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Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 26
`Entered: December 29, 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.
`
`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
` Case IPR2016-01278 (Patent 9,072,931 B2)1
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`HAGY, Administrative Patent Judge.
`
`
`ORDER
`Terminating Inter Partes Review After Institution
`With Respect to Petitioner Geotab Inc. Due to Settlement
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.74
`
`
`
`
`
`1 This order addresses joint motions to terminate as to Petitioner Geotab Inc.
`based on settlement agreements filed in all five cases. We exercise our
`discretion to issue a single order to be entered in each case.
`
`

`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`Case IPR2016-01278 (Patent 9,072,931 B2)
`
`
`Introduction
`1.
`The Board has instituted review in each of these proceedings, but the
`trials are at an early stage. Patent Owner PerdiemCo LLC (“Patent Owner”)
`has not yet filed its Response to the Petition in any of these proceedings.
`On December 20, 2016, pursuant to Board authorization, Patent
`Owner and Petitioner Geotab Inc. (“Geotab”) filed joint motions to terminate
`the proceedings with respect to Geotab only. IPR2016-01061, Paper 26;
`IPR2016-01062, Paper 23; IPR2016-01063, Paper 24; IPR2016-01064,
`Paper 24; IPR2016-01278, Paper 24. Along with the motion, the parties
`filed a copy of a document they describe as their written settlement
`agreement, as well as a separate joint request to treat the settlement
`agreement as business confidential information. IPR2016-01061, Paper 27
`and Ex. 2010; IPR2016-01062, Paper 24 and Ex. 2010; IPR2016-01063,
`Paper 25 and Ex. 2010; IPR2016-01064, Paper 25 and Ex. 2010; and
`IPR2016-01278, Paper 25 and Ex. 2008. See 37 C.F.R. § 42.74(c) (a party
`to a settlement may request that the settlement agreement be treated as
`business confidential and be kept separate from the patent file).
`2.
`Discussion
`The Parties state the following in the Joint Motion to Terminate:
`
`“Patent Owner and Geotab settled their dispute and executed a confidential
`settlement agreement to terminate Geotab’s involvement in this proceeding
`and the Parties’ related district court litigation. . . .” IPR2016-01061, Paper
`26, 2; IPR2016-01062, Paper 23, 2; IPR2016-01063, Paper 25, 2; IPR2016-
`01064, Paper 25, 2; IPR2016-01278, Paper 25, 2.
`
`2
`
`

`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`Case IPR2016-01278 (Patent 9,072,931 B2)
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.”
`
`Under these circumstances, we determine that it is appropriate to
`terminate each of these proceedings as to Geotab Inc. See 35 U.S.C.
`§ 317(a) and 37 C.F.R. § 42.74.
`After reviewing the parties’ settlement agreement, we find that the
`settlement agreement contains business confidential information regarding
`the terms of the settlement and good cause exists to treat the settlement
`agreement as business confidential information pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`3.
`
`Order
`
`It is
`
`ORDERED that the Joint Motion to Terminate the Proceedings as to
`
`Petitioner Geotab Inc. is granted;
`FURTHER ORDERED that termination is granted as to Geotab Inc.
`
`only, and these proceedings shall continue with TV Management, Inc., d/b/a
`GPS North America, as Petitioner;
`
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreements as business confidential information is granted in
`each proceeding, and the settlement agreements (Exhibit 2010 in IPR2016-
`01061; Exhibit 2010 in IPR2016-01062; Exhibit 2010 in IPR2016-01063;
`Exhibit 2010 in IPR2016-01064; and Exhibit 2008 in IPR2015-01278) shall
`
`3
`
`

`
`Case IPR2016-01061 (Patent 8,223,012 B1)
`Case IPR2016-01062 (Patent 8,493,207 B2)
`Case IPR2016-01063 (Patent 8,717,166 B2)
`Case IPR2016-01064 (Patent 9,003,499 B2)
`Case IPR2016-01278 (Patent 9,072,931 B2)
`
`be treated as business confidential information under 37 C.F.R. § 42.74(c),
`kept separate from the files of U.S. Patent Nos. 8,223,012 B1; 8,493,207 B2;
`8,717,166 B2; 9,003,499 B2; and 9,072,931 B2, respectively, and remain
`designated as “Board and Parties Only.”
`
`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 S. Babayi
`Vector IP Law Group
`robert@vectoriplaw.com
`
`4

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