DALLAS, May 7, 2016 /PRNewswire/ -- Securus Technologies, a leading provider of civil and criminal justice technology solutions for public safety, investigation, corrections and monitoring, issued corrections to the GTL press release issued on May 3, 2016.
On May 3, 2016, in response to the Securus press release announcing that the Patent Trial and Appeal Board (PTAB) had invalidated 25 of 27 claims in a recent IPR victory for Securus, GTL issued a press release with several clearly misleading and inaccurate statements. The purpose of this press release is to correct and provide clarification on several points.
GTL Allegation #1:
The PTAB "completed its review of GTL patent 7,551,732, preserving two
key elements protecting GTL's technology…"
Securus Correction #1:
The PTAB did not confirm the validity of the 2 remaining dependent claims; to the contrary, the PTAB merely determined – over a year ago – that it would not review the 2 minor, dependent claims.
GTL Allegation #2:
"We are pleased that the PTAB decision preserves GTL's right to protect key components of our technology…"
Securus Correction #2:
They can't be that pleased. The PTAB decision invalidated 100% of the 25 claims it reviewed, including all independent claims of GTL's '732 patent. The 2 remaining dependent claims are likely obvious under 35 U.S.C. § 103.
GTL Allegation #3:
The "PTAB decision preserves GTL's right to protect key components of our technology for safely storing inmate recordings ..."
Securus Correction #3:
Securus has examined remaining claims 9 and 10 of the GTL patent and determined that Securus does not process voice streams to storage devices in the same way as GTL's patent describes. Therefore, Securus does not use the purported minor inventions of the remaining 2 dependent claims.
GTL Allegation #4:
"The decision enables GTL to pursue claims now pending in Dallas federal court that Securus Technologies infringes the '732, and where experts in the case have estimated Securus could be liable for more than $100 million in damages for past use."
Securus Correction #4:
First of all, that case is stayed. Second, if and when the Court lifts the stay, Securus will very likely get the claims thrown out of court for obviousness. Finally, Securus does not utilize the process described in GTL's patent, so there can be no infringement. Accordingly, no money will ever be due to GTL on this patent.
GTL Allegation #5:
"GTL is committed to continuing its investment in innovation, which is represented by its industry leading patent portfolio."
Securus Correction #5:
By any measure (see below), Securus' patent metrics are superior to GTL's.
Patent Related Metrics
4.5X (Significant Future Advantage)
Issued + Pending Patents
19 – 0
0 – 2
Years Filing Patents
License Dollars Collected
1Published filings; non-published filings are not available at this time.
GTL Allegation #6:
"We intend to move quickly to court to demonstrate to a jury how Securus infringes this patent and is liable for past damages that independent industry experts have valued at more than $100M."
Securus Correction #6:
There's really no patent left to speak of; just 2 narrow dependent claims remain – neither of which describe the process utilized by Securus. Clearly, Securus should be able to prove there's no infringement of the 2 remaining claims. The case they are referring to is still stayed, so it cannot move forward until the Court lifts the stay. Moreover, a full patent infringement case, including appeals, will likely take 2 to 3 years so there is no such thing as a "fast patent infringement lawsuit." Securus has been on record for over a year that GTL requires a full license to Securus' industry leading patent portfolio, and Securus believes GTL owes it over $115 million. For GTL to claim that Securus owes GTL more than $100 million for 2 minor claims out of 27 claims for a single GTL patent would extrapolate to $33 billion, or 300 years of Securus' current EBITDA for their patent portfolio. A relatively ridiculous number from any point of view, and merely highlights the lack of credibility of their "expert."
"It comes as no surprise that GTL has mischaracterized the nature of the recent Patent Trial and Appeal Board ruling," said Richard A. ("Rick") Smith, Chief Executive Officer of Securus Technologies. "GTL has attempted to use what I would call a trivial expected short term win before the PTAB to suggest that we don't have much technology, we don't have much software development, we don't have a much larger patent portfolio, we don't have a much better 'win percentage' versus them, and that we will eventually owe them $100 million – none of this is credible. Ultimately, there is a reason why GTL has not accepted my technology bake-off challenge – and it is because we would likely defeat them soundly. That is the real test of our technology advantage versus battling before the PTAB."
"For those that watch Securus and GTL closely, you will recognize real patterns in the ways that we both discuss issues. With Securus, you get the facts, and nothing but the facts, good or bad – but you do get the facts," concluded Smith.
ABOUT SECURUS TECHNOLOGIES
Headquartered in Dallas, Texas, and serving more than 3,450 public safety, law enforcement and corrections agencies and over 1,200,000 inmates across North America, Securus Technologies is committed to serve and connect by providing emergency response, incident management, public information, investigation, biometric analysis, communication, information management, inmate self-service, and monitoring products and services in order to make our world a safer place to live. Securus Technologies focuses on connecting what matters®. To learn more about our full suite of civil and criminal justice technology solutions, please visit SecurusTechnologies.com.