UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`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
`________________
`
`
`PATENT OWNER’S MOTION TO TERMINATE FOR FAILURE TO
`LIST SKYBITZ INC. AS A REAL PARTY IN INTEREST
`
`
`
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`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
`________________
`
`
`PATENT OWNER’S MOTION TO TERMINATE FOR FAILURE TO
`LIST SKYBITZ INC. AS A REAL PARTY IN INTEREST
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION .................................................................................1
`
`THIS PROCEEDING SHOULD BE TERMINATED DUE TO
`PETITIONERS’ FAILURE TO LIST SKYBITZ AS A REAL
`PARTY IN INTEREST .........................................................................2
`
`III. CONCLUSION .....................................................................................6
`
`
`
`
`
`
`
`i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Corning Optical Comm’ns RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00440, Paper No. 68 (PTAB Aug. 18, 2015) ......................... 3, 5
`
`Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp.,
`IPR2013-00618, 2014 WL 1253143 (PTAB Mar. 20, 2014) .....................4
`
`Statutes
`
`35 U.S.C. § 312(a)(2) .......................................................................................1
`
`37 C.F.R. § 42.8(a)(3) ......................................................................................3
`
`37 C.F.R. § 42.8(b)(1) ................................................................................. 1, 3
`
`37 C.F.R. § 42.72 .............................................................................................1
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`EXHIBIT LIST
`
`Exhibit
`No.
`
`Exhibit Description
`
`2003
`
`Excerpts from the deposition of Todd Lewis (8/4/16)
`
`2004
`
`2005
`
`2006
`
`2007
`
`“SkyBitz, a Telular Company, Enters Agreement to Acquire Reltima
`and GPS North America,” Press Release (6/23/15)
`
`“SkyBitz Local Fleets: About Us” webpage, available at
`http://www.skybitz.com/local-fleets/about-us/overview
`
`Telular Corporation “Portfolio” webpage, available at
`http://www.telular.com/#Portfolio
`
`Email chain between PerDiem counsel Alan Whitehurst, PerDiem
`counsel Kevin Chu, and GPSNA counsel Michael Femal, dated
`9.27.16 through 10.4.16
`
`2008
`
`Email chain between PerDiem counsel Alan Whitehurst and GPSNA
`counsel Michael Femal, dated 9.15.16 and 9.26.16
`
`iii
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`Pursuant to 35 U.S.C. § 312(a)(2), 37 C.F.R. § 42.8(b)(1), and 37
`
`C.F.R. §42.72, Patent Owner PerdiemCo LLC (“PerDiem”) respectfully
`
`requests that this IPR proceeding be terminated for failure to list a real party
`
`in interest. The Board provided authorization for PerDiem to file this
`
`motion to terminate in an email dated October 19, 2016.
`
`Specifically, this proceeding should be terminated because the
`
`evidence clearly shows that an undisclosed company — SkyBitz Inc. — is a
`
`real party in interest for Petitioner TV Management, Inc. d/b/a GPS North
`
`America (“GPSNA”). Indeed, Todd Lewis — the former CEO of GPSNA
`
`and current Vice President of SkyBitz — made clear in recent deposition
`
`testimony that GPSNA has been wholly subsumed within SkyBitz and does
`
`not exist anymore as a defined corporate entity.1 Thus, SkyBitz easily
`
`
`1 Mr. Lewis’ testimony was designated confidential in the co-pending
`litigation where it was given. PerDiem did not receive GPSNA’s consent to
`de-designate this testimony until October 4, 2016 (Ex. 2007), which was
`well after the September 7 due date for PerDiem’s Preliminary Response in
`this proceeding. Thus, PerDiem could not have effectively raised the real-
`party-in-interest issue in its Preliminary Response. PerDiem instead sought
`(and received) the Board’s authorization to raise the issue via this Motion to
`Terminate. Given that the Board authorized PerDiem to raise the real-party-
`in-interest issue via this Motion, Petitioners cannot argue that this Motion is
`somehow tardy or improper just because PerDiem did not raise the real-
`party-in-interest issue in its Preliminary Response.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`qualifies as a real party in interest to GPSNA under this Board’s precedents.
`
`Yet SkyBitz was not disclosed in Petitioners’ IPR Petition. Accordingly,
`
`PerDiem respectfully requests that the Petition be dismissed and this
`
`proceeding terminated.
`
`II. THIS PROCEEDING SHOULD BE TERMINATED DUE TO
`PETITIONERS’ FAILURE TO LIST SKYBITZ AS A REAL
`PARTY IN INTEREST
`
`As alluded to above, deposition testimony from the co-pending
`
`litigation makes clear that Petitioner GPSNA does not even exist anymore
`
`— it has been completely subsumed into SkyBitz. Todd Lewis, the former
`
`CEO of GPSNA and current Vice President of SkyBitz, made this point
`
`crystal clear in his deposition:
`
`Q. About what year was GPS NA acquired by SkyBitz?
`
`A. 2015.
`
` . . .
`
`Q. Does SkyBitz acquire a hundred percent of GPS NA?
`
`A. Yes.
`
`Q. Does GPS NA still operate as a separate entity?
`
`A. No.
`
`Q. No. So it's completely merged with SkyBitz?
`
`A. Um-hum.
`
`Q. Okay.
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`A. Yes.
`
`
`Ex. 2003 (Lewis Dep.) at 28:11-29:6; see also id. at 38:10-17:
`
`
`Q. And just for clarification, at this point in time, as we sit here
`today, is there still a company called GPS NA?
`
`A. No.
`
`Q. Okay. So it was completely correlated with SkyBitz and now
`GPS NA does not exist for all?
`
`A. That’s correct.2
`
`Public documentary evidence further supports Mr. Lewis’ testimony
`
`on this point. For example, a June 2015 press release states that “SkyBitz®,
`
`the leader in remote asset tracking and information management solutions,
`
`today announced that it has entered into a definitive agreement to acquire
`
`Reltima and GPS North America, two leading commercial telematics
`
`companies in the local fleet management market.” Ex. 2004 at 1. SkyBitz’s
`
`own website says the same thing. Ex. 2005 (“In 2015, SkyBitz acquired
`
`2 Petitioners might argue that Mr. Lewis’ deposition testimony did not state
`precisely when GPSNA was completely subsumed within SkyBitz, and did
`not explicitly state whether the subsuming happened when SkyBitz first
`acquired GPSNA in 2015. But this argument would be irrelevant. At the
`time Mr. Lewis testified in August 2016, he was clear that GPSNA had been
`completely subsumed within SkyBitz. Either this state of affairs existed
`when Petitioners’ Petition was filed in June 2016 (in which case SkyBitz
`should have been listed in the Petition as a real party in interest) or this state
`of affairs began between June 2016 and August 2016 (in which case
`Petitioners had a duty to update their real party in interest information to
`include SkyBitz). See 37 CFR §§ 42.8(a)(3) & (b)(1).
`
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`Reltima and GPS North America, two leading commercial telematics
`
`companies in the local fleet management market.”)
`
`This Board has found that an undisclosed company qualifies as a “real
`
`party in interest” to a Petitioner if the undisclosed company and the
`
`Petitioner are “so intertwined that it is difficult for both insiders and
`
`outsiders to determine precisely where one ends and another begins.”
`
`Corning Optical Comm’ns RF, LLC v. PPC Broadband, Inc., IPR2014-
`
`00440, Paper No. 68 at 18 (PTAB Aug. 18, 2015) (citation omitted). It is
`
`hard to imagine a clearer or more extreme example of such “intertwining”
`
`than SkyBitz and GPSNA. As Mr. Lewis’ deposition testimony makes
`
`clear, GPSNA has been entirely subsumed within SkyBitz and no longer has
`
`any independent identity or operations. It follows that SkyBitz is a real
`
`party in interest to GPSNA, and should have been listed as such.
`
`Moreover, in the co-pending litigation, GPSNA’s counsel have been
`
`representing both GPSNA’s and SkyBitz’s interests. For example, at
`
`various points in the litigation, GPSNA’s counsel tied settlement discussions
`
`to a covenant not to sue that included both GPSNA and SkyBitz. See, e.g.,
`
`Ex. 2008 at 2. This co-representation of GPSNA’s and SkyBitz’s interests
`
`in settlement talks further confirms that SkyBitz is a real party in interest to
`
`GPSNA. See Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR2013-
`
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`00618, 2014 WL 1253143, at *7 (PTAB Mar. 20, 2014) (“the absence of
`
`Petitioner’s management team, and presence of ZOLL Medical’s
`
`management team, at the court-ordered mediation in the Pennsylvania
`
`Action suggests an involved and controlling parent corporation representing
`
`the unified interests of itself and Petitioner.”)
`
`GPSNA might argue that it satisfied the real-party-in-interest
`
`requirement because its Petition does list Telular Corporation, which is the
`
`ultimate umbrella parent of SkyBitz and GPSNA. See Ex. 2006 at 4
`
`(showing how SkyBitz is one of Telular’s subsidiaries). But this Board has
`
`rejected the notion that a party can comply with the real-party-in-interest
`
`requirement by listing a global umbrella parent and omitting other relevant
`
`companies who are also real parties in interest. In Corning Optical, for
`
`example, the Board held that an IPR Petition needed to list both the
`
`Petitioner’s ultimate parent (Corning Inc.) and a subsidiary company that
`
`was closely-intertwined with Petitioner (Corning NC). Corning Optical,
`
`IPR2014-00440, Paper No. 68 at 16 (“the Petitions should have named both
`
`Corning NC and Corning Inc. as real parties-in-interest.”) Here too, GPSNA
`
`cannot satisfy the real-party-in-interest requirement by merely listing its
`
`ultimate parent (Telular) while ignoring its alter ego (SkyBitz). Whether or
`
`not Telular is a real party in interest, SkyBitz certainly is, and needed to be
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`listed as such. Because the Petition fails to list SkyBitz as a real party in
`
`interest, the Petition should be denied.
`
`III. CONCLUSION
`
`For the foregoing reasons, PerDiem respectfully requests that this
`
` Respectfully submitted,
`
`By: /s/ Alan L. Whitehurst, Reg. No. 43,263
` Alan L. Whitehurst (Reg. No. 43,263)
`QUINN EMANUEL URQUHART & SULLIVAN,
`LLP
`777 6th St. NW, 11th Floor
`Washington, D.C. 20001
`Tel: (202) 538-8000
`Fax: (202) 538-9100
`Email: alanwhitehurst@quinnemanuel.com
`
`
`
` Lead Attorney for Patent Owner –
` PerdiemCo LLC
`
`proceeding be terminated.
`
`
`Date: October 25, 2016
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Case No. IPR2016-01063
` U.S. Patent No. 8,717,166
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that
`
`PATENT OWNER’S MOTION TO TERMINATE FOR FAILURE TO
`
`LIST SKYBITZ INC. AS A REAL PARTY IN INTEREST, and all exhibits
`
`and other documents filed together with the Motion, were served on October
`
`25, 2016 by filing these documents through the Patent Review Processing
`
`System, as well as by e-mailing copies to:
`
`
`
` Respectfully submitted,
`
`By: /s/ Alan L. Whitehurst, Reg. No. 43,263
` Alan L. Whitehurst (Reg. No. 43,263)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`777 6th St. NW, 11th Floor
`Washington, D.C. 20001
`alanwhitehurst@quinnemanuel.com
`
`
`
` Lead Attorney for Patent Owner –
` PerdiemCo LLC
`
`7
`
`Vivek Ganti
`vg@hkw-law.com
`
`Sharad K. Bijanki
`sb@hkw-law.com
`
`perdiemIPR@hkw-law.com
`
`Hill, Kertscher, & Wharton, LLP
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
`
`Date: October 25, 2016
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
