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 IPR2016-01220
`U.S. Patent No. 9,007,420
`
`
`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
`MOTION TO EXPUNGE EXHIBIT 2010
`
`
`
`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 IPR2016-01220
`U.S. Patent No. 9,007,420
`
`
`PATENT OWNER’S RESPONSE IN OPPOSITION TO PETITIONER’S
`MOTION TO EXPUNGE EXHIBIT 2010
`
`
`
`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
`
`INTRODUCTION ............................................................................................... 1
`
`
`I.
`
`II. COUNTERSTATEMENT OF THE FACTS ...................................................... 1
`
`III. EXHIBIT 2010 DEMONSTRATES THAT EXHIBIT 1021 IS IRRELEVANT
`AND INADMISSIBLE UNDER FRE 401-403. ................................................. 4
`
`
`IV. PETITIONER HAS NO AUTHORITY SUPPORTING ITS MOTION – IT
`MERELY SEEKS TO EXPUNGE UNFAVORABLE EVIDENCE. ................ 5
`
`
`
`
`
`
`
`
`
`i
`
`
`
`I.
`
`INTRODUCTION
`
`GTL’s motion is nothing more than an improper attempt to remove important
`
`evidence that demonstrates why Exhibit 1021 is irrelevant, and should be excluded.
`
`GTL’s primary purported basis for seeking to expunge the declaration of Securus’
`
`technical expert, Prof. Ioannis Kakadiaris, PhD, is that it did not have an opportunity
`
`to depose Prof. Kakadiaris on issues raised in the exhibit. This is simply false. GTL
`
`had every opportunity to cross-examine Prof. Kakadiaris regarding Exhibit 1021 and
`
`the issues addressed in his declaration, but GTL meticulously avoided any
`
`substantive questions about those issues during Prof. Kakadiaris’ deposition. Now
`
`faced with Prof. Kakadiaris’ declaration, GTL complains of thorns on the tree that it
`
`planted, and seeks to expunge the very testimony it could have elicited earlier in the
`
`case. The Board should not permit such gamesmanship, especially when its
`
`regulations expressly permit the submission of uncompelled direct testimony at any
`
`time to support a motion.
`
`II. COUNTERSTATEMENT OF THE FACTS
`
`On March 17, 2017, Securus served its Patent Owner Response, along with
`
`the expert declaration of Prof. Kakadiaris. See Paper 17 at 4. Prof. Kakadiaris’
`
`declaration discloses that he is widely published in the area of biometrics and facial
`
`recognition and includes a copy of his curriculum vitae (“CV”), which provides an
`
`extensive list of his publications and co-publications, including, inter alia,
`
`1
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`
`
`Ex. 2004 at 92 (hereinafter “Toderici”).
`
`Securus made Prof. Kakadiaris available for deposition on May 12, 2017.
`
`Ex. 1022. During the deposition, GTL specifically questioned Prof. Kakadiaris
`
`about his CV and his publications relating to identification and authentication.
`
`Ex. 1022 at 25:23-26:17. Prof. Kakadiaris listed, among other works, Toderici, but
`
`he did not state that Toderici involved the same type of face detection disclosed in
`
`the ’420 patent. Id. at 27:5-6. To the contrary, Prof. Kakadiaris testified that his
`
`“publications are focused on recognizing the identity of the individual duplicated in
`
`the image,” not on “identifying a human face.” Id. at 24:6-25:18.
`
`Despite being aware of Toderici well before the deposition, GTL did not ask
`
`Prof. Kakadiaris a single substantive question about Toderici, let alone attempt to
`
`introduce the publication as an exhibit. See generally id. Instead, GTL laid behind
`
`the proverbial “log” and waited until its Petitioner’s Reply to attached Exhibit 1021,
`
`a purported copy of the Toderici article. See Paper 19 at ii. GTL then argued, without
`
`any evidentiary support, that an isolated five-word phrase from Exhibit 1021
`
`supports its interpretation of “actual face” in the ’420 patent. See id. at 7.
`
`Because Toderici’s use of that phrase is completely irrelevant to any issue in
`
`this proceeding, Securus submitted the Declaration of Prof. Kakadiaris in Support of
`
`2
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`Patent Owner’s Motion to Exclude.1 See Exhibit 2010. Therein, Prof. Kakadiaris
`
`explains how Exhibit 1021 is fundamentally different than the ’420 patent, how GTL
`
`takes the phrase “actual geometry of the face” out of context, and how no person of
`
`ordinary skill would have considered Exhibit 1021 relevant to understanding the
`
`’420 patent. Id. ¶¶ 3-7. Prof. Kakadiaris’ testimony directly supports Securus’
`
`argument that Exhibit 1021 is irrelevant and inadmissible under the Federal Rules
`
`of Evidence. Paper 23 at 2-7.
`
`During the parties’ meet and confer on July 17, 2017, GTL could not identify
`
`any statute, regulation, or case prohibiting the submission of evidence (testimonial
`
`or otherwise) in support of a motion to exclude. Instead, GTL argued that the
`
`submission deprived it of any opportunity to cross-examine Prof. Kakadiaris
`
`regarding his opinions. Because GTL had every opportunity to question
`
`Prof. Kakadiaris regarding Toderici at his earlier deposition, Securus indicated that
`
`it did not believe further cross-examination was necessary. Nevertheless, Securus
`
`asked GTL whether it wished to depose Prof. Kakadiaris a second time. While
`
`Prof. Kakadiaris was available on multiple dates in July, GTL’s counsel declined to
`
`depose Prof. Kakadiaris, and has never attempted to notice a second deposition.
`
`
`1 Despite its native filename (which is irrelevant to its contents), Exhibit 2010 is not
`
`referenced as a “supplemental” declaration anywhere in the record.
`
`3
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`III. EXHIBIT
`2010 DEMONSTRATES THAT EXHIBIT 1021
`IRRELEVANT AND INADMISSIBLE UNDER FRE 401-403.
`
`IS
`
`Securus did not submit Exhibit 2010 “to get late evidence into the record,” as
`
`GTL contends. Paper 27 at 3. To the contrary, Securus submitted Exhibit 2010 to
`
`support its argument that Exhibit 1021 is irrelevant and inadmissible under the
`
`Federal Rules of Evidence. See Paper 23 at 2-7. There is nothing “pretext[ual]” about
`
`Securus’ submission of the declaration because it does not attempt to address the
`
`merits of GTL’s Reply. Paper 27 at 3. For example, the declaration does not purport
`
`to refute GTL’s flawed interpretation of “actual face” – it merely explains how
`
`Exhibit 1021 is irrelevant to the interpretation of that claim requirement. See
`
`Ex. 2010 ¶¶ 3-7. While GTL apparently disagrees with Prof. Kakadiaris, it has no
`
`evidence to support its attorney argument that Exhibit 1021’s use of the word
`
`“actual” conflicts with Prof. Kakadiaris’ interpretation of the ’420 patent, or that it
`
`supports GTL’s interpretation. Paper 24 at 4-5.
`
`Nor does Exhibit 2010 merely go to the “sufficiency” or “weight” that the
`
`Board should accord Exhibit 1021. Paper 27 at 3. Exhibit 1021 may use the word
`
`“actual,” but so do many other publications that are completely unrelated to the
`
`’420 patent. For example, Leo Tolstoy’s War and Peace uses “actual” on more than
`
`one occasion, but no person of ordinary skill would have considered that work
`
`relevant to understanding the ’420 patent. Similarly, Exhibit 1021 uses the word
`
`“actual,” but in a specific context to refer to the existence of geometric information.
`
`4
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`Ex. 2010 ¶ 6. It does not reference or describe an “actual face” like the ’420 patent.
`
`Id. Like War and Peace, it thus does not have “any tendency to make a fact more or
`
`less probable than it would be without the evidence.” Fed. R. Evid. 401. Indeed, as
`
`the Federal Circuit recently made clear in In re NuVasive, Inc., --- F. App’x ----,
`
`2017 WL 2365257, at *4 (Fed. Cir. May 31, 2017), it would be reversible error for
`
`the Board to consider Exhibit 1021’s use of “actual” in construing the ’420 patent.
`
`IV. PETITIONER HAS NO AUTHORITY SUPPORTING ITS MOTION – IT
`MERELY SEEKS TO EXPUNGE UNFAVORABLE EVIDENCE.
`
`GTL contends that “Securus cites no rule that authorizes the filing of a new
`
`declaration with a motion to exclude.” Paper 27 at 5. But GTL has the burden of
`
`proof backwards. It is GTL – not Securus – that bears the burden of proving that
`
`Exhibit 2010 should be expunged. 37 C.F.R. § 41.121(b) (“The party filing the
`
`motion has the burden of proof to establish that it is entitled to the requested relief.”).
`
`And GTL cites no statute, regulation, or case that prohibits a party from filing
`
`evidence (testimonial or otherwise) to support an authorized motion to exclude. See
`
`generally Paper 27. In fact, GTL concedes that it is aware of no case “where a
`
`proponent has attempted to file new direct testimony with a motion to exclude, let
`
`alone where the Board determined that the new testimony was proper.” Id. at 5-6
`
`(emphasis added). It likewise must be aware of no case where the Board has found
`
`that the submission of such testimony is improper.
`
`It is not surprising that GTL has no authority to support its request to expunge
`
`5
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`Exhibit 2010. The Board’s regulations explicitly permit parties to support motions
`
`with uncompelled direct testimony at any time. 37 C.F.R. § 42.53(b)(1)
`
`(“Uncompelled direct testimony may be taken at any time to support a … motion
`
`….”) (emphasis added). Indeed, the Board has encouraged parties to support motions
`
`with expert testimony to avoid conclusory argument. For example, in Idle Free
`
`Systems Inc. v. Bergstrom, Inc., the Board encouraged “direct testimony of a
`
`technical expert about the significance and usefulness of [substitute claim]
`
`feature(s)” to support a motion to amend. See IPR2012-00027, Paper 26 at 7-8
`
`(June 11, 2013). To establish that no person of ordinary skill would have considered
`
`Exhibit 1021 relevant to any issue in this proceeding, Securus was authorized, and
`
`in fact required, to support its argument with evidence. See id.
`
`GTL’s argument that the “particular order of evidence” precludes the
`
`submission of uncompelled direct testimony with a motion to exclude contradicts
`
`§ 41.121(b), which allows the submission of such testimony “at any time” to support
`
`a motion. See Paper 27 at 4-5. If GTL truly desired to depose Prof. Kakadiaris
`
`regarding his opinions concerning Exhibit 1021, it would have cross-examined him
`
`about Toderici when it had the chance back in May. But GTL obviously knew then
`
`that Prof. Kakadiaris’ testimony concerning the substance of Toderici would only
`
`damage its case, so GTL instead waited until Petitioner’s Reply to submit
`
`Exhibit 1021. And, when confronted with Prof. Kakadiaris’ declaration, it sought to
`
`6
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`expunge the damaging evidence, rather than take the opportunity to depose
`
`Prof. Kakadiaris about his opinions or submit a competing declaration from its own
`
`purported expert in its opposition brief.
`
`The cases cited by GTL are inapposite. Paper 27 at 6. Google Inc. v. Ji-Soo
`
`Lee involved an attempt to submit a supplemental declaration in support of a Patent
`
`Owner Response. IPR2016-00022, Paper 30 at 8. Enovate Medical, LLC v.
`
`Intermetro Industries Corp. involved the submission of an exhibit that did not
`
`support the Patent Owner’s opposition to a motion, but instead supplemented the
`
`record for the Patent Owner’s Response. IPR2015-00300, Paper 54 at 29. In contrast,
`
`Exhibit 2010 does not purport to supplement Prof. Kakadiaris’ prior declaration. Nor
`
`has Securus sought to rely on Exhibit 2010 to demonstrate the patentability of the
`
`challenged claims over the prior art, support its construction of “actual face,” or even
`
`rebut GTL’s flawed interpretation of that claim requirement. Instead, Securus
`
`submits Exhibit 2010 to demonstrate only that Exhibit 1021 is irrelevant and
`
`inadmissible under the Federal Rules of Evidence. See Paper 23 at 2-7.
`
`Moreover, the introduction of Exhibit 2010 was permissible because GTL had
`
`an opportunity to respond to the Motion to Exclude. See Genzyme Therapeutic
`
`Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016).
`
`Accordingly, the Board should deny GTL’s Motion to Expunge Exhibit 2010.
`
`7
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`Date: August 4, 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
`
`8
`
`
`
`Case IPR2016-01220
`Patent 9,007,420
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that document was served via electronic mail
`
`on August 4, 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 60.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
`
`9
`
`
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