`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA LLC
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.
`Patent Owner.
`
`IPR2015-01572
`
`REQUEST FOR REFUND 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
`
`
`
`
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Case No. IPR2015-01572
`Request for Refund of Post-Institution Fee
`
`
`I.
`
`Petitioner Fresenius Kabi USA LLC (“Petitioner”) respectfully requests a
`
`refund of $14,000, the post-institution fee Petitioner paid for its Petition for Inter
`
`Partes Review of U.S. Patent 8,058,238 (“the ’238 patent”), assigned case number
`
`IPR2015-01572. A refund is appropriate because the Board declined to institute
`
`trial in IPR2015-01572.
`
`II.
`
`STATEMENT OF FACTS
`
`On July 10, 2015, Petitioner filed a Petition for Inter Partes Review of
`
`claims 20, 45-47, 49-52, 54-91, 108-111, 147-150, 168-175, 178, 180-183, and
`
`190-192 of the ’238 patent. (“Petition,” Paper No. 2.)
`
`On September 1, 2015, prior to the Board’s decision on whether to institute
`
`IPR, Petitioner and Patent Owner jointly submitted a motion to limit IPR2015-
`
`01572 to claim 91, and to seek removal of claims 20, 45-47, 49-52, 54-90, 108-
`
`111, 147-150, 168-175, 178, 180-183, and 190-192 from consideration in this
`
`proceeding.
`
`On September 15, 2015, the Board granted the joint motion to limit the
`
`instant IPR to claim 91, and to remove the other 69 claims. (Paper No. 15.)
`
`Because the instant IPR was narrowed to a single claim, on October 12,
`
`2015, Petitioner requested a refund of $22,000, the portion of the post-institution
`
`
`
`
`1
`
`
`
`fee that was due to claims in excess of 15. 37 C.F.R. § 42.15(a)(4). On October
`
`Case No. IPR2015-01572
`Request for Refund of Post-Institution Fee
`
`
`14, 2015, the Board issued a Notice of Refund of $22,000. (Paper No. 17).
`
`Because the Board has declined to institute Inter Partes review of claim 91
`
`of the ’238 patent, Petitioner hereby requests refund of $14,000, the portion of the
`
`post-institution fee that has not yet been refunded by the Board. 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 the remaining $14,000 of the post-institution fee to Deposit
`
`Account No. 06-0923.
`
`
`
`Dated: February 19, 2016
`
`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
`2
`
`
`
`
`
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that “REQUEST FOR REFUND OF
`
`POST-INSTITUTION FEE FOR INTER PARTES REVIEW OF U.S.
`
`PATENT 8,058,238 ” was served by electronic mail on this 19th day of February,
`
`2016 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
`
`Dated: February 19, 2016
`
`
`
`
`
`ACTIVE/84910892.1
`
`/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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