`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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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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`Case IPR2016-01063
`U.S. Patent No. 8,717,166
`________________
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`PATENT OWNER’S MOTION TO TERMINATE FOR FAILURE TO
`LIST SKYBITZ INC. AS A REAL PARTY IN INTEREST
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`II.
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` Case No. IPR2016-01063
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION .................................................................................1
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`THIS PROCEEDING SHOULD BE TERMINATED DUE TO
`PETITIONERS’ FAILURE TO LIST SKYBITZ AS A REAL
`PARTY IN INTEREST .........................................................................2
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`III. CONCLUSION .....................................................................................6
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Corning Optical Comm’ns RF, LLC v. PPC Broadband, Inc.,
`IPR2014-00440, Paper No. 68 (PTAB Aug. 18, 2015) ......................... 3, 5
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`Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp.,
`IPR2013-00618, 2014 WL 1253143 (PTAB Mar. 20, 2014) .....................4
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`Statutes
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`35 U.S.C. § 312(a)(2) .......................................................................................1
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`37 C.F.R. § 42.8(a)(3) ......................................................................................3
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`37 C.F.R. § 42.8(b)(1) ................................................................................. 1, 3
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`37 C.F.R. § 42.72 .............................................................................................1
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`EXHIBIT LIST
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`Exhibit
`No.
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`Exhibit Description
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`2003
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`Excerpts from the deposition of Todd Lewis (8/4/16)
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`2004
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`2005
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`2006
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`2007
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`“SkyBitz, a Telular Company, Enters Agreement to Acquire Reltima
`and GPS North America,” Press Release (6/23/15)
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`“SkyBitz Local Fleets: About Us” webpage, available at
`http://www.skybitz.com/local-fleets/about-us/overview
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`Telular Corporation “Portfolio” webpage, available at
`http://www.telular.com/#Portfolio
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`Email chain between PerDiem counsel Alan Whitehurst, PerDiem
`counsel Kevin Chu, and GPSNA counsel Michael Femal, dated
`9.27.16 through 10.4.16
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`2008
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`Email chain between PerDiem counsel Alan Whitehurst and GPSNA
`counsel Michael Femal, dated 9.15.16 and 9.26.16
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`I.
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`INTRODUCTION
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` Case No. IPR2016-01063
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`Pursuant to 35 U.S.C. § 312(a)(2), 37 C.F.R. § 42.8(b)(1), and 37
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`C.F.R. §42.72, Patent Owner PerdiemCo LLC (“PerDiem”) respectfully
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`requests that this IPR proceeding be terminated for failure to list a real party
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`in interest. The Board provided authorization for PerDiem to file this
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`motion to terminate in an email dated October 19, 2016.
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`Specifically, this proceeding should be terminated because the
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`evidence clearly shows that an undisclosed company — SkyBitz Inc. — is a
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`real party in interest for Petitioner TV Management, Inc. d/b/a GPS North
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`America (“GPSNA”). Indeed, Todd Lewis — the former CEO of GPSNA
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`and current Vice President of SkyBitz — made clear in recent deposition
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`testimony that GPSNA has been wholly subsumed within SkyBitz and does
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`not exist anymore as a defined corporate entity.1 Thus, SkyBitz easily
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`1 Mr. Lewis’ testimony was designated confidential in the co-pending
`litigation where it was given. PerDiem did not receive GPSNA’s consent to
`de-designate this testimony until October 4, 2016 (Ex. 2007), which was
`well after the September 7 due date for PerDiem’s Preliminary Response in
`this proceeding. Thus, PerDiem could not have effectively raised the real-
`party-in-interest issue in its Preliminary Response. PerDiem instead sought
`(and received) the Board’s authorization to raise the issue via this Motion to
`Terminate. Given that the Board authorized PerDiem to raise the real-party-
`in-interest issue via this Motion, Petitioners cannot argue that this Motion is
`somehow tardy or improper just because PerDiem did not raise the real-
`party-in-interest issue in its Preliminary Response.
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`qualifies as a real party in interest to GPSNA under this Board’s precedents.
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`Yet SkyBitz was not disclosed in Petitioners’ IPR Petition. Accordingly,
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`PerDiem respectfully requests that the Petition be dismissed and this
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`proceeding terminated.
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`II. THIS PROCEEDING SHOULD BE TERMINATED DUE TO
`PETITIONERS’ FAILURE TO LIST SKYBITZ AS A REAL
`PARTY IN INTEREST
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`As alluded to above, deposition testimony from the co-pending
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`litigation makes clear that Petitioner GPSNA does not even exist anymore
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`— it has been completely subsumed into SkyBitz. Todd Lewis, the former
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`CEO of GPSNA and current Vice President of SkyBitz, made this point
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`crystal clear in his deposition:
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`Q. About what year was GPS NA acquired by SkyBitz?
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`A. 2015.
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`Q. Does SkyBitz acquire a hundred percent of GPS NA?
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`A. Yes.
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`Q. Does GPS NA still operate as a separate entity?
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`A. No.
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`Q. No. So it's completely merged with SkyBitz?
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`A. Um-hum.
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`Q. Okay.
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`A. Yes.
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`Ex. 2003 (Lewis Dep.) at 28:11-29:6; see also id. at 38:10-17:
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`Q. And just for clarification, at this point in time, as we sit here
`today, is there still a company called GPS NA?
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`A. No.
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`Q. Okay. So it was completely correlated with SkyBitz and now
`GPS NA does not exist for all?
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`A. That’s correct.2
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`Public documentary evidence further supports Mr. Lewis’ testimony
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`on this point. For example, a June 2015 press release states that “SkyBitz®,
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`the leader in remote asset tracking and information management solutions,
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`today announced that it has entered into a definitive agreement to acquire
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`Reltima and GPS North America, two leading commercial telematics
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`companies in the local fleet management market.” Ex. 2004 at 1. SkyBitz’s
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`own website says the same thing. Ex. 2005 (“In 2015, SkyBitz acquired
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`2 Petitioners might argue that Mr. Lewis’ deposition testimony did not state
`precisely when GPSNA was completely subsumed within SkyBitz, and did
`not explicitly state whether the subsuming happened when SkyBitz first
`acquired GPSNA in 2015. But this argument would be irrelevant. At the
`time Mr. Lewis testified in August 2016, he was clear that GPSNA had been
`completely subsumed within SkyBitz. Either this state of affairs existed
`when Petitioners’ Petition was filed in June 2016 (in which case SkyBitz
`should have been listed in the Petition as a real party in interest) or this state
`of affairs began between June 2016 and August 2016 (in which case
`Petitioners had a duty to update their real party in interest information to
`include SkyBitz). See 37 CFR §§ 42.8(a)(3) & (b)(1).
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`Reltima and GPS North America, two leading commercial telematics
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`companies in the local fleet management market.”)
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`This Board has found that an undisclosed company qualifies as a “real
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`party in interest” to a Petitioner if the undisclosed company and the
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`Petitioner are “so intertwined that it is difficult for both insiders and
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`outsiders to determine precisely where one ends and another begins.”
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`Corning Optical Comm’ns RF, LLC v. PPC Broadband, Inc., IPR2014-
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`00440, Paper No. 68 at 18 (PTAB Aug. 18, 2015) (citation omitted). It is
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`hard to imagine a clearer or more extreme example of such “intertwining”
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`than SkyBitz and GPSNA. As Mr. Lewis’ deposition testimony makes
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`clear, GPSNA has been entirely subsumed within SkyBitz and no longer has
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`any independent identity or operations. It follows that SkyBitz is a real
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`party in interest to GPSNA, and should have been listed as such.
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`Moreover, in the co-pending litigation, GPSNA’s counsel have been
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`representing both GPSNA’s and SkyBitz’s interests. For example, at
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`various points in the litigation, GPSNA’s counsel tied settlement discussions
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`to a covenant not to sue that included both GPSNA and SkyBitz. See, e.g.,
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`Ex. 2008 at 2. This co-representation of GPSNA’s and SkyBitz’s interests
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`in settlement talks further confirms that SkyBitz is a real party in interest to
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`GPSNA. See Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., IPR2013-
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`00618, 2014 WL 1253143, at *7 (PTAB Mar. 20, 2014) (“the absence of
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`Petitioner’s management team, and presence of ZOLL Medical’s
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`management team, at the court-ordered mediation in the Pennsylvania
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`Action suggests an involved and controlling parent corporation representing
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`the unified interests of itself and Petitioner.”)
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`GPSNA might argue that it satisfied the real-party-in-interest
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`requirement because its Petition does list Telular Corporation, which is the
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`ultimate umbrella parent of SkyBitz and GPSNA. See Ex. 2006 at 4
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`(showing how SkyBitz is one of Telular’s subsidiaries). But this Board has
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`rejected the notion that a party can comply with the real-party-in-interest
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`requirement by listing a global umbrella parent and omitting other relevant
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`companies who are also real parties in interest. In Corning Optical, for
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`example, the Board held that an IPR Petition needed to list both the
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`Petitioner’s ultimate parent (Corning Inc.) and a subsidiary company that
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`was closely-intertwined with Petitioner (Corning NC). Corning Optical,
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`IPR2014-00440, Paper No. 68 at 16 (“the Petitions should have named both
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`Corning NC and Corning Inc. as real parties-in-interest.”) Here too, GPSNA
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`cannot satisfy the real-party-in-interest requirement by merely listing its
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`ultimate parent (Telular) while ignoring its alter ego (SkyBitz). Whether or
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`not Telular is a real party in interest, SkyBitz certainly is, and needed to be
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`listed as such. Because the Petition fails to list SkyBitz as a real party in
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`interest, the Petition should be denied.
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`III. CONCLUSION
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`For the foregoing reasons, PerDiem respectfully requests that this
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` Respectfully submitted,
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`By: /s/ Alan L. Whitehurst, Reg. No. 43,263
` Alan L. Whitehurst (Reg. No. 43,263)
`QUINN EMANUEL URQUHART & SULLIVAN,
`LLP
`777 6th St. NW, 11th Floor
`Washington, D.C. 20001
`Tel: (202) 538-8000
`Fax: (202) 538-9100
`Email: alanwhitehurst@quinnemanuel.com
`
`
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` Lead Attorney for Patent Owner –
` PerdiemCo LLC
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`proceeding be terminated.
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`Date: October 25, 2016
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that
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`PATENT OWNER’S MOTION TO TERMINATE FOR FAILURE TO
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`LIST SKYBITZ INC. AS A REAL PARTY IN INTEREST, and all exhibits
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`and other documents filed together with the Motion, were served on October
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`25, 2016 by filing these documents through the Patent Review Processing
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`System, as well as by e-mailing copies to:
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` Respectfully submitted,
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`By: /s/ Alan L. Whitehurst, Reg. No. 43,263
` Alan L. Whitehurst (Reg. No. 43,263)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`777 6th St. NW, 11th Floor
`Washington, D.C. 20001
`alanwhitehurst@quinnemanuel.com
`
`
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` Lead Attorney for Patent Owner –
` PerdiemCo LLC
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`7
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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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`Date: October 25, 2016