UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`GEOTAB INC. AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
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`Petitioners
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`v.
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`PERDIEMCO LLC
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`Patent Owner
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`________________
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`Case IPR2016-01063
`U.S. Patent No. 8,717,166
`________________
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`JOINT MOTION TO TERMINATE THE PROCEEDINGS WITH
`RESPECT TO GEOTAB INC. ONLY, UNDER 35 U.S.C. § 317(a)
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`GEOTAB INC. AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
`
`Petitioners
`
`v.
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`PERDIEMCO LLC
`
`Patent Owner
`
`________________
`
`Case IPR2016-01063
`U.S. Patent No. 8,717,166
`________________
`
`JOINT MOTION TO TERMINATE THE PROCEEDINGS WITH
`RESPECT TO GEOTAB INC. ONLY, UNDER 35 U.S.C. § 317(a)
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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`As authorized in the Patent Trial and Appeal Board’s (the “Board”)
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`December 19, 2016 e-mail (Ex. 2009), and pursuant to 35 U.S.C. § 317(a) and 37
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`C.F.R. §§ 42.72 and 42.74, Patent Owner PerdiemCo LLC (“Patent Owner”) and
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`Petitioner Geotab Inc. (“Geotab”) jointly and respectfully request that the inter
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`partes review (“IPR”) of U.S. Patent No. 8,717,166 be terminated with respect to
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`Geotab only, due to settlement between Patent Owner and Geotab.
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`1.
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`Brief Explanation As To Why Termination Is Appropriate
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`On May 19, 2016, Geotab, along with separate parties Teletrac Inc. and
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`Navman Wireless North America, Ltd. (collectively, “Teletrac”) and TV
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`Management, Inc. d/b/a GPS North America filed the instant IPR (Paper No. 5).
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`On June 7, 2016, the Board issued a Notice of Filing Date Accorded to Petition and
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`Time for Filing Patent Owner Preliminary Response (Paper No. 6). Patent Owner
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`filed a response on September 7, 2016. On December 12, 2016, Patent Owner and
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`Geotab settled their dispute and executed a confidential settlement agreement to
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`terminate Geotab’s involvement in this proceeding and the Parties’ related district
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`court litigation. A Stipulation and Order of Dismissal agreed to by the Parties in
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`the related district court litigation has been filed in the district court.
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`Pursuant to 37 C.F.R. § 42.74(b), the Parties’ confidential settlement
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`agreement is in writing, and a true and correct copy is being filed concurrently
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`2
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`Case IPR2016-01063
`Joint Motion to Terminate
` U.S. Patent No. 8,717,166
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`herewith as Exhibit 2010.1 The Parties are also filing concurrently herewith a joint
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`request to treat the confidential settlement agreement as business confidential
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`information and keep it separate from the files of the IPR and the involved patent
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The Parties hereby certify that
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`there are no collateral agreements or understandings made in connection with, or in
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`contemplation of, the termination of the IPR proceedings.
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`Termination of this proceeding with respect to Geotab is proper under 35
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`U.S.C. § 317(a) because the Board has not yet decided the merits of this
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`proceeding. This proceeding will continue with respect to the remaining
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`Petitioner. Accordingly, Patent Owner and Geotab respectfully request that the
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`Board terminate the inter partes review of U.S. Patent No. 8,717,166 with respect
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`to Geotab only, due to settlement between Patent Owner and Geotab.
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`2.
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`Related Litigations Involving The Patent At Issue
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`There are no ongoing related litigations involving the patent at issue in this
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`proceeding.
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`1 The settlement agreement is being filed electronically via PTAB E2E with
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`access to the “Board Only.” The settlement contains both Patent Owner’s and
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`Geotab’s business confidential information, which cannot be made available to any
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`of the other Petitioners remaining in this proceeding.
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`3
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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`3.
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`Related Proceedings Currently Before The Office
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`There are no related proceedings currently before the Office involving the
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`patent at issue and Geotab. This proceeding will continue with respect to the
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`remaining Petitioner. Patent Owner and Geotab are likewise concurrently filing
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`similar motions to terminate with respect to Case Nos. IPR2016-01061 (U.S.
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`Patent No. 8,223,012); IPR2016-01062 (U.S. Patent No. 8,493,207); IPR2016-
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`01064 (U.S. Patent No. 9,003,499); and IPR2016-01278 (U.S. Patent No.
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`9,071,931).
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`4.
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`Current Status Of The Related Litigations
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`The previously noticed litigations against all other defendants have settled.
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`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of the present proceeding with respect to Geotab.
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`4
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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`Date: December 20, 2016
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`Respectfully submitted,
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`/S/ Alan L. Whitehurst
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`/S/ Sharad Kotagiri Bijanki
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`Sharad Kotagiri Bijanki (Reg. No.
`30,339)
`Vivek A Ganti (Reg. No. 71,368)
`HILL, KERTSCHER & WHARTON, LLP
`3350 Riverwood Pkwy
`Suite 800
`Atlanta, Georgia 30339
`sb@khw-law.com
`vgh@hkw-law.com
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`Attorneys for Petitioner Geotab Inc.
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`Alan L. Whitehurst (Reg. No. 43,263)
`Marissa R. Ducca (Reg. No. 59,807)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`777 6th Street. 11th Floor
`Washington DC 20001
`General Tel: (202) 538-8000
`Fax: (202) 538-8100
`alanwhitehurst@quinnemanuel.com
`marissaducca@quinnemanuel.com
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`Robert Babayi
`Reg. No. 33,471
`VECTOR IP LAW GROUP
`3208 Q St. NW
`Washington, DC 20007
`General Tel: (202) 446-1480
`Fax: (202) 446-1485
`robert@vectoriplaw.com
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`Attorneys for Patent Owner
`PerdiemCo LLC
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`5
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`Joint Motion to Terminate
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`Case IPR2016-01063
` U.S. Patent No. 8,717,166
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing motion and supporting materials
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`(including all exhibits) were served via electronic mail on December 20, 2016 in
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`their entirety on the following:
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`Vivek Ganti
`vg@hkw-law.com
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`Sharad K. Bijanki
`sb@hkw-law.com
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`perdiemIPR@hkw-law.com
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`Hill, Kertscher, & Wharton, LLP
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`(770) 953-0995
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`Dated: December 20, 2016
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`Respectfully Submitted,
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`/s/ Alan L. Whitehurst
`Alan L. Whitehurst (Reg. No. 43,263)
`Attorney for Patent Owner
`QUINN EMANUEL URQUHART
`& SULLIVAN, LLP
`777 6th Street NW, 11th Floor
`Washington, D.C. 20001
`Telephone: (202) 538-8103
`Facsimile: (202) 538-8100
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`6
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