GTL's Landmark Patent Challenge Targets Securus Technologies' IP Portfolio

Global Tel*Link Files 10 Petitions Under the America Invents Act Challenging the Validity of Securus Patents

May 19, 2015, 12:46 ET from GTL

RESTON, Va., May 19, 2015 /PRNewswire/ -- Global Tel*Link Corporation (GTL) today announced that it had filed 10 more petitions at the Patent Trial and Appeal Board (PTAB) as part of an expanding effort to invalidate the core of Securus Technologies Inc.'s patent portfolio. 

The petitions – 7 inter partes reviews, 2 post-grant reviews and 1 covered business method review – target a cross-section of the Securus portfolio, including patents on video calling, payment services, messaging, investigative solutions and inmate telephone services, among others. In its filings, 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.

"GTL views these patents as roadblocks to free and fair competition, and we are challenging them to demonstrate to the marketplace that Securus is not the innovator it claims to be," said GTL CEO Brian Oliver. "We believe that this latest action will, once and for all, bulldoze the patent toll booth that Securus has used to impose what amounts to a cost-of-doing-business tax on the industry. GTL seeks to expose these patents for what they are – a collection of ideas and inventions that others thought of first and which Securus wrongly claimed as their own."

Securus has filed at least 12 lawsuits against 19 industry competitors over the last decade, often cornering smaller companies into settlements to avoid the high costs of litigation.

In its petitions to the PTAB, 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, and secured patents without inventing any new technology.

GTL challenged 8 Securus patents at the PTAB last year.  In those cases, the PTAB has already found that there is a reasonable likelihood that GTL will prevail in proving all of the 146 claims in those patents are invalid. The Board has instituted trial against all 8 patents, including against the Securus' "crown jewel" '167 centralized call processing patent, which GTL alleges was approved on the basis of misleading statements by Securus to the patent examiner.

"GTL is determined to end Securus' legacy of patent litigation," Oliver said. "We are committed to exposing their baseless claims in court, to end their harassing lawsuits, and to stop the fear tactics that have been a plague on this industry for a decade."

In these new filings before the PTAB, GTL alleges that 9 additional Securus patents and 209 additional patent claims are invalid. The patents that GTL has challenged include:

  • A patent that offers telephone rate discounts to inmates for good behavior. (Patent No. 6,636,591). GTL says that this patent did not include any new technological innovation.
  • A patent that describes switching from a voice call to a video call. (Patent No. 8,929,525). GTL alleges that Securus did not invent the equivalent of FaceTime for inmates.
  • A patent that describes a resource allocation method that GTL maintains has been a fundamental part of computer operating systems since at least 1991. (Patent No. 7,324,637).

Patents Being Challenged by GTL in Current Petition Filings

Patent

Challenge Type

Title

7,860,222

CBM

Systems and Methods for Acquiring, Accessing, and Analyzing Investigative Information

8,489,068

IPR

System and Method for Completion of All Calls Using Single Call Funding Options

8,855,280

PGR

Communication Detail Records (CDRs) Containing Media for Communications in Controlled-Environment Facilitates

8,750,486

IPR

Call Center for Offering Goods and Services to Inmate Population

8,626,118

IPR

System and Method for Authorizing and Monetizing Collect Cellular Telephone Calls

8,886,663

IPR

Multi-Party Conversation Analyzer and Logger

8,929,525

PGR

On-Demand Video Communication for Controlled-Environment Facility Residents

7,494,061

IPR

Systems and Methods for Identity Verification Using Continuous Biometric Monitoring

7,961,860

IPR

Systems and Methods for Graphically Displaying and Analyzing Call Treatment Operations

8,135,115

IPR

System and Method for Multi-Channel Recording

 


Patents Previously Challenged by GTL

Patent

Challenge Type

Title

7,899,167

IPR

Centralized Call Processing

8,577,003

IPR

Centralized Call Processing

6,636,591

IPR

System and Method for Affecting Inmate Conduct with Good Behavior Discount Telephone Rates

7,324,637

IPR

Resource Allocation System and Method

7,529,357

IPR

Inmate Management and Call Processing Systems and Methods

8,340,260

IPR

Inmate Management and Call Processing Systems and Methods

7,860,222

IPR

Systems and Methods for Acquiring, Accessing, and Analyzing Investigative Information

7,805,457

IPR

System and Method for Identifying Members of a Gang or Security Threat Group

ABOUT GTL

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 32 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.

SOURCE GTL



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