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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MYLAN LABORATORIES LTD.,
`Petitioner
`
`v .
`
`JANSSEN PHARMACEUTICA NV,
`Patent Owner.
`
`U.S. Patent No. 9,439,906 to Vermeulen et al.
`Issue Date: September 13, 2016
`Title: Dosing Regimen Associated with Long
`Acting Injectable Paliperidone Esters
`
`
`
`Inter Partes Review No.: IPR2020-00440
`
`
`
`
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`
`
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`
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`
`
`PETITIONER’S REQUEST FOR REFUND OF IPR FEES
`
`
`
`
`
`
`
`
`

`

`Case IPR2020-00440
`Patent No. 9,439,906
`
`
`Petitioner Mylan Laboratories Ltd. (“Mylan”) requests a refund in the amount
`
`
`
`of $15,000 to be paid to Deposit Acct. No. 501290 (Customer ID No. 27160)
`
`pursuant to the U.S. Patent and Trademark Office’s Final Rule Setting and Adjusting
`
`Patent Fees, 78 F.R. 4211, 4234-35 (Jan. 18, 2013).
`
`On February 7, 2020, Mylan filed a Petition for inter partes review against
`
`U.S. Patent No. 9,439,906, proceeding IPR2020-00440. In accordance with the fee
`
`schedule specified in 37 C.F.R. § 42.15(a), Mylan deposited an electronic payment
`
`in the amount of $ 30,500 with the PTO at the time of filing its Petition. Mylan’s
`
`payment consisted of $ 15,500 in fees associated with Mylan’s inter partes review
`
`request, and a further $ 15,000 in Post-Institution fees.
`
`On September 16, 2020, the Board entered a decision to terminate proceeding
`
`IPR2020-00440 denying institution (Paper 17). On January 18, 2022, the United
`
`States Supreme Court denied Mylan’s Petition for a writ of certiorari. Accordingly,
`
`Mylan requests a refund in the amount of $15,000 for the Post-Institution fees.
`
`2
`
`

`

`
`
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`
`
`
`Case IPR2020-00440
`Patent No. 9,439,906
`
`RESPECTFULLY SUBMITTED,
`
`
`/Jitendra malik/
`
`Jitendra Malik
`Reg. No. 55823
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`
`Lead Counsel for Petitioner
`Mylan Laboratories Ltd.
`
`
`
`
`
`
`Date: March 17, 2022
`
`
`
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`
`
`
`3
`
`

`

`
`
`
`CERTIFICATION OF SERVICE
`
`Case IPR2020-00440
`Patent No. 9,439,906
`
`
`The undersigned certifies a copy of the foregoing PETITIONER’S
`
`REQUEST FOR REFUND OF IPR FEES was served on March 17, 2022 via
`
`electronic mail directed to the counsel of record for the Patent Owner at the
`
`following:
`
`
`
`bmullin@pbwt.com
`
`rmunoz@akingump.com
`
`acohen@pbwt.com
`
`jcho@pbwt.com
`
`/Jitendra malik/
`
`
`
`
`
`
`
` RESPECTFULLY SUBMITTED,
`
`
`
`
`Jitendra Malik
`Reg. No. 55823
`Katten Muchin Rosenman LLP
`550 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
`
`Lead Counsel for Petitioner
`Mylan Laboratories Ltd.
`
`4
`
`

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