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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`TRILLER, INC.
`Petitioner
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`v.
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`TIKTOK PTE. LTD.
`Patent Owner
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`___________
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`Case No. IPR2022-00180
`U.S. Patent No. 9,992,322
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`Title: Method Of Enabling Digital Music Content To Be Downloaded To And
`Used On a Portable Wireless Computing Device
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`PETITIONER’S REQUEST FOR REFUND OF POST-INSTITUTION FEES
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`Pursuant to 37 C.F.R. § 1.26(a) and the Patent and Trademark Office’s Final
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`Rule Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212, 4232-4234 (Jan. 18,
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`2013), Petitioner Triller, Inc. (“Triller”) hereby requests a refund in the amount of
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`$22,500 to be credited to Deposit Account No. 23-3178.
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`On November 10, 2021, Petitioner filed a Petition for Inter Partes Review of
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`U.S. Patent No. 9,992,322 with the Patent Trial and Appeal Board, and the Petition
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`was assigned case number IPR2022-00180. (Paper Nos. 1, 3.) In accordance with
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`the fee schedule specified in 37 C.F.R. § 42.15(a), Petitioner provided at the time of
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`filing of its Petition a payment via Deposit Account No. 23-3178 in the amount of
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`$19,000 to cover the Inter Partes Review Request Fee and a further $22,500 to cover
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`the Inter Partes Review Post-Institution Fee.
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`The Board instituted trial on May 16, 2022. (Paper No. 9.) On October 12,
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`2022, however, the Board entered a decision terminating this proceeding in
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`accordance with a settlement agreement between the parties. (Paper No. 21.) The
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`proceeding was terminated before briefing was complete, before any oral hearing,
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`and before the Board had made any decision on the merits. (Paper No. 21.)
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`37 C.F.R. § 1.26(a) states that “[t]he Director may refund any fee paid…in
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`excess of that required.” Although that regulation does not specifically address a
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`request for refund of an Inter Partes Review Post-Institution Fee, the Patent and
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`Trademark Office’s Final Rule Setting and Adjusting Patent Fees, 78 Fed. Reg.
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`4212, 4233 (Jan. 18, 2013) states that “[t]he Office…chooses to return fees for post-
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`institution services should a review not be instituted.” And although that statement
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`does not address a request for refund of a post-institution fee when a review has been
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`instituted—but when the review is terminated before the Board has expended the
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`time to prepare for and conduct an oral hearing or to make any decision on the merits
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`as in this case, such a request would seem to be within the scope of 37 C.F.R.
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`§ 1.26(a). Indeed, in Hisense Visual Technology Co. v. LG Electronics Inc.,
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`IPR2020-01208, Paper Nos. 18 and 19 (Apr. 5, 2021 and Apr. 7, 2021), a refund of
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`the post-institution fee was allowed when the review was terminated after institution
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`but before briefing was complete and, therefore, well before oral hearing and well
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`before any decision on the merits. Likewise, in SK Hynix Inc. v. Netlist, Inc.,
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`IPR2020-01421, Paper Nos. 17 and 18 (May 27, 2021 and June 10, 2021), a refund
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`of the post-institution fee was allowed in the same situation. The proceedings in this
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`case were also terminated before briefing was complete and, consequently, well
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`before oral hearing and well before any decision on the merits.
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`Accordingly, consistent with the refunds issued in Hisense and SK Hynix, and
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`pursuant to 37 C.F.R. § 1.26(a), Petitioner requests a refund in the amount of $22,500
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`for the Post-Institution Fee that it paid to the USPTO in connection with this
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`proceeding, or alternatively, whatever portion of that fee the Office deems was
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`“paid…in excess of that required,” to be credited to Deposit Account No. 23-3178.
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`DATED this 14th day of October, 2022.
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`Respectfully submitted,
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`By /Chad Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`Brian N. Platt, Reg. No. 62,249
`David R. Todd, Reg. No. 41,348
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, Utah 84111
`Telephone: 801-533-9800
`Facsimile: 801-328-1707
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` Attorneys for Petitioner Triller, Inc.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 14th day of October
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`2022, I caused the foregoing PETITIONER’S REQUEST FOR REFUND OF
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`POST-INSTITUTION FEES to be served via email on the following counsel of
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`record for Patent Owner:
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`W. Karl Renner, Reg. No. 41,265 (email: renner@fr.com)
`Dan Smith, Reg. No. 71,278 (email: dsmith@fr.com)
`Patrick J. Bisenius, Reg. No. 63,893 (email: bisenius@fr.com)
`Craig A. Deutsch, Reg. No. 69,264 (email: deutsch@fr.com)
`Kim H. Leung, Reg. No. 64,399 (email: leung@fr.com)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Additional Email Addresses: IPR50048-0016IP1@fr.com
`PTABInbound@fr.com
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`/Chad Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
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