`
`Filed on behalf of:
`Ranbaxy Inc.
`Joseph M. Reisman
`Carol Pitzel Cruz
`Kerry S. Taylor
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`E-mail: BoxRanbaxy332@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`Filed: May 24, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`RANBAXY INC.,
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-00024
`Patent 8,772,306
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REFUND
`OF POST-INSTITUTION FEES
`
`
`
`Ranbaxy v. Jazz
`Case IPR2016-00024
`U.S. Pat. 8,772,306
`
`
`
`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
`
`Ranbaxy Inc. (“Ranbaxy”) request a refund in the amount of $21,600 or, in the
`
`alternative, of $7,200, to be paid to deposit account number 111410.
`
`On October 7, 2015, Ranbaxy filed a Petition for Inter Partes Review of
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`U.S. Patent No. 8,772,306 with the Patent Trial and Appeal Board that was
`
`assigned case number IPR2016-00024. In accordance with the fee schedule of
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`37 C.F.R. § 42.15(a)(1) and (a)(3) Ranbaxy deposited an electronic payments in
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`the amounts of $9,000 and $2,800, respectively. Thus, Ranbaxy deposited $11,800
`
`with the Board at the time of filing of its Petition to cover fees associated with
`
`Ranbaxy’s inter partes review request. In accordance with the fee schedule of
`
`37 C.F.R. § 42.15(a)(2) and (a)(4), Ranbaxy deposited further electronic payments
`
`in the amounts of $14,000 and $7,600, respectively. Thus, Ranbaxy deposited
`
`$21,600 to cover fees associated with post-issuance proceedings.
`
`On May 23, 2016, the Patent Trial and Appeal Board entered Judgment
`
`terminating the inter partes review in its early stages, a mere 41 days after the
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`April 12, 2016 institution of the IPR as to 16 of the 34 claims for which Ranbaxy’s
`
`Petition sought an IPR. No substantive post-institution proceedings have taken
`
`place. Thus, Ranbaxy requests a refund in the amount of the combined
`
`- 1 -
`
`
`
`Ranbaxy v. Jazz
`Case IPR2016-00024
`U.S. Pat. 8,772,306
`
`
`
`post-institution fees under 37 C.F.R. § 42.15(a)(2) and (a)(4), in the amount of
`
`$21,600, paid to the USPTO in connection with this matter.
`
`If Ranbaxy is deemed not to be entitled to the full refund it seeks, based on
`
`the April 12, 2016 Institution Decision, Ranbaxy seeks in the alternative a refund
`
`of fees paid under 37 C.F.R. § 42.15(a)(4), for claims in excess of the 16 for which
`
`the IPR was instituted. Specifically, in the alternative, Ranbaxy seeks a refund of
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`$7,200 ((34-16) x $400), paid under 37 C.F.R. § 42.15(a)(4), for the claims in
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`excess of 15 for which Ranbaxy’s Petition was filed but for which the IPR was not
`
`instituted.
`
`
`
`
`
`Dated: May 24, 2016
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Joseph M. Reisman/
`Joseph M. Reisman (Reg. No. 43,878)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Kerry S. Taylor (Reg. No. 43,947)
`Customer No. 20,995
`
`Attorneys for Petitioner
`RANBAXY INC.
`(949) 760-0404
`
`- 2 -
`
`
`
`Ranbaxy v. Jazz
`Case IPR2016-00024
`U.S. Pat. 8,772,306
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify
`
`that a
`
`true and correct copy of
`
`the foregoing
`
`PETITIONER’S REQUEST FOR REFUND OF POST-INSTITUTION FEES
`
`is being served on May 24, 2016, via email pursuant to 37 C.F.R. § 42.6(3), per
`
`agreement of the parties, to lead and back up counsel for Jazz Pharmaceuticals,
`
`Inc. at the addresses below:
`
`F. Dominic Cerrito
`Evangeline Shih
`Frank C. Calvosa
`Quinn Emanuel Urquhart & Sullivan, LLP
`51 Madison Avenue 22nd Floor
`New York, NY 10010
`Telephone: (212) 849-7000
`Email: nickcerrito@quinnemanuel.com
`
` evangelineshih@quinnemanuel.com
`
` frankcalvosa@quinnemanule.com
`
`John V. Biernacki
`Jones Day
`North Point
`901 Lakeside Avenue
`Cleveland, OH 44114
`Telephone: (216) 586-3939
`Email: jvbiernacki@jonesday.com
`
`
`Dated: May 24, 2016
`
`23361543/052416
`
`
`
` /Joseph M. Reisman/
`Joseph M. Reisman (Reg. No. 43,878)
`
`Attorney for Petitioner
`RANBAXY INC.
`
`
`
`
`
`- 3 -
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