Global Tel*Link Corporationv.Securus Technologies, Inc.

Patent Trial and Appeal Board

Feb 6, 2015

11479990 (P.T.A.B. Feb. 6, 2015)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: February 6, 2015
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 CBM2014-00166
Patent 7,860,222 B2
____________

Before KEVIN F. TURNER and JAMES B. ARPIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

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I. INTRODUCTION
A. Background
Global Tel*Link Corporation (“Petitioner”) filed a Petition (Paper 1;
“Pet.”) requesting institution of a covered business method patent review of
claims 1–36 of U.S. Patent No. 7,860,222 B2 (Ex. 1001; “the ’222 patent”)
pursuant to 35 U.S.C. §§ 321–29. Securus Technologies, Inc. (“Patent
Owner”) filed a Preliminary Response (Paper 8; “Prelim. Resp.”). We have
jurisdiction under 35 U.S.C. § 324.
Upon consideration of the Petition, as well as supplemental briefing
provided by each party (Papers 12 and 14), we determine Petitioner has not
demonstrated sufficiently that it satisfies the standing requirements to file its
Petition under 37 C.F.R. § 42.304(a) and, therefore, deny institution of a
covered business method patent review.
B. Related Matters
In the Petition (Pet. 2) and in its first updated Mandatory Notice
(Paper 6, 2), Petitioner stated that the ’222 patent “was previously involved
in the following proceeding, which was dismissed with prejudice: Securus
Technologies, Inc. v. Global Link Corporation, 3:13-cv-03009 (N.D. Tex.)”
(emphases added). In its own Mandatory Notice, Patent Owner stated,
however, that “Patent Owner is also asserting the ’222 patent against
Petitioner in the matter, Securus Technologies Inc. v. Global Tel*Link Corp.,
Case No. 3:13-cv-3009 (N.D. Tex., filed Aug. 2, 2013).” Paper 5, 2
(emphasis added). Consequently, the Mandatory Notices evidenced a
disagreement regarding the status of the related U.S. district court case.
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In view of this disagreement, we contacted the parties via e-mail on
December 31, 2014, and instructed the party that had not identified correctly
the status of the related case to submit an updated mandatory notice. In
response to our e-mail, Petitioner filed a second updated Mandatory Notice
on January 2, 2015, in which Petitioner stated that
U.S. Patent No. 7,860,222 was previously involved in the
following proceeding: Securus Technologies, Inc. v. Global
Tel*Link Corporation, 3:13-cv-03009 (N.D. Tex.). (See GTL
1006.) That original lawsuit was dismissed with prejudice on
July 10, 2014, with an order granting Defendant’s Motion for
Summary Judgment. Patent Owner subsequently requested
reconsideration or alternatively to alter, amend or clarify the
judgment. On October 23, 2014, the court issued an order
confirming its dismissal of Patent Owner’s claims and denying
Patent Owner’s request for reconsideration but, because the
court’s judgment did not fully dispose of all claims asserted by
the parties, the court vacated its prior judgment. And Patent
Owner’s Motion to Alter, Amend, or Clarify Judgment was
denied as moot. Thus, Patent Owner’s claim of infringement of
the ’222 patent in Civil Action 3:13-cv-03009 stands dismissed,
but the judgment dismissing the claims with prejudice has been
vacated by the Court. . . .
. . . .
On December 1, 2014, Patent Owner filed another
lawsuit alleging infringement of the ’222 patent by Petitioner.
The new lawsuit is styled Securus Technologies, Inc. v. Global
Link Corporation, 3:14-cv-04233 (N.D. Tex.).

Paper 10, 1–2 (emphases added).
1

1
In view of Petitioner’s second updated Mandatory Notice, neither party has
complied with its obligations under 37 C.F.R. § 42.8(a).
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II. ANALYSIS
A. Standing
Standing is a threshold issue. A petition for covered business method
patent review must set forth the petitioner’s grounds for standing. In
particular, “[t]he petitioner must demonstrate that the patent for which
review is sought is a covered business method patent, and that the petitioner
meets the eligibility requirements of § 42.302.” 37 C.F.R. § 42.304(a)
(emphasis added). Under 37 C.F.R. § 42.302(a), a person may not file a
petition for covered business method patent review, “unless the petitioner,
the petitioner’s real party-in-interest, or a privy of the petitioner has been
sued for infringement of the patent or has been charged with infringement
under that patent” (emphasis added). Rule 42.302(a) further explains that
“charged with infringement” means that “a real and substantial controversy
regarding infringement of a covered business method patent exists such that
the petitioner would have standing to bring a declaratory judgment action in
Federal court” (emphases added).
As the U.S. Patent and Trademark Office explained in comments to
the final rules governing covered business method patent review,
To establish standing, a petitioner, at a minimum, would be
required to certify with explanation that the patent is a covered
business method patent and that the petitioner meets the
eligibility requirements of § 42.302. This requirement is to
ensure that a party has standing to file the covered business
method patent review and would help prevent spuriously
instituted reviews. Facially improper standing is a basis for
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denying the petition without proceeding to the merits of the
decision.
Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
Proceedings, and Transitional Program for Covered Business Method
Patents, 77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012) (Response to
Comment 102; emphases added). Consequently, the petition must show that
the petitioner meets the requirements of 37 C.F.R. § 42.302, and such “[a]
showing can only be made through sufficient proof.” Id. (Response to
Comment 106); see Paper 14, 4. For the reasons discussed below, we
conclude that the Petition, as filed on August 4, 2014, failed to show
sufficient proof to support the assertion of standing.
B. Content of the Petition
In its Petition, Petitioner makes only the most limited statements
regarding standing. Petitioner simply asserts:
III. Grounds for Standing (37 C.F.R. § 42.104(a))
2

The undersigned and GTL certify that the ’222 patent is
eligible for covered business method (“CBM”) review. GTL
further certifies that it is not barred or estopped from requesting
CBM review on the grounds identified herein.

Pet. 3. Petitioner’s description of the status of the related litigation (id. at 2)
and the complaint filed in that litigation (Ex. 1006) are the only proof
provided in support of this assertion.

2
Petitioner incorrectly cites to the rule governing standing for inter partes
review (37 C.F.R. § 42.104(a)), rather than to that governing standing for
covered business method patent review (37 C.F.R. § 42.304(a)). The
standing requirements for these two types of proceeding differ significantly.
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C. The Prongs of the CBM Standing Requirement
In its Brief, Petitioner asserts that it has standing to file its Petition
under either or both prongs of the covered business method patent review
standing requirement. Paper 12, 3–4. Assuming arguendo that Petitioner’s
general assertion of standing in the Petition is an assertion of standing under
either or both prongs of the covered business method patent review standing
requirement, we determine that the proof provided in the Petition is
insufficient to support either prong.
1. Sued for Infringement
According to Petitioner, on August 4, 2014, the suit asserting
Petitioner’s infringement of the ’222 patent, Securus Technologies, Inc. v.
Global Link Corporation, 3:13-cv-03009 (N.D. Tex.), “was dismissed with
prejudice.” Pet. 2. In its Brief, Petitioner explains that it had been granted
Summary Judgment, asserting its status as a licensee of the ’222 patent as a
defense against Patent Owner’s claims of infringement. Paper 12, 2.
Further, on August 1, 2014, Patent Owner had “requested reconsideration of
the [court’s] order and sought clarification that it did not prevent Securus
from suing GTL again upon expiration of the relevant license,” on
September 17, 2014. Id. (emphasis added; citing Ex. 1025
3
); see also Paper

3
Patent Owner alleges that Exhibits 1022, 1025, and 1026 were filed under a
protective order in the related litigation and that Petitioner’s submission of
these exhibits as publicly available documents violates that protective order.
Paper 14, 3 n.4. We have made these documents available only to the Board
and to the parties, sua sponte, so that the parties may have the opportunity to
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14, 3 (“as GTL concedes, Securus had no ability to file an infringement
action prior to September 17, 2014, because the Court found that GTL was
licensed;” emphasis changed). Petitioner now argues that, as long as Patent
Owner’s request for reconsideration was pending, Petitioner still was sued
for infringement by Patent Owner. Paper 12, 3 n.1 (quoting Crown
Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1311
(Fed. Cir. 2009)).
The court’s grant of Petitioner’s Motion for Summary Judgment was a
decision on the merits entered prior to the filing date of the Petition and
dismissing Patent Owner’s infringement claims, with prejudice.
4
See, e.g.,
Pet. 2; Paper 6, 2; Ex. 1021. The Petition states unconditionally that the
previous suit was dismissed with prejudice on the date that the Petition was
filed. Pet. 2. Therefore, we determine that Petitioner’s assertion of standing
based on its “[having] been sued for infringement” at the time of the filing of
the Petition is not sufficiently supported by proof in the Petition.
2. Charged with Infringement
In its Brief, Petitioner argues that Patent Owner’s complaint (Ex.
1006) alleging that Petitioner infringed the ’222 patent evidences that, on the
date the Petition was filed, Petitioner was “charged with infringement under
that patent.” Paper 12, 5. Further, Petitioner argues that Patent Owner’s

resolve this issue. Absent further action by the parties, however, these
exhibits again will become available to the public. See 37 C.F.R. § 42.56.
4
See Rivera v. PNS Stores, Inc., 647 F.3d. 188, 195 (5th Cir. 2011) (“[A]
motion for summary judgment ‘is necessarily granted with prejudice.’”), cert
denied, 132 S. Ct. 1741 (2012).
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request for reconsideration evidences Patent Owner’s continuing intent to
charge Petitioner with infringement. Id. at 6. Finally, Petitioner argues that
Patent Owner’s filing of a second suit alleging Petitioner’s infringement of
the ’222 patent on December 1, 2014, further evidences Patent Owner’s
continuing intent to charge Petitioner with infringement under that patent.
Id.
Patent Owner responds that, in the Petition, Petitioner makes no
showing that it had standing to file the Petition because Petitioner was
charged with infringement of the patent on August 4, 2014. Paper 14, 3.
The Petition does not mention that Patent Owner had requested
reconsideration of the dismissal of the previous suit. See id. at 3–4.
Moreover, the parties do not dispute that Patent Owner’s request for
reconsideration, which had not been granted on August 4, 2014, sought to
preserve Patent Owner’s ability to sue in the future. Id. at 2–3; Paper 12, 2.
Because the court dismissed the previous suit, with prejudice,
Petitioner no longer was or could have been “charged with infringement”
absent the vacating of the court’s dismissal with prejudice. Paper 12, 2–3;
Paper 14, 3; see Ex. 1021. Although the court ultimately vacated its
judgment dismissing the suit with prejudice on October 23, 2014 (Ex. 1022),
this later action changes neither our evaluation of Petitioner’s assertion of
standing nor the sufficiency of the proof shown in the Petition. See Benitec
Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1348–49 (Fed. Cir. 2007)
(a party seeking to bring a declaratory judgment action must meet the
Supreme Court’s immediacy and reality requirements). Moreover, the later
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filing of the second suit is insufficient proof of standing nunc pro tunc on
August 4, 2014. Therefore, we determine that Petitioner’s assertion of
standing based on its “[having] been charged with infringement of the
patent” at the time of the filing of the Petition is not sufficiently supported
by proof in the Petition.

III. CONCLUSION
Petitioner has not made a showing of sufficient proof demonstrating
that it satisfies the standing requirement under 37 C.F.R. § 42.304(a) for
filing a petition for covered business method patent review.

VI. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied; and
FURTHER ORDERED that no covered business method patent
review is instituted.

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PETITIONER:

Michael Specht
Michael Ray
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
Mspecht-PTAB@skgf.com
Mray-PTAB@skgf.com

PATENT OWNER:

Justin B. Kimble
BRAGALONE CONROY P.C.
jkimble@bcpc-law.com