Trials@uspto.gov
`571-272-7822
`
`Paper 22
` Entered: December 9, 2016
`
`
`
`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.
`
`
`Cases1
`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`__________________________
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Patent Owner’s Motions to Terminate
`37 C.F.R. §§ 42.71(a), 42.72
`
`
`1 This Order addresses issues that are substantially similar in the cases. We
`exercise our discretion to issue one order to be filed in each case.
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`I. INTRODUCTION
`
`
`
`Petitions for these proceedings were filed on May 19, 2016 (Paper 5),2
`
`and a Notice of Filing Date was issued on June 7, 2016 (Paper 7). Patent
`
`Owner (PerDiem Co., LLC) filed Preliminary Responses in three of the
`
`proceedings on September 7, 2016. IPR2016-01061 (Paper 15); IPR2016-
`
`01063 (Paper 14); IPR2016-01064 (Paper 14). Patent Owner did not file a
`
`response in IPR2016-01062. On October 25, 2016, as authorized by the
`
`Board, Patent Owner filed a Motion To Terminate for Failure To List
`
`SkyBitz Inc. as a Real Party in Interest (“RPI”) in these four proceedings.
`
`Paper 17 (“Mot.” or “Motion”). Trial was instituted in IPR2016-01061 on
`
`December 6 (Paper 21); in IPR2016-01062 on December 6 (Paper 19); in
`
`IPR2016-01063 on November 29, 2016 (Paper 20); and in IPR2016-01064
`
`on December 5, 2016 (Paper 20).
`
`
`
`Petitioners3 have challenged a related patent, U.S. Patent No.
`
`9,071,931 B2, in their petition for IPR2016-01278, which was filed on July
`
`1, 2016 (IPR2016-01278, Paper 5), and Patent Owner filed its Preliminary
`
`
`2 Unless otherwise indicated, paper numbers refer to IPR2016-01061.
`
`3 The petitions in the proceedings at issue here originally named as
`Petitioners Teletrac Inc., Navman Wireless North America, Ltd., Geotab
`Inc., and TV Management, Inc., d/b/a GPS North America. Paper 5. On
`August 15, 2016, Petitioners Teletrac Inc. and Navman Wireless North
`America, Ltd., moved to terminate the proceedings with respect to
`themselves only. Paper 12. The Board granted that motion on August 24,
`2016, leaving as Petitioners Geotab Inc. and TV Management, Inc., d/b/a
`GPS North America. Paper 14. Patent Owner has not challenged Geotab’s
`RPI status. A recently filed notice (Paper 20) indicates Geotab may also
`seek dismissal from these proceedings.
`
`2
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`Response on October 7, 2016 (IPR2016-01278, Paper 12). Patent Owner
`
`included in that response a request that the Board deny that petition on the
`
`same grounds as raised in Patent Owner’s motions to terminate the four
`
`related, earlier-filed proceedings. IPR2016-01278, Paper 12 at 3, 16–19.4
`
`With Board approval, Petitioner TV Management, Inc., d/b/a GPS North
`
`America (“GPSNA”) filed a Reply on November 18, 2016. IPR2016-01278,
`
`Paper 19.
`
`
`
`The petitions in each of the proceedings at issue here name, inter alia,
`
`GPSNA and Telular Corporation (“Telular”) as real parties-in-interest.5 See,
`
`e.g., Paper 5 at 3. Patent Owner’s Motions to Terminate contend that an
`
`additional entity, SkyBitz Inc. (“SkyBitz”), is a real party-in-interest to these
`
`proceedings that should have been named in the petitions and, therefore, the
`
`petitions should be dismissed, and the proceedings terminated, for failure to
`
`name all real parties-in-interest. Mot. 1; see 35 U.S.C. § 312(a)(2)
`
`(requiring a petition to identify all real parties-in-interest). In particular,
`
`citing to deposition testimony of Todd Lewis (the former CEO of GPSNA
`
`and current Vice President of SkyBitz), Patent Owner states that “GPSNA
`
`
`4 This Order disposes of Patent Owner’s motions to terminate in the four
`identified proceedings. Our disposition of Patent Owner’s arguments for
`denial of the petition for failure to name SkyBitz as an RPI raised in the
`related proceeding, IPR2016-01278, will be addressed in our forthcoming
`decision on institution in that matter. This Order previews that disposition,
`as Patent Owner’s arguments in its Preliminary Response seeking denial of
`the petition in that proceeding on grounds of failure to name SkyBitz are
`substantively the same as presented in Patent Owner’s motions to terminate.
`
`5 The petitions identify several other real parties-in-interest relating to other
`petitioners not implicated by Patent Owner’s present motions. Paper 5 at 3.
`
`3
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`has been wholly subsumed within SkyBitz and does not exist anymore as a
`
`defined corporate entity.” Id. and n.1 (citing Ex. 2007).
`
`
`
`Petitioner GPSNA (herein, “Petitioner”) filed an opposition to Patent
`
`Owner’s Motion, asserting that SkyBitz is not a real party in interest. Paper
`
`18 (“Opp.” or “Opposition”). In particular, Petitioner asserts that “SkyBitz
`
`has neither controlled nor funded” the petitions in these proceedings, and
`
`also asserts that named RPI Telular Corporation, who wholly owns SkyBitz,
`
`has funded and controlled these proceedings on behalf of GPSNA. Opp. 1
`
`(citing Ex. 1011 ¶¶ 3, 4, 8); see also Ex. 1012. Petitioner further asserts
`
`“Telular did not name SkyBitz as an RPI because, absent permission from
`
`Telular, SkyBitz has no ability to take any legal action, participate in any
`
`legal action, or supply any funds in relation to legal action.” Id. (citing Ex.
`
`1011 ¶ 10).
`
`
`
`
`
`
`
`II. DISCUSSION
`
`For the reasons discussed below, we find that SkyBitz is not a real
`
`party-in-interest and was, therefore, not required to be named as such by
`
`Petitioner. We deny Patent Owner’s motions to terminate.
`
`A. Allocation of Burdens
`
`
`
`As an initial matter, we agree with the Board’s explanation regarding
`
`the burden of production and the burden of proof set forth in Galderama.
`
`See Galderama S.A. v. Allegan Industrie SAS, IPR2014-01422, Paper 14, 5–
`
`7 (PTAB Mar. 5, 2015) (citations omitted). Specifically, where, as here,
`
`Petitioner’s statement related to RPI is facially accurate and not ambiguous,
`
`Patent Owner bears the burden to produce evidence to rebut that
`
`4
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`presumption; once so produced, Petitioner has the ultimate burden of
`
`demonstrating compliance with 35 U.S.C. § 312(a)(2). See id.; see also
`
`Hughes Network Sys., LLC v. Cal. Inst. Tech., IPR2015-00059, Paper 42 at
`
`11 (PTAB Apr. 21, 2016) (“[O]nce the Petitioner has represented what it
`
`believes to be a proper identification of the real parties-in-interest, Patent
`
`Owner has the burden of production in establishing that a real party-in-
`
`interest has not been named.”); Medtronic, Inc. v. Robert Bosch Healthcare
`
`Systems., Inc., IPR2014-00488, Paper 61 at 6–7 (PTAB May 22, 2015)
`
`(holding that a petitioner’s identification of RPIs is presumed accurate and
`
`patent owner must provide sufficient rebuttal evidence to “reasonably
`
`bring[] into question the accuracy of the petitioner’s indication”).
`
`B. Real Party-in-Interest Considerations and Factors
`
`
`
`Whether a non-identified party is a real party-in-interest to a
`
`proceeding is a highly fact-dependent question. Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”)
`
`(citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “Courts invoke the terms
`
`‘real party-in-interest’ and ‘privy’ to describe relationships and
`
`considerations sufficient to justify applying conventional principles of
`
`estoppel and preclusion.” Id. There is no “bright line test” for the degree of
`
`a party’s participation in a proceeding necessary to qualify as a real party-in-
`
`interest. Id. The Supreme Court in Taylor sets forth a list of factors that
`
`might be relevant in a particular case. Taylor, 553 U.S. at 893–95. “A
`
`common consideration is whether the non-party exercised or could have
`
`exercised control over a party’s participation in a proceeding.” Trial
`
`Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). The
`
`5
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`inquiry is focused on the relationship of the party to the proceeding at issue;
`
`demonstrating a relationship between the parties is not sufficient.
`
`
`
`Factors for determining actual control of a proceeding or the
`
`opportunity to control a proceeding include existence of a financially
`
`controlling interest in the petitioner. Rules of Practice for Trials Before the
`
`Patent Trial and Appeal Board and Judicial Review of Patent Trial and
`
`Appeal Board Decisions (“Rules of Practice”), 77 Fed. Reg. 48,612, 48,617
`
`(Aug. 14, 2012). Additional relevant factors include: the non-party’s
`
`relationship with the petitioner; the non-party’s relationship to the petition
`
`itself, including the nature and/or degree of involvement in the filing; and
`
`the nature of the entity filing the petition. Trial Practice Guide, 77 Fed. Reg.
`
`at 48,760. A party, however, does not become a real party-in-interest merely
`
`through association with another party in an endeavor unrelated to the IPR
`
`proceeding. Id.
`
`
`
`“The Office generally will accept the petitioner’s ‘real party-in-
`
`interest’ identification at the time of filing the petition.” Final Rule, 77 Fed.
`
`Reg. 48,680 at 48,695 (Aug. 14, 2012) (Response to Comment 9). “The
`
`patent owner may provide objective evidence to challenge the identification
`
`in a preliminary response, which the Board will consider in determining
`
`whether to grant the petition.” Id. Further, concerning the timing of
`
`bringing a challenge to real party-in-interest identification, the Final Rule
`
`indicates that such a challenge “should be brought before or with the filing
`
`of the patent owner preliminary response,” but does not preclude a later
`
`challenge. Id. (Response to Comment 8).
`
`6
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`C. Patent Owner’s Motions
`
`
`
`According to Patent Owner, SkyBitz is a real party-in-interest to
`
`GPSNA, and was therefore required to be named as a real party-in-interest to
`
`these proceedings pursuant to 35 U.S.C. § 312(a)(2) and 37 C.F.R.
`
`§ 42.8(b)(1). Mot. 1. The crux of Patent Owner’s argument is that “GPSNA
`
`has been completely 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.” Mot. 4 (emphasis
`
`added).
`
`
`
`Petitioner counters that Patent Owner’s evidence does not show a
`
`connection between SkyBitz and these proceedings, and that it is Telular
`
`(SkyBitz’s parent), not SkyBitz, that has directed the funding and control of
`
`the petitions on behalf of GPSNA. Opp. 4–6. Therefore, Petitioner argues,
`
`SkyBitz is not an unnamed real party-in-interest to these proceedings
`
`because it has not, cannot, and will not control the IPRs, pay for the IPRs, or
`
`have any input into the IPRs. Opp. 4.
`
`D. Patent Owner’s Evidence and Argument
`
`
`
`To support its contentions, Patent Owner relies on the deposition of
`
`former GPSNA CEO Todd Lewis, who is now Vice President of SkyBitz.
`
`Mot. 2–3 (citing Ex. 2003 (Lewis Depo.)). Mr. Lewis testified that SkyBitz
`
`acquired 100% of GPSNA in 2015, and acknowledged that GPSNA “was
`
`completely correlated with SkyBitz and now GPS NA does not exist [at]
`
`all.” Mot. 2–3 (citing Ex. 2003 at 28:11–29:6, 38:10–17). Patent Owner
`
`additionally relies on “[p]ublic documentary evidence” announcing
`
`SkyBitz’s acquisition of GPSNA. Mot. 3–4 (citing Exs. 2004, 2005).
`
`7
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`
`Patent Owner acknowledges that the petitions identify SkyBitz’s
`
`“ultimate umbrella” parent, Telular Corporation, but argues that “GPSNA
`
`cannot satisfy the real-party-in-interest requirement by merely listing its
`
`ultimate parent (Telular) while ignoring its alter ego (SkyBitz).” Mot. 5.
`
`E. Petitioner’s Evidence and Argument
`
`
`
`Petitioner does not dispute Patent Owner’s evidence that SkyBitz
`
`acquired GPSNA in 2015 or that GPSNA no longer exists as a separate
`
`entity. See Opp. 2 (“Petitioners do not dispute that the shares of GPSNA
`
`were acquired by SkyBitz.”). Petitioner asserts, however, that Telular, not
`
`SkyBitz, is the real party-in-interest because Telular, not SkyBitz, has the
`
`legal authority and financial ability to direct and fund these proceedings.
`
`Opp. 1. As supporting evidence, Petitioner provides, inter alia, the
`
`Declaration of William Steckel, the Chief Financial Officer of Telular
`
`Corporation. Ex. 1011. Therein, Mr. Steckel attests that “Telular acquired
`
`SkyBitz in 2012. Since then SkyBitz has been a wholly owned subsidiary of
`
`Telular.” Id. ¶ 3. Mr. Steckel also attests that, “[a]t Telular’s instruction,
`
`SkyBitz in 2015 acquired the voting shares of [GPSNA],” and “Telular
`
`financed this transaction.” Id. ¶ 4. Mr. Steckel further attests that “[a]fter
`
`the acquisition, Telular took ownership of all GPSNA product lines and
`
`trademarks.” Id. ¶ 5.
`
`
`
`Citing Mr. Steckel’s Declaration, Petitioner asserts SkyBitz is not a
`
`real party-in-interest to the present proceedings because it has no authority to
`
`act on its own:
`
`SkyBitz has no power to act on its own in any capacity without
`obtaining Telular’s Board approval. . . . SkyBitz must first
`receive Telular Board approval before embarking on any
`
`8
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`involvement in engineering projects, setting sales prices,
`engaging in financial transactions, and/or participating in legal
`action. . . . SkyBitz also must seek Telular’s approval to spend
`any money.
`
`Opp. 2 (citing Ex. 1011 ¶ 10). Petitioner explains that Telular named
`
`GPSNA as a petitioner in these proceedings “because it was identified as a
`
`defendant in the co-pending litigation.” Opp. 1 (citing Ex. 1011 ¶ 9).
`
`Petitioner also explains that Telular did not identify SkyBitz as an RPI
`
`“because, absent permission from Telular, SkyBitz has no ability to take any
`
`legal action, participate in any legal action, or supply any funds in relation to
`
`legal action.” Id. (citing Ex. 1011 ¶ 10). Petitioner further explains,
`
`“SkyBitz has no financial interest in the co-pending litigation because
`
`Telular is fully responsible for all accused products, attorney’s fees and
`
`payment of any judgment in relation to the co-pending litigation.” Id. (citing
`
`Ex. 1011 ¶ 12); see also Ex. 1012 ¶¶ 3–6 (Declaration of Steven G. Hill,
`
`counsel to Petitioners (attesting that Telular, not SkyBitz, contributed to
`
`funding IPR proceedings)).
`
`F. Analysis of Arguments and Evidence
`
`
`
`Patent Owner’s argument for dismissal of the petitions hinges on
`
`equating GPSNA with SkyBitz and asserting that, if GPSNA is named as an
`
`RPI, then SkyBitz should have been named as well because SkyBitz is a real
`
`party-in-interest to GPSNA. In focusing solely on SkyBitz’s relationship to
`
`GPSNA, Patent Owner’s argument ignores the fundamental substantive
`
`inquiry into whether SkyBitz has actual control of, or the opportunity to
`
`control, these proceedings. See Final Rule, 77 Fed. Reg. at 48,617.
`
`9
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`
`
`Patent Owner does not present any evidence that SkyBitz has played
`
`any part in the decision to file, draft, or maintain these inter partes reviews.
`
`Petitioner, on the other hand, presents persuasive evidence that Telular, not
`
`SkyBitz, has controlled all of those decisions. Opp. 4 (citing Ex. 1011 ¶¶ 8,
`
`10–11). Patent Owner also does not present any evidence that SkyBitz
`
`would benefit from invalidation of the patents at issue, in contrast to
`
`Petitioner’s persuasive evidence that Telular, not SkyBitz, owns and controls
`
`GPSNA’s product lines accused of infringement in the underlying litigation
`
`and that Telular, not SkyBitz, is responsible for paying all legal fees in the
`
`underlying litigation and satisfying any judgment therein. Opp. 1–2 (citing
`
`Ex. 1011 ¶¶ 5, 12). In addition, Petitioner’s evidence shows that Telular, not
`
`SkyBitz, is responsible for GPSNA’s share of funding the inter partes
`
`review proceedings. Ex. 1012 ¶¶ 3–6.
`
`
`
`The cases cited by Patent Owner do not require naming as an RPI an
`
`entity that is related to (or even “intertwined with”) a named petitioner
`
`without consideration of whether the unnamed entity is substantively
`
`involved with the inter partes proceedings. Patent Owner relies primarily on
`
`Corning Optical Comm’ns RF, LLC v. PPC Broadband, Inc., IPR2014-
`
`00440, Paper 68 at 16 (PTAB Aug. 18, 2015), in which the Board found that
`
`the “lines of corporate separation” between the petitioner and an unnamed
`
`entity were “blurred sufficiently” such that the unnamed entity “could have
`
`controlled the filing and participation of the IPRs.” In making this finding,
`
`however, the Board did not rely merely on the “blurred” corporate lines, but
`
`found a “preponderance of the evidence” showed that the unnamed entity
`
`“funded these IPR proceedings, and also exercised or could have exercised
`
`10
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`control over Petitioner’s participation in these proceedings.” Id. Contrary to
`
`Patent Owner’s argument, Corning Optical does not stand for the
`
`proposition that an unnamed entity that is “intertwined with” a named
`
`petitioner is necessarily an RPI. Rather, we must substantively evaluate the
`
`relationship of the unnamed entity to these proceedings.
`
`
`
`As Petitioner correctly notes, here—unlike Corning Optical—
`
`Petitioner identified its controlling parent (Telular) as an RPI, and there is no
`
`evidence that any portion of the funding of the RPI was allocated to the
`
`unnamed entity (SkyBitz). Opp. 5; see also Ex. 1012. In addition, the
`
`evidence provided by Petitioner persuasively shows that Telular, not
`
`SkyBitz, retained and paid counsel to prepare and file the IPR petition and is
`
`fully responsible for the manufacture, marketing and sale of the accused
`
`products. See Opp. 4–5 (citing Exs. 1011 and 1012). Patent Owner has not
`
`submitted any evidence to the contrary.
`
`
`
`Patent Owner also argues that, “in the co-pending litigation, GPSNA’s
`
`counsel have been representing both GPSNA’s and SkyBitz’s interests” in
`
`settlement discussions, and this “further confirms that SkyBitz is a real party
`
`in interest to GPSNA.” Mot. 4 (emphasis added). Patent Owner, again,
`
`relies on an incomplete analysis. Although an unnamed entity’s relationship
`
`with a named petitioner is potentially relevant to whether that entity should
`
`be named as a real party-in-interest, the relevance of that relationship turns
`
`on whether it supports a finding that the unnamed entity controlled, or could
`
`have controlled, the petitioner’s participation in, and/or funding of, the
`
`proceeding. In other words, the ultimate inquiry is not, as Patent Owner
`
`suggests, simply whether an unnamed entity is a real party-in-interest to a
`
`11
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`petitioner; the inquiry is whether the unnamed entity is a real party-in-
`
`interest to these proceedings. See Trial Practice Guide, 77 Fed. Reg. at
`
`48,759 (noting the inquiry is “[w]hether a party who is not a named
`
`participant in a given proceeding nonetheless constitutes a ‘real party-in-
`
`interest’ . . . to that proceeding . . . .”) (emphasis added).
`
`
`
`Patent Owner’s reliance on Zoll Lifecor Corp. v. Philips Elecs. N. Am.
`
`Corp., IPR2013-00618, 2014 WL 1253143, at * 7 (PTAB Mar. 20, 2014)
`
`(Mot. 4–5) is also unavailing of Patent Owner’s position that participation in
`
`settlement of co-pending litigation, itself, demonstrates an interest in an inter
`
`partes review. To the contrary, the Board’s decision in Zoll Lifecor, like the
`
`decision in Corning Optical, confirms that the determination of whether an
`
`unnamed entity is a real party in interest to an inter partes review turns on
`
`the relationship of that entity to the review itself—that is, whether the entity
`
`controlled, or had the opportunity to control, petitioner’s participation in the
`
`review. In Zoll Lifecor, the Board was persuaded that an unnamed entity
`
`should have been named as an RPI because it had “exercised consistent
`
`control over Petitioner’s business” for many years, which included “aligned
`
`interests and sufficient opportunities . . . to control all aspects of Petitioner’s
`
`business, including controlling this inter partes review.” Id. at * 6. The
`
`unnamed entity’s presence at a court-ordered mediation in the co-pending
`
`litigation—coupled with the absence of the petitioner’s management team—
`
`was but one piece of evidence that supported finding “an involved and
`
`controlling parent corporation representing the unified interests of itself and
`
`Petitioner.” Id. Here, in contrast, Petitioner has presented persuasive
`
`evidence that Telular, not SkyBitz, controls and manages GPSNA’s accused
`
`12
`
`
`
`

`

`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`product lines and also is responsible for funding and controlling the co-
`
`pending litigation as well as the present proceedings. Opp. 1–6 and Exs.
`
`1011, 1012. Patent Owner has presented no evidence to the contrary—such
`
`as that SkyBitz has ever taken over any proceedings in the co-pending
`
`litigation or these inter partes reviews (as did the parent in Zoll Lifecor).
`
`
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we find that the petitions in the subject
`
`inter partes reviews do not fail to identify all real parties-in-interest as
`
`required by 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1).
`
`
`
`In view of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that Patent Owner’s Motions To Terminate for Failure To
`
`List SkyBitz Inc. as a Real Party in Interest in IPR2016-01061 (Paper 17),
`
`IPR2016-01062 (Paper 14), IPR2016-01063 (Paper 15), and IPR2016-01064
`
`(Paper 15) are DENIED.
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`13
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`IPR2016-01061 (Patent 8,223,012 B1)
`IPR2016-01062 (Patent 8,493,207 B2)
`IPR2016-01063 (Patent 8,717,166 B2)
`IPR2016-01064 (Patent 9,003,499 B2)
`
`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
`PERDIEM-IPR@quinnemanuel.com
`
`
`
`Robert Babayi
`VECTOR IP LAW GROUP
`robert@vectoriplaw.com
`
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`14
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