` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 1 of 66 PageID 641
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`DALLAS DIVISION
`
`
`
`
`
`SECURUS TECHNOLOGIES, INC,
`
`
`
` Plaintiff,
`
`v.
`
`GLOBAL TEL*LINK CORPORATION
` Defendant.
`
`
`No. 3:16-cv-01338-K
`
`(JURY DEMANDED)
`
`
`
`
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`Defendant Global Tel*Link Corporation (“GTL”) hereby submits its amended answer to
`
`
`
`the First Amended Complaint for Patent Infringement brought by Securus Technologies, Inc.
`
`(“Securus”). Additionally, GTL asserts counterclaims for declaratory judgment of invalidity of
`
`U.S. Patent Nos. 7,529,357 (“the ’357 patent”); 8,340,260 (“the ’260 patent”); 7,916,845 (“the
`
`’845 patent”); and 8,180,028 (“the ’028 patent”) (collectively, “the Securus Patents”) and
`
`unenforceability of the ’357 and ’260 patents. GTL also asserts additional counterclaims for
`
`infringement of U.S. Patent Nos. 9,509,856 (“the ’856 patent”); 8,515,031 (“the ’031 patent”);
`
`and 9,521,250 (“the ’250 patent”). With respect to the allegations made in the First Amended
`
`Complaint, GTL states as follows:
`
`
`
`1.
`
`
`
`
`
`
`
`
`
` I.
`PARTIES
`
`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 1 of the First Amended Complaint.
`
`2.
`
`GTL admits that it has been served with process and appeared in this lawsuit.
`
`GTL denies the remaining allegations in paragraph 2 of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`GTL 1031
`IPR of U.S. Patent No. 8,340,260
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 2 of 66 PageID 642
`
`II.
`JURISDICTION AND VENUE
`
`3.
`
`GTL admits that this action purports to be based on the patent laws of the United
`
`States, 35 U.S.C. § 101 et seq., and that this Court has original subject matter jurisdiction over
`
`actions for patent infringement under 28 U.S.C. §§ 1331 and 1338(a). GTL denies that this
`
`Court has exclusive subject matter jurisdiction over such actions.
`
`4.
`
`GTL admits that it maintains a place of business in the Northern District of Texas.
`
`GTL further admits that it provides inmate telephone products and services to the Keller
`
`Regional Detention Facility in Keller, Texas. Securus’s statement regarding personal
`
`jurisdiction in paragraph 4 of the First Amended Complaint is a legal conclusion to which no
`
`response is required. To the extent a response is required, GTL admits that it is subject to the
`
`personal jurisdiction of this Court for purposes of this action only. GTL denies the remaining
`
`allegations in paragraph 4 of the First Amended Complaint.
`
`5.
`
`Securus’s statement regarding venue in paragraph 5 of the First Amended
`
`Complaint is a legal conclusion to which no response is required. To the extent a response is
`
`required, GTL admits that venue is proper in this District for purposes of this action only.
`
`III.
`ASSERTED PATENTS
`
`6.
`
`GTL admits that the ’357 patent bears the title “Inmate Management and Call
`
`Processing Systems and Methods”; that the ’357 patent lists an issuance date of May 5, 2009;
`
`and that what appears to be a copy of the ’357 patent was attached to the First Amended
`
`Complaint as Exhibit A. GTL denies that the ’357 patent was duly and legally issued after a full
`
`and fair examination. GTL denies the remaining allegations in paragraph 6.
`
`7.
`
`Admitted.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 2
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 3 of 66 PageID 643
`
`8.
`
`GTL admits that the ’260 patent bears the title “Inmate Management and Call
`
`Processing Systems and Methods”; that the ’260 patent lists an issuance date of December 25,
`
`2012; and that what appears to be a copy of the ’260 patent was attached to the First Amended
`
`Complaint as Exhibit B. GTL denies that the ’260 patent was duly and legally issued after a full
`
`and fair examination. GTL denies the remaining allegations in paragraph 8.
`
`9.
`
`10.
`
`Admitted.
`
`GTL admits that the ’845 patent bears the title “Unauthorized Call Activity
`
`Detection and Prevention Systems and Methods for a Voice over Internet Protocol
`
`Environment”; that the ’845 patent lists an issuance date of March 29, 2011; and that what
`
`appears to be a copy of the ’845 patent was attached to the First Amended Complaint as Exhibit
`
`C. GTL denies that the ’845 patent was duly and legally issued after a full and fair examination.
`
`GTL denies the remaining allegations in paragraph 10.
`
`11.
`
`GTL admits that the ’028 patent bears the title “System and Method for Called
`
`Party Controlled Message Delivery”; that the ’028 patent lists an issuance date of May 15, 2012;
`
`and that what appears to be a copy of the ’028 patent was attached to the First Amended
`
`Complaint as Exhibit D. GTL denies that the ’028 patent was duly and legally issued after a full
`
`and fair examination. GTL denies the remaining allegations in paragraph 11.
`
`IV.
`SECURUS’S BUSINESS
`
`12.
`
`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 12 of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 3
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 4 of 66 PageID 644
`
`V.
`ACCUSED INSTRUMENTALITIES
`
`13.
`
`GTL admits that it sells or offers to sell certain specialized products and services
`
`for correctional institutions in competition with Securus and that contracts for such products and
`
`services are generally awarded through a competitive bidding process. GTL denies the
`
`remaining allegations in paragraph 13 of the First Amended Complaint.
`
`14.
`
`Denied. GTL lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations in paragraph 14 of the First Amended Complaint.
`
`VI.
`CAUSES OF ACTION
`
`Count One – Infringement of the ’357 Patent
`
`15.
`
`In response to paragraph 15 of the First Amended Complaint, GTL incorporates
`
`
`
`by reference paragraphs 1 through 14 of this Answer as if fully set forth herein.
`
`16.
`
`17.
`
`18.
`
`Denied.
`
`Denied.
`
`GTL admits that the quoted language is recited in Claims 1 and 2 of the ’357
`
`patent. GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 18 of the First Amended Complaint.
`
`19.
`
`Denied, except that GTL admits that it provides inmate telephone services to
`
`multiple facilities within the Nebraska Department of Correctional Services, including the
`
`Nebraska State Penitentiary and the Correctional Center for Women. GTL lacks knowledge or
`
`information sufficient to form a belief as to the truth of the remaining allegations in paragraph 19
`
`of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 4
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 5 of 66 PageID 645
`
`20.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 20 of the First Amended Complaint.
`
`21.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 21 of the First Amended Complaint.
`
`22.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 22 of the First Amended Complaint.
`
`23.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 23 of the First Amended Complaint.
`
`24.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 24 of the First Amended Complaint.
`
`25.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 5
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 6 of 66 PageID 646
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`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 25 of the First Amended Complaint.
`
`26.
`
`GTL admits that it filed a petition for inter partes review of the ’357 patent with
`
`the Patent Trial and Appeal Board on May 27, 2014. GTL denies the remaining allegations in
`
`paragraph 26 of the First Amended Complaint.
`
`27.
`
`Denied.
`
`Count Two – Infringement of the ’260 Patent
`
`28.
`
`In response to paragraph 28 of the First Amended Complaint, GTL incorporates
`
`by reference paragraphs 1 through 14 of this Answer as if fully set forth herein.
`
`29.
`
`30.
`
`31.
`
`Denied.
`
`Denied.
`
`GTL admits that the quoted language is recited in Claims 1 and 2 of the ’260
`
`patent. GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 31 of the First Amended Complaint.
`
`32.
`
`Denied, except that GTL admits that it provides inmate telephone services to
`
`multiple facilities within the Nebraska Department of Correctional Services, including the
`
`Nebraska State Penitentiary and the Correctional Center for Women. GTL lacks knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in paragraph 32 of the
`
`First Amended Complaint.
`
`33.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 33 of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 6
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 7 of 66 PageID 647
`
`34.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 34 of the First Amended Complaint.
`
`35.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 35 of the First Amended Complaint.
`
`36.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 36 of the First Amended Complaint.
`
`37.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 37 of the First Amended Complaint.
`
`38.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 38 of the First Amended Complaint.
`
`39.
`
`GTL admits that it filed a petition for inter partes review of the ’260 patent with
`
`the Patent Trial and Appeal Board on May 27, 2014. GTL denies the remaining allegations in
`
`paragraph 39 of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 7
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 8 of 66 PageID 648
`
`40.
`
`Denied.
`
`Count Three – Infringement of ’845 Patent
`
`41.
`
`In response to paragraph 41 of the First Amended Complaint, GTL incorporates
`
`by reference paragraphs 1 through 14 of this Answer as if fully set forth herein.
`
`42.
`
`43.
`
`44.
`
`Denied.
`
`Denied.
`
`GTL admits that the quoted language is recited in Claims 30 and 31 of the ’845
`
`patent. GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 44 of the First Amended Complaint.
`
`45.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 45 of the First Amended Complaint.
`
`46.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 46 of the First Amended Complaint.
`
`47.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 47 of the First Amended Complaint.
`
`48.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 8
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 9 of 66 PageID 649
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 48 of the First Amended Complaint.
`
`49.
`
`GTL admits that it has filed petitions for inter partes review of certain Securus
`
`patents, including the ’357 patent and the ’260 patent. GTL further admits that Securus and GTL
`
`have been engaged in litigation related to patent infringement for several years. GTL denies the
`
`remaining allegations in paragraph 49.
`
`50.
`
`Denied.
`
`Count Four – Infringement of ’028 Patent
`
`51.
`
`In response to paragraph 51 of the First Amended Complaint, GTL incorporates
`
`by reference paragraphs 1 through 14 of this Answer as if fully set forth herein.
`
`52.
`
`53.
`
`54.
`
`Denied.
`
`Denied.
`
`GTL admits that the quoted language is recited in Claims 1, 6 and 7 of the ’028
`
`patent. GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in paragraph 54 of the First Amended Complaint.
`
`55.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 55 of the First Amended Complaint.
`
`56.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 56 of the First Amended Complaint.
`
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`PAGE 9
`
`

`

`
` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 10 of 66 PageID 650
`
`57.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 57 of the First Amended Complaint.
`
`58.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 58 of the First Amended Complaint.
`
`59.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 59 of the First Amended Complaint.
`
`60.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 60 of the First Amended Complaint.
`
`61.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 61 of the First Amended Complaint.
`
`62.
`
`Denied. GTL does not understand which instrumentalities are accused of
`
`infringement and does not understand the term “ITS” as used in the First Amended Complaint;
`
`PAGE 10
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`

`

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` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 11 of 66 PageID 651
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`therefore, GTL lacks knowledge or information sufficient to form a belief as to the truth of the
`
`allegations in paragraph 62 of the First Amended Complaint.
`
`63.
`
`GTL admits that it has filed petitions for inter partes review of certain Securus
`
`patents, including the ’357 patent and the ’260 patent. GTL further admits that Securus and GTL
`
`have been engaged in litigation related to patent infringement for several years. GTL denies the
`
`remaining allegations in paragraph 63.
`
`64.
`
`Denied.
`
`VII.
`REMEDIES
`
`65.
`
`Securus’s statements regarding its entitlement to damages are not allegations to
`
`which a response is required. To the extent a response is required, GTL denies Securus’s claim
`
`that Securus is entitled to a damages award. GTL denies the remaining allegations in paragraph
`
`65 of the First Amended Complaint.
`
`66.
`
`Securus’s request for a permanent injunction in paragraph 66 of the First
`
`Amended Complaint is not an allegation to which a response is required. To the extent a
`
`response is required, GTL denies that Securus is entitled to any of the requested relief. GTL
`
`denies the remaining allegations in paragraph 66 of the First Amended Complaint.
`
`67.
`
`Paragraph 67 of the First Amended Complaint does not contain allegations to
`
`which a response is required. To the extent a response is required, GTL denies the allegations in
`
`paragraph 67 of the First Amended Complaint.
`
`VIII.
`JURY DEMAND
`
`68.
`
`Paragraph 68 of the First Amended Complaint does not contain allegations to
`
`which a response is required. GTL demands a jury trial of all issues so triable.
`
`PAGE 11
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`

`

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` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 12 of 66 PageID 652
`
`IX.
`PRAYER FOR RELIEF
`
`Securus’s prayer for relief does not contain allegations to which a response is required.
`
`To the extent a response is required, GTL denies that Securus is entitled to any of the requested
`
`relief. Each averment and/or allegation contained in Securus’s First Amended Complaint that is
`
`not specifically admitted herein is hereby denied.
`
`X.
`AFFIRMATIVE DEFENSES
`
`AFFIRMATIVE DEFENSE I
`(Non-infringement)
`
`GTL has not infringed, directly or indirectly, any valid claim of any of the
`
`
`69.
`
`Securus Patents.
`
`AFFIRMATIVE DEFENSE II
`(Invalidity)
`
`Each of the Securus Patents is invalid for failure to satisfy the conditions of
`
`
`70.
`
`patentability under the patent laws of the United States, including one or more of 35 U.S.C.
`
`§§ 101, 102, 103, and 112.
`
`AFFIRMATIVE DEFENSE III
`(Unenforceability of ’357 and ’260 Patents Due To Inequitable Conduct)
`
`Both the ’357 and ’260 patents are unenforceable by reason of inequitable
`
`71.
`
`conduct because Securus and its counsel of record in the inter partes reviews (IPRs) of the ’357
`
`patent, IPR2014-00825 (the ’357 IPR), and in the IPR of the ’260 patent, IPR2014-00824 (the
`
`’260 IPR)—all of whom had a duty of candor to the United States Patent and Trademark Office
`
`(USPTO) throughout the IPRs—knowingly misrepresented the date of invention of claims 2, 5,
`
`8, 9, 11, 12, and 14-18 of the ’357 patent and claims 2, 5, 8, 9, 11, 12, and 14-18 of the ’260
`
`PAGE 12
`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FIRST AMENDED COMPLAINT AND COUNTERCLAIMS
`
`

`

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` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 13 of 66 PageID 653
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`patent. That misrepresentation resulted in the disqualification of the Spadaro reference as
`
`invalidating prior art and in a finding that these claims are not unpatentable.
`
`72.
`
`On May 27, 2014, GTL filed an IPR petition challenging the patentability of
`
`claims 1-20 of the ’357 patent and an IPR petition challenging the patentability of claims 1-20 of
`
`the ’260 patent. As the patent owner, Securus was a party to both the ’357 and ’260 IPRs.
`
`Securus also identified itself as the sole real party-in-interest for the proceedings. (IPR2014-
`
`00825, Paper 5, Mandatory Notice of Securus; IPR2014-00824, Mandatory Notice of Securus,
`
`Paper 5.) As a party to the IPRs, Securus had a duty of candor and good faith to the USPTO
`
`during the course of the proceeding. 37 C.F.R. § 42.11.
`
`73.
`
`Justin B. Kimble of Bragalone Conroy P.C. entered an appearance as lead counsel
`
`on behalf of Securus in both IPRs. (IPR2014-00825, Paper 5, Mandatory Notice of Securus at 2;
`
`IPR2014-00824, Paper 5, Mandatory Notice of Securus at 2.) In the filed Mandatory Notices,
`
`Mr. Kimble represented that he was a registered practitioner at the USPTO, having the
`
`Registration Number 58,591.
`
`74.
`
`On May 13, 2015, Securus entered Terry A. Saad and Nicholas C. Kliewer as
`
`back-up counsel in both IPRs. (IPR2014-00825, Paper 20, Updated Mandatory Notice of
`
`Securus; IPR2014-00824, Paper 20, Updated Mandatory Notice of Securus.) In the filed
`
`Mandatory Notices, Mr. Kimble represented that Mr. Saad was a registered practitioner having
`
`the Registration Number 62,492 and that Mr. Kliewer was a registered practitioner having the
`
`Registration Number 72,480. (IPR2014-00825, Paper 20, Updated Mandatory Notice of
`
`Securus; IPR2014-00824, Paper 20, Updated Mandatory Notice of Securus.)
`
`75.
`
`As an individual involved in the IPRs, Mr. Kimble had a duty of candor and good
`
`faith to the USPTO during the course of the proceedings. 37 C.F.R. § 42.11.
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`PAGE 13
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` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 14 of 66 PageID 654
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`76.
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`As an individual involved in the IPRs, Mr. Saad had a duty of candor and good
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`faith to the USPTO during the course of the proceedings. 37 C.F.R. § 42.11.
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`77.
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`As an individual involved in the IPRs, Mr. Kliewar had a duty of candor and good
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`faith to the USPTO during the course of the proceedings. 37 C.F.R. § 42.11.
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`78.
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`To gain admittance to practice, the USPTO requires an individual to execute an
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`oath swearing or affirming that he will observe the laws and rules of the USPTO. On
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`information and belief, each of Mr. Kimble, Mr. Saad, and Mr. Kliewar executed such an oath
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`when admitted to practice before the UPSTO.
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`79.
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`On June 27, 2014, Securus submitted a motion pursuant to 37 C.F.R. § 42.10(c) in
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`both IPRs for Jeffrey R. Bragalone of Bragalone Conroy P.C. to appear pro hac vice on its behalf
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`before the PTAB. Mr. Bragalone concurrently submitted declarations in support of the pro hac
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`vice motions stating that he “has read and will comply with the Office Patent Trial Practice
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`Guide and the Board’s Rules for Practice for Trials set forth in part 42 of 37 C.F.R.” and that he
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`“will be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et
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`seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a).” (IPR2014-00825, Paper 6, Pro
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`Hac Vice Motion to Admit Attorney Jeffrey R. Bragalone Pursuant to 37 C.F.R. § 42.10(c) at 4;
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`see also IPR2014-00825, Exhibit 2001: Declaration of Jeffrey R. Bragalone at ¶¶ 6, 7; IPR2014-
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`00824, Paper 6, Pro Hac Vice Motion to Admit Attorney Jeffrey R. Bragalone Pursuant to 37
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`C.F.R. § 42.10(c) at 4; see also IPR2014-00824, Exhibit 2001: Declaration of Jeffrey R.
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`Bragalone at ¶¶ 6, 7.)
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`80.
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`As an individual involved in the IPR, Mr. Bragalone had a duty of candor and
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`good faith to the USPTO during the course of the proceedings. 37 C.F.R. § 42.11.
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` Case 3:16-cv-01338-K Document 42 Filed 01/09/17 Page 15 of 66 PageID 655
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`81. Mr. Kimble, Mr. Bragalone, Mr. Saad, and Mr. Kliewar were obligated, and
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`acknowledged their obligations, to observe all the rules of the USPTO including 37 C.F.R. §§
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`42.11 and 11.18. Rule 42.11 states that “[b]y presenting to the Board a petition response, written
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`motion, or other paper—whether by signing, filing, submitting, or later advocating it—an
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`attorney, registered practitioner, or unrepresented party attests to compliance with the
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`certification requirements under § 11.18(b)(2) of this chapter.” The certification requirement of
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`37 C.F.R. § 11.18(b)(2) states that “[b]y presenting to the Office or hearing officer in a
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`disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper,
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`the party presenting such paper, whether a practitioner or non-practitioner, is certifying that …
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`(2) To the best of the party’s knowledge, information and belief, formed after an inquiry
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`reasonable under the circumstances … (iii) The allegations and other factual contentions have
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`evidentiary support or, if specifically so identified, are likely to have evidentiary support after a
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`reasonable opportunity for further investigation or discovery; and (iv) The denials of factual
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`contentions are warranted on the evidence or if specifically so identified, are reasonably based on
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`a lack of information or belief.”
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`82.
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`On February 11, 2015, Securus filed a Patent Owner’s Response in the ’357 IPR.
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`(IPR2014-00825, Paper 15, Patent Owner’s Response) and a Patent Owner’s Response in the
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`’260 IPR (IPR2014-00824, Paper 15, Patent Owner’s Response). In these filings, Securus
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`represented that, “at the time of the filing of the application that became the ’357 Patent, U.S.
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`Patent Application Serial No. 11/777,168 (‘the ’357 Application), the Spadaro Application, U.S.
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`Patent Application Serial No. 09/905,014, was owned by the same person as the ’357
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`Application.” (IPR2014-00825, Paper 15, Patent Owner’s Response at 9; IPR2014-00824,
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`Paper 15, Patent Owner’s Response at 9-10.)
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`83.
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`In the Patent Owner’s Response in both IPRs, Securus further represented that the
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`inventions claimed in claims 2, 5, 8, 9, 11, 12, and 14-18 of the ’357 patent and claims 2, 5, 8, 9,
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`11, 12, and 14-18 of the ’260 patent “are based on material not constructively reduced to practice
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`until the filing of the ’357 Application” and therefore that “the ‘time the invention was made’ for
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`each of these claims is July 12, 2007.” (IPR2014-00825, Paper 15, Patent Owner’s Response at
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`9; IPR2014-00824, Paper 15, Patent Owner’s Response at 9.) Based on this representation,
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`Securus asserted that the Spadaro reference was “ineligible for use as prior art under the
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`exception provided in Pre-AIA 35 U.S.C. § 103(c)(1).” (IPR2014-00825, Paper 15, Patent
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`Owner’s Response at 9; IPR2014-00824, Paper 15, Patent Owner’s Response at 9-10.) The
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`Patent Owner’s Response in both IPRs was signed by Mr. Kimble on behalf of Securus.
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`(IPR2014-00825, Paper 15, Patent Owner’s Response at 50; IPR2014-00824, Paper 15, Patent
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`Owner’s Response at 46.)
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`84.
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`At oral argument, Mr. Bragalone later re-asserted the factual representations made
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`in the Patent Owner’s Response and the allegation that the Spadaro reference was ineligible as an
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`invalidating prior art reference under Pre-AIA 35 U.S.C. § 103(c)(1). (IPR2014-00825, Paper
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`35, Record of Oral Hearing at pp. 24-36; IPR2014-00824, Paper 35, Record of Oral Hearing at
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`pp. 24-36.) Mr. Saad acted as backup counsel during oral argument and supported Mr.
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`Bragalone at counsel table. (IPR2014-00825, Paper 35, Record of Oral Hearing at p. 24;
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`IPR2014-00824, Paper 35, Record of Oral Hearing at 24.)
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`85.
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`Securus’s and its counsels’ representation that July 12, 2007, was the time of
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`invention of claims 2, 5, 8, 9, 11, 12, and 14-18 of the ’357 patent and claims 2, 5, 8, 9, 11, 12,
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`and 14-18 of the ’260 patent was false. Contrary to these misrepresentations, as described in
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`detail below, the time of invention of each of these claims was at least as early as November 24,
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`DEFENDANT GLOBAL TEL*LINK CORPORATION’S
`AMENDED ANSWER TO FI