DALLAS, June 3, 2016 /PRNewswire/ -- Securus Technologies, a leading provider of civil and criminal justice technology solutions for public safety, investigation, corrections and monitoring, announced today that it has filed an additional four (4) patents in a new patent infringement lawsuit against former industry leader Global Tel Link (GTL).
The following four (4) Securus patents were filed against GTL in an additional suit filed on May 13, 2016, in the United States District Court for the Northern District of Texas – Dallas Division (Case 3:16-cv-01338-D):
U.S. Patent No. 7,529,357 (Inmate Management and Call Processing Systems and Methods);
U.S. Patent No. 8,340,260 (Inmate Management and Call Processing Systems and Methods);
U.S. Patent No. 7,916,845 (Unauthorized call activity detection and prevention systems and methods for a Voice over Internet Protocol environment); and
U.S. Patent No. 8,180,028 (System and method for called party controlled message delivery)
The first two patents listed above, 7,529,357 and 8,340,260, have survived Inter-Partes Review (IPR). Both of these patents relate to technology for sharing data access across multiple facilities. The data includes inmate records such as inmate biometric data and third-party contact information.
The third patent listed above, 7,916,845, embodies technology for detecting three-way call activity in a VoIP-based call processing system through analysis of out-of-band signals.
The fourth patent listed above, 8,180,028, relates to inmate voicemail messaging. The invention includes elements of recording, delivery, party identification, and payment of the message.
"After extensive work by multiple industry experts, over a period of several months, we believe that GTL infringes all four (4) patents listed above," said Richard A. ("Rick") Smith, Chief Executive Officer of Securus Technologies.
"We are presently reviewing another 70 to 90 patents in our extensive portfolio that GTL may also be infringing, so we expect others to be filed. Our patent related metrics are superior to those of GTL and are summarized in the chart below."
Patent Related Metrics – Securus versus GTL
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.
"My estimate based on our licensing agreements with other carriers is that GTL will owe us approximately $115 million in license fees – and I expect to collect that, and we have sought a permanent injunction, that if granted, will prohibit them making, using, selling, or offering for sale, any of their products and/or services that fall within the scope of the claims in these 4 asserted patents. This will in all likelihood involve key products and features that they presently are offering. The facts and numbers are on our side – this is intuitively obvious to the casual observer. The $115 million in license fees requested in a paid in full license for GTL and is reflective of the actual license metrics that Securus has negotiated with other competitors – so I have called it an estimate but it is based on our actual recent market settlements where significant cash has exchanged hands. It includes factors of:
Relative sizes of patent portfolios
Patent peace forever
Licenses for all existing and new/yet to be filed patents
Extended payment plans
Ability of a licensee to pay.
"The United States Patent and Trademark Office has put a new 'invalidation process' in place that allows litigants in patent infringement cases to attempt to invalidate patents. GTL has used this process to their advantage in having some pieces (claims) of Securus patents invalidated and we have done the same to GTL. Based on recent IPR rulings, we expect the invalidation process to eliminate approximately 50% of Securus and GTL previously approved patents. If that occurs, GTL will likely spend approximately $120 million and Securus will likely spend approximately $40 million in outside legal fees – a foolish use of money on both sides. BUT, GTL will also have the added burden of trying to invalidate an additional 20 to 30 new patents Securus is getting approved each year – or likely approximately $30 million to $45 million per year in additional legal costs to them. This is an interesting/high-cost strategy that will not allow GTL to reinvest in their business, and should advantage Securus in the long term.
"They executed license agreements with us twice in the past, so we were surprised when they did not extend their license agreement with Securus in 2013. I expect that this now will be a multi-year legal effort – but we are up to that task. Our previous success rate in similar case negotiations is a win-loss record of 19-0, so I would not bet against us prevailing. We have and our investors have the patience to work through a long litigation process. We have done that in the past and expect to do that with GTL. Justice will ultimately prevail here – leave no doubt," 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.