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`Entered: January 14, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
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`v.
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`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
`_______________________
`Case IPR2020-00919
`Patent 9,901,123
`______________________
`
`
`PETITIONER’S REQUEST FOR REFUND
`OF POST-INSTITUTION FEES
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`
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`IPR2020-00919 (USP 9,901,123)
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`Petitioner’s Request for Refund
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`
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`On May 8, 2020, Philip Morris Products, S.A. (“Petitioner”) filed a Petition
`for Inter Partes Review (IPR2020-00919) seeking review of claims 27-30 of U.S.
`Patent No. 9,901,123. Pursuant to 37 C.F.R. §42.15(a)(2) and (4), Petitioner’s paid
`fees totaling $30,500 which included a $15,000 payment for the post-institution
`fee.
`
`On November 16, 2020, the Patent Trial and Appeal Board (“the Board”)
`denied institution of the Petition. (Paper 9.)
`Therefore, because the Petition for Inter Partes review was filed after March
`19, 2013, and the proceeding was not instituted, Petitioner is entitled to request a
`refund of the post-institution fee that was previously paid. See, e.g., 78 Fed. Reg.
`4212, 4233 (Jan. 18, 2013), available at http://www.gpo.gov/fdsys/pkg/FR-2013-
`01-18/pdf/2013-00819.pdf (“The entire post-institution fee would be returned to
`the petitioner if the Office does not institute a review.”).
`Upon review and approval of the request, Petitioner respectfully asks the
`Board to credit $15,000 to Petitioner’s by depositing such amount into PTO
`Deposit Account No. 506269 of Latham & Watkins LLP.
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`
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`Dated: January 14, 2021
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`
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`By: / Jonathan M. Strang /
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Matthew J. Moore (Reg. No. 42,012)
`matthew.moore@lw.com
`Inge A. Osman (Reg. No. 74,480)
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`Respectfully submitted,
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`IPR2020-00919 (USP 9,901,123)
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`Petitioner’s Request for Refund
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`inge.osman@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
`
`Christopher W. Henry (Reg. No. 60,907)
`christopher.henry@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
`Telephone: 617.948,6000
`Fax: 617.948.6001
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`Counsel for Petitioner
`Philip Morris Products, S.A.
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`IPR2020-00919 (USP 9,901,123)
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`Petitioner’s Request for Refund
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 14th day of January,
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`2021, a true and correct copy of the foregoing Petitioner’s Request for Refund of
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`Post-Institution Fees was served by electronic mail on Patent Owner’s lead and
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`backup counsel at the following email addresses:
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`David M. Maiorana (Reg. No. 41,449)
`Kenneth S. Luchesi (Reg. No. 58,673)
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: 216.586.3939
`Fax: 216.579.0212
`Email: dmaiorana@jonesday.com
`Email: kluchesi@jonesday.com
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`Anthony M. Insogna (Reg. No. 35,203)
`Jones Day
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel: 858.314.1200
`Fax: 844.345.3178
`Email: aminsogna@jonesday.com
`
`Geoffrey K. Gavin (Reg. No. 47,591)
`Jones Day
`1420 Peachtree Street, N.E., Suite 800
`Atlanta, GA 30309-3053
`Tel: 404.521.3939
`Fax: 404.581.8330
`Email: ggavin@jonesday.com
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`Joshua R. Nightingale (Reg. No. 67,865)
`Jones Day
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219-2514
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`Petitioner’s Request for Refund
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`By: / Jonathan M. Strang /
`
`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Petitioner
`Philip Morris Products, S.A.
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`IPR2020-00919 (USP 9,901,123)
`
`
`Tel: 412.391.3939
`Fax: 412.394.7959
`Email: jrnightingale@jonesday.com
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`George N. Phillips (Reg. No. 68,001)
`Jones Day
`250 Vesey Street
`New York, NY 10281-1047
`Tel: 212.326.3939
`Fax: 212.755.7306
`Email: gphillips@jonesday.com
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