`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA LLC,
`Petitioner
`
`v.
`
`CUBIST PHARMACEUTICALS.,
`Patent Owner
`
`IPR2015-01571
`
`REQUEST FOR REFUND OF PORTION OF POST-INSTITUTION FEE
`FOR INTER PARTES REVIEW OF U.S. PATENT 8,058,238
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case No. IPR2015-01571
`Request for Refund of Portion of Post Institution Fee
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`I.
`
`Petitioner Fresenius Kabi USA LLC (“Petitioner”) respectfully requests a
`
`refund of $44,000, a portion of the post-institution fee initially paid for its Petition
`
`for Inter Partes Review of U.S. Patent 8,058,238 (“the ’238 patent”), assigned case
`
`number IPR 2015-01571. Petitioner notes that this portion of the post-institution
`
`fee paid by Petitioner is in excess of the $14,000 fee that is appropriate in light of
`
`the Board’s granting of Petitioner’s and patent owner’s joint motion to limit the
`
`Petition.
`
`II.
`
`STATEMENT OF FACTS
`On July 10, 2015, Petitioner filed a Petition for Inter Partes Review of
`
`claims 1-19, 21-44, 48-51, 53, 92-107, 112-146, 151-167, 176, 177, 179, and 183-
`
`189 of the ’238 patent under 35 U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.80,
`
`24.100-.123 (“Petition,” Paper No. 2). This review has not yet been instituted.
`
`On September 1, 2015, Petitioner and patent owner jointly submitted a
`
`motion to limit the Inter Partes Review of the ’238 patent to claims 98 and 187
`
`and to remove claims 1-19, 21-44, 48-51, 53, 92-97, 99-107, 112-146, 151-167,
`
`176, 177, 179, 183-186, 188, and 189 of the ’238 patent from consideration in the
`
`proceeding.
`
`On September 15, 2015, the Patent Trial and Appeal Board granted the joint
`
`motion to limit the instant proceeding to claims 98 and 187 of the ’238 patent and
`
`
`
`
`1
`
`
`
`Case No. IPR2015-01571
`Request for Refund of Portion of Post Institution Fee
`
`
`to remove claims 1-19, 21-44, 48-51, 53, 92-97, 99-107, 112-146, 151-167, 176,
`
`177, 179, 183-186, 188, and 189 of the ’238 patent from consideration in the
`
`proceeding (Paper No. 12). The Board noted that “a decision whether to institute
`
`trial has not yet been made.” (Id. at 3).
`
`Because no trial has been instituted and no trial will be instituted on claims
`
`1-19, 21-44, 48-51, 53, 92-97, 99-107, 112-146, 151-167, 176, 177, 179, 183-186,
`
`188, and 189 of the ’238 patent, Petitioner herby requests refund of $44,000, the
`
`portion of the post-institution fee it paid pursuant to 37 C.F.R. § 42.15(a)(2) for
`
`each claim of the ’238 patent in excess of 15 claims1. Payment of the post-
`
`institution fee was processed through PRPS on July 10, 2015, and charged to the
`
`undersigned’s Deposit Account No. 06-0923.
`
`III. CONCLUSION
`Upon review and approval of this request, Petitioner respectfully requests
`
`that the Board credit $44,000 of the post-institution fee to Deposit Account No. 06-
`
`
`
`0923.
`
`
`1 Pursuant to 37 C.F.R. § 42.15, Petitioner paid a total post-institution fee of $58,000 concurrently with filing the
`Petition as follows: $14,000 post institution fee plus $400 for each claim in excess of 15 claims = $14,000
`+($400)(110 claims) = $58,000.
`
`
`
`2
`
`
`
`Dated: October 12, 2015
`
`Case No. IPR2015-01571
`Request for Refund of Portion of Post Institution Fee
`
`
`Respectfully submitted,
`
`
`
`/Cynthia Lambert Hardman/
`Elizabeth J. Holland (Reg. No. 47,657)
`Robert V. Cerwinski
`Cynthia Lambert Hardman
` (Reg. No. 53,179)
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`Tel: 212-813-8800
`Fax: 212-355-3333
`
`Counsel for Petitioner Fresenius Kabi USA
`LLC
`
`
`
`
`
`3
`
`
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “REQUEST FOR REFUND OF
`
`PORTION OF POST-INSTITUTION FEE FOR INTER PARTES REVIEW
`
`OF U.S. PATENT 8,058,238 ” was served by electronic mail on this 12th day of
`
`October, 2015 on the following:
`
`
`Emily R. Whelan
`Andrej Barbic, Ph.D.
`Gerard M. Devlin, Jr.
`Lisa A. Jakob
`Emily.Whelan@wilmerhale.com
`Andrej.Barbic@wilmerhale.com
`Gerard.Devlin@merck.com
`Lisa.Jakob@merck.com
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`
`Dated: October 12, 2015
`
`
`
`
`
`ACTIVE/83974953.1
`
`/s/ Cynthia Lambert Hardman
`Elizabeth J. Holland (Reg. No. 47,657)
`Robert V. Cerwinski
`Cynthia Lambert Hardman
` (Reg. No. 53,179)
`Goodwin Procter LLP
`620 Eighth Avenue
`New York, NY 10018
`Tel: 212-813-8800
`Fax: 212-355-3333
`
`Counsel for Petitioner Fresenius Kabi USA
`LLC
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