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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`GLOBAL TEL*LINK CORPORATION
`Petitioner
`
`v.
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`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`___________________
`
`Case IPR2016-01362
`Patent 9,083,850
`___________________
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`PETITIONER GLOBAL TEL*LINK CORPORATION’S
`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
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`TABLE OF CONTENTS
`INTRODUCTION .............................................................................................. 1
`I.
`II. PROCEDURAL BACKGROUND ..................................................................... 1
`III. ARGUMENTS AND AUTHORITIES .............................................................. 2
`A. Exhibit 1008 is relevant and admissible prior art, published no later than
`December 2, 2010. .................................................................................................. 2
`B. Neither Exhibit 1008 nor Exhibit 1009 are subject to the hearsay rule. ....... 4
`1. GTL does not rely upon Exhibits 1008 or 1009 for the truth of the
`matters asserted. .................................................................................................. 4
`2.
`Exhibits 1008 and 1009 also fall within exceptions to the hearsay rule. ... 5
`IV. CONCLUSION ................................................................................................... 6
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
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`UPDATED EXHIBIT LIST
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`Exhibit No. Description
`1001
`U.S. Patent No. 9,083,850 B1 to Higgs
`1002
`Expert Declaration of Dr. Iain Richardson
`1003
`Expert CV of Dr. Iain Richardson
`1004
`U.S. Patent No. 9,106,789 to Shipman, Jr. et al. (“Shipman”), titled
`“Videoconference and Video Visitation Security”
`U.S. Patent No. 7,911,513 to Garrison et al. (“Garrison”), titled
`“Simulating Short Depth of Field to Maximize Privacy in
`Videotelophony”
`U.S. Patent No. 6,734,900 to Mayhew. (“Mayhew”), titled “Real
`Time Camera and Lens Control System for Image Depth of Field
`Manipulation”
`U.S. Patent Publication No. 2008/0201158 A1 to Johnson et al.
`(“Johnson”), titled “Real Time Camera and Lens Control System for
`Image Depth of Field Manipulation”
`“Remote Controlled DSP Based Image Capturing and Processing
`System Featuring Two-Axis Motion,” by Gotsopoulos et al.
`(“Gotsopoulos”)
`American Heritage Dictionary
`European DSP in Education and Research Conference (2010)
`(originally served on February 7, 2017)
`Declaration of Gerard P. Grenier (originally served on February 7,
`2017)
`July 18, 2017 Deposition Transcript of Dr. Alan Bovik
`February 7, 2017 e-mail serving Exhibits 1010 and 1011 on Patent
`Owner
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`1005
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`1006
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`1007
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`1008
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`1009
`1010
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`1011
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`1012
`1013
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`- ii -
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`I.
`
`INTRODUCTION
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`
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
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`The Board should deny Patent Owner’s (“Securus”) motion to exclude
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`Exhibits 1008 and 1009. Exhibit 1008 is relevant prior art. On its face, Exhibit
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`1008 was published by IEEE in December of 2010—more than two years before
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`the date of invention. That publication date has been corroborated by independent
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`and undisputed witness testimony and documentary evidence. Substantial evidence
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`thus establishes that Exhibit 1008 is prior art to the ’850 patent and therefore is
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`relevant to this case.
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`Similarly, Securus’ hearsay arguments against Exhibits 1008 and 1009 miss
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`the mark. Petitioner (“GTL”) does not rely on either publication for the truth of the
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`matters asserted therein. Instead, GTL relies on these references for the teachings
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`they disclose—whether those teachings are true is of no moment. Thus, neither
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`exhibit is subject to the hearsay rule. Even if they were hearsay, each exhibit falls
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`within an exception to the hearsay rule such that exclusion is still improper.
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`Accordingly, the Board should deny Securus’ motion to exclude Exhibits
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`1008 and 1009.
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`II.
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`PROCEDURAL BACKGROUND
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`Following institution, on January 24, 2017, Securus objected to Exhibit
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`1008, claiming that GTL had not demonstrated that Exhibit 1008 (the prior art
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`Gotsopoulos reference) was published before the date of invention and that Exhibit
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`U.S. Patent No. 9,083,850
`1008 was subject to hearsay. Paper 13, 1-2. Securus similarly objected to Exhibit
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`1009 as hearsay. Id., 3.
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`On February 7, 2017, GTL timely served on Securus supplemental evidence
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`to address Securus’ objections (see Exhibit 1013) and subsequently sought—and
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`received—authorization from the Board to submit that evidence as supplemental
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`information under 37 C.F.R. §42.123(a).1 GTL’s supplemental evidence includes
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`the declaration of an IEEE records custodian attesting to the fact that copies of
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`Exhibit 1008 were published in December of 2010. See Ex. 1011, ¶11. Securus has
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`not disputed the veracity of Mr. Grenier’s statements or of the business records
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`appended to his declaration, and it did not seek to depose Mr. Grenier despite
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`having an opportunity to do so.
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`III. ARGUMENTS AND AUTHORITIES
`A. Exhibit 1008 is relevant and admissible prior art, published no
`later than December 2, 2010.
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`There can be no legitimate dispute that Exhibit 1008 constitutes prior art to
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`the ’850 patent. Securus’ argument regarding the relevance of Exhibit 1008 lies
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`essentially in its narrow claim that the publication date on the face of the document
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`is hearsay, and thus, Exhibit 1008 is irrelevant because there is no proof in the
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`1 The Board authorized GTL’s request to file this motion, and GTL did so on
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`February 17, 2017. Paper 14. That motion remains pending.
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`U.S. Patent No. 9,083,850
`record that it was published before the date of invention of the ’850 patent. To the
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`contrary, GTL has served admissible evidence that confirms Exhibit 1008 was
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`published more than a year before the ’850 patent’s filing date.
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`Specifically, GTL served on February 7 the declaration of Gerard P. Grenier,
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`a custodian of records for IEEE. Ex. 1011, ¶4. Mr. Grenier testified that Exhibit
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`1008 “was published in the 2010 4th European Education and Research
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`Conference,” which “was held from December 1-2, 2010.” Id., ¶ 11. More
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`specifically, Mr. Grenier testified that “[c]opies of [Exhibit 1008] were made
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`available no later than the last day of the conference,” i.e., December 2, 2010. Id.,
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`¶11. Exhibit 1011 also shows that Exhibit 1008 was made publicly searchable and
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`accessible on IEEE’s website on February 13, 2012, still more than a year before
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`the filing date of the ’850 patent. See Ex. 1011, at “Exhibit A”, p. 1/3; Ex. 1011,
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`¶¶9-10.
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`Under nearly identical circumstances, the Federal Circuit found that similar
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`evidence supports a publication date before the date of invention. In Stored Value
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`Solutions, Inc. v. Card Activation Techs., Inc., the asserted prior art reference
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`offered a publication date on its face, and that date was corroborated by testimony.
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`499 Fed. App’x 5, 14 (Fed. Cir. Dec. 10, 2012). So too here, Exhibit 1008 states a
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`publication date of December 1 or 2, 2010, and that date is corroborated by the
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`testimony of a neutral third party after review of his company’s records, and at the
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
`very least, the company’s records themselves confirm a publication date of no later
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`than February 13, 2012.
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`Thus, substantial (and undisputed) evidence supports a finding that Exhibit
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`1008 was published before the date of invention. Because Exhibit 1008 is prior art,
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`it is relevant. Accordingly, the Board should deny Securus’ request to exclude
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`Exhibit 1008 as irrelevant.
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`B. Neither Exhibit 1008 nor Exhibit 1009 are subject to the hearsay
`rule.
`1.
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`GTL does not rely upon Exhibits 1008 or 1009 for the truth of
`the matters asserted.
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`Securus misapplies the law in asserting that Exhibits 1008 and 1009 should
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`be excluded as hearsay. As Securus concedes, a statement can only qualify as
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`hearsay if it is “offer[ed] in evidence to prove the truth of the matter asserted in the
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`statement.” Paper 32, 5 (quoting Fed. R. Evid. 801). And therein lies the fatal flaw
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`in Securus’ argument: “A prior art document … is offered simply as evidence of
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`what it describes, not for proving the truth of the matters addressed in the
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`document.” Joy Techs., Inc. v. Manbeck, 751 F. Supp. 225, 233 n.2 (D.D.C. 1990),
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`judgment aff’d, 959 F.2d 226 (Fed. Cir. 1992).
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`The facts of legal significance in each exhibit lie only in their teachings, not
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`in the accuracy of those teachings. Thus, because neither exhibit is being used “to
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`U.S. Patent No. 9,083,850
`prove the truth of the matter asserted in the statement,” neither exhibit constitutes
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`hearsay.
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`2.
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`Exhibits 1008 and 1009 also fall within exceptions to the
`hearsay rule.
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`Both challenged exhibits also fall within exceptions to the hearsay rule. For
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`example, Fed. R. Evid. 803(17) excepts from the hearsay rule all “[m]arket
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`quotations, lists, directories, or other compilations that are generally relied on by
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`the public or by persons in particular occupations.” Exhibit 1009 is a dictionary
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`excerpt. The public—not to mention persons in nearly every occupation—rely on
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`dictionaries to help ascertain the meaning of words. Accordingly, Exhibit 1009 is
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`properly excepted from the hearsay rule and should not be excluded from this
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`proceeding.
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`Similarly, Fed. R. Evid. 803(18) provides that a “statement contained in a
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`treatise, periodical, or pamphlet” is excepted from hearsay if (A) the statement is
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`“relied on by the expert”; and (B) “the publication is established as a reliable
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`authority by the expert’s admission or testimony.” In this proceeding, Dr.
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`Richardson submitted written testimony relying on, and confirming the reliability
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`of, Exhibit 1008. See Ex. 1002, ¶¶56-62, 140, 142-43, 145-55, 157-58, 160, 163.
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`Accordingly, Exhibit 1008 is properly excepted from the hearsay rule and should
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`not be excluded from this proceeding.
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
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`IV. CONCLUSION
`Securus’ motion to exclude should be denied in whole for the reasons
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`discussed above.
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`
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`Date: August 21, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/ Byron L. Pickard /
`
`Byron L. Pickard (Registration No. 65,172)
`Attorney for Petitioner
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`Case IPR2016-01362
`U.S. Patent No. 9,083,850
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on August 21, 2017 the foregoing
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`PETITIONER GLOBAL TEL*LINK CORPORATION’S OPPOSITION TO
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`PATENT OWNER’S MOTION TO EXCLUDE and Exhibits 1011 and 1013
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`were served electronically via e-mail in their entireties on the following counsel of
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`record for Patent Owner:
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`Justin B. Kimble (Lead Counsel)
`Jeffrey B. Bragalone (Back up Counsel)
`Daniel F. Olejko (Back up Counsel)
`Terry A. Saad (Back up Counsel)
`Nicholas C. Kliewer (Back up Counsel)
`BRAGALONE CONROY PC
`jkimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`dolejko@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/ Byron L. Pickard /
`
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`Byron L. Pickard (Registration No. 65,172)
`Attorney for Petitioner
`
`Date: August 21, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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`
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