UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC AND L G SOURCING, INC.,
`Petitioners
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`
`U.S. Patent No. 9,490,411
`
`Inter Parties Review No. 2018-00601
`
`Attorney Docket No.: 01320083-000020
`_____________________________
`
`REQUEST FOR REFUND OF INTER PARTES REVIEW REQUEST FEES
`AND POST-INSTITUTION FEES FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,490,411
`
`Mail Stop Patent Board
`Patents Trial and Appeals Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LOWE’S COMPANIES, INC.,
`LOWE’S HOME CENTERS, LLC AND L G SOURCING, INC.,
`Petitioners
`
`v.
`
`NICHIA CORPORATION,
`Patent Owner
`
`U.S. Patent No. 9,490,411
`
`Inter Parties Review No. 2018-00601
`
`Attorney Docket No.: 01320083-000020
`_____________________________
`
`REQUEST FOR REFUND OF INTER PARTES REVIEW REQUEST FEES
`AND POST-INSTITUTION FEES FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 9,490,411
`
`Mail Stop Patent Board
`Patents Trial and Appeals Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Inter Partes Review No. IPR2018-00601
`U.S. Patent No. 9,490,411
`Request for Refund
`
`On February 9, 2018, Lowe’s Companies, Inc., Lowe’s Home Centers, LLC
`
`and L G Sourcing, Inc (“Lowe’s”) filed a Petition for Inter Partes review
`
`(“IPR2018-00601”) concerning U.S. Patent No. 9,490,411 (the “’411 Patent”).
`
`On May 15, 2018, Nichia advised the Board that Lowe’s and Nichia
`
`Corporation (“Nichia”) had agreed in principle to a settlement, were negotiating a
`
`definitive settlement agreement and would move to terminate once the final
`
`agreement was executed.
`
`On May 23, 2018, the Patent Owner filed a Preliminary Response.
`
`On June 1, 2018, Lowe’s and Nichia Corporation (“Nichia”) had a
`
`conference call with the Board advising that a definitive settlement agreement was
`
`imminent and the Board authorized the parties to file a motion to terminate as soon
`
`as settlement was finalized.
`
`Thereafter, on June 13, 2018, Lowe’s and Nichia filed a motion to terminate
`
`pursuant to the settlement agreement. On June 21, 2018, the Board issued a
`
`Decision – Termination of the Proceedings Upon Settlement Prior to Institution 37
`
`C.F.R. §§42.71(a), 42.74.
`
`-1-
`
`
`
`
`
`Inter Partes Review No. IPR2018-00601
`U.S. Patent No. 9,490,411
`Request for Refund
`
`In accordance with 37 C.F.R. 42.15(a)(2) and (4), since Inter Partes review
`
`was not instituted, the post-institution fees paid at the time of filing should be
`
`returned. Accordingly, Yankon respectfully requests a refund of post-issuance
`
`fees in the amount of $17,400 ($15,000 post-institution fee plus $2,400 post-
`
`institution additional claim fees).
`
`In addition, Yankon respectfully requests a refund of the pre-institution fee.
`
`Pursuant to 37 C.F.R. 42.5(b) the Board may waive any requirement, including the
`
`fee requirement found in 37 C.F.R. 42.15(a)(1). Here, good cause exists for waiver
`
`of the pre-institution fee because (1) the parties advised the Board of settlement in
`
`principal approximately a week before Patent Owner filed its Preliminary
`
`Response, (2) the parties moved to terminate less than one month after Patent
`
`Owner’s Preliminary Response, (3) the Petition here was substantially identical to
`
`the earlier filed VIZIO Petition IPR2018-00386 for which a pre-institution fee was
`
`already paid, and (4) although the Board held a conference call related to
`
`settlement, the call covered resolution of four related IPRs for which Lowe’s has
`
`paid more than $60,000 in pre-institution fees (IPR2018-00699, IPR2018-00601,
`
`IPR2017-02011, IPR 2017-02014). Since no assessment of Lowe’s petition on the
`
`merits for Inter Partes review was required and/or was duplicative of the VIZIO
`-2-
`
`
`
`
`Inter Partes Review No. IPR2018-00601
`U.S. Patent No. 9,490,411
`Request for Refund
`
`Petition, and because the Board call involved multiple Lowe’s cases, Lowe’s also
`
`respectfully requests a refund of pre-institution fees in the amount of $15,500.
`
`Upon review and approval of the request, Lowe’s respectfully requests that
`
`the Board credit the requested amounts to Yankon by depositing such amounts into
`
`PTO Account No. 03-1250. If more information is necessary to provide payment,
`
`please contact lead counsel.
`
`Dated: July 10, 2018
`
`
`
`Respectfully submitted,
`
`
`/Tod M. Melgar/
`Scott D. Stimpson, Reg. No. 33,607
`Tod M. Melgar, Reg. No. 41,190
`Sills Cummis & Gross P.C.
`101 Park Avenue, 28th floor
`New York, NY 10178
`T: (212) 643-7000/F: (212) 643-6500
`Attorneys for Petitioner
`
`-3-
`
`
`
`
`
`Inter Partes Review No. IPR2018-00601
`U.S. Patent No. 9,490,411
`Request for Refund
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on July 10, 2018, a complete and entire copy of this REQUEST FOR
`
`REFUND OF INTER PARTES REVIEW REQUEST FEES AND POST-
`
`INSTITUTION FEES FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`9,490,411 was provided via email, to the Patent Owner by serving the
`
`correspondence email address of record as follows:
`
`Martin M. Zoltick, Lead Counsel
`Michael H. Jones, Back-up Counsel
`Mark T. Rawls, Back-up Counsel
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`Emails: mzoltick@rfem.com
` mjones@rfem.com
`mrawls@rfem.com
` litigationparalegals@rothwellfigg.com
`
`Dated: July 10, 2018
`
`
`
`
`/Tod M. Melgar/
`Tod M. Melgar, Reg. No. 41,190
`Sills Cummis & Gross P.C.
`101 Park Avenue, 28th floor
`New York, NY 10178
`T: (212) 643-7000/F: (212) 643-6500
`
`-4-
`
`
`
`
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