`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Daniel F. Olejko (dolejko@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
` GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`
`
`
`Case IPR2017-00758
`U.S. Patent No. 8,515,031 B2
`
`
`PETITIONER’S REQUEST FOR REFUND OF
`POST-INSTITUTION FEES
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`Case No. IPR2017-00758
`Patent No. 8,515,031
`
`Pursuant to the Patent and Trademark Office’s Final Rule Setting and
`
`Adjusting Patent Fees, 78 Fed. Reg. 4212, 4232-4234 (Jan. 18, 2013), Petitioner
`
`Securus Technologies, Inc. (“Securus”) requests a refund of post-institution fees
`
`paid in this matter in the amount of $16,000.00.
`
`On January 23, 2017, Securus filed a Petition for Inter Partes Review of
`
`claims 1-20 of U.S. Patent No. 8,515,031 with the Patent Trial and Appeal Board.
`
`The proceeding was assigned case number IPR2017-00758. In accordance with the
`
`fee schedule specified in 37 C.F.R. § 42.15(a), Securus submitted an electronic
`
`payment in the amount of $14,000.00 as a post-institution fee and $2,000 as a post-
`
`institution excess claims fee with the Board at the time of filing of its Petition.
`
`On July 26, 2017, the Patent Trial and Appeal Board denied institution of
`
`IPR2017-00758 on the grounds that Petitioner has not demonstrated there is a
`
`reasonable likelihood it would prevail in establishing the unpatentability of claims
`
`1-20 of the ‘031 Patent. See Paper 7 at 16 (denying institution). Accordingly, Securus
`
`requests a refund in the amount of $16,000.00, equal to the post-institution fee and
`
`the post-institution excess claims fee paid to the USPTO in connection with that
`
`proceeding and in accordance with 78 Fed. Reg. 4233 (stating that “[t]he entire post-
`
`institution fee would be returned to the petitioner if the Office does not institute a
`
`review”).
`
`
`
`Case No. IPR2017-00758
`Patent No. 8,515,031
`
`The payment was provided via electronic funds transaction (EFT) and
`
`processed in PRPS on January 24, 2017. Upon review and approval of this request,
`
`Securus respectfully requests the Board credit the requested amount to Petitioner.
`
`The amount may preferably be (1) credited to the account from which payment was
`
`provided; or (2) payable by check to Securus Technologies, Inc. and sent to
`
`Petitioner’s counsel of record at the mailing address below.
`
`
`
`Date: December 18, 2017
`
`Submitted,
`
`
`
`
`
`
`
`
`
`
`
`_________________________________
`Justin B. Kimble, Reg. No. 58,591
`BRAGALONE CONROY PC
`2200 Ross Ave., Suite 4500W
`Dallas, Texas 75201
`Tel: 214.785.6670
`Fax: 214.785.6680
`Attorney for Petitioner
`
`
`
`
`
`
`Case No. IPR2017-00758
`Patent No. 8,515,031
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`
`The undersigned hereby certifies that this document has been served via
`
`electronic mail on December 18, 2017, to Patent Owner at the email address of
`
`mspecht-PTAB@skgf.com, lschleh-PTAB@skgf.com, mray-ptab@skgf.com, and
`
`PTAB@skgf.com, pursuant to Patent Owner’s consent in its Mandatory Notices
`
`(Paper 5) at 2.
`
`
`
`
`
`
`
`
`___________________________
`Justin B. Kimble
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Avenue, Suite 4500W
`Dallas, TX 75201
`Phone: (214) 785-6670
`Email: JKimble-IPR@bcpc-law.com
`
`
`
`
`
`
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