Jessica Karmasek Sep. 17, 2015, 10:52am


WASHINGTON (Legal Newsline) - The Patent Trial and Appeal Board last week granted a request by Global Tel*Link Corporation, a company that describes itself as the “one-stop source” for integrated technology for correctional facilities, invalidating its competitor’s patents.

The PTAB, which is charged with rendering decisions on appeals from adverse examiner decisions, post-issuance challenges to patents and interferences, issued its final written decisions Friday.

The board granted GTL’s request to invalidate two Securus Technologies Inc. patents, including the so-called “crown jewel” of its patent portfolio.

The centralized call processing patents were the core of Securus’ portfolio and were used, GTL claims, as centerpieces in Securus’ strategy to intimidate competitors into settling patent lawsuits and paying tens of millions in license fees.

GTL said the sweeping decisions, in which all claims of both patents were invalidated, signals an end to existing patent claims against it and will prevent any new suits related to these patents, opening the market to greater competition.

“This is a great victory for GTL and the industry,” GTL CEO Brian Oliver said in a statement Monday. “Securus used these patents and others for years to impose a virtual toll booth on our industry.

“In the end, however, the PTAB recognized that Securus’ patents didn’t cover any genuine invention.”

According to GTL, Securus has filed at least 12 lawsuits against 19 industry competitors over the course of the past 15 years. GTL contends the lawsuits stifled innovation and created confusion for customers and vendors alike.

In its rulings, the PTAB also detailed “incorrect” statements of fact Securus made to patent officials while seeking approval for one of the invalidated patents -- false statements that ultimately played a role in leading the U.S. Patent and Trademark Office to issue the patent.

The board’s decisions last week are just the first of the final written orders issued from 19 patent petitions GTL filed with the PTAB between March 2014 and May of this year.

In May alone, GTL filed seven inter partes reviews, two post-grant reviews and one covered business method review challenging nine additional Securus patents and 209 additional patent claims.

GTL alleges that the Securus patents mimic available consumer products, like Apple’s FaceTime, and a “range of other technology” that was well known long before Securus’ patent applications were filed.

The company contends that Securus “inflated” its portfolio by filing duplicative patents with minor changes; obtained patents covering a wide range of technologies already in the public domain and patented by others; and secured patents without inventing any new technology.

“You cannot deceive your way to innovation,” Oliver said. “This decision unmasks Securus for what GTL has long said it is -- a patent predator, not an innovator.

“They filed patents on material that others had invented or was obvious to everyone working in the industry, called it ‘innovation’ and tried to cash in. It was a hoax.”

Last week’s PTAB rulings also signal the imminent demise of Securus’ pending claim in a Dallas federal court that GTL infringed the invalidated patents.

“Since GTL took up the fight against these tactics two years ago, Securus has not filed a single new patent case against another industry competitor,” Oliver noted.

“Securus will now have to compete based on technology alone.”

According to its website, GTL provides services for at least 50 percent of inmates nationwide, including service to 32 state departments of corrections, the District of Columbia, Puerto Rico and 32 of the largest city/county facilities. It is headquartered in Reston, Va., and has more than 10 regional offices across the country.

Securus could not be reached for comment.

From Legal Newsline: Reach Jessica Karmasek by email at jessica@legalnewsline.com.

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