Paper No.
`Filed: September 15, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GLOBAL TEL*LINK CORP.,
`Petitioner
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner
`______________________
`
`IPR2015-01223
`Patent No. 7,961,860
`______________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EXHIBITS 2006 and 2011
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`Filed: September 15, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GLOBAL TEL*LINK CORP.,
`Petitioner
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner
`______________________
`
`IPR2015-01223
`Patent No. 7,961,860
`______________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO EXCLUDE EXHIBITS 2006 and 2011
`
`
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`Case IPR2015-01223
`Patent No. 7,961,860
`Securus’s evidence is not barred by Rule 408 because it is not offered for
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`either of the two enumerated purposes to which the rule applies: to prove a claim or
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`to impeach. And “[t]he rule specifically permits such evidence . . . for any other
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`purpose.” In re MSTG, 675 F.3d 1337, 1344 (Fed. Cir. 2012) (emphasis added).
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`Securus did not—and could not have—offered this evidence to impeach, as GTL
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`asserts, because there was no testimony in the record before Securus offered its
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`evidence, and “[i]t is axiomatic that there must be testimony in the trial at hand with
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`which the prior statement is inconsistent before [impeachment can occur].” U.S. v.
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`Colombo, 869 F.2d 149, 153 (2d Cir. 1989) (emphases added). Instead, Securus
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`offered this evidence for a purpose not prohibited by Rule 408—to demonstrate that
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`GTL held itself out as being controlled by American Securities. Because Securus’s
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`evidence is not barred by Rule 408, the Board should not exclude it.
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`I.
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`FRE 408 bars admissibility of settlement evidence only if offered for one
`of two enumerated purposes—to prove a claim or to impeach
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`GTL turns Rule 408 on its head by suggesting that Rule 408 broadly prohibits
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`evidence except when offered for “a narrow set of purposes,” and then arguing here
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`that “no exception to Rule 408 applies.” Paper No. 14 at 3, 5. That is the opposite of
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`how Rule 408 works. Rule 408 excludes evidence only if offered for one of two
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`specific purposes: “Evidence . . . is not admissible . . . either [1] to prove or disprove
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`the validity or amount of a disputed claim or [2] to impeach by a prior inconsistent
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`statement or a contradiction.” FRE 408(a). Rule 408 does not exclude evidence
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`1
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`Case IPR2015-01223
`Patent No. 7,961,860
`offered for any other purpose: “The court may admit this evidence for another
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`purpose, such as [examples].” FRE 408(b) (emphasis added). The examples listed in
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`Rule 408(b) are not exclusive, as evidenced by the prefatory use of “such as.”
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`Indeed, as the Federal Circuit has explained, “[R]ule [408] specifically permits such
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`evidence, however, for any other purpose, including, but not limited to, [the
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`exceptions listed in FRE 408(b)].” In re MSTG, 675 F.3d at 1344 (emphases added).
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`According to Rule 408’s commentary, evidence is excluded only if offered for
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`one of the two enumerated purposes. The commentary explains that the 2006 version
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`of the rule “provided that evidence was not excluded if offered for a purpose not
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`explicitly prohibited by the Rule,” and that while the wording was changed in 2011,
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`“[t]here is no intent to change,” how the rule operates. FRE 408, 2011 Advisory
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`Committee Note. “It remains the case that if offered for an impermissible purpose, it
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`must be excluded, and if offered for a purpose not barred by the Rule, its
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`admissibility remains governed by the general principles of Rules 402, 403, 801,
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`etc.” Id.
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`II.
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`Securus did not offer evidence for either purpose excluded by Rule 408
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`It is undisputed that Securus’s evidence was not offered to prove the validity
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`or amount of a claim. And, Securus could not have offered its evidence “to impeach
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`by a prior inconsistent statement or a contradiction” because there was no testimony
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`in this proceeding when Securus offered its evidence.
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`2
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`Case IPR2015-01223
`Patent No. 7,961,860
`As a first principle, one cannot “impeach by a prior inconsistent statement or a
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`contradiction”1 without testimony. “It is axiomatic that there must be testimony in
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`the trial at hand with which the prior statement is inconsistent before [impeachment
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`can occur].” Colombo, 869 F.2d at 153. The 2006 Advisory Committee Note to Rule
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`408 confirms that testimony is required because it discusses “impeach[ing] the
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`testimony of a party.” The leading evidence treatise makes this requirement clear:
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`“[T]he most widely used impeachment technique is proof that the witness made a
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`pretrial statement inconsistent with her trial testimony. . . . The statement need[s to]
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`be . . . inconsistent with the testimony.” McCormick on Evidence § 34. Even GTL’s
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`two “impeachment” cases, Eid and Park, both involve impeaching witness testimony.
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`There was no testimony in this record when Securus sought to introduce its
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`evidence. Testimony can only be submitted in this proceeding in the form of an
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`affidavit, declaration, or deposition. 37 C.F.R. § 42.53(a); Trial Practice Guide, 77
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`Fed. Reg. 48756, 48772 (Aug. 14, 2012). Mr. Oliver’s declaration followed
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`Securus’s declarations, and thus Securus’s declarations could not have been offered
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`to impeach Mr. Oliver’s statements. GTL recognizes this problem and asserts that
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`1 GTL’s motion uses the phrase “impeach or contradict.” This shorthand casts
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`impeachment and contradiction as alternatives for excluding evidence. That is not
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`what the rule says. The rule proscribes “impeach[ment] by a prior inconsistent
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`statement or a contradiction.” Impeachment is required in both instances.
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`3
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`Case IPR2015-01223
`Patent No. 7,961,860
`Securus instead offered the evidence to impeach “GTL’s prior statement that it is the
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`sole RPI.” Paper No. 14 at 4. That statement in GTL’s petition, however, is not
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`testimony. It was not made in the form of an affidavit, declaration, or deposition. In
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`fact, the rules distinguish between “a paper”—like GTL’s petition—and “testimony.”
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`37 C.F.R. § 42.51(b)(1)(i). Nor does the petition qualify as “testimony” under its
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`commonly-accepted definition—“Evidence that a competent witness under oath or
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`affirmation gives at trial or in an affidavit or deposition.” Black’s Law Dictionary
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`1514 (8th ed. 2004). There was no testimony to impeach when Securus filed its
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`declarations, so Rule 408’s impeachment exclusion cannot apply.
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`GTL’s claim that Securus offered its evidence to impeach GTL’s RPI
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`identification fails for yet another reason: GTL’s RPI identification was not based on
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`whether GTL had sole authority to settle, which is the subject of Securus’s evidence.
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`GTL’s counsel admitted as much when, months after filing its petition, it could not
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`say who had the authority to settle the proceeding. “Counsel, does GTL have sole
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`authority to settle these cases? [Counsel:] That is something that we would need to
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`confirm . . . .” Ex. 2001 14:19-15:1.
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`III. Securus’s evidence is offered for a purpose not prohibited by Rule 408
`Securus offered the declarations as proof that GTL held itself out as being
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`controlled by American Securities, in order to demonstrate that its requested
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`additional discovery would likely uncover useful information related to American
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`4
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`Case IPR2015-01223
`Patent No. 7,961,860
`Securities’s control. See Paper No. 11 at 1 (“GTL has conveyed to Securus that
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`American Securities, not GTL, controls disputed intellectual property matters.”); id.
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`at 3 (“GTL’s holding itself out as being controlled by American Securities further
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`supports the conclusion that American Securities has the ability to control these
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`proceedings.”). Thus, neither enumerated purpose of Rule 408 applies here.
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`IV. No agreement of the parties affords protections beyond Rule 408
`With its motion, GTL provides an e-mail purporting to show an agreement
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`between the parties. GTL has failed to show how this e-mail affords any protections
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`beyond those provided for by Rule 408. More importantly, the e-mail is irrelevant, as
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`it clearly is directed to a December 2013 meeting between the parties, not to the
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`September 2013 and April 2014 meetings from which Securus’s evidence arose.
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`Compare Exs. 2006, 2011 (declarations discussing Sept. 23, 2013 and Apr. 28, 2014
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`meetings) with Ex. 1013 (e-mail discussing Dec. 16, 2013 meeting).
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`V. Conclusion
`Securus could not have offered evidence for the purpose of impeaching
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`testimony that did not exist. Thus, Rule 408 does not apply, and the Board should not
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`exclude or decline to consider Securus’s evidence.
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`Dated: September 15, 2015
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`
`
`
`
`By: /Erika H. Arner/
`
`Erika H. Arner, Lead Counsel
`Reg. No. 57,540
`
`
`Counsel for Patent Owner, Securus
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`5
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`Case IPR2015-01223
`Patent No. 7,961,860
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Opposition to Petitioner’s Motion to Exclude Exhibits 2006 and 2011
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`was served on September 15, 2015 via email directed to counsel of record for the
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`Petitioner at the following:
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`Michael D. Specht
`mspecht-PTAB@skgf.com
`
`Michael B. Ray
`mray-PTAB@skgf.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Ave. N.W.
`Washington, D.C. 20005
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`Dated: September 15, 2015
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`By: /Lisa C. Hines/
`Lisa C. Hines
`Litigation Clerk
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`6
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