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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
`
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`GLOBAL TEL*LINK CORPORATION
`Petitioner
`
`v.
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`SECURUS TECHNOLOGIES, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2016-01220
`Patent: 9,007,420
`_____________________
`
`
`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE IN
`OPPOSITION TO PETITIONER’S MOTION
`TO EXPUNGE EXHIBIT 2010
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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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`I.
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`II.
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`III.
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`
`TABLE OF CONTENTS
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`Case IPR2016-01220
`Patent 9,007,420
`
`Introduction ...................................................................................................... 1
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`Because the facts to establish a foundation for relevance are not in
`dispute, Dr. Kakadiaris’s supplemental declaration can only go to
`weight, and thus does not support a Motion to Exclude. ................................ 1
`
`Securus’s main response to the contention that GTL cannot fairly
`cross-examine is that it should have anticipated Dr. Kakadiaris’s later
`direct testimony. .............................................................................................. 4
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`IV. Securus’s contention that it can introduce new direct testimony with
`its Motion to Exclude is incorrect.................................................................... 5
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`Conclusion ....................................................................................................... 5
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`V.
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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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`In its Opposition (Paper 30), Securus does not dispute the facts needed for
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`admissibility, and does not attempt to show how cross-examination and briefing on
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`the cross-examination could fairly have been conducted in the two week window
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`described in GTL’s Motion (Paper 27). Because the facts to establish a foundation
`
`for relevance are not in dispute, Dr. Kakadiaris’s supplemental declaration can
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`only go to weight. If the Board allows Dr. Kakadiaris’s supplemental declaration, it
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`would invite other patent owners to use a motion to exclude as a vehicle to respond
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`to rebuttal evidence that a petitioner submits with its reply, without having to
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`request Board permission for a surreply. Securus’s main response to the contention
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`that GTL cannot fairly cross-examine is that it should have anticipated Dr.
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`Kakadiaris’s later direct testimony, which is absurd. And Securus’s contention that
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`it can introduce new direct testimony with its Motion to Exclude is incorrect. Each
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`of these points is addressed below.
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`II. Because the facts to establish a foundation for relevance are not in
`dispute, Dr. Kakadiaris’s supplemental declaration can only go to
`weight, and thus does not support a Motion to Exclude.
`
`As shown in GTL’s Opposition to Securus’s Motion to Exclude, Exhibit
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`1021 is relevant both for impeachment and for substantive purposes to show usage
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`of the word “actual” in connection with face recognition. (Paper 24, 2-6.)
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`Struggling to explain why its thinks Dr. Kakadiaris’s supplemental declaration
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`- 1 -
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`Case IPR2016-01220
`Patent 9,007,420
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`shows this not to be the case, Securus tries to analogize Exhibit 1021 with Leo
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`Tolstoy’s War and Peace, stating: “Leo Tolstoy’s War and Peace uses ‘actual’ on
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`more than one occasion, but no person of ordinary skill would have considered that
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`work relevant to understanding the ’420 patent.” (Paper 30, 4.) This, however, is a
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`false analogy. The reasons are simple.
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`First, Mr. Tolstoy, having been dead for a century, did not submit a
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`declaration in this case. Hence, War and Peace would have no value for
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`impeachment purposes. Exhibit 1021, on the other hand, is authored by a person
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`who submitted a declaration in this proceeding. Securus did not dispute this in its
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`Motion to Exclude or its Reply in support of that Motion (Papers 23 and 26) and
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`Dr. Kakadiaris did not dispute this in his supplemental declaration (Ex. 2010). And
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`Dr. Kakadiaris has admitted that in Exhibit 1021 he used the term “actual”
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`differently from how he alleges a skilled artisan would read the term in the ’420
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`patent. (Ex. 2010, ¶ 3.) Thus, the salient facts to lay a foundation showing Exhibit
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`1021’s relevance for impeachment—that it is authored by Dr. Kakadiaris and are
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`inconsistent with that he said—are undisputed.
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`Second, Mr. Tolstoy was not a person of skill the art, nor is War and Peace a
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`work in the art of face recognition. Hence, War and Peace would not show how
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`those skilled in the art used the word “actual” in connection with face recognition.
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`However, both Securus and Dr. Kakadiaris admitted that Exhibit 1021 relates to
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`- 2 -
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`Case IPR2016-01220
`Patent 9,007,420
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`face recognition. (Paper 23, 5; Ex. 2010, ¶ 5.) Thus, Exhibit 1021 does serve to
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`show how those skilled in the art used the term. Again, the salient facts to lay a
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`foundation showing Exhibit 1021’s relevance for the meaning of the word “actual”
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`in the context of face recognition are undisputed.
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`Because the salient facts to establish a foundation for relevance are not in
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`dispute, Dr. Kakadiaris’s supplemental declaration can only go to weight. And, as
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`set forth previously, it should be given none.1 It has no bearing on a Motion to
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`Exclude.
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`1 Dr. Kakadiaris’s explanation for inconsistent usage of the word “actual”
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`was that the ’420 patent uses the phrase “actual face,” while Exhibit 1021 uses the
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`phrase “actual geometry of a face.” (Ex. 2010, passim.) But the ’420 patent
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`describes and claims “verify[ing] that an actual face was present in the image.”
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`(Ex. 1001, 11:10-11 (“to verify that an actual face was present in the image”); see
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`also 11:49-50, FIG. 4, Abstract, 1:45-48, 1:54-59, 8:66-9:2.) A face, physical or
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`otherwise, cannot be “present” in the image in the same way that a face can be
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`present in a mask. What the ’420 patent is saying when it describes “verify[ing]
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`that an actual face was present in the image” is verifying whether the image
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`includes the likeness, or geometry, of the face. (See Ex. 2004, ¶¶ 87-96.) There is
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`no genuine difference between usage of “actual” in the ’420 patent and in Exhibit
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`1021.
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`- 3 -
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`Case IPR2016-01220
`Patent 9,007,420
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`If the Board rules to allow Dr. Kakadiaris’s supplemental declaration, then it
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`would open the floodgates for patent owners to use the motion to exclude as a
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`vehicle to respond to rebuttal evidence that a petitioner submits with its reply,
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`without having to request permission for a surreply. The Board would open a new
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`avenue for patent owners to enter new declarations under the auspices of attacking
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`the relevance of the evidence that a petitioner submits with its reply.
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`No doubt this new avenue would soon be frequently used. This is because
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`submitting a new declaration with a motion to exclude is certainly preferable for a
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`patent owner than having to seek permission from the Board. This is also because
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`submitting a new declaration after the due date for the motion for observations on
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`cross-examination, when fair cross-examination is impractical, is preferable for a
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`patent owner than having to defend its witness.
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`For these reasons, the Board should not allow this sort of substantive
`
`evidence with a motion to exclude.
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`III. Securus’s main response to the contention that GTL cannot fairly cross-
`examine is that it should have anticipated Dr. Kakadiaris’s later direct
`testimony.
`
`Securus argues that “GTL had every opportunity to cross-examine Dr.
`
`Kakadiaris on the issues in his declaration” on a deposition that occurred prior to
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`Dr. Kakadiaris’s submission of Exhibit 2010. (Paper 30, 1.) With this argument,
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`Securus is placing the burden on GTL to cross-examine Dr. Kakadiaris in May on
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`- 4 -
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`Case IPR2016-01220
`Patent 9,007,420
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`direct testimony he did not present until July. This, of course, is impossible.
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`Securus claimed that “Prof. Kakadiaris was available on multiple dates in
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`July.” (Paper 30, 3.) But as explained in the Motion (Paper 27, 7), within a two-
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`week window, GTL would have had to schedule and prepare a new deposition,
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`conduct new cross-examination, and brief new testimony while still allowing time
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`for Securus to respond. Securus does not explain how it thinks this would have
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`been possible. Indeed, it would not have been without unfair prejudice to GTL.
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`IV. Securus’s contention that it can introduce new direct testimony with its
`Motion to Exclude is incorrect.
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`Securus cites 37 CFR 42.53(b)(1), but that rule must be read in context of
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`the Official Trial Practice Guide. As described in the Motion (Paper 27, 4-6), the
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`Guide contemplated a particular order of evidence. Indeed, in the principal motion,
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`GTL cited a number of cases (Google Inc. v. Ji-Soo Lee, IPR2016-00022, Paper 30
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`(P.T.A.B. April 21, 2017); Enovate Medical, LLC v. Intermetro Industries Corp.,
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`IPR2015-00300, Paper 54 (P.T.A.B. May 11, 2016)) where the Board has excluded
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`testimony such as this that was ostensibly, but not actually, “to support a petition,
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`motion, opposition, or reply.” Cf. 37 CFR 42.53(b)(1).
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`V. Conclusion
`For these reasons as set forth in the Motion (Paper 27), the supplemental
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`declaration of Dr. Kakadiaris (Ex. 2010) should not be considered and should be
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`expunged.
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`Date: August 7, 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
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
`
`/Joseph E. Mutschelknaus/
`
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`
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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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`- 6 -
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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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`
`
`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE IN
`
`OPPOSITION TO PETITIONER’S MOTION TO EXPUNGE EXHIBIT
`
`2010 was served electronically via e-mail on August 7, 2017, on the following
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`Counsel for Patent Owner:
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`Nicholas C. Kliewer (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Daniel F. Olejko (Back-up Counsel)
`Terry A. Saad (Back-up Counsel)
`Justin B. Kimble (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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`/Joseph E. Mutschelknaus/
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`
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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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`7721029_1.docx
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`Date: August 7, 2017
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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