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THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`HP INC.,
`
`Petitioner,
`
`v.
`
`MEMJET TECHNOLOGY LIMITED,
`
`Patent Owner
`_________________
`
`Case IPR2016-00791
`Patent No. 8,678,550
`_________________
`
`
`
`Before JAMESON LEE, LYNNE E. PETTIGREW, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`PETITIONER’S REQUEST FOR REFUND OF FEES
`
`
`
`
` DB1/ 88422217.1
`
`
`

`
`HP Inc. (“Petitioner”) hereby requests a refund of the $14,000 post-
`
`IPR2016-00791
`Patent No. 8,678,550
`
`
`
`
`institution fee that it previously paid. Petitioner filed a petition for inter partes
`
`review of U.S. Patent No. 8,678,550 on March 22, 2016, and paid the USPTO
`
`$23,000 on that date, including a $9,000 payment for the inter partes review
`
`request fee and a $14,000 payment for the post-institution fee, as required by 37
`
`C.F.R. §42.15(a)(2). On July 12, 2016, the Board terminated this proceeding, as
`
`requested in the parties’ Joint Motion to Terminate Proceeding filed July 6, 2016
`
`(Paper No. 7), noting that no decision on whether to institute a trial was made. See
`
`Paper 10.
`
`
`
`Based on the termination of this proceeding before institution, Petitioner
`
`requests a refund in the amount of the post-institution fees that it paid for post-
`
`institution services. See 78 FR 4212, 4233 (January 18, 2013), available at
`
`http://www.uspto.gov/sites/default/files/aia_implementation/AC54_Final_Rule_Se
`
`tting78FR4212-2013JAN18.pdf (“The entire post-institution fee would be returned
`
`to the petitioner if the Office does not institute a review.”); FAQ E7, available at
`
`http://www.uspto.gov/patents-application-process/appealing-patent-
`
`decisions/trials/patent-review-processing-system-prps-0#heading-10 (“[T]he
`
`petitioner may file in PRPS a request for a refund of any post-institution fee
`
`paid.”).
`
`
`DB1/ 88422217.1
`
`
`
`
`
`1
`
`

`
`Accordingly, Petitioner hereby requests a refund of the $14,000 post-
`
`IPR2016-00791
`Patent No. 8,678,550
`
`
`
`
`institution fee that it previously paid. The refund may be deposited in Deposit
`
`Account No. 50-0310 under Order No. 069700-5010.
`
`
`
`Dated: July 20, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Dion M. Bregman/
`By
`Dion M. Bregman
`USPTO Reg. No. 45,645
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`Telephone: 650.843.4000
`Fax: 650.843.4001
`Email: dion.bregman@morganlewis.com
`
`Attorneys for Petitioner
`HP INC.
`
`
`DB1/ 88422217.1
`
`
`
`2
`
`

`
`CERTIFICATE OF SERVICE
`
`IPR2016-00791
`Patent No. 8,678,550
`
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Request for
`
`Refund of Fees was served on July 20, 2016 by email to:
`
`James M. Glass
`John McKee
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`Marc L. Kaplan
`Quinn Emanuel Urquhart & Sullivan LLP
`500 W. Madison St., Ste 2450
`Chicago, IL 60661
`marckaplan@quinnemanuel.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Dion M. Bregman/
`Dion M. Bregman
`USPTO Reg. No. 45,645
`
`
`
`
`
`
`
`
`
`DB1/ 88422217.1

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