Fed. Circ. Backs PTAB Ruling Upholding Prison Phone Patent

By Kelcee Griffis

Law360, New York (July 14, 2017, 5:07 PM EDT) — The Federal Circuit on Friday affirmed a Patent Trial and Appeal Board decision that upheld all of the challenged claims in a patent covering inmate calling technology, preserving a wholesale validation that is rare among PTAB decisions.

The panel decision keeps intact a win for Global Tel*Link Corp. and clears the way for it to proceed with infringement litigation against competitor Securus Technologies Inc.

“We affirm the judgment of the board, concluding that Securus did not meet its burden of proving that the challenged claims are unpatentable as obvious by a preponderance of the evidence,” the court wrote in the 12-page nonprecedential opinion.

In April 2016, a PTAB panel found that Securus Technologies Inc. didn’t go far enough to show how one of ordinary skill in the art would have combined prior art references — in this case, two patents — to render Global Tel*Link’s patent covering biometric and voice validation of inmate calls invalid as obvious.

The PTAB ruling was an uncommon one in which all of the challenged claims survived. According to statistics from the U.S. Patent and Trademark Office, the PTAB had issued 1,539 final decisions as of April, and of those decisions, just over 250 managed to have all the challenged claims survive.

Global Tel*Link initially filed suit in a Virginia federal court in October 2013, alleging Securus’ Secure Call Platform infringed the patent at issue and other patents covering telecommunication systems and services for correctional facilities.

Global Tel*Link has said the patent at issue covers “a fundamental tool for providing and maintaining the security of inmate calling services.” The case was later transferred to the U.S. District Court for the Northern District of Texas. Securus then challenged the validity of the patents at the PTAB.

But now, the appeals court says, the PTAB rightly decided Securus did not “articulate an adequate rationale” to prove the Global Tel*Link patent at issue was the obvious combination of other, preexisting patents.

“We are pleased with the Federal Circuit court decision as it helps clear the way to restarting our patent case against Securus … to enforce this and other GTL patents,” said Global Tel*Link’s CEO Brian D. Oliver in a statement.

Counsel for the parties could not be reached for comment Friday.

Judges Pauline Newman, Raymond T. Chen and Kara F. Stoll sat on the Federal Circuit panel.

The patent-in-suit is U.S. Patent No. 7,853,243.

Securus is represented by Daniel Fletcher Olejko, Jeffrey Bragalone, Justin Kimble and Terry Saad of Bragalone Conroy PC.

Global Tel*Link Corp. is represented by Byron Leroy Pickard, Jon Wright, Michael Bradley Ray, Lauren C. Schleh and Michael D. Specht of Sterne Kessler Goldstein & Fox PLLC.

The case is Securus Technologies, Inc. v. Global Tel*Link Corporation, case number 16-2573, at the Court of Appeals for the Federal Circuit.

–Additional reporting by Erin Coe. Editing by Jack Karp.