`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Monday, December 19, 2016 11:54 AM
`To: Marissa Ducca <marissaducca@quinnemanuel.com>; Trials <Trials@USPTO.GOV>
`Cc: Alan Whitehurst <alanwhitehurst@quinnemanuel.com>; Robert Babayi <robert@vectoriplaw.com>; vg@hkw-
`law.com; perdiemipr@hkw-law.com
`Subject: RE: IPR2016-01061, -01062, -01063, -01064, -01278 – Request to File Joint Motion to Terminate Petitioner
`Geotab Inc. Pursuant to Settlement with Patent Owner
`
`Counsel,
`
`Patent Owner, PerdiemCo LLC, and Petitioner, Geotab Inc., are authorized to file a joint motion to terminate IPRs 2016-
`01061, 1062, 1063, 1064, and 1278, as to Geotab only, due to settlement. The joint motion to terminate must be
`accompanied by a true copy of the parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. §
`42.74(b), and include a statement certifying that there are no collateral agreements or understandings made in
`connection with, or in contemplation of, the termination of the IPR proceedings. A redacted version of the settlement
`agreement is not a true copy of the settlement agreement. In addition, the joint motion must discuss the current status
`of any related district court action in which infringement or invalidity of the claims of the patents at issue has been
`alleged or is contemplated in the foreseeable future.
`
`PerDiem and Geotab are further authorized to file a request that the settlement agreement be treated as business
`confidential information under 37 C.F.R. § 42.74(c). In that regard, the parties must file the confidential settlement
`agreement electronically in accordance with the instructions provided on the Board’s website (uploading as “Parties and
`Board Only” or “Filer and Board Only”). The parties are directed to FAQ G2 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for further instructions on filing the confidential settlement agreement.
`
`Thanks,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Marissa Ducca [mailto:marissaducca@quinnemanuel.com]
`Sent: Friday, December 16, 2016 2:11 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Alan Whitehurst <alanwhitehurst@quinnemanuel.com>; Robert Babayi <robert@vectoriplaw.com>; vg@hkw-
`law.com; perdiemipr@hkw-law.com
`Subject: IPR2016-01061, -01062, -01063, -01064, -01278 – Request to File Joint Motion to Terminate Petitioner Geotab
`Inc. Pursuant to Settlement with Patent Owner
`
`Dear Sir or Madam,
`
`Pursuant to 37 CFR §42.20 and 35 U.S.C. § 317, Patent Owner PerdiemCo LLC (“Patent Owner”) and Petitioner Geotab
`Inc. (“Geotab”) jointly and respectfully request the Board’s permission to file a Joint Motion to Terminate in each of the
`following proceedings with respect to Geotab only:
`
`1
`
`
`
` ·
`
` IPR2016-01061 (U.S. Patent No. 8,223,012);
`· IPR2016-01062 (U.S. Patent No. 8,493,207);
`· IPR2016-01063 (U.S. Patent No. 8,717,166);
`· IPR2016-01064 (U.S. Patent No. 9,003,499); and
`· IPR2016-01278 (U.S. Patent No. 9,071,931).
`
`The termination with respect to Geotab is pursuant to a Settlement Agreement in which the parties have agreed to end
`their disputes in their district court litigation and the aforementioned proceedings. The parties also request permission
`to file a copy of the fully executed Agreement, as well as a Joint Request that the Settlement Agreement Be Treated as
`Business Confidential Information pursuant to the procedures set forth in 37 CFR §42.74(c) and 35 USC §317(b). The
`aforementioned proceedings will still include active petitioners, namely TV Management, Inc. d/b/a GPS North America.
`
`Best regards,
`Marissa
`
`_______________________________
`Marissa Ducca
`Quinn Emanuel Urquhart & Sullivan, LLP
`777 6th Street, NW
`11th Floor
`Washington, DC 20001
`Direct: +1.202.538.8109
`Mobile: +1.440.376.5733
`
`
`2