UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`GLOBAL TEL*LINK CORPORATION
`Petitioner
`
`v.
`
`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`_____________________
`
`CASE: IPR2014-00825
`Patent 7,529,357
`_____________________
`
`
`
`
`PETITIONER’S CONTINUING OBJECTIONS TO PATENT
`OWNER’S DEMONSTRATIVES PURSUANT TO THE ORDER
`TRIAL HEARING (PAPER 26)
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`GLOBAL TEL*LINK CORPORATION
`Petitioner
`
`v.
`
`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`_____________________
`
`CASE: IPR2014-00825
`Patent 7,529,357
`_____________________
`
`
`
`
`PETITIONER’S CONTINUING OBJECTIONS TO PATENT
`OWNER’S DEMONSTRATIVES PURSUANT TO THE ORDER
`TRIAL HEARING (PAPER 26)
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`On June 29, 2015 pursuant to the Patent Trial and Appeal Board’s ORDER
`
`
`
`Trial Hearing (Paper 26), Patent Owner served 62 demonstrative slides on
`
`Petitioner Global Tel*Link Corporation for use at its oral argument in this
`
`proceeding. Only a small number of these 62 demonstrative slides cited to a paper
`
`in this proceeding to establish that the slide does not present new argument or new
`
`evidence. Consequently, on July 1, Petitioner filed objections to 30 of Patent
`
`Owner’s improper demonstrative slides. (See Paper 30.) At the direction of the
`
`Board, on July 6, the parties had a meet-and-confer in an attempt to reach an
`
`agreement on the objected-to slides. However, at least 28 of Patent Owner’s
`
`demonstrative slides continue to be improper as these slides rely on evidence never
`
`cited or specifically addressed in any paper before the Board, present new
`
`arguments, mischaracterize the record, and/or present new arguments supported
`
`only by citations to Patent Owner’s observations on cross examination. Petitioner
`
`addresses these 28 improper demonstrative slides in the detailed objections below.
`
`Presentation Slide 6
`
`
`Global Tel*Link objects to Securus’ presentation slide 6 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed
`
`Spadaro and the ’167 patent being “co-owned over three and a half years prior to
`
`the filing of the ’357 Patent Application” or that the ’357 patent “add[ed] a named
`
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`- 2 -
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`
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`inventor not included on the ’167 patent” in any paper filed after institution of
`
`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`trial).
`
`
`Presentation Slide 8
`
`
`Global Tel*Link objects to Securus’ presentation slide 8 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed the
`
`“Burden on Petitioner to Qualify Prior Art” in any paper filed after institution of
`
`trial), and as relying on evidence never cited or specifically discussed in any paper
`
`before the Board (cites to Dynamic Drinkware LLC v. National Graphics, Inc. ,
`
`IPR2013-00131, Securus Technologies, Inc. v. Global Tel*link Corp., IPR2015-
`
`00153, and MPEP 706.02(l)(3)).
`
`
`Presentation Slide 9
`
`
`Global Tel*Link objects to Securus’ presentation slide 9 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“[s]tatement of counsel is sufficient evidence” or that “Petitioner does not dispute
`
`that Spadaro was co-owned at the time that the ’357 CIP Application was filed” in
`
`any paper filed after institution of trial), and as relying on evidence never cited or
`
`specifically discussed in any paper before the Board (cites to Ex Parte Salazar,
`
`Appeal 2011-001993, 2013 WL 3338142, at *1 (May 31, 2013) and MPEP
`
`706.02(1)(2)(11)).
`
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`- 3 -
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`
`Presentation Slide 10
`
`
`Global Tel*Link objects to Securus’ presentation slide 10 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“there is no presumption that claims in a CIP are entitled to the effective date of an
`
`earlier filed application” or that “it is not Patent Owner’s burden to prove ‘non-
`
`support’ in the earlier filed application” in any paper filed after institution of trial),
`
`and as relying on evidence never cited or specifically discussed in any paper before
`
`the Board (cite to PowerOasis, Inc. et al. v. T-Mobile USA Inc., 522 F.3d 1299,
`
`1305 (Fed. Cir. 2008)).
`
`
`Presentation Slide 11
`
`
`Global Tel*Link objects to Securus’ presentation slide 11 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed
`
`“103(c)(1) Petitioner’s Lack of Support” in any paper filed after institution of
`
`trial), as relying on evidence never cited or specifically discussed in any paper
`
`before the Board (cites to Dynamic Drinkware LLC v. National Graphics, Inc.,
`
`IPR2013-00131 and IPR2014-01533), and containing mischaracterizations (e.g.,
`
`Petitioner did compare the claims to the corresponding support in the ’167 Patent,
`
`and Petitioner never asked the Board to “determine whether the necessary support
`
`exists”).
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`
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`- 4 -
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`
`Presentation Slide 12
`
`
`Global Tel*Link objects to Securus’ presentation slide 12 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed
`
`“103(c)(1) Petitioner’s Lack of Support” in any paper filed after institution of
`
`trial), as relying on evidence never cited or specifically discussed in any paper
`
`before the Board (cites to Tronzo v. Biomet, 156 F.3d 1154, 1159 (Fed. Cir. 1998)
`
`and Securus Technologies, Inc. v. Global Tel*link Corp., IPR2015-00153),
`
`containing mischaracterizations (e.g., Petitioner’s expert did provide analysis that
`
`would show support of the claim language of the disputed claims), and as
`
`presenting new arguments supported only by citations to Patent Owner’s
`
`observations on cross examination (e.g., Dr. Forys’ second deposition transcript at
`
`49:9-18). See IPR2013-00041, Paper 65, p. 4; see also Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48755, 48768.
`
`
`Presentation Slides 13-15
`
`
`Global Tel*Link objects to Securus’ presentation slides 13-15 as presenting
`
`new arguments not previously raised in any paper (Patent Owner never discussed
`
`“103(c)(1) Petitioner’s Lack of Support” or alleged deficiencies in any of
`
`Petitioner’s citations to the ’167 patent in any paper filed after institution of trial).
`
`
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`- 5 -
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`Presentation Slides 16 and 17
`
`
`Global Tel*Link objects to Securus’ presentation slides 16 and 17 as
`
`presenting new arguments not previously raised in any paper (Patent Owner never
`
`discussed the relationship between “conception” and “the time the invention was
`
`made” in any paper filed after institution of trial), as relying on evidence never
`
`cited or specifically discussed in any paper before the Board (cites to Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005), Hyatt v. Boone, 146 F.3d 1348,
`
`1352 (Fed. Cir. 1998), MPEP 2138, and Bausch & Lomb, Inc. v. Barnes-Hind/
`
`Hydrocurve, Inc., 796 F.2d 443, 449 (Fed. Cir. 1986)), and containing
`
`mischaracterizations (e.g., Patent Owner mischaracterizes Petitioner’s argument
`
`regarding “the time the invention is made”).
`
`
`Presentation Slide 19
`
`
`Global Tel*Link objects to Securus’ presentation slide 19 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“[c]onsiderable time and expense is involved in accepting an inmate at a controlled
`
`environment facility” in any paper filed after institution of trial), and as relying on
`
`evidence never cited or specifically discussed in any paper before the Board (all
`
`three cites to the ’357 patent).
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`- 6 -
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`
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`Presentation Slide 20
`
`
`
`Global Tel*Link objects to Securus’ presentation slide 20 as relying on
`
`evidence never cited or specifically discussed in any paper before the Board (all
`
`three cites to the ’357 patent).
`
`
`Presentation Slide 29
`
`
`Global Tel*Link objects to Securus’ presentation slide 29 as relying on
`
`evidence never cited or specifically discussed in any paper before the Board (cites
`
`to Dr. Forys’ second deposition transcript), and containing mischaracterizations
`
`(e.g., Dr. Forys did not make the alleged admission nor did he indicate that
`
`“[s]ubstantial additional hardware would be required to support VoIP”).
`
`
`Presentation Slide 30
`
`
`Global Tel*Link objects to Securus’ presentation slide 30 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed “[t]he
`
`inventive embodiments in Spadaro” or the “embodiments described by Spadaro’s
`
`‘present invention’” in any paper filed after institution of trial).
`
`
`Presentation Slide 32
`
`
`Global Tel*Link objects to Securus’ presentation slide 32 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never stated that
`
`
`
`- 7 -
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`
`
`“Hodge discloses that each facility may have a central site server” in any paper
`
`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`filed after institution of trial and Patent Owner never presented the annotations to
`
`FIG. 1 of Hodge in any paper filed after institution of trial), and for having an
`
`incorrect citation to PO Resp., Paper 15 at 16.
`
`
`Presentation Slide 33
`
`
`Global Tel*Link objects to Securus’ presentation slide 33 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Hodge’s Central Site Server Is Used Within A Single Facility Only” or that “[t]he
`
`‘global’ changes are applied to ‘different divisions of each institution’ - not to
`
`different institutions” in any paper filed after institution of trial).
`
`
`Presentation Slide 36
`
`
`Global Tel*Link objects to Securus’ presentation slide 36 as containing
`
`mischaracterizations (e.g., Dr. Forys did not agree that “Patent Owner’s Proposed
`
`Construction of ‘Call Application Management System’ Is Not Controversial”),
`
`and as presenting new arguments supported only by citations to Patent Owner’s
`
`observations on cross examination (e.g., Dr. Forys’ second deposition transcript at
`
`- 8 -
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`29:23-30:2).
`
`
`
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`
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`Presentation Slide 37
`
`
`Global Tel*Link objects to Securus’ presentation slide 37 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`Petitioner’s arguments regarding Patent Owner’s proposed claim construction are
`
`“based on a misleading and inaccurate interpretation of the Patent Owner
`
`Response” in any paper filed after institution of trial).
`
`
`Presentation Slide 38
`
`
`Global Tel*Link objects to Securus’ presentation slide 38 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Petitioner Ignores All Limitations Imposed by the ‘Call Application Management
`
`System’” in any paper filed after institution of trial), and containing
`
`mischaracterizations (e.g., Petitioner’s position is not “equivalent to construing
`
`‘call application management system’ as a generic ‘device’ that is defined only by
`
`the surrounding claim language” nor does it “ignore[] the inherent limitations
`
`imposed by the claim term”).
`
`
`Presentation Slide 39
`
`
`Global Tel*Link objects to Securus’ presentation slide 39 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed the
`
`Inherent Limitations of the ‘Call Application Management System’” in any paper
`
`
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`- 9 -
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`
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`filed after institution of trial), containing mischaracterizations (e.g., Dr. Forys did
`
`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`not “agree[] that the requirements of the ‘call application management system’ go
`
`beyond the functional language of Claim 1”), and as presenting new arguments
`
`supported only by citations to Patent Owner’s observations on cross examination
`
`(e.g., Dr. Forys’ second deposition transcript at 38:25-39:9 and 40:9-11).
`
`
`Presentation Slide 40
`
`
`Global Tel*Link objects to Securus’ presentation slide 40 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Under ANY Construction, Spadaro Does Not Disclose a ‘Call Application
`
`Management System’” or that Petitioner’s identification of Spadaro’s VoIP
`
`gateway 26a as the “call application management system” is “not based on its
`
`functionality” in any paper filed after institution of trial).
`
`
`Presentation Slide 41
`
`
`Global Tel*Link objects to Securus’ presentation slide 41 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Under ANY Construction, Spadaro Does Not Disclose a ‘Call Application
`
`Management System’” in any paper filed after institution of trial), containing
`
`mischaracterizations (e.g., Dr. Forys did not agree that “Spadaro Does Not
`
`Disclose a ‘Call Application Management System’” nor does he agree with Patent
`
`
`
`- 10 -
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`
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`Owner’s simplistic interpretation of VoIP gateway 26a), and as presenting new
`
`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`
`arguments supported only by citations to Patent Owner’s observations on cross
`
`examination (e.g., Dr. Forys’ second deposition transcript at 22:25-23:11).
`
`
`Presentation Slide 42
`
`
`Global Tel*Link objects to Securus’ presentation slide 42 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Under ANY Construction, Spadaro Does Not Disclose a ‘Call Application
`
`Management System’” in any paper filed after institution of trial).
`
`
`Presentation Slide 43
`
`
`Global Tel*Link objects to Securus’ presentation slide 43 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`the “’357 and ’260 Patents Disclose VoIP Gateways as Separate Elements from the
`
`Call Application Management System” or that “[t]he ‘call processing gateways’ of
`
`Rae are equivalent to ‘VoIP gateway 26a’ of Spadaro” in any paper filed after
`
`institution of trial), and as relying on evidence never cited or specifically discussed
`
`in any paper before the Board (cite to ’357 patent at 4:26-37).
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`- 11 -
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
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`Presentation Slide 46
`
`
`Global Tel*Link objects to Securus’ presentation slide 46 as containing
`
`mischaracterizations (e.g., the Board did not deny consideration of Dr. Forys’
`
`opinions for claims 10, 14, 16, 17, 19, and 20).
`
`
`Presentation Slide 51
`
`
`Global Tel*Link objects to Securus’ presentation slide 51 as presenting new
`
`arguments not previously raised in any paper (Patent Owner never discussed that
`
`“Petitioner’s Reply mischaracterizes Patent Owner’s argument” regarding claims 3
`
`and 4 in any paper filed after institution of trial).
`
`
`Presentation Slide 61
`
`
`Global Tel*Link objects to Securus’ presentation slide 61 as relying on
`
`evidence never cited or specifically discussed in any paper before the Board (cite
`
`to Cree at 4:65-5:1).
`
`
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`- 12 -
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`
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`Global Tel*Link’s Objections to Securus’ Demonstratives
`IPR2014-00825
`
`Pursuant to the Board’s July 6, 2015 email, these objections are being made
`
`by 6:00pm ET on July 6.
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Lori A. Gordon/
`
`
`Lori A. Gordon, Registration No. 50,633
`Michael B. Ray, Registration No. 33,997
`Ryan C. Richardson, Registration No. 67,254
`Attorneys for Petitioner
`
`
`
`Date: July 6, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
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`- 13 -
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
`
`The undersigned hereby certifies that the above-captioned PETITIONER’S
`
`CONTINUING OBJECTIONS TO PATENT OWNER’S DEMONSTRATIVES
`
`PURSUANT TO THE ORDER TRIAL HEARING (PAPER 26) were served in
`
`their entirety on July 6, 2015 upon the following party via email:
`
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Terry A. Saad (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`BRAGALONE CONROY, P.C.
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`jkimble@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`tsaad@bcpc-law.com
`
`
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Lori A. Gordon/
`
` Lori A. Gordon
` Attorney for Petitioner
` Registration No. 50,633
`
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`Date: July 6, 2015
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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