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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
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`
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`SECURUS TECHNOLOGIES, INC.,
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`
`Plaintiff,
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`
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`v.
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`CIVIL ACTION NO.
`3:14-cv-04233-M
`
`(JURY DEMANDED)
`
`ECF
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`REDACTED PUBLIC VERSION
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`
`
`
`GLOBAL TEL*LINK CORPORATION,
`
`
`Defendant.
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`
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO ORIGINAL COMPLAINT AND COUNTERCLAIMS
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`Defendant Global Tel*Link Corporation (“GTL”) hereby answers the Original Complaint
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`
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`for Patent Infringement brought by Securus Technologies, Inc. (“Securus”). Additionally, GTL
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`hereby asserts counterclaims for declaratory judgment of non-infringement and invalidity of U.S.
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`Patent Nos. 7,899,167 (“the ’167 patent”); 7,860,222 (“the ’222 patent”); 8,031,850 (“the ’850
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`patent”); and 7,805,457 (“the ’457 patent”) (collectively, “the Securus Patents”); for declaratory
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`judgment of unenforceability of the ’167 patent; for breach of contract; and for patent
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`infringement of U.S. Patent Nos. 7,256,816 (“the’816 patent”) and 7,046,779 (“the ’779 patent”)
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`(collectively, “the GTL Patents”). With respect to the allegations made in the Original
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`Complaint, GTL states as follows:
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`PARTIES
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`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`1.
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`truth of the allegations in paragraph 1 of the Original Complaint.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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`Page 1 of 37
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`SECURUS EXHIBIT 1009
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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 2 of 37 PageID 273
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`2.
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`GTL admits that it is a Delaware corporation, that it has a place of business at
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`2609 Cameron Street, Mobile, Alabama 36607, that it has an executive corporate office at 12021
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`Sunset Hills Road, Suite 100, Reston, Virginia 20190, and that it has a registered agent in Texas
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`named Incorp Services, whose mailing address is 815 Brazos Street, Suite 500, Austin, Texas
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`78701. GTL denies the remaining allegations in paragraph 2 of the Original Complaint.
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`JURISDICTION AND VENUE
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`3.
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`GTL admits that this action purports to be based on the patent laws of the United
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`States, 35 U.S.C. § 101 et seq., and that this Court has original and exclusive subject matter
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`jurisdiction over actions for patent infringement under 28 U.S.C. §§ 1331 and 1338(a).
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`4.
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`GTL admits that it maintains a place of business in the Northern District of Texas.
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`GTL denies the remaining allegations in paragraph 4 of the Original Complaint. Securus’s
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`statement regarding personal jurisdiction in paragraph 4 of the Original Complaint is a legal
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`conclusion to which no response is required. To the extent a response is required, GTL admits
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`that it is subject to the personal jurisdiction of this Court.
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`5.
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`Securus’s statement regarding venue in paragraph 5 of the Original Complaint is a
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`legal conclusion to which no response is required. To the extent a response is required, GTL
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`admits that venue is proper in this District.
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`PATENT INFRINGEMENT
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`6.
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`GTL admits that the ’167 patent bears the title “Centralized Call Processing”; that
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`the ’167 patent lists an issuance date of March 1, 2011; and that what appears to be a copy of the
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`’167 patent was attached to the Original Complaint as Exhibit A. GTL denies that the ’167
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`patent was duly and legally issued after a full and fair examination. GTL denies the remaining
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 2
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`Page 2 of 37
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`allegations in paragraph 6 of the Original Complaint because it lacks knowledge or information
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`sufficient to form a belief as to the truth of these allegations.
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`7.
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`GTL admits that the ’222 patent bears the title “Systems and Methods for
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`Acquiring, Accessing, and Analyzing Investigative Information”; that the ’222 patent lists an
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`issuance date of December 28, 2010; and that what appears to be a copy of the ’222 patent was
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`attached to the Original Complaint as Exhibit B. GTL denies that the ’222 patent was duly and
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`legally issued after a full and fair examination. GTL denies the remaining allegations in
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`paragraph 7 of the Original Complaint because it lacks knowledge or information sufficient to
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`form a belief as to the truth of these allegations.
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`8.
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`GTL admits that the ’850 patent bears the title “Systems and Methods for
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`Visitation Terminal User Identification”; that the ’850 patent lists an issuance date of October 4,
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`2011; and that what appears to be a copy of the ’850 patent was attached to the Original
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`Complaint as Exhibit C. GTL denies that the ’850 patent was duly and legally issued after a full
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`and fair examination. GTL denies the remaining allegations in paragraph 8 of the Original
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`Complaint because it lacks knowledge or information sufficient to form a belief as to the truth of
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`these allegations.
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`9.
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`GTL admits that the ’457 patent bears the title “System and Method for
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`Identifying Members of a Gang or Security Threat Group”; that the ’457 patent lists an issuance
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`date of September 28, 2010; and that what appears to be a copy of the ’457 patent was attached
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`to the Original Complaint as Exhibit D. GTL denies that the ’457 patent was duly and legally
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`issued after a full and fair examination. GTL denies the remaining allegations in paragraph 9 of
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 3
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`Page 3 of 37
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`the Original Complaint because it lacks knowledge or information sufficient to form a belief as
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`to the truth of these allegations.
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`10.
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`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations in paragraph 10 of the Original Complaint.
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`11.
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`GTL admits that it sells or offers to sell certain specialized products and services
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`for correctional institutions in competition with Securus. GTL denies the remaining allegations
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`in paragraph 11 of the Original Complaint.
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`CAUSES OF ACTION
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`Count One – Infringement of the ’167 Patent
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`12.
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`In response to paragraph 12 of the Original Complaint, GTL incorporates by
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`reference paragraphs 1 through 11 of this Answer as if fully set forth here.
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`13.
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` Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations in paragraph 13 of the Original Complaint.
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`14.
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`15.
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`16.
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`Admitted.
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`Denied.
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`Denied.
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`Count Two – Infringement of the ’222 Patent
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`17.
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`In response to paragraph 17 of the Original Complaint, GTL incorporates by
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`reference paragraphs 1 through 11 of this Answer as if fully set forth here.
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`18.
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`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations in paragraph 18 of the Original Complaint.
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`19.
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`Admitted.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 4
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`Page 4 of 37
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`20.
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`21.
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`Denied.
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`Denied.
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`Count Three – Infringement of the ’850 Patent
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`22.
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`In response to paragraph 22 of the Original Complaint, GTL incorporates by
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`reference paragraphs 1 through 11 of this Answer as if fully set forth here.
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`23.
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`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations in paragraph 23 of the Original Complaint.
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`24.
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`25.
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`26.
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`Admitted.
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`Denied.
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`Denied.
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`Count Four – Infringement of the ’457 Patent
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`27.
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`In response to paragraph 27 of the Original Complaint, GTL incorporates by
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`reference paragraphs 1 through 11 of this Answer as if fully set forth here.
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`28.
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`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations in paragraph 28 of the Original Complaint.
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`29.
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`30.
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`31.
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`32.
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`33.
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`Admitted.
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`Denied.
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`Denied.
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`Denied.
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`REMEDIES
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`Securus’s request for a permanent injunction in paragraph 33 of the Original
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`Complaint is not an allegation to which a response is required. To the extent a response is
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 5
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`Page 5 of 37
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`required, GTL denies that Securus is entitled to any of the requested relief. GTL further denies
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`the remaining allegations in paragraph 33 of the Original Complaint.
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`34.
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`Paragraph 34 of the Original Complaint does not contain allegations to which a
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`response is required. To the extent a response is required, GTL denies the allegations in
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`paragraph 34 of the Original Complaint.
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`COSTS, INTEREST AND ATTORNEY’S FEES
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`35.
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`Paragraph 35 of the Original Complaint does not contain allegations to which a
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`response is required. To the extent a response is required, GTL denies the allegations in
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`paragraph 35 of the Original Complaint.
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`JURY DEMAND
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`36.
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`Paragraph 36 of the Original Complaint does not contain allegations to which a
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`response is required. To the extent a response is required, GTL denies the allegations in
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`paragraph 36 of the Original Complaint. GTL demands a jury trial of all issues so triable.
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`PRAYER FOR RELIEF
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`Securus’s requests following paragraph 36 of the Original Complaint (as set forth in a list
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`of items numbered 1-10) do not contain allegations to which a response is required. To the
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`extent a response is required, GTL denies that Securus is entitled to any of the requested relief.
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`Each averment and/or allegation contained in Securus’s Original Complaint that is not
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`specifically admitted herein is hereby denied.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 6
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`Page 6 of 37
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`AFFIRMATIVE DEFENSES
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`AFFIRMATIVE DEFENSE I
`(Invalidity)
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`Each of the Securus Patents is invalid for failure to satisfy the conditions of
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`37.
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`patentability under the patent laws of the United States, including one or more of 35 U.S.C.
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`§§ 101, 102, 103, and 112.
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`AFFIRMATIVE DEFENSE II
`(No Infringement)
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`GTL does not infringe any valid claim of any of the Securus Patents.
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`AFFIRMATIVE DEFENSE III
`(Prosecution History Estoppel)
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`Securus is estopped from construing or interpreting the claims of the Securus
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`38.
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`39.
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`Patents to cover any acts of GTL by reason of proceedings in the U.S. Patent and Trademark
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`Office (“PTO”) during prosecution and/or review of the applications upon which the patents
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`issued, and the admissions and representations made therein to the PTO on behalf of the
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`applicants.
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`AFFIRMATIVE DEFENSE IV
`(Failure To Provide Notice Pursuant to 35 U.S.C. § 287)
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`Securus’s ability to recover for any alleged infringement is limited by the failure
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`40.
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`of Securus and/or its licensees to meet the requirements of 35 U.S.C. § 287.
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`AFFIRMATIVE DEFENSE V
`(License/Patent Exhaustion)
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`41.
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`Securus’s claims for relief are barred in whole or in part by licenses granted by
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`
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`Securus or its predecessors in interest or by others with the authority to grant such licenses to
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`GTL or its affiliates, or by the doctrine of patent exhaustion.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 7
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`Page 7 of 37
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`AFFIRMATIVE DEFENSE VI
`(Inequitable Conduct in Prosecuting the ’167 Patent – Spadaro Reference)
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`The ‘167 patent is unenforceable due to inequitable conduct before the PTO.
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`42.
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`43.
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`On June 25, 2008, prosecuting attorney Dohyun Ahn submitted a statement under
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`37 C.F.R. § 3.73(b) declaring Evercom Systems, Inc. (“Evercom”) as the assignee of the entire
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`right, title, and interest of U.S. Patent Application No. 10/642,532 (“the ’532 application”). The
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`’532 application later issued as the ’167 patent on March 1, 2011.
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`44.
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`On information and belief, Securus was formerly known as Evercom and is the
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`successor in interest to the ’167 patent.
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`45.
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`Each individual associated with the prosecution of the ’532 application, including
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`but not limited to the named inventor, Robert Rae; the assignee, Evercom and its successor in
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`interest Securus; and the prosecuting attorney, Mr. Ahn, had a duty of candor and good faith to
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`the PTO under 37 C.F.R. § 1.56.
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`46.
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`In a Final Rejection dated July 21, 2010, Examiner Antim Shah, on behalf of the
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`PTO, rejected independent claims 1 and 59 of the ’532 application under 35 U.S.C. § 103(a) in
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`light of U.S. Patent No. 7,505,406 (“Spadaro”), which lists Thomas S. Spadaro and others as the
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`named inventors.
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`47.
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`In the Final Rejection dated July 21, 2010, Examiner Shah found claims 1 and 59
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`of the ’532 application as being unpatentable over Spadaro. Examiner Shah found that Spadaro
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`disclosed every element of independent claims 1 and 59 of the ’532 application, except that the
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`centralized call processing system in Spadaro did not provide call processing services to a
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`“plurality of prison facilities.” But Examiner Shah found that it would have been obvious to
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`connect the centralized call processing system disclosed in Spadaro to more than one location,
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 8
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`Page 8 of 37
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`and that Spadaro disclosed that the centralized call processing system was connected to a Wide
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`Area Network (“WAN”) through which such connections could easily occur. Specifically,
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`Examiner Shah stated that “[i]t would have been obvious to the person of ordinary skill in the art
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`to have the [centralized call processing system] (which provides switching, accessing, routing,
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`timing, billing and control functions) connected to the WAN and provide[] the centralize[d] call
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`processing to the different sites. The suggestion motivation would have been to have a low cost
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`system that will have a centrally located call processing module. Also, it would be easy to
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`upgrade and maintain the system.”
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`48.
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`In response to the Final Rejection, Mr. Ahn, on behalf of Mr. Rae and Evercom,
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`submitted a Request for Continued Examination on October 18, 2010, with accompanying
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`amendments and remarks. That response did not dispute any of Examiner Shah’s findings made
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`in support of his conclusion that claims 1 and 59 of the ’532 application were unpatentable over
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`Spadaro. Instead, Mr. Ahn amended those claims to add an additional element. Claim 1 was
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`amended to require “a billing system co-located with said call application management system
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`and located remotely from the call processing gateways, the billing system connected to the call
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`application management system for providing accounting of the calls.” Claim 59 was amended
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`to require “the call processing system performing billing operations associated with the calls.”
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`49. Mr. Ahn wrote the following in his remarks on October 18, 2010 (emphasis
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`added):
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`As set forth above, independent claim 1, as amended, recites the feature of “a
`billing system co-located with said call application management system and
`located remotely from the call processing gateways, the billing system connected
`to the call application management system for providing accounting of the calls . . . .”
`Spadaro, however, fails to disclose anything about billing. Therefore,
`claim 1, as amended, is patentably distinguishable over Spadaro.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 9
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`Page 9 of 37
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`Claim 59 also recites a similar feature as set forth above, and therefore, claim 59 is also
`patently distinguishable over Spadaro.
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`50. Mr. Ahn’s unqualified statement that Spadaro “fails to disclose anything about
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`billing” is false. In fact, Spadaro not only discloses information about “billing,” but addresses it
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`in multiple places.
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`51.
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`First, Figure 1 of Spadaro – which also appears on the face of the patent –
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`discloses a “billing” functionality located together with the centralized call processing system.
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`This figure is reproduced below:
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`52.
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`Second, the specification explains that Figure 1 shows a “computer 12 [that]
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`performs the function of switching, indicated at 20, routing, indicated at 22, and billing,
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`indicated at 24” for calls processed for a prison. Spadaro at 3:28-301 (emphasis added). As
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`shown in Figure 1, the computer houses both the billing function and call routing and switching
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`functions in the same location. Accordingly, Spadaro discloses a billing system co-located with
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`a call application management system.
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`1 Citations to patents in this document are in the form “Name at column:lines.” Thus, “Spadaro
`at 3:28-30” refers to Column 3 of the Spadaro patent, lines 28-30.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 10
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`Page 10 of 37
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`53.
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`Third, the Abstract of Spadaro refers to “billing,” as shown on the face of the
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`patent and as reproduced below:
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`54.
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`Fourth, Figure 4 of Spadaro also discloses billing functionality, as shown below.
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`The specification explains that “FIG. 4 shows how the programming of control functions may be
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`distributed to remote locations over the Ethernet network. In FIG. 4 the routing function 22, the
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`billing function 24 and the PIN Checking 28 are distributed to a remote location or locations by
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`the Ethernet network 50. As shown in FIG. 4, the network 50 is a local area network (LAN).
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`However, these functions may also be distributed over a WAN. The distribution of these
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`functions to remote locations has the advantage that the functions can be centralized with the
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`functions being performed at a central administration location.” Spadaro at 4:4-13. Thus,
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`Spadaro discloses billing functionality co-located with call processing functionality (e.g.,
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`routing) that is located remotely (e.g., via a WAN) from the call processing gateways and is
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`centralized so that it can serve multiple prison facilities.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 11
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`Page 11 of 37
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`55.
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`Fifth, claim 6 of Spadaro recites a “method for providing prison facility call
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`processing” in which the “call processing system provid[es] billing with respect to [an]
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`authorized call.” Spadaro at 5:35-36, 6:9-11. By way of comparison, claim 59 of the ’532
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`application, which became claim 17 of the asserted ’167 patent, was amended in Mr. Ahn’s
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`October 18, 2010 remarks to add “the call processing system performing billing operations
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`associated with the calls.”
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`56.
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`Sixth, Spadaro further describes a “billing” function in the “Background of the
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`Invention” section (at 1:28-30), in the “Summary of the Invention” section (at 1:67), and in the
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`“Description of the Preferred Embodiment” section (at, e.g., 3:28-30). In each case, Spadaro
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`makes clear that “billing” refers to traditional telephony billing that involves accounting for
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`telephone calls.
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`57.
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`Accordingly, Mr. Ahn’s statement that Spadaro “fails to disclose anything about
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`billing” was false. Plaintiff Securus has admitted this. On November 7, 2011, Securus filed
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`“Plaintiff’s Answer to Counterclaim” in T-Netix, Inc. v. Pinnacle Public Services, LLC, Civil
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 12
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`Action No. 2:09-CV-00333-TJW (E.D. Tex.). In paragraph 55 of that Answer, Securus stated
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`that Mr. Ahn’s statement that Spadaro “fails to disclose anything about billing” was “not literally
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`accurate.”
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`58.
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`On information and belief, Mr. Ahn’s statement that Spadaro “fails to disclose
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`anything about billing” was a knowing and deliberate misrepresentation. Mr. Ahn plainly knew
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`that Spadaro disclosed billing. On November 13, 2009, Mr. Ahn filed remarks stating that
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`Spadaro disclosed “a programmable computer that provides switching, accessing, routing,
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`timing, billing and control functions.” (Emphasis added.) Nevertheless, on information and
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`belief, in order to traverse the rejection based on Spadaro, Mr. Ahn chose to convince the
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`examiner that Spadaro did not disclose anything about billing. In the October 18, 2010, remarks,
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`Mr. Ahn did not raise any issues with Examiner Shah’s prior findings that claims 1 and 59 of the
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`’532 application were not patentable over Spadaro. On information and belief, Mr. Ahn was
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`unable to distinguish Spadaro on any basis that he believed Examiner Shah would find
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`persuasive.
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`59. Mr. Ahn instead amended claims 1 and 59 in an attempt to overcome the rejection
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`based on Spadaro. In order for this amendment to succeed in overcoming the rejection, Mr. Ahn
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`needed to convince Examiner Shah that Spadaro did not disclose the substance of these new
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`amendments. Mr. Ahn did not argue that the billing in claims 1 and 59, as amended, was
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`somehow different from the billing disclosed by Spadaro. Instead, Mr. Ahn categorically stated
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`that Spadaro did not “disclose anything about billing” (emphasis added). The only reasonable
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`explanation for this statement is that Mr. Ahn hoped that Examiner Shah would rely on this
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`misrepresentation and approve the claims based on the new amendments.
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
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` PAGE 13
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`60. Mr. Ahn’s misrepresentation of Spadaro was material to patentability. On
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`October 18, 2010, Mr. Ahn distinguished Spadaro from independent claims 1 and 59 of the ’532
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`application solely on the ground that Spadaro did not disclose “anything about billing.” In the
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`next office action following Mr. Ahn’s statement that Spadaro “fails to disclose anything about
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`billing,” Examiner Shah allowed the ’532 application without further comment or explanation.
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`61.
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`On information and belief, Messrs. Ahn and Rae, as well as Evercom and its
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`successor in interest Securus, violated their duty of candor by knowingly and deliberately
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`making a misrepresentation about this material element—the disclosure of “billing” in
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`Spadaro—with the intent to deceive the PTO for the purpose of obtaining allowance of the ’532
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`application.
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`AFFIRMATIVE DEFENSE VII
`(Failure To Disclose Inventorship of the ’167 Patent Under 35 U.S.C. § 102(f) and/or § 101)
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`In or about early 2003, Robert Rae, the named inventor of the ’167 patent, visited
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`62.
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`the offices of Science Dynamics Corporation (“SciDyn”) in New Jersey.
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`63.
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`64.
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`During those visits, Rae heard descriptions of SciDyn’s technology.
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`In or about early 2003, Rae solicited from SciDyn a proposal for a centralized call
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`processing system using VoIP technology to be used by Rae’s employer Evercom.
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`65.
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`In connection with that proposal, Rae exchanged e-mail messages with certain
`
`SciDyn employees regarding SciDyn’s technology for centralized call processing using VoIP.
`
`66.
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`On or about May 27, 2003, SciDyn sent to Rae a pricing proposal for a VOIP
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`Enabled Commander Solution. At or around the same time, SciDyn sent to Rae a diagram for a
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`centralized call processing system using VoIP (the “IP Commander Proposal Diagram”).
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
`
` PAGE 14
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`Page 14 of 37
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`

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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 15 of 37 PageID 286
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`67.
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`On information and belief, by August 15, 2003, Rae knew of SciDyn’s
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`technology, knew of the pricing proposal for the VOIP Enabled Commander Solution, knew of
`
`the IP Commander Proposal Diagram, and claimed SciDyn’s technology as his own in certain
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`claims of the application that later resulted in the ’167 patent.
`
`68.
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`The failure of Rae or others involved in the prosecution of the ’167 patent to
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`disclose to the PTO that Rae did not invent certain claims of the ’167 patent violated 35 U.S.C.
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`§ 102(f) and/or 35 U.S.C. § 101, thus rendering the patent invalid.
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`AFFIRMATIVE DEFENSE VIII
`(Inequitable Conduct in Prosecuting the ’167 Patent – Inventorship)
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`The ‘167 patent is unenforceable due to inequitable conduct before the PTO.
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`On June 25, 2008, prosecuting attorney Dohyun Ahn submitted a statement under
`
`69.
`
`70.
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`37 C.F.R. § 3.73(b) declaring Evercom Systems, Inc. (“Evercom”) as the assignee of the entire
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`right, title, and interest of U.S. Patent Application No. 10/642,532 (“the ’532 application”). The
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`’532 application later issued as the ’167 patent on March 1, 2011.
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`71.
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`On information and belief, Securus was formerly known as Evercom and is the
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`successor in interest to the ’167 patent.
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`72.
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`Each individual associated with the prosecution of the ’532 application, including
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`but not limited to the named inventor, Robert Rae; the assignee, Evercom, and its successor in
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`interest, Securus; and the prosecuting attorney, Mr. Ahn, had a duty of candor and good faith to
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`the PTO under 37 C.F.R. § 1.56.
`
`73.
`
`In or about early 2003, Robert Rae, the named inventor of the ’167 patent, visited
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`the offices of Science Dynamics Corporation (“SciDyn”) in New Jersey.
`
`74.
`
`During those visits, Rae heard descriptions of SciDyn’s technology.
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
`
` PAGE 15
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`
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`Page 15 of 37
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`

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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 16 of 37 PageID 287
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`75.
`
`In or about early 2003, Rae solicited from SciDyn a proposal for a centralized call
`
`processing system using VoIP technology to be used by Rae’s employer Evercom.
`
`76.
`
`In connection with that proposal, Rae exchanged e-mail messages with certain
`
`SciDyn employees regarding SciDyn’s technology for centralized call processing using VoIP.
`
`77.
`
`On or about May 27, 2003, SciDyn sent to Rae a pricing proposal for a VOIP
`
`Enabled Commander Solution. At or around the same time, SciDyn sent to Rae a diagram for a
`
`centralized call processing system using VoIP (the “IP Commander Proposal Diagram”).
`
`78.
`
`On information and belief, by August 15, 2003, Rae knew of SciDyn’s
`
`technology, knew of the pricing proposal for the VOIP Enabled Commander Solution, knew of
`
`the IP Commander Proposal Diagram, and claimed SciDyn’s technology as his own in certain
`
`claims of the application that later resulted in the ’167 patent.
`
`79.
`
`On information and belief, the failure of Rae and others involved in the
`
`prosecution of the ’167 patent to disclose that others contributed as inventors to the claims in the
`
`’167 patent was done with deceptive intent and represents inequitable conduct that renders the
`
`’167 patent unenforceable.
`
`AFFIRMATIVE DEFENSE IX
`(Estoppel by Contract/Quasi-Estoppel)
`
`On or about September 17, 2009, Securus and its subsidiary T-Netix, Inc. (“T-
`
`80.
`
`Netix”) (collectively, “Securus”) entered into a Settlement Agreement and Mutual Release
`
`(“Settlement Agreement”) with Public Communications Services, Inc. (“PCS”) and AGM
`
`Telecom Corporation (“AGM”) (collectively, “PCS”). The parties contemporaneously executed
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`a Patent License Agreement (“License Agreement”), which was attached as Exhibit A to the
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`Settlement Agreement. The Settlement Agreement and License Agreement resolved claims of
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
`
` PAGE 16
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`Page 16 of 37
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`

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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 17 of 37 PageID 288
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`patent infringement that T-Netix had asserted against PCS in July 2009. Copies of the
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`Settlement Agreement and the License Agreement are attached hereto as sealed Exhibits A and
`
`B, respectively.
`
`81.
`
`Section 4.1(b) of the License Agreement states in full (emphasis added):
`
`
`
`
`
`
`
`
`
`. The ’532 application
`
`
`
`
`82.
`
`was filed on August 15, 2003, and issued as the ’167 patent; U.S. Patent Application No.
`
`11/479,990 (“the ’990 application”) was filed on June 30, 2006, and issued as the ’222 patent;
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`U.S. Patent Application No. 11/562,784 (“the ’784 application”) was filed on November 22,
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`2006, and issued as the ’850 patent; and U.S. Patent Application No. 12/031,460 (“the ’460
`
`application”) was filed on February 14, 2008, and issued as the ’457 patent.
`
`83.
`
`On information and belief, all right, title, and interest in the ’532, ’990, ’784, and
`
`’460 applications were assigned to Evercom by September 17, 2009, and Evercom and Securus
`
`were aware of each of those applications as of that date.
`
`84.
`
`Securus has accepted royalty payments and other benefits derived from the
`
`License Agreement.
`
`85.
`
`In light of the facts in the foregoing paragraphs 80 to 84, GTL is entitled to a
`
`declaration by the Court that Securus is estopped from asserting that the Inmate Calling Manager
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
`
` PAGE 17
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`Page 17 of 37
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`

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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 18 of 37 PageID 289
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`(“ICMv”) and any other “Licensed Products” or PCS services, as they existed on September 17,
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`2009, infringed or continue to infringe the ’167, ’222, ’850, and ’457 patents.
`
`COUNTERCLAIMS
`
`Counterclaim Plaintiff Global Tel*Link Corporation (“GTL”) asserts the following
`
`Counterclaims against Plaintiff and Counterclaim Defendant Securus Technologies, Inc.
`
`(“Securus”):
`
`THE PARTIES
`
`1.
`
`GTL is a Delaware corporation with its principal place of business at 12021
`
`Sunset Hills Road, Suite 100, Reston, VA 20190.
`
`2.
`
`On information and belief, Securus is a Delaware corporation with its principal
`
`place of business located at 14651 Dallas Parkway, Suite 600, Dallas, TX 75254. Securus is the
`
`entity that filed the Original Complaint against GTL in this action on or about December 1, 2014.
`
`NATURE OF COUNTERCLAIMS
`
`3.
`
`These Counterclaims include claims for declaratory judgment that U.S. Patent
`
`Nos. 7,899,167 (“the ’167 patent”); 7,860,222 (“the ’222 patent”); 8,031,850 (“the ’850 patent”);
`
`and 7,805,457 (“the ’457 patent”) (collectively, “the Securus Patents”) are invalid and have not
`
`been infringed by GTL, and that the ’167 patent is unenforceable due to inequitable conduct
`
`committed before the U.S. Patent and Trademark Office (“PTO”) during the prosecution of U.S.
`
`Patent Application No. 10/642,532 (“the ’532 application”).
`
`4.
`
`These Counterclaims include a claim for breach of contract.
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`ANSWER TO THE ORIGINAL COMPLAINT AND COUNTERCLAIMS
`
` PAGE 18
`
`
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`Page 18 of 37
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`

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`Case 3:14-cv-04233-K Document 21 Filed 01/12/15 Page 19 of 37 PageID 290
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`5.
`
`These Counterclaims include claims of infringement of U.S. Patent Nos.
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`7,256,816 (“the’816 patent”) and 7,046,779 (“the ’779 patent”) (collectively, “the GTL
`
`Patents”).
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`JURISDICTION AND VENUE
`
`6.
`
`These Counterclaims arise under the patent laws of the United States of America,
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`35 U.S.C. § 100 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202.
`
`7.
`
`This Court has subject matter jurisdiction over these Counterclaims pursuant to 28
`
`U.S.C. §§ 1331, 1338(a), 1367, and 2201.
`
`8.
`
`Securus has availed itself of this forum and is therefore subject to personal
`
`juri