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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MAHLE FILTER SYSTEMS NORTH AMERICA, INC.
`
`
`Petitioner
`
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC
`
`Patent Owner
`____________
`
`Case No. 2019-00960
`
`Patent RE38,844
`______
`
`
`PETITIONER’S REQUEST FOR REFUND OF POST-INSTITUTION FEES
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`
`

`

`IPR2019-00960
`Patent RE38,844
`
`
`
`Petitioner, MAHLE FILTER SYSTEMS NORTH AMERICA, INC., hereby
`
`requests a refund of post-institution fees in the amount of $28,800. See 78 Fed. Reg.
`
`4,212, 4,233 (January 18, 2013) (“This fee would be returned to the petitioner if the
`
`Office does not institute a review.”); see also Frequently Asked Questions, E7,
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`PTABE2E (“[T]he petitioner may file in PTAB E2E a request for a refund of any
`
`post-institution fee paid.”).
`
`On April 9, 2019, Petitioner filed a Petition for Inter Partes Review of U.S.
`
`Patent RE38,844. As required by 37 C.F.R. § 42.15(a), Petitioner deposited
`
`$49,700.00 with the U.S. Patent and Trademark Office (“USPTO”) at the time of
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`filing the Petition to cover associated fees. Petitioner’s payment consisted of $20,900
`
`in fees associated with the request for Inter Partes Review and $28,800 in post-
`
`institution fees as required by 37 C.F.R. 42.15(a)(2).
`
`On October 17, 2019, the Board issued an Order Denying Institution of Inter
`
`Partes Review as to all challenged claims, and no trial was instituted (Paper 10).
`
`Accordingly, Petitioner requests a refund of the post-institution fees paid to the
`
`USPTO in connection with this proceeding, totaling $28,800, to be paid to deposit
`
`account number 230457 (with reference to Customer Number 24335 and Attorney
`
`Docket No. 152774.167807).
`
`1
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`

`

`IPR2019-00960
`Patent RE38,844
`
`
`
`
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`
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`
`
`Respectfully submitted,
`
`MAHLE Filter Systems North America, Inc.
`
`By /Randall J. Peck/
`Randall J. Peck, Reg. No. 66,147
`WARNER NORCROSS + JUDD LLP
`2000 Town Center
`Suite 2700
`Southfield, MI 48075-1318
`248-785-5045
`
`
`
`Dated: April 10, 2020
`
`
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`2
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`

`

`IPR2019-00960
`Patent RE38,844
`
`
`
`
`
`
`Certificate of Service
`37 C.F.R. § 42.6(e)(4)
`
`I certify that on April 10, 2020, I am causing a copy of this PETITIONER’S
`
`REQUEST FOR REFUND OF POST-INSTITUTION FEES to be served via
`
`electronic mail upon the following:
`
`
`
`Brian M. Buroker, Esquire
`GIBSON DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036
`bburoker@gibsondunn.com
`
`Omar F. Amin, Esquire
`GIBSON DUNN & CRUTCHER LLP
`1050 Connecticut Avenue, N.W.
`Washington, DC 20036
`oamin@gibsondunn.com
`
`
`
`Dated: April 10, 2020
`
`
`
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`Respectfully submitted,
`
`MAHLE Filter Systems North America, Inc.
`
`By /Randall J. Peck/
`Randall J. Peck, Reg. No. 66,147
`WARNER NORCROSS + JUDD LLP
`2000 Town Center
`Suite 2700
`Southfield, MI 48075-1318
`248-784-5045
`
`3
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`

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