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Paper No. 11
`Filed: August 15, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`TELETRAC INC.,
`NAVMAN WIRELESS NORTH AMERICA, LTD.,
`GEOTAB INC., AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
`
`Petitioners
`
`v.
`
`PERDIEMCO LLC
`
`Patent Owner
`
`________________
`
`Case IPR2016-01063
`U.S. Patent No. 8,717,166
`________________
`
`JOINT MOTION TO TERMINATE THE PROCEEDINGS WITH
`RESPECT TO TELETRAC INC. AND NAVMAN WIRELESS NORTH
`AMERICA, LTD. UNDER 35 U.S.C. § 317(a)
`
`
`
`
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`
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`
`
`

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`Joint Motion to Terminate
`
`
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`
`Case IPR2016-01063
` U.S. Patent No. 8,717,166
`
`As authorized in the Patent Trial and Appeal Board’s (the “Board”) August
`
`15, 2016 e-mail (Ex. 2001), and pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§
`
`42.72 and 42.74, Patent Owner PerdiemCo LLC (“Patent Owner”) and Petitioners
`
`Teletrac Inc. and Navman Wireless North America, Ltd. (collectively “Teletrac”)
`
`jointly and respectfully request that the inter partes review (“IPR”) of U.S. Patent
`
`No. 8,717,166 be terminated with respect to Teletrac only.
`
`1.
`
`Brief Explanation As To Why Termination Is Appropriate
`
`On May 19, 2016, Teletrac, along with separate parties Geotab Inc. and TV
`
`Management, Inc. d/b/a GPS North America filed the instant IPR (Paper No. 5).
`
`On June 7, 2016, the Board issued a Notice of Filing Date Accorded to Petition and
`
`Time for Filing Patent Owner Preliminary Response (Paper No. 6). Patent Owner
`
`has not yet filed a response, which is due on September 7, 2016. On August 11,
`
`2016, Patent Owner and Teletrac settled their dispute and executed a confidential
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`settlement agreement to terminate Teletrac’s involvement in this proceeding and
`
`the parties’ related district court litigation: PerdiemCo LLC v. Industrack LLC et
`
`al., 2:15-cv-00727-JRG-RSP (E.D. Tex.) and PerdiemCo LLC v. Teletrac, Inc. et
`
`al., 2:15-cv-00730-JRG-RSP (E.D. Tex.). A Stipulation and Order of Dismissal
`
`agreed to by the parties in the related district court litigation has been filed in the
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`district court.
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`
`
`
`2
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`

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`Joint Motion to Terminate
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`
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`
`
`Case IPR2016-01063
` U.S. Patent No. 8,717,166
`
`
`
`Pursuant to 37 C.F.R. § 42.74(b), the parties’ confidential settlement
`
`agreement is in writing, and a true and correct copy is being filed concurrently
`
`herewith as Exhibit 2002.1 The parties are also filing concurrently herewith a joint
`
`request to treat the confidential settlement agreement as business confidential
`
`information and keep it separate from the files of the IPR and the involved patent
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Termination of this proceeding with respect to Teletrac is proper under 35
`
`U.S.C. § 317(a) because the Board has not yet instituted this proceeding. This
`
`proceeding will continue with respect to the other remaining Petitioners.
`
`Accordingly, Patent Owner and Teletrac respectfully request that the Board
`
`terminate the inter partes review of U.S. Patent No. 8,717,166 with respect to
`
`Teletrac.
`
`2.
`
`Related Litigations Involving The Patent At Issue
`
`The related litigations involving the patent at issue in this proceeding, as
`
`well as the remaining defendants in each case, are set forth below.
`
`
`
`
`1 The settlement agreement is being filed electronically via PTAB E2E with
`
`access to the “Board Only.” The settlement contains both Patent Owner’s and
`
`Teletrac’s business confidential information, which cannot be made available to
`
`any of the other Petitioners remaining in this proceeding.
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`
`
`
`3
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`

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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
`
`Case
`
`PerdiemCo LLC v. Industrack LLC, Case No. 2:15-
`cv-00727-JRG-RSP (E.D. Tex.) (consolidated with
`PerdiemCo LLC v. Geotab Inc. et al., Case No.
`2:15-cv-00726-JRG-RSP (E.D. Tex.)
`
`Defendants
`
`Geotab Inc.
`
`
`
`PerdiemCo LLC v. GPS Logic, LLC, Case No. 2:15-
`cv-01216-JRG-RSP (E.D. Tex.) (consolidated with
`PerdiemCo LLC v. thingtech LLC, Case No. 2:15-
`cv-01218-JRG-RSP (E.D. Tex.); PerdiemCo LLC v.
`LiveViewGPS, Inc., Case No. 2:15-cv-01219-JRG-
`RSP (E.D. Tex.); and PerdiemCo LLC v. TV
`Management, Inc., d/b/a GPS North America, Case
`No. 2:15-cv-01217-JRG-RSP (E.D. Tex.)
`
`thingtech LLC
`
`LiveViewGPS, Inc.
`
`TV Management Inc., d/b/a
`GPS North America
`
`
`
`3.
`
`Related Proceedings Currently Before The Office
`
`There are no related proceedings currently before the Office involving the
`
`patent at issue and Teletrac. This proceeding will continue with respect to the
`
`remaining Petitioners. Patent owner and Teletrac are likewise concurrently filing
`
`similar motions to terminate with respect to Case Nos. IPR2016-01061 (U.S.
`
`Patent No. 8,223,012); IPR2016-01062 (U.S. Patent No. 8,493,207); IPR2016-
`
`01064 (U.S. Patent No. 9,003,499); and IPR2016-01278 (U.S. Patent No.
`
`9,071,931).
`
`4.
`
`Current Status Of The Related Litigations
`
`
`
`The litigations against all other defendants remain pending. Each litigation
`
`involves multiple patents. Case No. 2:15-cv-00727-JRG-RSP is set for jury
`
`
`
`
`4
`
`

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`Joint Motion to Terminate
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`
`
`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`selection on November 7, 2016, and Case No. 2:15-cv-01216-JRG-RSP is set for
`
`jury selection on January 3, 2017, but no trial date has been set in any proceeding.
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`For the foregoing reasons, the parties jointly and respectfully request
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`termination of the present proceeding with respect to Teletrac.
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`
`
`
`5
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`

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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`Date: August 15, 2016
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/S/ Alan L. Whitehurst
`
`
`
`
`
`
`
`/S/ Sharad Kotagiri Bijanki
`
`
`
`
`
`Sharad Kotagiri Bijanki (Reg. No.
`30,339)
`Vivek A Ganti (Reg. No. 71,368)
`HILL, KERTSCHER & WHARTON, LLP
`3350 Riverwood Pkwy
`Suite 800
`Atlanta, Georgia 30339
`sb@khw-law.com
`vgh@hkw-law.com
`
`Attorneys for Petitioners Teletrac Inc.
`and Navman Wireless North America,
`Ltd.
`
`Alan L. Whitehurst (Reg. No. 43,263)
`Marissa R. Ducca (Reg. No. 59,807)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`777 6th Street. 11th Floor
`Washington DC 20001
`General Tel: (202) 538-8000
`Fax: (202) 538-8100
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`
`Robert Babayi
`Reg. No. 33,471
`VECTOR IP LAW GROUP
`3208 Q St. NW
`Washington, DC 20007
`General Tel: (202) 446-1480
`Fax: (202) 446-1485
`robert@vectoriplaw.com
`
`Attorneys for Patent Owner
`PerdiemCo LLC
`
`
`
`
`
`
`6
`
`

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`Joint Motion to Terminate
`
`
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`
`
`Case IPR2016-01063
` U.S. Patent No. 8,717,166
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing motion and supporting materials
`
`(including all exhibits) were served via electronic mail on August 15, 2016 in their
`
`entirety on the following:
`
`Vivek Ganti
`vg@hkw-law.com
`
`Sharad K. Bijanki
`sb@khw-law.com
`
`Steven G. Hill
`sgh@hkw-law.com
`
`Blake H. Frye
`bhf@hkw-law.com
`
`Hill, Kertscher, & Wharton, LLP
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`
`
`Dated: August 15, 2016
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`Respectfully Submitted,
`
`/s/ Marissa R. Ducca
`Marissa R. Ducca
`Registration No. 59,807
`Attorney for Patent Owner
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`777 6th Street NW, 11th Floor
`Washington, D.C. 20001
`Telephone: (202) 538-8109
`Facsimile: (202) 538-8100
`
`7

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