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)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`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 REPLY TO PETITIONER’S OPPOSITION
`TO MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`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)
`
`Terry A. Saad (tsaad@bcpc-law.com)
`
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`
`Bragalone Conroy PC
`
`2200 Ross Ave., Suite 4500W
`
`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 REPLY TO PETITIONER’S OPPOSITION
`TO MOTION TO EXCLUDE EVIDENCE
`UNDER 37 C.F.R. §§ 42.64(B)(1) AND 42.64(C)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................... 1
`
`II. ARGUMENTS AND AUTHORITIES ............................................................... 2
`
`A. Exhibit 1008 Does Not Support a Publication Date of December 2010. .... 2
`
`B. The Grenier Declaration Does Not Establish the Public Availability or
`Accessibility of Exhibit 1008. ..................................................................... 2
`
`
`C. Exhibits 1008 and 1009 Are Inadmissible Hearsay. ................................... 4
`
`III. CONCLUSION ................................................................................................... 5
`
`
`
`
`
`
`
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`Contrary to Petitioner GTL’s assertions in its Opposition to Patent Owner
`
`Securus’ Motion to Exclude, Exhibit 1008 – an apparent collection of papers from a
`
`European DSP in Education and Research Conference (“EDERC”) – does not
`
`establish “[o]n its face” that it was published by the IEEE in December 2010.
`
`Paper 33 at 1. GTL’s untimely supplemental information – a declaration from a third-
`
`party custodian at the IEEE, who had no involvement with the EDERC and did not
`
`attend the conference – is hearsay and, moreover, does not establish a publication
`
`date of the papers prior to the date of invention of the ’850 patent.
`
`GTL also fails to show that it relies on Exhibits 1008 and 1009 solely for
`
`matters other than the truth of the matter asserted or that the exhibits fall under any
`
`hearsay exception. GTL does not merely rely on these exhibits to establish notice of
`
`their “teachings.” GTL affirmatively relies on Exhibit 1008 for its truth in an attempt
`
`to establish its publication date, whereas it relies on Exhibit 1009 for its truth in an
`
`attempt to establish the meaning of certain claim language. Further, there is no
`
`evidence that Exhibit 1008 is a “reliable authority” or that Exhibit 1009 is “generally
`
`relied on by the public or persons of particular occupations.” Accordingly, the Board
`
`should exclude Exhibits 1008 and 1009 as irrelevant and inadmissible under FRE
`
`401-403 and inadmissible hearsay under FRE 801-802.
`
`1
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`II. ARGUMENTS AND AUTHORITIES
`
`A. Exhibit 1008 Does Not Support a Publication Date of December 2010.
`
`Contrary to GTL’s argument, Exhibit 1008 does not establish, “[o]n its face,”
`
`a publication date of December 1 or 2, 2010. Paper 33 at 3. GTL cannot use dates
`
`from the document itself to establish a publication date because those dates are
`
`inadmissible hearsay. See Paper 32 at 4. Moreover, those dates show – at best – that
`
`the EDERC occurred from December 1-2, 2010, and are not evidence that the
`
`Gotsopoulos paper was actually presented or disseminated at the EDERC or any
`
`time before the filing of the ’850 patent. See Paper 32 at 4-5; Air Liquide Large
`
`Indus. U.S. LP v. Praxair Tech., Inc., IPR2016-01079, Paper 14 at 9 (PTAB Nov.
`
`21, 2016) (“A meeting is not published per se ….”).1
`
`B.
`
`The Grenier Declaration Does Not Establish the Public Availability or
`Accessibility of Exhibit 1008.
`
`Although GTL contends that a declaration of Gerard P. Grenier, a custodian
`
`of records for IEEE, is “admissible evidence that confirms” Exhibit 1008’s
`
`publication date, the Grenier declaration is not in evidence. As GTL concedes, the
`
`Board has not ruled on its motion to submit the Grenier declaration (Exhibit 1011)
`
`as supplemental evidence. Paper 33 at 2 n.1. Because the Grenier declaration is not
`
`“evidence,” and GTL failed to demonstrate that it reasonably could not have
`
`
`1 Stored Value Sols., Inc. v. Card Activation Techs., Inc., 499 F. App’x 5 (Fed. Cir.
`2012), is inapposite, because it did not involve a conference paper like Exhibit 1008,
`but rather a software manual bearing multiple copyright dates. Id. at 14.
`
`2
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`submitted the declaration with the Petition, it should not be considered by the Board
`
`in connection with Securus’ Motion to Exclude. See Paper 15 at 1-5.
`
`In addition, the Grenier declaration does not demonstrate that Exhibit 1008
`
`was publicly accessible before the filing of the ’850 patent. See Paper 32 at 3. This
`
`case is strikingly similar to Smart Microwave Sensors GmBH v. Wavetronix, LLC,
`
`where the Board found that a similar declaration from Grenier failed to establish
`
`public accessibility of a conference publication as prior art. IPR2016-00488,
`
`Paper 57 at 27-28 (PTAB July 17, 2017). Grenier does not testify that he personally
`
`attended the EDERC in 2010. See generally Ex. 1011. Nor does the declaration
`
`demonstrate that Grenier has personal knowledge of the distribution of any papers
`
`at EDERC in 2010 or indicate Grenier has any ties to the EDERC whatsoever. See
`
`id. Grenier’s testimony about the EDERC in 2010 is thus inadmissible hearsay. See
`
`Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1256-57 (Fed. Cir. 2000)
`
`(affirming a district court’s finding that a declarant’s testimony is hearsay if it is
`
`based upon hearsay and lack of personal knowledge).
`
`Further, Grenier does not testify that he is the custodian of Exhibit 1008 –
`
`only “certain records for IEEE.” Ex. 1011 ¶ 4 (emphasis added). Although Grenier
`
`states that it is the regular practice of IEEE to publish articles and other writings
`
`including article abstracts and make them available to the public through IEEE
`
`Xplore, he does not indicate when such actions take place. Id. ¶ 7. Grenier does not
`
`3
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`claim to have personal knowledge of when Exhibit 1008 was first made available to
`
`download from IEEE Xplore. Grenier merely testifies that Exhibit 1008 “is currently
`
`available for download from the IEEE digital library.” Id. ¶ 11. Because Grenier
`
`lacks personal knowledge of Exhibit 1008’s public accessibility, this testimony is
`
`also hearsay. See Rotec, 215 F.3d at 1256-57.
`
`While Grenier claims that “[t]he article abstracts from IEEE Xplore shows the
`
`date of publication,” the abstract attached to his declaration is not a business record.
`
`There is no evidence that the abstract was created at or near the time Exhibit 1008
`
`was allegedly published or created from information transmitted by someone with
`
`knowledge. Indeed, Grenier does not testify when the abstract was first made, or
`
`who created it. He merely states that he obtained the abstract “on or about January
`
`16, 2017.” Ex. 1011 ¶ 9. It is therefore also hearsay. Moreover, contrary to Grenier’s
`
`testimony, the abstract does not list Exhibits 1008’s publication date. Ex. 1011 ¶ 10.
`
`It merely lists the “Date of Conference.” And although the abstract provides a
`
`“[D]ate Added to IEEE Xplore,” there is no evidence that all documents added to
`
`IEEE Xplore are available for immediate download, let alone testimony concerning
`
`when Exhibit 1008 was actually available for download by the public.
`
`C. Exhibits 1008 and 1009 Are Inadmissible Hearsay.
`
`Unlike the defendant in Joy Techs., Inc. v. Manbeck, 751 F.Supp. 225, 233 n.2
`
`(D.D.C. 1990), GTL relies on dates appearing in Exhibit 1008 for the truth of the
`
`4
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`matter asserted. See Paper 33 at 3 (“Exhibit 1008 states a publication date of
`
`December 1 or 2, 2010”). These dates are inadmissible hearsay. See Paper 32 at 4;
`
`see also ServiceNow Inc. v. Hewlett-Packard Co., IPR2015-00716, Paper No. 13
`
`at 8, 15-17 (PTAB Aug. 26, 2015) (finding that a copyright date was inadmissible
`
`hearsay); Apple Inc. v. DDS Tech. Mgmt., Inc., IPR2015-00373, Paper 8 at 10 (PTAB
`
`June 25, 2015) (finding that a date stamp was inadmissible hearsay).
`
`GTL further fails to show that Exhibits 1008 and 1009 fall within any
`
`exceptions to the hearsay rule. Regarding Exhibit 1008, GTL fails to point to any
`
`specific evidence establishing that the author is an authority in the subject matter of
`
`the exhibit. See Fed. R. Evid. 803(18)(B); Twin City Fire Ins. Co. v. Country Mut.
`
`Ins. Co., 23 F.3d 1175, 1184 (7th Cir. 1994) (“It is not enough that the journal in
`
`which it appeared was reputable; the author of the particular article had to be shown
`
`to be an authority ….”). Indeed, Dr. Richardson’s declaration does not discuss the
`
`reliability of Exhibit 1008. See generally Ex. 1002. Regarding Exhibit 1009, there is
`
`no evidence or cited authority establishing that the cited definitions are “generally
`
`relied on by the public or persons in particular occupations.” Fed. R. Evid. 803(17).
`
`III. CONCLUSION
`
`For the foregoing reasons, Securus respectfully requests that the Board
`
`exclude Exhibits 1008 and 1009, because each is irrelevant and inadmissible under
`
`Federal Rule of Evidence 401-03 and constitute inadmissible hearsay.
`
`5
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`Date: August 24, 2017
`
`Respectfully submitted,
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`6
`
`
`
`Case IPR2016-01362
`Patent 9,083,850
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on August 24, 2017, to Petitioner via counsel, mspecht-PTAB@skgf.com, jmutsche-
`
`PTAB@skgf.com, and PTAB@skgf.com, pursuant to Petitioner’s consent in its
`
`Petition at page 2.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
