`
`
`
`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 IPR2014-01278 (Patent 7,860,222 B1)
`Case IPR2014-01282 (Patent 7,860,222 B1)
`Case IPR2016-01220 (Patent 9,007,420 B1)
`Case IPR2016-01333 (Patent 9,094,500 B1)
`Case IPR2016-01362 (Patent 9,083,850 B1)
`Case IPR2017-01435 (Patent 7,529,357 B1)
`Case IPR2017-01436 (Patent 8,340,260 B1)
`Case IPR2017-01437 (Patent 7,916,845 B2)
`Case CBM2017-00043 (Patent 7,529,357 B1)
`Case CBM2017-00044 (Patent 8,340,260 B1)
`_____________________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`
`
`
`GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`
`_____________________
`
`Case PGR2016-00044 (Patent 9,225,838 B2)
`Case PGR2017-00005 (Patent 9,307,386 B2)
`Case CBM2017-00034 (Patent 7,783,021 B2)
`Case IPR2017-01177 (Patent 9,521,250 B2)
`Case IPR2017-01279 (Patent 9,509,856 B2)
`_____________________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DSI-ITI, LLC,
`Patent Owner.
`
`_____________________
`
`Case IPR2017-01606 (Patent 7,123,704 B2)
`Case IPR2017-02169 (Patent 7,826,604 B2)
`Case IPR2017-02203 (Patent 6,895,086 B2)
`_____________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. §§ 317 & 327 AND 37 C.F.R. §§ 42.72 & 42.74
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. §§ 317 & 327, 37 C.F.R. §§ 42.72 & 42.74, and the
`
`Board’s December 4, 2017 e-mail authorizing the filing of this omnibus Motion,
`
`Global Tel*Link Corporation and its wholly owned subsidiary DSI-ITI, LLC1
`
`(collectively “GTL”) and Securus Technologies, Inc. (“Securus”) jointly move to
`
`terminate the following proceedings in light of GTL’s and Securus’s (collectively
`
`“the parties”) settlement of their patent disputes:
`
`TABLE I
`
`Case No. Patent No.
`PGR2016-
`9,225,838
`00044
`
`Patent Title
`System and Method for Detecting
`Three-Way Call Circumvention
`Attempts
`7,783,021 Digital Telecommunications Call
`Management and Monitoring System
`Systems and Methods for Acquiring,
`Accessing, and Analyzing
`Investigative Information
`
`7,860,222
`
`CBM2017-
`00034
`IPR2014-
`01278
`
`IPR2014-
`01282
`
`IPR2016-
`01220
`
`Status
`Trial
`Instituted
`
`Trial
`Instituted
`On Remand
`from the
`Federal
`Circuit
`On Remand
`from the
`Federal
`Circuit
`Trial
`Instituted
`
`7,860,222
`
`Systems and Methods for Acquiring,
`Accessing, and Analyzing
`Investigative Information
`
`9,007,420 Verifying Presence of Authorized
`Persons During an Electronic
`Visitation
`
`
`
`1 See IPR2017-02203, Paper 4 at 1 (“The Patent Owner and real party-in-
`
`interest is DSI-ITI, LLC, a wholly-owned subsidiary of Global Tel*Link
`
`Corporation.”).
`
`1
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Patent Title
`Case No. Patent No.
`IPR2016-
`9,094,500 Controlled Communication Between
`01333
`Residents of Controlled Environment
`Facilities
`9,083,850 Video Blurring in a Secure
`Environment
`Telecommunication Call Management
`and Monitoring System with
`Voiceprint Verification
`Telecommunication Revenue
`Management System
`9,307,386 Multifunction Wireless Device
`
`9,521,250
`
`9,509,856
`
`IPR2016-
`01362
`IPR2017-
`01177
`
`IPR2017-
`01279
`PGR2017-
`00005
`CBM2017-
`00043
`
`7,529,357
`
`Inmate Management and Call
`Processing Systems and Methods
`
`CBM2017-
`00044
`
`8,340,260
`
`Inmate Management and Call
`Processing Systems and Methods
`
`IPR2017-
`01435
`IPR2017-
`01436
`IPR2017-
`01437
`
`IPR2017-
`01606
`IPR2017-
`02169
`IPR2017-
`02203
`
`7,529,357
`
`8,340,260
`
`Inmate Management and Call
`Processing Systems and Methods
`Inmate Management and Call
`Processing Systems and Methods
`7,916,845 Unauthorized Call Activity Detection
`and Prevention Systems and Methods
`for a Voice Over Internet Protocol
`Environment
`3-Way Call Detection System
`
`7,123,704
`
`7,826,604
`
`6,895,086
`
`Three-Way Call Detection Using
`Steganography
`3-Way Call Detection System and
`Method
`
`Status
`Trial
`Instituted
`
`Trial
`Instituted
`Trial
`Instituted
`
`Trial
`Instituted
`Trial
`Instituted
`Institution
`Denied,
`Rehearing
`Request
`Pending
`Institution
`Denied,
`Rehearing
`Request
`Pending
`Pending
`Institution
`Pending
`Institution
`Trial
`Instituted
`
`Pending
`Institution
`Pending
`Institution
`Pending
`Institution
`
`2
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Termination of the proceedings listed in TABLE I is appropriate because the
`
`dispute between the parties has been resolved. As required by 35 U.S.C. §§ 317(b)
`
`& 327(b), the parties are filing, concurrently herewith, a true copy of their
`
`Settlement Agreement as an exhibit in each of the above-listed proceedings.2 As
`
`outlined in the Settlement Agreement, the parties jointly agreed to terminate the
`
`above-listed proceedings. Accordingly, the parties jointly request that the above-
`
`listed proceedings be terminated under 35 U.S.C. §§ 317(a) & 327(a) and 37
`
`C.F.R. §§ 42.72 & 42.74. There are no additional collateral agreements or
`
`understandings made in connection with, or in contemplation of, termination of
`
`these proceedings. The parties have stipulated to dismiss all related litigation
`
`involving the patents listed in TABLE I. No litigation or proceeding between the
`
`parties involving the patents listed in TABLE I is contemplated in the foreseeable
`
`future.
`
`Under 35 U.S.C. §§ 317(a) & 327(a), an inter partes review or a post-grant
`
`review “instituted under this chapter shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
`
`Office has decided the merits of the proceeding before the request for termination
`
`
`2 The Settlement Agreement has been filed electronically in each proceeding
`
`via E2E for “Parties and Board Only” to preserve confidentiality.
`
`3
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`is filed.” Under 37 C.F.R.§ 42.74, “[t]he parties may agree to settle any issue in a
`
`proceeding …,” and under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial
`
`without rendering a final written decision, where appropriate ….”
`
`TABLE 1 (the “status” column) indicates the stage of trial that each of the
`
`above-listing proceedings is in: (1) pending institution, (2) instituted, (3) institution
`
`denied but rehearing requested, or (4) on remand from the Federal Circuit.
`
`Regardless of the stage of trial, the PTAB can conserve significant resources by
`
`terminating each of the above-listed proceedings:
`
`• For each case pending institution, the Board has not (i) issued a
`
`decision on institution, (ii) conducted trial, or (iii) decided the ultimate
`
`merits of the proceeding.
`
`• For each case currently in trial, the Board has not (i) issued a final
`
`written decision (and thus has not decided the ultimate merits of the
`
`proceeding), and (ii) in most instances, has not conducted an oral
`
`hearing.
`
`• For each case that has received an institution decision but has a
`
`pending rehearing request, the Board has not issued a decision on the
`
`rehearing request.
`
`• For each case on remand, the Board has not issued a decision on
`
`remand.
`
`4
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Strong public policy considerations favor settlement between the parties to
`
`an inter partes review proceeding. See Office Trial Practice Guide, Fed. Reg., Vol.
`
`77, No. 157 at 48768 (Aug. 14, 2012). Indeed, the Board has granted terminations
`
`in cases after oral hearing. See, e.g., Volusion, Inc. v. Versata Software, Inc.,
`
`CBM2013-00017, Judgment, Termination of the Proceeding, Paper 53 (PTAB Jun.
`
`17, 2014); CBM2013-00018, Judgment, Termination of the Proceeding, Paper 52
`
`(PTAB Jun. 17, 2014) (terminating proceeding following oral argument). The
`
`Board has also granted terminations in cases after remand from the Federal Circuit.
`
`See e.g., Respironics, Inc. v. Zoll Med. Corp., IPR2013-00322, Termination of
`
`Proceeding, Paper 54 (PTAB Dec. 29, 2016); Medtronic Inc. v. NuVasive Inc.,
`
`IPR2013-00508, Granting Joint Motion to Terminate after Remand from the Court
`
`of Appeals for the Federal Circuit, Paper 56 (PTAB May 9, 2017); ZTE Corp. v.
`
`IPR Licensing Inc., IPR2014-00525, Decision on Joint Motion to Terminate,
`
`Paper 53 (PTAB May 23, 2017).
`
`No public interest or other factors weigh against termination of the
`
`proceedings listed in TABLE I.
`
`Further, both Congress and federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dep’t of Transp., 794 F.2d 1575, 1577 (Fed.
`
`5
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
`
`(1986). The Federal Circuit places a particularly strong emphasis on settlement.
`
`See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001); see also
`
`Cheyenne River Sioux Tribe v. United States, 806 F.2d 1046, 1050 (Fed. Cir. 1986)
`
`(noting that the law favors settlement to reduce antagonism and hostility between
`
`parties).
`
`Maintaining review after the parties reach a settlement would discourage
`
`future settlements by removing a primary motivation for settlement: eliminating
`
`litigation risk by resolving the parties’ disputes and ending the pending
`
`proceedings between them. For patent owners, litigation risks include the potential
`
`for their patents to be invalidated. If a patent owner knows that a proceeding is
`
`likely to continue regardless of settlement, it can create a strong disincentive for
`
`the patent owner to settle. Further, one of the primary reasons courts endorse
`
`settlement is preservation of judicial resources. Maintaining review after the parties
`
`have settled their disputes would waste, rather than conserve, judicial resources.
`
`In each of the proceedings listed in TABLE I, the parties are concurrently
`
`filing a joint request, pursuant to 37 C.F.R. § 42.74(c), that the Settlement
`
`Agreement be treated as business confidential information and kept separate from
`
`the files of the involved patent. For the foregoing reasons, the parties jointly and
`
`respectfully request that the above-listed proceedings be terminated.
`
`
`
`6
`
`
`
`
`
`Date: December 6, 2017
`
`Date: December 6, 2017
`
`Date: December 6, 2017
`
`Date: December 6, 2017
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`Respectfully submitted,
`
`
`/Michael D. Specht/
`
`
`Michael D. Specht (Reg. No. 54,463)
`Sterne, Kessler, Goldstein & Fox, PLLC
`Attorney for Global Tel*Link Corp.
`
`
`Respectfully submitted,
`
`
`/Michael B. Ray/
`
`
`Michael B. Ray (Reg. No. 33,997)
`Sterne, Kessler, Goldstein & Fox, PLLC
`Attorney for Global Tel*Link Corp.
`
`
`Respectfully submitted,
`
`
`/Erika H. Arner/
`
`
`Erika H. Arner (Reg. No. 57,540)
`Finnegan, Henderson, Farabow,
`Garret & Dunner, LLP
`Attorney for Securus Technologies, Inc.
`
`
`Respectfully submitted,
`
`
`/Justin B. Kimble/
`
`
`Justin B. Kimble (Reg. No. 58,591)
`Bragalone Conroy PC
`Attorney for Securus Technologies, Inc.
`
`
`
`7
`
`
`
`
`
`Omnibus Joint Motion to Terminate
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above-captioned JOINT
`
`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C.
`
`§§ 317 & 327 AND 37 C.F.R. §§ 42.72 & 42.74 was served electronically via e-
`
`mail on December 6, 2017, in its entirety on the following counsel for Securus
`
`Technologies, Inc.:
`
`Justin B. Kimble
`Jeffrey Bragalone
`Daniel Olejko
`Nick Kliewer
`Terry Saad
`Brian Herrmann
`Erika Arner
`Jason Stach
`Darren Jiron
`Michael Young
`Daniel Tucker
`Brandon Bludau
`Benjamin Saidman
`Justin Mullen
`Guang-Yu Zhu
`
`jkimble@bcpc-law.com
`jbragalone@bcpc-law.com
`dolejko@bcpc-law.com
`nkliewer@bcpc-law.com
`tsaad@bcpc-law.com
`bherrmann@bcpc-law.com
`erika.arner@finnegan.com
`Jason.Stach@finnegan.com
`darren.jiron@finnegan.com
`Michael.Young@finnegan.com
`Daniel.Tucker@finnegan.com
`Brandon.Bludau@finnegan.com
`benjamin.saidman@finnegan.com
`Justin.Mullen@finnegan.com
`Guang-Yu.Zhu@finnegan.com
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht (Reg. No. 54,463)
`Attorney for Global Tel*Link Corp.
`
`
`
`
`
`
`
`Date: December 6, 2017
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
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