Kevin Chu
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Monday, August 15, 2016 1:00 PM
`Marissa Ducca; Trials
`Alan Whitehurst; Kevin Chu; Steve Hill; sb@hkw-law.com; bhf@hkw-law.com; vg@hkw-
`law.com
`RE: IPR2016-01061, -01062, -01063, -01064, -01278 – Request To File Joint Motion To
`Terminate Petitioner Teletrac Pursuant To Settlement With Patent Owner
`
`Counsel:
`
`No conference call is necessary at this time. The Board authorizes Petitioners Teletrac Inc. and Navman Wireless North
`America, Ltd., and Patent Owner PerdiemCo., LLC, to file, in each proceeding, a joint motion to terminate (only as to
`Teletrac and Navman Wireless) pursuant to 35 U.S.C. § 317(a). The joint motion must be accompanied by a true copy of
`the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). A redacted version of the
`settlement agreement will not be accepted as a true copy of the settlement agreement.
`
`With respect to having the settlement agreement treated as business confidential under 37 C.F.R. § 42.74(c), the parties
`must file the confidential settlement agreement as an exhibit in accordance with the instructions provided on the
`Board’s website. The parties are directed to FAQ G2 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their settlement agreement as
`confidential.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`703-756-1288
`
`
`
`From: Marissa Ducca [mailto:marissaducca@quinnemanuel.com]
`Sent: Friday, August 12, 2016 12:19 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Alan Whitehurst <alanwhitehurst@quinnemanuel.com>; Kevin Chu <kevinchu@quinnemanuel.com>; Steve Hill
`<sgh@hkw-law.com>; sb@hkw-law.com; bhf@hkw-law.com; vg@hkw-law.com
`Subject: IPR2016-01061, -01062, -01063, -01064, -01278 – Request To File Joint Motion To Terminate Petitioner Teletrac
`Pursuant To Settlement With Patent Owner
`
`Dear Sir or Madam,
`
`
`Pursuant to 37 CFR §42.20 and 35 U.S.C. § 317, Patent Owner PerdiemCo LLC (“Patent Owner”) and
`Petitioners Teletrac Inc. and Navman Wireless North America, Ltd. (collectively “Teletrac”) jointly and
`respectfully request the Board’s permission to file a Joint Motion to Terminate in each of the following
`proceedings with respect to Teletrac only:
`
`
`1
`
`

`
`· IPR2016-01061 (U.S. Patent No. 8,223,012);
`· IPR2016-01062 (U.S. Patent No. 8,493,207);
`· IPR2016-01063 (U.S. Patent No. 8,717,166);
`· IPR2016-01064 (U.S. Patent No. 9,003,499); and
`· IPR2016-01278 (U.S. Patent No. 9,071,931).
`
`
`The termination with respect to Teletrac is pursuant to a Settlement Agreement in which the parties have
`agreed to end their disputes in their district court litigation and the aforementioned proceedings. The parties
`also request permission to file a copy of the fully executed Agreement, as well as a Joint Request that the
`Settlement Agreement Be Treated as Business Confidential Information pursuant to the procedures set forth
`in 37 CFR §42.74(c) and 35 USC §317(b). The aforementioned proceedings will still include active petitioners,
`namely Geotab Inc. and TV Management, Inc. d/b/a GPS North America.
`
`Counsel for Patent Owner and Teletrac are happy to discuss any of the above at the Board’s convenience.
`
`
`Best regards,
`Marissa Ducca
`202-538-8109
`marissaducca@quinnemanuel.com
`
`
`
`2