IPR2016-00521
`Patent No. 8,851,162
`
`
`paid.”). The return of the post-institution fees includes the per-claim fees for each
`
`claim in excess of 15 claims for the post-institution trial. Id.
`
`
`
`Accordingly, Petitioner hereby requests a refund of the $24,000 post-
`
`institution fee that it previously paid. The refund may be deposited in Deposit
`
`Account No. 50-0310 under Order No. 015304-21-5001.
`
`
`
`Dated: October 27, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Dion M. Bregman/
`
`By
`Dion M. Bregman (Reg. No. 45,645)
`Jason C. White (Reg. No. 42,223)
`Ryan B. McBeth (Reg. No. 69,817)
`Nicholas A. Restauri (Reg. No. 71,783)
`Nicholaus E. Floyd (Reg. No. 74,438)
`Morgan, Lewis & Bockius LLP
`2 Palo Alto Square
`3000 El Camino Real
`Palo Alto, CA 94306
`650.843.4000
`650.843.4001 (fax)
`
`Attorneys for Petitioners
`
`
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-00521
`Patent No. 8,851,162
`
`
`
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing
`
`document was served by email on the following counsel of record for the Patent
`
`Owner.
`
`John D. Holman
`Josh Shamburger
`Holly Barnes
`Matthews, Lawson, McCutcheon & Joseph, PLLC
`2000 Bering Dr., Suite 700
`Houston, TX 77057
`Tel: 713-355-4200
`Fax: 713-355-9689
`jholman@matthewsfirm.com
`jshamburger@matthewsfirm.com
`hbarnes@matthewsfirm.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Dion M Bregman/
`Dion M. Bregman, Esq.
`Registration No. 45,645
`Attorneys for Petitioners
`
`
`
`
`
`
`
`Dated: October 27, 2016
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