`571-272-7822
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`Paper: 34
`
`
` Entered: June 1, 2018
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Terminating and Dismissing the Proceeding
`35 U.S.C. § 318(a); 37 C.F.R. § 42.72
`
`
`
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`
`On May 16, 2018, we directed Petitioner to repay a refund of the post-
`institution fee paid in connection with 15 patent claims, which were newly
`instituted by order. See Paper 32 (order entered May 16, 2018). We
`explained that “[r]epayment of the refunded post-institution fee in the
`amount of $6,000.00 is due within five (5) business days of the date of this
`Order.” Id. at 3. Further, we placed Petitioner on express notice that, “if
`repayment of the refunded post-institution fee is not timely made, the
`Board shall terminate this proceeding in its entirety.” Id. (emphasis in
`original).
`On May 23, 2018, the due date for repayment, Petitioner advised the
`Board that Petitioner “will not be repaying the previously-refunded portion
`of the post-institution fee.” Ex. 3002, 8 (email dated May 23, 2018, making
`reference to the order entered May 16, 2018). Petitioner purported to place
`conditions, relating to issues of estoppel, on its refusal to meet the
`repayment deadline, but those conditions are neither binding on the Board
`nor relevant to our analysis.1 Id. at 7–11. Thereafter, on May 28, 2018,
`Patent Owner authorized the Board to charge Patent Owner’s deposit
`account “in the amount of $6000” to cover “the portion of the post-
`institution fee previously refunded in this matter.” Paper 33, 1.
`
`
`1 In this proceeding, we have not, and will not, counsel the parties on the
`estoppel effects of any action taken by or before the Board, including the
`effects of, or validity of, Petitioner’s unilateral attempt to condition its
`failure to repay the refunded fee as directed in the order entered May 16,
`2018. We leave all issues, surrounding any estoppel effects, to be resolved
`by a tribunal competent to decide them when raised and ripe for decision.
`
`
`2
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`
`The Petition, at the time of filing, was accompanied by payment of the
`required fee. At this juncture, however, the Petition is defective as a result
`of Petitioner’s failure to timely repay the portion of the fee that was refunded
`in connection with 15 patent claims. See Paper 32, 4 (order, requiring
`repayment within five (5) business days); Ex. 3002, 7–11 (email from
`Petitioner’s counsel, expressly declining to repay the refunded fee within the
`time set by the Board for repayment and, further, informing the Board that
`Petitioner has no intention to repay the refunded fee). Under these particular
`facts and circumstances, termination of the proceeding is “appropriate.” 37
`C.F.R. § 42.72 (“[t]he Board may terminate a trial without rendering a final
`written decision, where appropriate”).2 Accordingly, effective this date, we
`hereby terminate and dismiss this proceeding pursuant to 37 C.F.R. § 42.72.
`See 35 U.S.C. § 318(a) (“[i]f an inter partes review is instituted and not
`dismissed” then the “Board shall issue a final written decision”).
`
`Accordingly, it is
`ORDERED that, effective this date, the proceeding is hereby
`terminated and dismissed.
`
`
`
`2 We are not persuaded that the particular facts and circumstances presented
`here justify the unusual remedy of permitting Patent Owner to pay “the
`necessary post-institution fees” owed by Petitioner in order to facilitate
`proceeding to a final written decision over Petitioner’s objections. Ex. 3002,
`4; see id. at 9–10 (Petitioner’s reasons for submitting to termination, in view
`of the Office’s newly formulated “binary” institution framework and the
`burden and expense of presenting its case on the newly instituted claims and
`grounds within the time remaining in the schedule).
`
`
`3
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`PETITIONER:
`David Glandorf
`GIBSON, DUNN & CRUTCHER LLP
`dglandorf@gibsondunn.com
`
`
`PATENT OWNER:
`Paul H. Berghoff
`James V. Suggs
`S. Richard Carden
`McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`berghoff@mbhb.com
`suggs@mbhb.com
`carden@mbhb.com
`
`4
`
`
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