by Steve Hodge – Senior VP – Research and Development
In 2015, Global Tel*Link (GTL) experienced unparalleled success against industry rival Securus Technologies in front of the Patent Trial and Appeal Board (PTAB). Utilizing a relatively new patent review system established under the America Invents Act (AIA), GTL successfully challenged six out of seven Securus patents and saw the dismissal of 165 patent claims – effectively crippling the core of Securus’ patent portfolio.
GTL’s aggressive, three-year patent campaign against Securus is certainly bearing fruit, but as industry veterans (such as myself) are well aware, GTL will have to be vigilant given Securus’ decade-long history of predatory patent litigation. GTL has frequently been the target of Securus’ “sue and settle” business model, however with the introduction of an expanded grant opposition program in the AIA, we have turned the tables and are standing up for reasonable competition in the ICS marketplace. In fact, GTL has already filed 20 Inter Partes Review (IPR) applications with the Patent Trial and Appeal Board (PTAB) against 17 different Securus patents.
To date, the PTAB has ruled to completely invalidate four of Securus’ patents (including the “crown jewel” ‘167 VOIP patent) and dismissed nearly all of the claims from the other challenged patents. The PTAB has invalidated or rendered useless all of the substantive content from each of Securus’ challenged patents. Additionally, the PTAB concluded that Securus had misled patent examiners to obtain patents. If that weren’t enough, Securus misled the market about the capabilities of its products, filed duplicative patents to inflate the size of its patent portfolio, and attempted to patent products already in the marketplace, like Apple’s FaceTime.
Despite GTL’s overwhelming victories, Securus incredulously continues to claim that they are winning the “patent war.” Their strained attempts at contorting terrible losses into victories notwithstanding, this behavior only serves to underscore what this process has revealed: Securus’ patent portfolio is a façade, a carefully constructed house of cards that has been used against our industry for years.
Securus can continue clamoring about their patent superiority and challenging GTL to childish “bake-offs”, but at the end of day their “technology” – a hodge podge cobbled from parts of 19 other companies they’ve bought during the past several years – can’t be compared to the integrated software and hardware developed “at home” by GTL engineers for decades. Meanwhile, GTL has just concluded a record year of its own patent activity, growth that is a reflection of the in-house innovation behind GTL’s market leading technology.
Ultimately, GTL’s advantage over Securus is not just a result of challenges to Securus’ patent portfolio, but rather a reflection of the diversity of our technology portfolio and the ingenuity of GTL software engineering. This is not lost on the hundreds of facilities that have chosen to utilize GTL’s advanced product lines. From the IQ family series to our advanced Offender Management System (OMS), GTL’s technology represents the industry standard against which all others are measured.
GTL will continue to fight Securus’ brazen attempts to steamroll the industry and I’m pleased to note that it has been more than three years since Securus has filed a patent suit against anther industry player. It would seem their days of “sue and settle” are over. There are a number of other IPRs awaiting final decisions from the PTAB and GTL expects final decisions in all of these cases over the next 14 months. We are confident that the PTAB will take the same critical eye to the remaining IPRs and we will experience the sweeping success that we have with our initial IPRs. Through IPRs and various other methods, GTL aims to challenge Securus and promote an industry atmosphere conducive to technology development and innovation.