UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GEOTAB INC., AND
`TV MANAGEIVDENT INC., D/B/A GPS NORTH Al\/[ERICA
`Petitioners,
`
`V.
`
`PERDIEM CO.', LLC.
`
`Patent Owner
`
`DECLARATION OF MICHAEL FEMAL, ESQ
`
`GEOTAB Ex. 1016
`GEOTAB EX. 1016
`
`1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GEOTAB INC., AND
`TV MANAGEIVDENT INC., D/B/A GPS NORTH Al\/[ERICA
`Petitioners,
`
`V.
`
`PERDIEM CO.', LLC.
`
`Patent Owner
`
`DECLARATION OF MICHAEL FEMAL, ESQ
`
`GEOTAB Ex. 1016
`GEOTAB EX. 1016
`
`1
`
`
`
`1.
`
`My name is Michael Femal.
`
`I am a principal in the law firm Much
`
`Shelist P.C.
`
`I am over the age of 21 and competent to testify in this matter. The
`
`statements set forth herein are based on my personal knowledge.
`
`2.
`
`When PerDiem instituted litigation against TV Management Inc.,
`
`d/b/a GPS North America (“GPSNA”), I was contacted by William Steckel, on
`
`behalf of Telular Corporation, who asked my firm Much Shelist P.C. and I to
`
`defend TV Management. Neither Telular nor SkyBitz, Inc. have ever requested
`
`that I provide any legal services on behalf of SkyBitz.
`
`3.
`
`SkyBitz, Inc. is not a defendant in any litigation with PerDiem (see
`
`Ex. 2006, p.2, stating “PerDiem cannot agree to grant any rights to SkyBitz or
`
`Telular because neither party is part of the lawsuit” [underline emphasis added]),
`
`nor has PerDiem ever asserted that any technology of SkyBitz infringes any of its
`
`patents.
`
`4.
`
`Telular entered into a joint defense agreement (“JDA”) with Te1etrac-
`
`Navman and Geotab in connection with the defense of this case. SkyBitz did not
`
`enter into the JDA.
`
`I attach a copy of the Joint Defense Agreement executed by
`
`Telular as Exhibit A. SkyBitz has never entered into the JDA.
`
`5.
`
`Pursuant to the JDA, Hill, Kertscher & Wharton, LLP proposed to file
`
`the IPR petitions directed to U.S. Patents 8,223,012, 8,493,207, 8,717,166,
`
`9,003,499, and 9,071,931.
`
`I confirmed with Telular that it wished to participate in
`
`the IPR proposal and that it was willing to pay for a one-third share of the
`
`2
`
`
`
`petitions’ costs and fees and I communicated this to IPR counsel for the Petitioners
`
`pursuant to the JDA. Hill, Kertscher & Wharton, LLP filed the IPR petitions
`
`directed to U.S. Patents 8,223,012, 8,493,207, 8,717,166, 9,003,499, and
`
`9,071,93 1 .
`
`6.
`
`My understanding is that the IPRs were paid for by Hill, Kertscher &
`
`Wharton with funds advanced by Telular, Teletrac-Navman and Geotab. Telular
`
`paid a one—third share of the aggregate filing fees and attorney fees of the IPRs in
`
`question. My understanding is that the remaining portion of the IPR aggregate
`
`filing fees and attorney fees were paid by Teletrac-Navman and Geotab.
`
`7.
`
`Exhibit B shows that Telular has paid a one-third share of the
`
`aggregate filing fees and legal fees associated with the five filed IPR petitions
`
`directed to the PerDiem patents.
`
`I hereby declare under penalty of perjury under the laws of the United States of
`
`America that the foregoing is true and correct, and that all statements made of my
`
`own knowledge are true and that all statements made on information and belief are
`
`believed to be true. I understand that willful false statements and the like are
`
`punishable by fine or imprisonment, or both (18 U.S.C. § 1001).
`
`Executed on October 31, 2016
`
`Michael Femal
`
`3
`
`
`
`Exhibit A
`Exhibit A
`
`4
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`Joint Defense AU reemcnt
`
`G:\Te|ular\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`5
`
`5
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Telular\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`6
`
`6
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`7
`
`7
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|ular\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`8
`
`8
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|ular\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`9
`
`9
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`10
`
`10
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|ular\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`11
`
`11
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`12
`
`12
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`13
`
`13
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`14
`
`14
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`TELETRAC, INC.
`
`Date:
`
`By:
`
`Its :
`
`NAVMAN VVIRELESS NORTH AIVIERICA, LTD.
`
`Date:
`
`By:
`
`Its :
`
`LEGAL_US_W at 82414047.1
`
`Page 11 of 12
`
`G:\Te|ular\Joint Defense Agreement\Joint Defense Agreement final (3) docx
`
`15
`
`15
`
`
`
`PRIVILEGED AND CONFIDENTIAL
`
`JOINT DEFENSE MATERIAL
`
`GEOTAB, INC.
`
`Date:yy By:
`
`TELOGIS, INC.
`
`Date: _ By:
`
`Its:
`
`Its:
`
`TELULAR CORPORATION
`
`Date:
`
`By:
`
`I:—_ — _
`
`Its: Chief Financial Officer
`
`LEGAL_US_W # 82414047.1
`
`Page 12 of 12
`
`G:\Te|u|ar\Joint Defense Agreement\Joint Defense Agreement final (3).docx
`
`16
`
`16
`
`
`
`Exhibit B
`Exhibit B
`
`17
`
`
`
`ACH Payment Detail Report - TELULAR CORPORATION
`
`Report Run Date: 10/27/2016 1:06:36 PM PDT
`
`
`
`BatcJ,1 Name:Hill Kerts
`
`
`
` Originating Acct Number: Frequency; one Time
`
`
`
`Originating Acct Nickname: status
`
`ACH Company ID:
`ACH Company Name:
`Company Entry Description:
`Payment Type:
`Confidential:
`
`TELULAR CORP OPR
`Hill Kerts
`PPD - Prearranged Payment & Deposit Entry
`No
`
`Scheduied
`
`10/27/2016
`Create Date:
`10/28/2016
`Effective Date:
`Scheduled Send Date: 10/27/2016
`CR-DR:
`Credits
`
`Recipient Name
`
`Recipieni in
`
`Bank in
`
`Bank Name
`
`Account No.
`
`Type
`
`Disc. Data
`
`Status
`
`Org. Amount
`
`E HIL00oo3 Z 2 2 c
`
`Recipient Status
`
`CR ltems
`
`Amount
`
`DR Items
`
`Amount
`
`We 3-
`
`Active
`Prenote
`Login ID
`
`1 $2
`0
`$0.00
`Activity
`
`0
`0
`Datel'l'ime
`
`$0.00
`$0.00
`
`'13?)/_2|_7/2016 9:46:17 AM
`create
`gpdunlap@te|u4670
`
`
`approveakrenz200@te|u4670 :,(g_2r7/2016 12:10:41 PM
`
`Report Totals
`
`5Payment Type Totals: Credits I Debits
`PPD:
`
`_
`
`$0-0°
`
`§_AC\H;NCorfipany ID Totals: Credits / Debits
`7363385440:
`-
`Credits / Debits
`
`3'Grand Totals: $0-0°
`
`
`
`so.oo
`
`
`ACH Payment DelaiIRepori
`Page 1 of 2
`10/27/2016 1:06:37 PM PDT
`
`18
`
`18
`
`
`
`TU 770-953-I353
`
`HILLKERTSCHERHHQRTDN
`7769531358
`RECEIVED 85/15/2016 34:85
`FRUH BANK OF AHERICA
`IGHAVIE |437EST 7237952A
`PAGE I OF
`
`I
`
`Bankofmnerica .%,.
`42/-'
`
`Bank of America, N.A.
`wire Transfer Services
`
`Date:
`iE-MAY-2015
`Time wire
`Account:
`
`Comileted: 15:35 ET
`
`HILL KERTSCHER & WHARTDN LLP
`IOLTA
`335B RIUERWOUD PKWY SE STE BEE
`HTLANTA, GA
`3fl339-3351
`Attn: SAMANTHA SHUB
`
`05
`
`Please Contact us at Bflfl.729.9473 Option 2 if you have any questions about
`this wire transfer. Thank you for using Bank of America wire Transfer
`Services.
`
`The following wire was credited today in the amount of USD:‘
`
`Transaction Ref:
`Sender's Ref:
`Service Ref:
`man:
`
`2fliEfl5iEBfl34i2ii
`2@iEi37ifl345BB
`lal.7i2l2I4E
`2131 sosi 51.1 377131 CflEl2ifl4EIZ|5l 51 saerroa
`
`Originator:
`
`Sending Bank:
`
`Beneficiary:
`
`TELULAR coaponanou —
`OPERATING ACCOUNT
`zoo s. WHCKER DRIVE
`some moo
`SILICON VALLEY BANK -
`SANTA cmaa, ca
`HILL xsnrscnsn wnanoon LLP IOLTA -
`129:2: ave or AMERICAS
`NEW mar
`mnema
`
`Payment Details:
`
`INVOICE ZZBBBGPSNA
`Clii-1RGES:0UR
`
`mom
`
`CONFIDENTIALITY NOTICE: This Fax transmittal is a confidential communication. If
`
`the reader of this message is not the intended recipient or an agent responsible for
`delivering it to the Intended reclplent. you are hereby notified that you have received
`this document in error and that any review, dissemination, distribution or copying of
`this transmittal is strictly prohibited. If you have received this communication in
`error, please notify this office and Immediately delete this message and all of its
`attachments, if any.
`
`19
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