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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.
`
`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`_____________________
`
`Case: IPR2016-01220
`Patent: 9,007,420
`_____________________
`
`
`
`
`PETITIONER’S MOTION
`TO EXPUNGE EXHIBIT 2010
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`
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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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`
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`
`
`
`TABLE OF CONTENTS
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`Case IPR2016-01220
`Patent 9,007,420
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`Introduction ...................................................................................................... 1
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`Statement of Facts ............................................................................................ 1
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`
`
`I.
`
`II.
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`III. Exhibit 2010 does not support relevance and Securus’s claim that it is
`pretextual. ........................................................................................................ 3
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`IV. The rules do not authorize, and in fact prohibit, the filing of direct
`testimony with a Motion to Exclude. .............................................................. 4
`
`V.
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`The late filing of direct testimony from Dr. Kakadiaris, if allowed,
`would deny GTL the right to effectively cross-examine an adverse
`witness. ............................................................................................................ 6
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`VI. Conclusion ....................................................................................................... 7
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`- i -
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`I.
`
`Introduction
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`
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`Case IPR2016-01220
`Patent 9,007,420
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`Pursuant to an authorization from the Board dated July 28, 2017, Petitioner
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`GTL moves to expunge a declaration from Securus’s expert Dr. Kakadiaras labeled
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`Exhibit 2010 that was filed with Patent Owner’s Motion to Exclude (Paper 23).1
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`Securus’s allegations that Exhibit 2010 supports its Motion to Exclude are merely
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`pretext in attempt to present an unauthorized sur-reply. The Rules of Practice state,
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`“The Board may expunge any paper directed to a proceeding … that is not
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`authorized under this part or in a Board order or that is filed contrary to
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`a Board order.” 37 C.F.R. § 42.7. Securus never sought, and the Board never
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`issued, an order authorizing the filing of Exhibit 2010. Exhibit 2010 is not
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`authorized by any other rule of practice either. The filing of Exhibit 2010 is, in
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`fact, impossible to reconcile with other rules surrounding the timing of depositions
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`and cross-examination. For these reasons, the Board should expunge Exhibit 2010.
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`II.
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`Statement of Facts
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`In its Patent Owner Response, Securus argued that “term ‘actual face’
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`should be construed as referring to the user’s physical face and not a facsimile of a
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`1 Petitioner GTL acknowledges that many of these issues were briefed in
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`GTL’s prior filed Opposition to Securus’s Motion to Exclude (Paper 24, 11-12)
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`and Securus’s corresponding Reply (Paper 26, 4-5). However, now GTL requests
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`expungement in a motion as provided for by 37 C.F.R. § 42.20(a).
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`- 1 -
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`Case IPR2016-01220
`Patent 9,007,420
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`face such as a photograph.” (Paper 17, 11.) Based on this construction, Securus
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`argued that the ’420 patent recites distinguishing a “face” from an “actual face” to
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`prevent “circumvention attempts … known as ‘spoofing.’” (Id., 30.) In contrast,
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`GTL’s expert Dr. Beigi had stated that, in the context of the ’420 patent the word
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`“actual” in the phrase “actual face” distinguishes between “[a] face” and
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`“something of its like.” (Ex. 2006, 120:23.)
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`With its reply, GTL submitted as Exhibit 1021 a book chapter authored by
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`Securus’s expert Dr. Kakadiaris that used the word “actual” in connection to face
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`recognition. (Ex. 1021, 260.) In Exhibit 1021, Dr. Kakadiaris uses the word
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`“actual” in a manner that, all parties agree, is in connection to face recognition and
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`inconsistent with Securus’s construction of the term. (See Paper 23, 4.) Securus
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`filed a Motion to Exclude Exhibit 1021. (Paper 23.) Accompanying the Motion to
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`Exclude, Securus filed a supplemental2 declaration from Securus’s expert Dr.
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`Kakadiaras, labeled Exhibit 2010. (Ex. 2010.) Securus did not request a sur-reply
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`or seek permission to submit additional evidence.
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`Promptly, on the next business day after Securus filed Exhibit 2010, GTL
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`2 Securus has taken issue with GTL referring to Exhibit 2010 as a
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`“supplemental” declaration. (Paper 26, 5.) However, tellingly, the filename of the
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`document Securus served to GTL and to the Board is “EX. 2010 - Supplemental
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`Declaration of Prof. Kakdiaris.pdf.”
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`- 2 -
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`Case IPR2016-01220
`Patent 9,007,420
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`indicated to Securus that it did not believe that filing of Exhibit 2010 was allowed
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`by the rules and that, if not expunged, Exhibit 2010 would deny GTL the right to
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`effective cross-examination. Securus disagreed, indicating in part that it did not
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`believe that cross-examination was necessary. Later that day, GTL sent an email to
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`the Board requesting authorization for this motion to expunge Exhibit 2010. The
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`Board granted that request on July 28, 2017.
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`III. Exhibit 2010 does not support relevance and Securus’s claim that it is
`pretext.
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`The Official Trial Practice Guide states: “A motion to exclude must explain
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`why the evidence is not admissible (e.g., relevance or hearsay) but may not be
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`used to challenge the sufficiency of the evidence to prove a particular fact.” 77
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`Fed. Reg. 48,767. Here, Dr. Kakadiaris’s supplemental declaration is NOT in
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`support of Securus’s contentions for Fed. R. Evid. 401. The reason for this is
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`simple. Dr. Kakadiaris’s declaration should not be credited for the reasons GTL set
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`forth in its Opposition to the Motion to Exclude. (Paper 24, 4-5.) But even if
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`everything in Dr. Kakadiaris’s declaration were accepted as true, then the
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`declaration would only go to weight, not to admissibility, of GTL’s Exhibit 1021.
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`77 Fed. Reg. 48,757. Securus’s contention that it needs Exhibit 2010 to support its
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`Motion to Exclude is simply pretext in attempt to get late evidence into the record.
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`- 3 -
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`Case IPR2016-01220
`Patent 9,007,420
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`IV. The rules do not authorize, and in fact prohibit, the filing of direct
`testimony with a Motion to Exclude.
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`Securus cites no rule that authorizes the filing of a new declaration with a
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`motion to exclude. (Paper 26, 3-4.) In email correspondence with the Board,
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`Securus pointed out that its Motion to Exclude Evidence (Paper 23) was authorized
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`by the Board’s Scheduling Order. However, Board’s Scheduling Order did not
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`authorize the filing of a new declaration with the Motion to Exclude. Indeed it
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`could not, because the deadline for the Motion to Exclude coincides with the
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`deadline for Motions for Observations on Cross-examination. At that point, with
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`only three weeks left until the hearing, discovery is closed, providing no
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`opportunity for cross-examination of new direct testimony and briefing on that
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`cross-examination.
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`The scheduling order is consistent with the order of evidence prescribed in
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`the Official Trial Practice Guide. The Guide prescribes a particular order of
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`evidence. 77 Fed. Reg. 48,757-48,758, 48,761-48,762. By the time the motion to
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`exclude is filed, not only has all direct testimony been provided, all cross-
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`examination has occurred and the last possible brief — a motion for observation on
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`cross-examination — must be filed. As will be discussed in the next section, this
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`order of discovery is necessary to ensure that late filing of new direct testimony
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`does not occur in a manner that prevents adequate opportunity for cross-
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`examination.
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`- 4 -
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`Case IPR2016-01220
`Patent 9,007,420
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`In its reply filed July 26, Securus cited only a single case where a proponent
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`of a motion to exclude submitted testimonial evidence. (Paper 26, 4.) Even in that
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`case– Activision Blizzard, Inc. v. Acceleration Bay, LLC—the Patent Owner filed
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`not new direct testimony, as Securus attempts to do here, but a deposition
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`transcript reflecting cross-examination from an adverse witness. See IPR2015-
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`01951, Paper 77 at 9 (Ex. 2111) and 14 (Ex. 2110) (P.T.A.B. November 10, 2016).
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`And even in that single example that Securus could muster, the Board did not
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`sanction that practice. Because the Petitioner did not object to the cross-
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`examination transcript, the Board made no comment either way on its propriety.
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`See Activision Blizzard v. Acceleration Bay, IPR2015-01951, Paper 107, passim
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`(P.T.A.B. March 23, 2017). Securus has not cited a single case, and the
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`undersigned is aware of none, where a proponent has attempted to file new direct
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`testimony with a motion to exclude, let alone where the Board determined that the
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`- 5 -
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`new testimony was proper. (See Paper 26, 4-5.)
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`Case IPR2016-01220
`Patent 9,007,420
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`Securus also cites a number of cases where evidence was filed with an
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`opposition to a motion to exclude. (See Paper 26, 5 (citing IPR2015-01996, Ex.
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`1156; IPR2015-01236, Ex. 1020; IPR2013-00593, Ex. 1025).) These were mostly
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`declarations by attorneys on procedural matters, such as whether objections were
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`properly served. Regardless, Securus cites no instance where the Board has
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`condoned this practice.
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`In contrast, GTL has cited a number of cases where the Board has refused to
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`allow new evidence, even when the underlying opposition or motion was allowed.
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`See e.g. Google Inc. v. Ji-Soo Lee, IPR2016-00022, Paper 30 (P.T.A.B. April 21,
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`2017); Enovate Medical, LLC v. Intermetro Industries Corp., IPR2015-00300,
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`Paper 54 (P.T.A.B. May 11, 2016).
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`In sum, the rules do not authorize, and in fact prohibit, the filing of direct
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`testimony with a Motion to Exclude.
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`V. The late filing of direct testimony from Dr. Kakadiaris, if allowed,
`would deny GTL the right to effectively cross-examine an adverse
`witness.
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`By rule and statute, GTL has a right to cross-examine Dr. Kakadiaris on his
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`direct testimony, including the testimony provided in Exhibit 2010. 37 C.F.R. §
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`42.51(b)(1)(ii); 5 U.S.C. § 556(d) (APA). Because discovery is closed, the deadline
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`for Motions for Observations have passed, and oral argument is less than three
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`- 6 -
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`Case IPR2016-01220
`Patent 9,007,420
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`weeks away, taking cross-examination on Dr. Kakadiaris’s deposition testimony
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`would be impossible without unfairly prejudicing GTL. (Paper 16, 1.)
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`Securus dismisses this prejudice as a “red herring.” (Paper 26, 5.) When Dr.
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`Kakadiaris’s new testimony was filed on July 15, just three weeks remained until
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`oral hearing. (See Paper 23.) Only two weeks remained until demonstratives were
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`due. 37 C.F.R. § 42.70. GTL would have had to schedule and prepare a new
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`deposition, conduct new cross-examination, and brief new testimony while still
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`allowing time for Securus to respond before that deadline. GTL had filed Exhibit
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`1021, the exhibit that Dr. Kakadiaris’s new testimony addresses, a month earlier on
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`June 22. Securus provided no reason for not requesting permission to enter Dr.
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`Kakadiaris’s new testimony earlier. Had Securus thought it necessary, the proper
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`course would have been for Securus to ask permission from the Board for a sur-
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`reply with a supplemental declaration soon after GTL filed its reply.
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`As Securus is presenting new direct testimony with its motion to exclude
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`only two weeks before oral hearing demonstratives are due, GTL cannot conduct
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`meaningful cross-examination without unfair prejudice.
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`VI. Conclusion
`For these reasons, the supplemental declaration of Dr. Kakadiaris (Ex. 2010)
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`should not be considered and should be expunged.
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`Date: August 1, 2017
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`
`Respectfully Submitted,
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`Case IPR2016-01220
`Patent 9,007,420
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
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`/Joseph E. Mutschelknaus/
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`Michael D. Specht, Reg. No. 54,463
`Joseph E. Mutschelknaus, Reg. No. 63,285
`Attorneys for Petitioner
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`- 8 -
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01220
`Patent 9,007,420
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`The undersigned certifies that a true and correct copy of the foregoing
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`PETITIONER’S MOTION TO EXPUNGE EXHIBIT 2010 was served
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`electronically via e-mail on August 1, 2017, on the following Counsel for Patent
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`Justin B. Kimble (Lead Counsel)
`Jeffrey R. 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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`Owner:
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`Date: August 1, 2017
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
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`/Joseph E. Mutschelknaus/
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`Michael D. Specht, Reg. No. 54,463
`Joseph E. Mutschelknaus, Reg. No. 63,285
`Attorneys for Petitioner
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`5502288_1.docx
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`
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