DALLAS--(BUSINESS WIRE)--Securus Technologies, a leading provider of civil and criminal justice technology solutions for public safety, investigation, corrections and monitoring, announced today that it has filed additional patent invalidation requests (a.k.a. Inter Partes Reviews or IPRs) with the Patent Trial and Appeal Board (PTAB).
A brief description of each patent that Securus has filed to invalidate is as follows:
- Patent No. 6,895,086 - “Monitoring Three (3) Way Calls” – The patent covers particular systems and methods of three-way call detection, but uses an obvious alternative to conventional hook-flash detection methods widely used in the past. The claimed systems and methods monitor a test signal (white noise) that has been inserted into a narrow frequency band of a telephone line and detect changes in the amplitude of the test signal caused by echo cancellers when a third party is added to the line.
- Patent No. 7,826,604 - “Monitoring Three (3) Way Calls”- The patent covers techniques for identifying a calling party at a receiving phone using steganography, involving hiding one set of data or signals within another signal or carrier in such a way that its presence is typically imperceptible to the human ear.
“After a significant amount of legal and patent expert review, we believe both of the GTL patents highlighted above are worthy of the formal process of patent invalidation,” said Richard A. (“Rick”) Smith, Chief Executive Officer and Chairman of the Board of Securus Technologies.
“We believe that a number of patents in our competitor’s portfolio can be invalidated by using the legal notion of ‘prior art,’” indicated Smith.
Prior art, in most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent’s claims of originality. If an invention has been described in the prior art, a patent on that invention is not valid.
Attacking the validity of a patent must present clear and convincing evidence establishing facts that lead to the legal conclusion of invalidity. To establish invalidity under United States patent law, certain factual predicates are required before the legal conclusion of obviousness or non-obviousness can be reached. The underlying factual determinations to be made are:
1) The scope and content of the prior art;
2) The differences between the claimed invention and the prior art;
3) The level of ordinary skill in the art; and
4) Objective evidence of non-obviousness, such as commercial success, long-felt but unsolved need, failure of others, copying, and unexpected results.
“I had previously indicated that we needed $115 million from GTL for a longer term license agreement based on other agreements that we negotiated with competitors including GTL – that is certainly justified in this case. We could reduce that request based on establishing mutual reciprocal patent license agreements,” added Smith. “I love our industry and company, and want to move both Securus and GTL forward without the significant bandwidth and financial resources that are required by continuing our litigation,” Smith said.
“To date, for 2015 through August, 2017, we have spent approximately $18 million in outside legal costs to defend our patent portfolio, to invalidate GTL patents, and to file patent infringement lawsuits against GTL. I estimate GTL has spent at least $25 million doing the same things – so approximately $43 million in total. Projecting that out another five (5) years is at least another $125 million – which could be better directed to building products that benefit inmates, friends/family, corrections, law enforcement, and all of society. Securus does not choose the continued litigation path unless GTL chooses continued litigation. We are quite prepared for either option,” said Smith.
The United States Patent and Trademark Office has put a new “invalidation process” in place that allows litigants in patent infringement cases to attempt to invalidate patents. GTL has used this process to their advantage in having some pieces (claims) of Securus patents invalidated and we have done the same to GTL. Based on recent IPR rulings, we expect the invalidation process to eliminate approximately 50% of Securus and GTL previously approved patents. If that occurs, GTL will likely spend approximately $120 million and Securus will likely spend approximately $60 million in outside legal fees – a foolish use of money on both sides. BUT, GTL will also have the added burden of trying to invalidate an additional 20 to 30 new patents Securus is getting approved each year – or likely approximately $30 million to $45 million per year in additional legal costs to them.
“Invalidating GTL existing patents is part of a process that they initiated approximately three (3) years ago instead of negotiating a license agreement with Securus – a route that every other significant carrier in our sector has taken. We have negotiated 19 license agreements with carriers – 2 of those with GTL,” said Smith. “The carriers that have negotiated license agreements all have received significant value – and I believe they have recognized that. Overall, our patent related metrics are superior to those of GTL so in the long run, we should eventually prevail,” concluded Smith.
ABOUT SECURUS TECHNOLOGIES
Headquartered in Dallas, Texas, and serving more than 3,450 public safety, law enforcement and corrections agencies and over 1,200,000 inmates across North America, Securus Technologies is committed to serve and connect by providing emergency response, incident management, public information, investigation, biometric analysis, communication, information management, inmate self-service, and monitoring products and services in order to make our world a safer place to live. Securus Technologies focuses on connecting what matters®. To learn more about our full suite of civil and criminal justice technology solutions, please visit SecurusTechnologies.com.