GTL Continues Successful Campaign to Eliminate Core Securus Patents Before the PTAB
Patent Trial and Appeal Board invalidates all claims from Securus’ ‘222 patent
Reston, Virginia (PRNewsWire) – January 22, 2016 – Global Tel*Link (GTL), the leading provider of integrated correctional technology solutions, today announced another significant win before the Patent Trial and Appeal Board (PTAB), as the PTAB issued two final written decisions invalidating all 36 claims of Securus’ U.S. Patent No. 7,860,222 (‘222 patent). The ‘222 patent discloses systems and methods for monitoring inmate communications via phone calls, video calls and emails and identifying items of interest, such as keywords, during a call – key investigative and security features of the Securus phone platform.
The ‘222 patent is one of four patents that Securus brought in suit against GTL. GTL challenged three of these four patents at the PTAB. Previously, the PTAB invalidated all claims in Securus’ ‘crown jewel’ ‘167 patent (U.S. Patent 7,899,167), which provides a centralized call-processing platform for correctional institutions. As in the case of the ‘167 patent, the PTAB found all claims of the ‘222 patent invalid for being obvious. GTL has also sought PTAB review of asserted U.S. Patent 7,805,457 (‘457 patent), which addresses methods for determining gang affiliations of inmates. As with the ‘222 and ‘167 patents, the PTAB instituted review of all claims of the ‘457 patent, finding a reasonable likelihood that GTL will prevail in establishing the unpatentability of those claims. A final decision in the ‘457 matter is expected in February.
GTL has challenged other Securus patents as well, four of which received final decisions. In each of these cases, either the claims were invalidated by the PTAB, or Securus made arguments to prevent invalidity, which ultimately eviscerated any value the patents may have had.
“By winning on seven out of eight IPR’s, or nearly 90 percent of the challenges we have brought to PTAB, our success sends a very clear message to Securus and the rest of the inmate communication services industry,” said GTL Chief Executive Officer Brian Oliver. “Securus is no longer free to use their ‘sue and settle’ business model to engage in questionable patent litigation to the detriment of industry competitors.”
As of today, Securus has failed to receive any of the “$50 million” it claims it is owed under the infringement lawsuit filed against GTL. Continued victories at the PTAB clearly validate GTL’s position that assertion of these patents is no more than an overused bullying tool employed by an industry competitor in search of a leg-up. Even in light of the overwhelming evidence, Securus refuses to admit loss, claiming that their patents are still valid due to pending appeals in the Federal Circuit Court of Appeals. This is empty rhetoric by Securus. The Federal Circuit has yet to reinstate a single claim invalidated by the PTAB since implementation of the current patent review system established by the America Invents Act of 2011.
Further exposing the weaknesses of Securus’ patent portfolio, GTL has filed a second set of post-grant challenges at the PTAB. Trial has been instituted on all claims challenged in nine out of the 10 proceedings, with the Board determining that there is a reasonable likelihood that all claims are unpatentable. In the final written decisions received to date regarding Securus and GTL, 95 claims were held unpatentable out of 130 challenged, giving GTL a 73 percent win rate. Yet, another indication that Securus can expect more losses in its patent portfolios in the future.
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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