Judge Grants Global Tel*Link Request to Halt Securus Patent Case As US Patent Office Considers Invalidating Securus Patents
Reston, Virginia (PRNewsWire) –July 2, 2015 – In another milestone success for Global Tel*Link (GTL) in federal court on Tuesday, a U.S. District Court judge in Dallas granted GTL’s request to immediately halt proceedings in Securus Technologies Inc.’s patent infringement suit against GTL until after the U.S. Patent and Trademark Office (PTO) decides whether three patents in the case are invalid. The three Securus patents, including the “crown jewel” of its portfolio, were challenged last year by GTL under new American Invents Act procedures, and the PTO has already found that there is a “reasonable likelihood” that the three patents are invalid and should not have been issued.
“We have pursued a disciplined strategy of challenging Securus’s patents in the PTO to show the world that Securus is not the innovator that it claims to be,” said GTL CEO Brian Oliver. “Now that strategy is starting to bear fruit. We fully expect that the challenged Securus patents will be invalidated and we are pleased that the court in Texas has decided to let the PTO do their work rather than requiring the parties to spend money litigating over patents that will very likely be invalid in a few months’ time.”
For its part, GTL voluntarily agreed to stay its counterclaims for patent infringement in the case so that the lawsuit would be halted in its entirety. Additionally, GTL has claims remaining in two separate cases alleging that Securus infringes a total of five GTL patents. Those cases are proceeding on schedule for trial in Dallas in February 2016, and if GTL is successful, Securus faces the potential of millions of dollars in past damages and the risk of injunctions preventing its use of GTL-patented products or future royalty payments to GTL for use of its technology.
Separately at the PTO, GTL has challenged the validity of 17 Securus patents across a range of technologies, comprising a cross-section of Securus’s patent portfolio. In its petitions to the PTO, GTL has asserted that Securus inflated its intellectual property portfolio by filing duplicative patents with minor changes, obtained patents covering a wide range of technologies already in the public domain and patented by other companies, made misleading statements to a patent examiner and secured patents without inventing any new technology. Decisions on these patent challenges are expected starting later this summer and continuing through 2016.
This aggressive strategy of challenging Securus’s patents is intended to promote innovation, open the market to the widest variety of technology and to bring competitive certainty to replace the years of instability caused by Securus’s pattern of filing lawsuits designed primarily to intimidate and force competitors to settle. As an industry leader and utilizing its superior financial strength, GTL has accepted responsibility to level the playing field by reducing the risk of further unwarranted patent suits from Securus. Competition is good for the industry, good for the consumer and good for companies who do actually innovate and provide customers with solutions that are integral to the operation of facilities.
“For too long, Securus has used the threat of high litigation costs to extract what we regard as unwarranted payments from competitors,” said Oliver. Instead of caving in to Securus’s demands, GTL has decided to call Securus’s bluff.”
About Global Tel*Link
GTL is the leading provider of integrated correctional technology solutions, delivering financial value, security, and ease of operation to our customers through visionary products and solutions at the forefront of corrections innovation. As a trusted correctional industry leader, GTL provides service to approximately fifty percent of inmates nationwide, including service to 33 state departments of corrections, the District of Columbia, Puerto Rico, and 32 of the largest city/county facilities. GTL is headquartered in Reston, Virginia, with more than 10 regional offices across the country. To find out more about GTL, please visit our website www.gtl.net.
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Corrections Today July/August 2015 (.pdf)
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March / April 2015 (.pdf)
