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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TELULAR CORPORATION
`
`Petitioner,
`
`v.
`
`PERDIEM CO., LLC.
`
`Patent Owner
`
`_________________
`
`
`
`
`
`
`
`PETITIONER’S MANDATORY NOTICES PURSUANT TO 37 C.F.R. §42.8
`
`
`
`
`
`i
`
`
`
`
`
`

`

`Petitioner submits this notice pursuant to 37 C.F.R. §42.8 in response to new
`
`related matters.
`
`
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following related matters involves the patent at issue in this IPR:
`
`1. Previous District Court Litigation
`
`The Patent Owner previously filed lawsuits asserting the Patent-at-Issue in
`
`the following cases, each of which were pending in the Eastern District of Texas:
`
`PerdiemCo, LLC. v. Omnivations II, LLC D/B/A Fleetronix, Case No. 2:15-cv-
`
`00729; PerdiemCo, LLC. v. thingtech LLC, Case No. 2:15-cv-01218; PerdiemCo,
`
`LLC. v. LiveViewGPS, Inc., Case No. 2:15-cv-01219; PerdiemCo LLC v. TV
`
`Management, Inc. d/b/a GPS North America, Case No. 2:15-cv-01217;
`
`PerdiemCo, LLC. v. Teletrac, Inc. et al; Case No. 2:15-cv-00730; PerdiemCo LLC
`
`v. Geotab Inc. et al, Case No. 2:15-cv-00726; Perdiem Co LLC v. GPS Logic,
`
`LLC; Case No. 2:15-cv-01216; PerdiemCo, LLC. v. Industrack LLC, Case No.
`
`2:15-cv-00727.
`
`2. Current District Court Litigation
`
`On December 13, 2016, Patent Owner filed the following suit in the Eastern
`
`District of Texas: PerdiemCo LLC v. Telular Corporation et al, 2-16-cv-01408
`
`asserting Patent Nos. 8,223,012; 9,003,499; 9,071,931; 9,485,314; 9,119,033;
`
`9,319,471; and 8,149,113.
`
`
`
`1
`
`

`

`3. Patent Trial and Appeal Board
`
`The Patent-at-Issue is only one of ten related patents and two pending
`
`applications which include U.S. Patent Nos. 7,525,425; 8,493,207; 8,717,166;
`
`8,223,012; 9,003,499; 9,485,314; 9,119,033; 9,319,471; 9,071,931; 8,149,113, and
`
`pending applications 14/629,347 and 15/200,592.
`
`The instant IPR relates to the following IPRs, all of which are pending:
`
`1. IPR2016-01061 (the ’012 Patent) - Filed May 19, 2016/ instituted Dec. 6, 2016
`
`2. IPR2016-01062 (the ’207 Patent) - Filed May 19, 2016/ instituted Dec. 6, 2016
`
`3. IPR2016-01063 (the ’166 Patent) - Filed May 19, 2016/ instituted Nov. 29, 2016
`
`4. IPR2016-01064 (the ’499 Patent) - Filed May 19, 2016/ instituted Dec. 5, 2016
`
`5. IPR2016-01278 (the ’931 Patent) - Filed July 1, 2016/ instituted Dec. 19, 2016
`
`6. IPR2017-00574 (the ’012 Patent) - Filed Jan. 4, 2017
`
`7. IPR2017-00575 (the ’499 Patent) - Filed Jan. 4, 2017
`
`8. IPR2017-00636 (the ’931 Patent) - Filed Jan. 11, 2017
`
`Respectfully submitted,
`HILL, KERTSCHER & WHARTON, LLP
`/Vivek Ganti/
`Vivek Ganti (Registration No. 71,368)
`Lead Counsel for Petitioner
`
`
`
`
`
`Date: February 10, 2017
`
`
`
`
`
`
`
`2
`
`

`

`CERTIFICATION OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing paper and any
`
`supporting materials were served via electronic mail on February 10, 2017, as
`
`agreed to by the parties pursuant to 37 C.F.R. § 42.105, in its entirety on the
`
`Alan Whitehurst
`AlanWhitehurst@quinnemanuel.com
`Quinn-PerDiem@quinnemanuel.com
`Quinn Emanuel Urquhart & Sullivan, LLP
`777 6th Street NW 11th floor
`Washington, D.C. 20001-3706
`
`
`
`Respectfully submitted,
`HILL, KERTSCHER & WHARTON, LLP
`
`following:
`
`
`
`/Vivek Ganti/
` Vivek Ganti
`Lead Counsel for Petitioner
`3350 Riverwood Pkwy, Suite 800 Registration No. 71,368
`Atlanta, GA 30339
`(770) 953-0995
`
`
`
`
`
`
`Date: February 10, 2017
`
`
`
`3
`
`
`
`

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