Trials@uspto.gov Paper 7
`571-272-7822 Entered: November 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01435
`Patent 7,529,357 B1
`____________
`
`
`
`
`
`
`
`
`571-272-7822 Entered: November 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01435
`Patent 7,529,357 B1
`____________
`
`
`
`
`
`
`
`
`
`IPR2017-01435
`Patent 7,529,357 B1
`
`
`On May 15, 2017, Global Tel*Link Corporation (“Petitioner”) filed a
`petition (Paper 2, “Pet.” or “the Second Petition”) seeking inter partes
`review of certain claims of U.S. Patent No. 7,529,357 B1 (Ex. 1001, “the
`’357 patent”). The Petition challenges dependent claims 2, 5, 8, 9, 11, 12,
`and 14–18, which are the only remaining claims in the ’357 patent. Pet. 1.
`This is the second petition filed against those claims by Petitioner. Id.
`Previously, on May 27, 2014, Petitioner filed a first petition against
`those and other claims in the ’357 patent. Global Tel*Link Corp. v. Securus
`Techs., Inc., Case IPR2014-00825 Paper 1 (“the First Petition”). On
`December 8, 2014, the Board instituted an inter partes review on some, but
`not all, of the grounds asserted in the First Petition. See Case IPR2014-
`00825 Paper 9 (“Decision to Institute” or “Inst. Dec.”), 35–36. On
`December 2, 2015, after conducting the inter partes review, the Board found
`that Petitioner had demonstrated by a preponderance of evidence that some
`of the challenged claims—independent claims 1 and 10 and dependent
`claims 3, 4, 6, 7, 13, 19, and 20—were unpatentable. Case IPR2014-00825
`Paper 36 (“Final Written Decision” or “Final Dec.”), 67. In its Final Written
`Decision, however, the Board determined that Petitioner had not
`demonstrated that challenged claims 2, 5, 8, 9, 11, 12, and 14–18 were
`unpatentable because one of the asserted references was not prior art to those
`claims. Final Dec. 22 (“We conclude, therefore, that Petitioner has not met
`its burden of persuasion to demonstrate by a preponderance of the evidence
`that (i) claims 2, 8, 9, 11, 14, 16, and 17 would have been obvious over
`Spadaro and Hodge, (ii) claims 5 and 12 would have been obvious over
`Spadaro, Hodge, and Boykin, or (iii) claims 15 and 18 would have been
`obvious over Spadaro, Hodge, and Nguyen.”); see id. at 9–22.
`
`2
`
`
`
`IPR2017-01435
`Patent 7,529,357 B1
`
`
`In its Second Petition, Petitioner asserts three grounds in challenging
`the remaining claims—claims 2, 5, 8, 9, 11, 12, and 14–18—of the ’357
`patent. Pet. 4. Those grounds also were asserted in the First Petition but
`were not included in the inter partes review. See, e.g., Inst. Dec. 35; Pet. 4.
`Petitioner contends that it is not estopped under 35 U.S.C. § 315(e)(1)
`because (i) “the grounds raised in this petition were not, and could not have
`reasonably been raised during an earlier inter partes review; and (ii) there
`has been no final written decision on the patentability of these claims.”
`Pet. 6; see Pet. 6–10.
`On September 11, 2017, Patent Owner, Securus Technologies, Inc.,
`filed a Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”).
`Patent Owner contends that Petitioner is estopped under 35 U.S.C.
`§ 315(e)(1) and that the grounds in the Second Petition “are essentially the
`same as the grounds that were raised” in the previous inter partes review.
`Prelim. Resp. 3, 18–28. Patent Owner also urges us to exercise our
`discretion and presents analysis of “discretionary factors” set forth in Blue
`Coat Systems, Inc., v. Finjan, Inc., IPR2016-01441 and General Plastic
`Indus. Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357. Prelim. Resp.
`28–33 (citing Blue Coat Systems, Inc., v. Finjan, Inc., IPR2016-01441, slip
`op. at 8–9 (PTAB Jan. 23, 2017) (Paper 14); General Plastic Indus. Co. v.
`Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB September 6, 2017)
`(Paper 19) (Section II.B.4.i designated as precedential1) (describing various
`factors to consider when determining whether to exercise discretion to deny
`
`
`1 Section II.B.4.i General Plastic was designated precedential on
`October 18, 2017 and previously had been designated informative on
`September 18, 2017.
`
`3
`
`
`
`IPR2017-01435
`Patent 7,529,357 B1
`
`institution under Section 314(a) of a later-filed petition addressing the same
`claims); see also Prelim. Resp. 3 (urging the Board to exercise its discretion
`under 35 U.S.C. § 325(d))).
`Recently, on October 26, 2017, the Board designated as “informative”
`three decisions addressing the Board exercising its discretion under 35
`U.S.C. § 325(d): Unified Patents, Inc. v. Berman, Case IPR2016-01571
`(PTAB Dec. 14, 2016) (Paper 10); Hospira, Inc. v. Genentech, Inc., Case
`IPR2017-00739 (PTAB July 27, 2017) (Paper 16); and Cultec, Inc. v.
`Stormtech LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7).
`Petitioner has not yet contacted the Board to request an opportunity to
`reply to Patent Owner’s Preliminary Response or address the discretionary
`factors in light of the recent General Plastic decision addressing § 314 and
`the three informative decisions addressing § 325(d). See 37 C.F.R. § 42.108
`(“A petitioner may seek leave to file a reply to the preliminary response in
`accordance with §§42.23 and 42.24(c). Any such request must make a
`showing of good cause.”).
`Under the circumstances of this case—particularly the fact that the
`panel has not yet determined whether to institute an inter partes review, we
`determine that Petitioner should be afforded an opportunity to respond to
`Patent Owner’s arguments set forth in Sections VI and VIII of Patent
`Owner’s Preliminary Response. Petitioner specifically should address
`whether the panel should exercise discretion under 35 U.S.C. § 314(a) or
`§ 325(d), including discussing the factors set forth in General Plastic and the
`three informative decisions addressing § 325(d) identified previously. See
`Prelim. Resp. Section VI (arguing Petitioner is estopped), Section VIII
`(urging the Board to exercise its discretion).
`
`4
`
`
`
`IPR2017-01435
`Patent 7,529,357 B1
`
`
`Accordingly, Petitioner is authorized to file a reply no later than
`November 14, 2017 and limited to seven (7) pages that only (i) responds to
`Patent Owner’s arguments in Sections VI and VIII of Patent Owner’s
`Preliminary Response and (ii) addresses exercising discretion under 35
`U.S.C. § 314(a) or § 325(d).
`We do not authorize Patent Owner to file a sur-reply.
`
`FOR PETITIONER:
`Lori Gordon
`Michael Ray
`Ryan Richardson
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-ptab@skgf.com
`mray-ptab@skgf.com
`rrichardson-ptab@skgf.com
`FOR PATENT OWNER:
`Justin Kimble
`Nicholas Kliewer
`BRAGALONE CONROY PC
`jkimble-ipr@bcpc-law.com
`nkliewer@bcpc-law.com
`
`5
`
`
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