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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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`PALO ALTO NETWORKS, INC., DELL TECHNOLOGIES INC., VMWARE,
`INC., JUNIPER NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, AND ARUBA NETWORKS, INC.
`Petitioners
`
`v.
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`
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`SABLE NETWORKS, INC.
`Patent Owner
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`
`
`Case IPR2020-01712
`U.S. Patent No. 8,243,593
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`PETITIONER’S REQUEST FOR REFUND OF
`THE POST-INSTITUTION FEE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2020-01712
`U.S. Patent No. 8,243,593
`Pursuant to the Patent and Trademark Office’s Final Rule Setting and
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`Adjusting Patent Fees, 78 Fed. Reg. 4,211, 4,233-34 (Jan. 18, 2013), Petitioner
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`Palo Alto Networks, Inc. requests a refund in the amount of $40,500.00 to be paid
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`to deposit account number 19-0036.
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`On October 2, 2020, Petitioner filed a Petition for Inter Partes Review
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`seeking review of claims 1-44 of U.S. Patent No. 8,243,593 (assigned case number
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`IPR2020-01712) (Paper 6). On February 4, 2021, the parties filed a Joint Motion to
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`Terminate Inter Partes Review (Paper 11). The Patent Trial and Appeal Board
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`granted the parties Joint Motion to Terminate on February 11, 2021 (Paper 13).
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`Trial was never instituted in this proceeding.
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`The Rules provide for a refund of the post-institution fee if the Board does
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`not institute trial. Payment of the $40,500.00 post-institution fee in this proceeding
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`was processed through PTAB E2E on October 2, 2020, as follows:
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`• $22,500.00: post-institution fee (for first 20 claims) under 37 C.F.R. §
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`42.15(a)(2); and
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`• $18,000: post-institution fee for 24 excess claims (over 20 claims)
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`under 37 C.F.R. § 42.15(a)(4).
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`
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`- 2 -
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`
`
`Case IPR2020-01712
`U.S. Patent No. 8,243,593
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`Relief requested:
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`
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`Accordingly, Petitioner requests a refund in the amount of $40,500.00 for
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`the post-institution fee that it has paid to the USPTO in connection with this
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`proceeding.
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`
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jonathan Tuminaro/
`
`Jonathan Tuminaro (Registration No. 61,327)
`Michael D. Specht (Registration No. 54,463)
`Daniel Block (Registration No. 68,395)
`Todd Thurheimer (Registration No. 76,231)
`Attorneys for Petitioner Palo Alto Networks, Inc.
`
`Date: February 12, 2021
`1100 New York Avenue, N.W.
`Washington, D.C. 200005
`(202) 371-2600
`
`
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`- 3 -
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`
`
`Case IPR2020-01712
`U.S. Patent No. 8,243,593
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that a true and correct copy of the
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`foregoing PETITIONER’S REQUEST FOR REFUND OF THE POST-
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`INSTITUTION FEE was served electronically via e-mail on February 12, 2021,
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`in its entirety on the following:
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`Kenneth J. Weatherwax (Lead Counsel)
`Nathan Lowenstein (Back-Up Counsel)
`Patrick Maloney (Back-Up Counsel)
`Jason C. Linger (Back-Up Counsel)
`LOWENSTEIN & WEATHERWAX LLP
`Daniel P. Hipskind (Back-Up Counsel)
`Eric B. Hanson (Back-Up Counsel)
`BERGER & HIPSKIND LLP
`weatherwax@lowensteinweatherwax.com
`Sable_IPRs@lowensteinweatherwax.com
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Jonathan Tuminaro/
`
`Jonathan Tuminaro (Registration No. 61,327)
`Attorney for Petitioner Palo Alto Networks, Inc.
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`
`
`Date: February 12, 2021
`1100 New York Avenue, N.W.
`Washington, D.C. 200005
`(202) 371-2600
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