Filed on behalf of Securus Technologies, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
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`
`
`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 IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`UNDER 37 C.F.R. § 42.123(A)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`
`Daniel F. Olejko (dolejko@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave.
`
`Suite 4500 – West
`
`Dallas, TX 75201
`
`Tel: 214.785.6670
`
`Fax: 214.786.6680
`
`
`
`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 IPR2016-01362
`U.S. Patent No. 9,083,850
`
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`UNDER 37 C.F.R. § 42.123(A)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`Patent Owner Securus Technologies, Inc. (“Securus”) hereby files with the
`
`Patent Trial and Appeal Board (“PTAB”) the following response to Petitioner’s
`
`Motion to Submit Supplemental Information (Paper 14, referred to as the “Motion”)
`
`under 37 C.F.R. § 42.123(a). The Motion was filed on February 17, 2017 by Global
`
`Tel*Link Corporation (“Petitioner”) in support of evidence, namely Petitioner’s
`
`Exhibit 1008, submitted in the petition for inter partes review in this proceeding.
`
`I.
`
`Introduction
`
`By this Motion, Petitioner seeks to admit new evidence, which it labels
`
`“supplemental information,” under 37 C.F.R. § 42.123(a). The Motion seeks the
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`PTAB’s acceptance of new evidence to be filed in these proceedings to “confirm[]
`
`the public accessibility of Exhibit 1008 [also referred to as “Gotsopoulos”] prior to
`
`the earliest priority date of the ’850 patent.” Motion, 1. This new evidence consists
`
`of the following:
`
`1. Declaration of Gerard P. Grenier, Custodian of Records for IEEE, dated
`
`January 27, 2017, attesting to the public accessibility of Exhibit 1008 as of
`
`at least December 2, 2010, and the public accessibility online as of at least
`
`February 13, 2012 (Petitioner’s Exhibit 1011); and
`
`2. The entire European DSP in Education and Research Conference
`
`(EDERC2010) proceeding papers downloaded from the IEEE electronic
`
`digital library (Petitioner’s Exhibit 1010).
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`1
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`
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`Case IPR2016-01362
`Patent 9,083,850
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`Motion, 1. Because Petitioner did not allege that the supplemental information
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`reasonably could not have been submitted with the Petition, Petitioner’s Motion
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`should be denied.
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`II. Arguments in Support of Response
`
`The “USPTO regulations dictate ‘[a] party filing a motion has the burden of
`
`proof to establish that it is entitled to the requested relief.’” Redline Detection, LLC
`
`v. Star Envirotech, Inc., 811 F.3d 435, 444 (Fed. Cir. 2015) (internal quotations
`
`omitted). The Federal Circuit agreed that “[t]his is so, no matter the requested relief.”
`
`Id.
`
`Petitioner seeks the PTAB’s acceptance of supplemental information, but
`
`does not meet its burden to show that it is entitled to the requested relief. As proof,
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`Petitioner alleges that the Motion “complies with the requirements of rule 42.123(a):
`
`a request for the authorization to file a motion to submit supplemental information
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`was timely and the supplemental information is relevant to a claim.” Motion, 1.
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`Petitioner further “notes that rule 42.123(a) does not require the movant to
`
`demonstrate that the supplemental information proffered could not have been
`
`obtained earlier.” Motion, 3 (citing IPR2014-01204, Paper 26, pp. 3-4).
`
`To the contrary, the Federal Circuit in Redline held that that “nothing in 37
`
`C.F.R. § 42.123 requires that a request to submit supplemental information
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`satisfying these two criteria, i.e., timeliness and relevance, automatically be granted
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`2
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`
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`Case IPR2016-01362
`Patent 9,083,850
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`no matter the circumstance.” Redline, 811 F.3d at 444 (emphasis added).1 The
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`Federal Circuit warned that “[t]his provision does not offer a routine avenue for
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`bolstering deficiencies in a petition raised by a patent owner in a Preliminary
`
`Response [and that] Petitioner should not expect a wait-and-see opportunity to
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`supplement a petition after initial comments or arguments have been laid out by a
`
`patent owner.” Id. at 448 (internal quotations omitted). Here, Petitioner has taken
`
`that “wait-and-see” attitude to its evidentiary submission, admitting that the only
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`reason it filed the Motion was because “Patent Owner asserted that the evidence of
`
`record did not demonstrate that Exhibit 1008 was publicly accessible before the
`
`earliest priority date of the ’850 patent.” Motion, 2.2
`
`The Federal Circuit agreed that “whether the Board grants a motion to submit
`
`supplemental information also depends upon the Board’s determination that, in its
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`discretion, the action sought by the movant is consistent with the Board’s statutory
`
`
`1 Patent Owner notes that Redline was decided on December 31, 2015, eight months
`
`after Paper 26 of IPR2014-01204 was decided on April 10, 2015.
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`2 Previously, on January 24, 2017, Securus filed objections to and sought the denial
`
`of the admission and consideration of Exhibit 1008, titled “Remote Controlled DSP
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`Based Image Capturing and Processing System Featuring Two-Axis Motion,” by
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`Gotsopoulos et al. (‘Gotsopoulos’).” Paper 13.
`
`3
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`
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`Case IPR2016-01362
`Patent 9,083,850
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`mandate.” Redline, 811 F.3d at 444 (emphasis added). Importantly, “the PTAB has
`
`discretion to grant or deny motions as it sees fit.” Id. at 447 (emphasis added).
`
`In Redline, the Federal Circuit affirmed the PTAB’s use of its discretion to
`
`deny a motion to supplement information that otherwise met the timeliness and
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`relevancy requirements of § 42.123(a). The PTAB found that “Redline did not allege
`
`any of the arguments or evidence in the newly submitted declaration was information
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`that reasonably could not have been submitted with the Petition.” Id. at 443 (Fed.
`
`Cir. 2015) (internal quotations omitted).
`
`Here, the PTAB should use its discretion to similarly deny Petitioner’s
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`Motion, because Petitioner fails to allege, argue, or demonstrate any reason why it
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`“the supplemental information reasonably could not have been obtained earlier, and
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`that consideration of the supplemental information would be in the interests-of-
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`justice.” See 37 C.F.R. § 42.123(b), (c). Indeed, Petitioner expressly states it does
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`not need to do so. Motion, 3. Given the date and nature of the information submitted
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`with the Motion, there is every indication that these documents were reasonably
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`available at the time of filing the Petition, and that Petitioner merely neglected to
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`submit them at that time. See Exs. 1010, 1011 (documents attesting and purporting
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`to show that Gotsopolous was published in 2010 and copies made available no later
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`than last of conference held from December 1-2, 2010).
`
`4
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`Case IPR2016-01362
`Patent 9,083,850
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`Granting Petitioner permission to file this evidence prejudices Securus
`
`because it allows Petitioner to test the waters and taint the proceeding with
`
`unqualified publications in a “wait-and-see if it gets through” approach that shifts
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`the burden of establishing that Petitioner is entitled to relief to Securus. Furthermore,
`
`granting the Motion would set precedent and encourage other petitioners for inter
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`partes review to bypass the rules on word count thereby allowing petitioners to
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`simply conceal any evidence supporting admissibility of publication as prior art,
`
`until and only when a patent owner challenges the evidence.
`
`III. Conclusion
`
`Accordingly, for these reasons, Petitioner has not met its burden to show why
`
`the PTAB should accept this supplemental evidence, and the Motion should be
`
`denied.
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`Respectfully submitted,
`
`
`
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`Date: February 22, 2017
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`5
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`Case IPR2016-01362
`Patent 9,083,850
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on February 22, 2017, to Petitioner via counsel, Lori A. Gordon, Steven M. Pappas,
`
`Michael B. Ray, and Michael D. Specht at the email addresses: lgordon-
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`ptab@skgf.com,
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`spappas@skgf.com, mspecht-PTAB@skgf.com, mray-
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`PTAB@skgf.com, and PTAB@skgf.com, pursuant to Petitioner’s consent in its
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`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`
`Petition at page 2.
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`6
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