UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GLOBAL TEL*LINK CORP.,
`Petitioner
`
`V.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner
`
`1PR2015-01219 (U.S. Patent No. 8,626,118)
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`Mail Stop "PA TENT 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 CORP.,
`Petitioner
`
`V.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner
`
`1PR2015-01219 (U.S. Patent No. 8,626,118)
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`Mail Stop "PA TENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`The Board should deny Patent Owner’s ("P0") Motion for Additional Dis-
`
`covery ("Motion") because P0 provides no support for its argument that American
`
`Securities ("AS") is a real party-in-interest ("R-PI"). The first sentence of PO’s Mo-
`
`tion foreshadows the complete absence of any cognizable evidence that supports
`
`PO’s Motion and PO’s recognition of that fact. P0 begins with the statement
`
`"[p]ublicly available information strongly suggests that GTL’s owner, American
`
`Securities, controls GTL generally...." Mot. at 1. P0 does not rely on evidence,
`
`just what it calls "publicly available information." But the Board should not accept
`
`this "[p]ublicly available information," with its significant evidentiary problems, to
`
`justify PO’s broadly stated and ultimately burdensome discovery requests.
`
`The Board requires a party seeking additional discovery to demonstrate: (i)
`
`more than a "mere allegation that something useful will be found;" and (ii) that the
`
`requested discovery is not "overly burdensome to answer" or is "sensible and re-
`
`sponsibly tailored according to a genuine need." Garmin mt ’1, Inc. v. Cuozzo
`
`Speed Techs. LLC, 1PR2012-00001, Paper 26, at 6-7 (Mar. 5, 2013). P0 has not
`
`met these factors, failing to identify any relevant evidence that discovery will Un-
`
`cover anything "useful." Id.
`
`First, P0 presents AS bios of Paul Rosetti and Kevin Penn, who also serve
`
`on the Board of GTL. Exs. 2003, 2004. This relationship is not unusual in the cor-
`
`porate world and does not establish AS as an RPI. Next, P0 provides two declara-
`
`1
`
`
`
`tions from its corporate executives Richard Smith and Dennis Reinhold, which
`
`contain unreliable statements which violate FRE 408, because the confidential
`
`statements occurred during settlement talks. Exs. 2006, 2011. Finally, P0 provides
`
`two purported news articles that contain inadmissible hearsay and double hearsay.
`
`Exs. 2007 and 2008. None of PO’s purported evidence actually addresses the issue
`
`of AS’s control over these proceedings.
`
`P0 presents nothing on which the Board should act. Although AS owns a
`
`stake in GTL and has executives that serve on GTL’s Board, P0 presents nothing
`
`that even hints at any funding and control by AS over these proceedings. For these
`
`reasons, P0 has not shown that the requested additional discovery meets the Gar-
`
`min/Bloomberg factors that require more than a mere allegation that something
`
`useful will be found, and that the requested discovery is tailored.
`
`Id. at 7.
`
`I. (cid:9)
`
`PO’s requests are entirely speculative.
`
`PO’s Motion contains mere speculation, hearsay, and an inexcusable breach
`
`of confidentiality by its executives who disclose statements made during settlement
`
`negotiations. PO’s speculative statements do not suggest that P0 will uncover any
`
`evidence that AS funded and controlled these proceedings. P0 relies on the Decla-
`
`rations of its CEO, Richard Smith, and its General Counsel, Dennis Reinhold, who
`
`provide the following statements: "GTL has conveyed to Securus [at settlement
`
`negotiations in 2013 and 2014] that American Securities, not GTL, controls disput-
`
`-2-
`
`
`
`ed intellectual property matters" because "GTL’s CEO, Brian Oliver, stated that he
`
`could not accept any settlement offer without American Securities’s [sic] prior ap-
`
`proval." Mot. at 1; Ex. 2006, 2011.
`
`However, Mr. Oliver explains that he has no authority to settle any dispute
`
`with Securus without GTL Board approval and that "[a]t no time did [he] ever state
`
`that any settlement offers had to be reviewed and approved by American Securities
`
`Board." Oliver Deci., Ex. 1024, ¶5. And, importantly, PO’s reliance on these al-
`
`leged statements misses the point for establishing an RPI relationship. These al-
`
`leged prior statements have no bearing on whether or not AS funds and controls
`
`these proceedings. See Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc., 1PR2014-
`
`01288, Paper 13, at 11 (Fed. 20, 2015) ("R-PI is the relationship between a party
`
`and a proceeding ... [not] the relationship between parties ... the Board’s focus
`
`[should be] on the degree of control the nonparty could exert over the
`
`inter partes
`
`review, not the petitioner").
`
`These statements violate FRE 408, which prevents P0 from offering these
`
`alleged statements, as they occurred during settlement. Exs. 2006, ¶J3-4; 2011, ¶2.
`
`Rule 408 excludes such unreliable evidence, because "[w]hat is stated as fact on
`
`the record could very well not be the sort of evidence which the parties would oth-
`
`erwise contend to be wholly true." Goodyear Tire & Rubber Co. v. Chiles Power
`
`Supply, Inc., 332 F.3d 976, 981 (6th Cir. 2003). Here, P0 impermissibly uses set-
`
`-3-
`
`
`
`tiement negotiations in an attempt to impeach GTL’s RPI certification.
`
`Id. But P0
`
`has violated Rule 408 to no advantage, because none of the statements show that
`
`AS is an RPI. Moreover, these statements are nothing more than hearsay.
`
`Further, P0 improperly relies on documents that purport to show that two
`
`members of GTL’s board of directors also serve on the board of AS, and that GTL
`
`and AS share a common spokesperson. Mot. at 1-2; Exs. 2003, 2004. But, again,
`
`this information does not demonstrate that AS exercises any control over these
`
`proceedings. The existence of overlapping directors and common employees does
`
`not equate to control. See, e.g., Fieldcomm Group v. SIPCO, LLC, 1PR2015-00659,
`
`Paper 10, at 3-4(June 18, 2015) (denying motion for additional discovery where
`
`the common officer between the accused RPI and petitioner did not direct or par-
`
`ticipate in the filing of the IPR). In fact, the two GTL board members who are also
`
`AS employees owe a fiduciary duty to GTL when acting in that capacity.
`
`See Farr
`
`v. Farm Bureau Ins. Co. of Nebraska, 61 F.3d 677, 681 (8th Cir. 1995) ("[i]t is
`
`hornbook law that an officer or director of a corporation owes a fiduciary duty to
`
`the corporation").
`
`P0 relies on John’s Lone Star Dist., Inc. v. Thermolfe Int’l, LLC, 1PR2014-
`
`1201, Paper 29 (May 13, 2015) to argue that the Board has "authorized similar re-
`
`quests" for additional discovery. Mot. at 4. The facts in John Lone Star are inap-
`
`posite because, in addition to overlapping management personnel, the two compa-
`
`-4-
`
`
`
`flies shared a common address and common property - circumstances that do not
`
`exist in the present case.
`
`P0 also improperly relies on Exhibits 2005 and 2010, which are from AS’s
`
`website. P0 offers statements made by Mr. Oliver discussing "[t]he American Se-
`
`curities strategy." Mot. at 2. These statements merely demonstrate that Mr. Oliver
`
`admires how AS operates. Ex. 2010. Additionally, P0 offers a webpage that may
`
`be related to AS’s business strategy. Ex. 2005. Finally, PO’s reliance on two news
`
`articles is misplaced. Exs. 2007, 2008. Those articles are inadmissible hearsay, but,
`
`importantly, they do not show any control of these proceedings by AS. PO’s con-
`
`clusions regarding all of its cited evidence is mere speculation. The irrelevant doc-
`
`uments do not demonstrate that AS funded and controlled these proceedings.
`
`II. The Discovery is not narrowly tailored and is overly burdensome.
`
`PO’s requests seek broader discovery than the issue of AS’s involvement in
`
`these proceedings. The requests are not tailored and are overly burdensome. For
`
`instance, Request 1 seeks discovery of "all individuals" who provided direction to
`
`GTL. Mot. at 7. Further, Request 2 seeks communications related to "the validi-
`
`ty/invalidity of the patents challenged in the proceedings."
`
`Id. These requests clear-
`
`ly go beyond the issue of RPI. In sum, all of the requests are merely a fishing ex-
`
`pedition looking for nothing in particular and everything in general.
`
`For the reasons discussed above, PO’s Motion should be denied.
`
`- 5 -
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Lop{ A. Gordon (TNo. 50,633)
`
`Counsel for Petitioner
`
`Date: August 31, 2015
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`S
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned PETITIONER’S
`
`OPPOSITION TO PATENT OWNER’S MOTION FOR ADDITIONAL
`
`DISCOVERY and ASSOCIATED EXHIBIT were served in their entireties on
`
`August 31, 2015, via email on the following:
`
`Erika H. Amer (Lead Counsel) Finnegan,
`Henderson, Farabow, Garrett & Dunner,
`LLP
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`Phone: (571) 203-2754
`Fax: (202) 408-4400 eri-
`ka.amer@flnnegan.com
`USPTO Reg. No. 57,540
`
`Darren M. Jiron (Back-up Counsel)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`Phone: (571) 203-2729
`Fax: (202) 408-4400
`darrenjiron@finnegan.com
`USPTO Reg. No. 45,777
`
`Michael V. Young (Back-up Counsel)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`Phone: (571) 203-2788
`Fax: (202) 408-4400
`michael.young@finnegan.com
`USPTO Reg. No. 61,180
`
`Daniel C. Tucker (Back-up Counsel)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`Phone: (571) 203-2793
`Fax: (202) 408-4400
`daniel.tucker@flnnegan.com
`USPTO Reg. No. 62,781
`
`1
`
`
`
`Brandon S. Bludau (Back-up Counsel)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`Phone: (571) 203 -2745
`Fax: (202) 408-4400
`brandon.bludau@finnegan.com
`USPTO Reg. No. 62,140
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Lofel’ Gord kn~R(cid:151)eg, . (cid:9)
`Counsel for Petitioner
`
`,633)
`
`Date: August 31, 2015
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`(202) 371-2600
`
`-2-
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