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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`ROKU, INC.
`
`Petitioner,
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00343
`
`U.S. Patent No. 8,713,206
`
`____________
`
`PETITIONER’S REQUEST FOR REFUND OF
`POST-INSTITUTION FEES
`
`
`
`
`

`

`U.S. Patent No. 8,713,206
`IPR2020-00343
`
`
`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 ROKU, INC. requests a refund in the amount of $15,000.00 to be paid
`
`to deposit account number 18-1945, under Order No. 111813-0020-654.
`
`On December 24, 2019, Petitioner filed a Petition for Inter Partes
`
`Review of U.S. Patent No. 8,713,206 with the Patent Trial and Appeal Board
`
`that was assigned case number IPR2020-00343. In accordance with the fee
`
`schedule specified in 37 C.F.R. § 42.15(a), Petitioner deposited an electronic
`
`payment in the amount of $30,500.00 with the Board at the time of filing of the
`
`Petition, including a $15,500.00 payment for the Inter Partes Review request
`
`fee and a $15,000.00 payment for the post-institution fee.
`
`On June 4, 2020, a Joint Motion to Terminate Proceedings was filed,
`
`and on June 10, 2020, the Patent Trial and Appeal Board entered a Decision
`
`Settlement Prior to Institution of Trial. Accordingly, Petitioner requests a refund
`
`in the amount of $15,000.00 for the post-institution fees that it has paid to the
`
`USPTO in connection with this proceeding.
`
`
`
`
`
`2
`
`

`

`U.S. Patent No. 8,713,206
`IPR2020-00343
`
`
`Respectfully submitted,
`ROPES & GRAY LLP
`
`/Scott A. McKeown/
`Scott A. McKeown
`Reg. No. 42,866
`
`
`
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`
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`
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`
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`
`
`
`
`
`
`
`
`
`
`3
`
`
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`
`
`Dated: May 24, 2023
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`U.S. Patent No. 8,713,206
`IPR2020-00343
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a copy of the foregoing PETITIONER’S
`
`REQUEST FOR REFUND OF POST-INSTITUTION FEES was served in its
`
`entirety by filing through the Patent Trial and Appeal Case Tracking System (P-
`
`TACTS), as well as providing a courtesy copy via email to the following attorneys
`
`of record for the Patent Owner listed below:
`
`Joseph E. Palys (Reg. No. 46,508)
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: PH-Roku-Canon-IPR@paulhastings.com
`
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP
`875 15th Street NW
`Washington, DC 20005
`Telephone: (202) 551-1990
`Facsimile: (202) 551-0490
`E-mail: PH-Roku-Canon-IPR@paulhastings.com
`
`
`
`Dated: May 24, 2023
`
`
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`By: /Dara Del Rosario/
`Name: Dara Del Rosario
`ROPES & GRAY LLP
`
`
`
`

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