`Tel: 571-272-7822
`
`Paper 13
`Entered: August 24, 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 IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
` Case IPR2016-01064 (Patent 9,003,499 B2)1
`
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Terminating Inter Partes Review Prior to Institution With Respect to
`Petitioners Teletrac Inc. and Navman Wireless North America, Ltd.
`37 C.F.R. §§ 42.71(a), 42.74
`
`
`1 This order addresses joint motions to terminate as to Petitioners Teletrac
`Inc. and Navman Wireless North America, Ltd., based on settlement
`agreements filed in all four cases. We exercise our discretion to issue a
`single order to be entered in each case.
`
`
`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`
`
`Introduction
`1.
`These cases are in a preliminary stage. Patent Owner PerdiemCo LLC
`(“Patent Owner”) has not yet filed Preliminary Responses, and the Board has
`not yet issued decisions on whether to institute the proceedings.
`On August 15, 2016, pursuant to Board authorization, Patent Owner
`and Petitioners Teletrac Inc. and Navman Wireless North America, Ltd.
`(collectively, “Teletrac”) filed joint motions to terminate the proceedings
`with respect to Teletrac. IPR2016-01061, Paper 12; IPR2016-01062, Paper
`11; IPR2016-01063, Paper 11; IPR2016-01064, Paper 11. Along with the
`motion, the parties filed a copy of a document they describe as their written
`settlement agreement, as well as a separate joint request to treat the
`settlement agreement as business confidential information. IPR2016-01061,
`Paper 13 and Ex. 2002; IPR2016-01062, Paper 12 and Ex. 2002; IPR2016-
`01063, Paper 12 and Ex. 2002; IPR2016-01064, Paper 12 and Ex. 2002. See
`37 C.F.R. § 42.74(c) (a party to a settlement may request that the settlement
`agreement be treated as business confidential and be kept separate from the
`patent file).
`
`
`Discussion
`2.
`The Parties state the following in the Joint Motion to Terminate:
`
`“Patent Owner and Teletrac settled their dispute and executed a confidential
`settlement agreement to terminate Teletrac’s involvement in this proceeding
`and the parties’ related district court litigation . . . .” IPR2016-01061, Paper
`
`2
`
`
`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`
`12, 2; IPR2016-01062, Paper 11, 2; IPR2016-01063, Paper 11, 2; IPR2016-
`01064, Paper 11, 2.
`
`Under these circumstances, we determine that it is appropriate to
`terminate each of these proceedings as to Teletrac Inc. and Navman Wireless
`North America, Ltd. See 37 C.F.R. §§ 42.5(a), 42.71(a).
`After reviewing the parties’ settlement agreement, we find that the
`settlement agreement contains business confidential information regarding
`the terms of the settlement and good cause exists to treat the settlement
`agreement as business confidential information pursuant to 37 C.F.R.
`§ 42.74(c).
`
`
`3.
`
`Order
`
`It is
`
`ORDERED that the Joint Motion to Terminate the Proceedings as to
`
`Petitioners Teletrac Inc. and Navman Wireless North America, Ltd., is
`granted;
`FURTHER ORDERED that termination is granted as to Teletrac Inc.
`
`and Navman Wireless North America, Ltd., only, and these proceedings
`shall continue with Geotab Inc. and TV Management, Inc., d/b/a GPS North
`America, as Petitioners;
`
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreements as business confidential information is granted in
`each proceeding, and the settlement agreements (Exhibit 2002 in IPR2016-
`01061; Exhibit 2002 in IPR2016-01062; Exhibit 2002 in IPR2016-01063;
`Exhibit 2002 in IPR2016-01064) shall be treated as business confidential
`
`3
`
`
`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`
`information under 37 C.F.R. § 42.74(c), kept separate from the files of U.S.
`Patent Nos. 8,223,012 B1; 8,493,207 B2; 8,717,166 B2; and 9,003,499 B2,
`respectively, and remain designated as “Board and Parties Only.”
`
`PETITIONERS:
`
`
`Vivek Ganti
`Sharad Bijanki
`HILL, KERTSCHER & WHARTON, LLP
`vg@hkw-law.com
`perdiemIPR@hkw-law.com
`
`PATENT OWNER:
`
`Alan Whitehurst
`Marissa R. Ducca
`Quinn Emanuel Urquhart & Sullivan, LLP
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
`
`Robert S. Babayi
`Vector IP Law Group
`robert@vectoriplaw.com
`
`
`
`4
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