`571-272-7822
`
`
`
`
`
`
`Paper No. 36
`
`Entered: June 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`
`T-MOBILE US, INC. and T-MOBILE USA, INC.,
`Petitioner,
`
`v.
`
`BARKAN WIRELESS ACCESS TECHNOLOGIES, L.P.,
`Patent Owner.
`_______________
`
`Case IPR2017-01099
`Patent 9,042,306 B2
`_______________
`
`
`Before MEREDITH C. PETRAVICK, JOHN A. HUDALLA, and
`SHARON FENICK, Administrative Patent Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`
`On April 24 2018, the Supreme Court held that, in a decision to institute an
`inter partes review under 35 U.S.C. § 314, the Board is not authorized to order a
`trial to proceed on fewer than all claims challenged in a petition. SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348 (2018). On April 27, 2018, we modified our institution
`decision to institute on all of the challenged claims, inter alia, presented in the
`Petition (Paper 2). Paper 26.
`Petitioner previously requested (Paper 18) and received (Paper 20) a refund
`in the amount of $7,600.00 of the post-institution fee paid in connection with
`nineteen patent claims that were denied review in our institution decision. The
`introduction of newly instituted claims at this stage of the proceeding requires
`repayment of the refund. Accordingly, we require Petitioner to repay the post-
`institution fee that was refunded in the amount of $7,600.00. Paper 20.
`Repayment of the refunded post-institution fee in the amount of $7,600.00 is due
`within five (5) business days of the date of this Order. Given that our authority to
`institute review is limited to a “binary choice” between proceeding on all, or none,
`of the claims challenged in a petition (SAS at 1355), if repayment of the refunded
`post-institution fee is not timely made, the Board shall terminate this
`proceeding in its entirety.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is required to repay the refunded post-institution
`fee in the amount of $7,600.00;
`FURTHER ORDERED that repayment of the refunded post-institution fee is
`due within five (5) business days of the date this Order;
`FURTHER ORDERED that, if repayment of the refunded post-institution
`fee is not timely made, this proceeding shall be terminated in its entirety.
`
`
`
`
`2
`
`
`
`IPR2017-01099
`Patent 9,042,306 B2
`
`PETITIONER:
`
`Chun M. Ng
`Miguel Bombach
`John Esterhay
`PERKINS COIE LLP
`cng@perkinscoie.com
`mbombach@perkinscoie.com
`jesterhay@perkinscoie.com
`
`
`PATENT OWNER:
`
`Robert D. Katz
`KATZ, PLLC
`rkatz@katzfirm.com
`
`Spencer C. Patterson
`spatterson@gchub.com
`
`
`
`
`
`3
`
`
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