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United States Court of Appeals Finds In Favor of Securus - Global Tel*Link (GTL) Patent Invalidated

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Press Release Jun 23, 2017

United States Court of Appeals Finds In Favor of Securus - Global Tel*Link (GTL) Patent Invalidated

Patent Trial and Appeal Board Ruling Stands – GTL patent 7,551,732 Significantly Invalidated, 93% of Claims Unpatentable

Securus Offers Killer Settlement Proposal and This Is Rebuffed by GTL

DALLAS, TX June 23, 2017/Business Wire/ -- Securus Technologies, a leading provider of civil and criminal justice technology solutions for public safety, investigation, corrections and monitoring, announced today that the United States Court of Appeals affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision that all but 2 claims of GTL’s U.S. Patent No. 7,551,732 are invalid and unpatentable due to Securus’ prior art. The Court also ordered that the costs be taxed against GTL and in favor of Securus.

U. S. Patent No. 7,551,732 – 25 of 27 Claims Invalidated

Abstract – The present subject matter is directed to an apparatus and methodology for recording, at a central data center, telephone conversations originating from remote locations. The present subject matter has particular utility to the penal (corrections) environment in that it discloses a methodology for recording and storing voice and related data at a central data center remote from either the origination or destination locations of a telephone call placed by an inmate in a prison or other facility. The disclosed technology permits storage of both voice and call related data at a remote facility in such a manner that the data is searchably accessible by authorized personnel at other remote locations by way of network or Internet connection to the central data center.

The patent originally had 27 claims; Securus was able to get 25 of them instituted at the PTAB, and the PTAB cancelled all but two of the claims (claim 9 and claim 10). So now that GTL has lost the appeal, only those two are remaining and all others have been found unpatentable. Securus clearly does not infringe these two (2) remaining claims.

“We were pleased that the United States Court of Appeals viewed these key elements/claims as being invalid and they again ruled in Securus’ and the PTAB’s favor,” said Richard A. (“Rick”) Smith, Chairman and Chief Executive Officer of Securus Technologies.

“Ultimately, we enjoy significant advantages over GTL in Issued Patents, Pending Patents, and our Patent Win-Loss Record – and we have license agreements with most significant carriers in our sector including two (2) previous license agreements that GTL had with Securus over a ten (10) year period,” said Smith. “This advantage is material and will last for the foreseeable future given our acquisitions and advanced development efforts. The “Patent Related Metrics” that I referred to are provided below in this Press Release.”

Patent Related Metrics

  Securus GTL Advantage Ratio
Issued Patents 167 67 Securus 2.5X
Pending Patents 104 271 Securus 3.9X
Issued + Pending Patents 271 94 Securus 2.9X
Patent Win-Loss Record 19 – 0 0 – 2 Securus NA

1Published filings; non-published filings are not available at this time.

“GTL has previously indicated to me on two (2) occasions that they recognize that Securus’ technology bundle is very good – so they use continued patent litigation efforts to ‘confuse the market.’ That technique clearly has not worked for them as we continue to take much more business from them than we lose to them. That ratio is approximately 5.4:1.0, so a great win/loss ratio for me,” said Smith.

“I have attempted multiple times to extend the olive branch to GTL and settle our patent disputes, so we both can spend our time helping inmates communicate with friends/family members, and help law enforcement and corrections officials make all of us safer. I have asked the executives of GTL to do the right thing – for their investors, inmates, friends/family, and corrections/law enforcement,” said Smith.

“I have fielded questions regarding the ultimate resolution here – what will I be willing to settle for to end our patent wars. My response is to look at the settlement proposal that I provided – it is a killer deal and I cannot do better than that,” said Smith.

“I don’t believe that our patent invalidation and patent infringement litigation is about patents at all. That is what my competition has told me. It’s really about a competitor having a larger product set, a larger patent portfolio, our high level of customer service – it’s about the fundamental attributes of a business,” concluded Smith.

ABOUT SECURUS TECHNOLOGIES
Headquartered in Dallas, Texas, and serving more than 3,450 public safety, law enforcement and corrections agencies and over 1,200,000 inmates across North America, Securus Technologies is committed to serve and connect by providing emergency response, incident management, public information, investigation, biometric analysis, communication, information management, inmate self-service, and monitoring products and services in order to make our world a safer place to live. Securus Technologies focuses on connecting what matters®. To learn more about our full suite of civil and criminal justice technology solutions, please visit SecurusTechnologies.com.

06/23/2017 United States Court of Appeals Finds In Favor of Securus - Global Tel*Link (GTL) Patent Invalidated

Patent Trial and Appeal Board Ruling Stands – GTL patent 7,551,732 Significantly Invalidated, 93% of Claims Unpatentable

Securus Offers Killer Settlement Proposal and This Is Rebuffed by GTL

DALLAS, TX June 23, 2017/Business Wire/ -- Securus Technologies, a leading provider of civil and criminal justice technology solutions for public safety, investigation, corrections and monitoring, announced today that the United States Court of Appeals affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision that all but 2 claims of GTL’s U.S. Patent No. 7,551,732 are invalid and unpatentable due to Securus’ prior art. The Court also ordered that the costs be taxed against GTL and in favor of Securus.

U. S. Patent No. 7,551,732 – 25 of 27 Claims Invalidated

Abstract – The present subject matter is directed to an apparatus and methodology for recording, at a central data center, telephone conversations originating from remote locations. The present subject matter has particular utility to the penal (corrections) environment in that it discloses a methodology for recording and storing voice and related data at a central data center remote from either the origination or destination locations of a telephone call placed by an inmate in a prison or other facility. The disclosed technology permits storage of both voice and call related data at a remote facility in such a manner that the data is searchably accessible by authorized personnel at other remote locations by way of network or Internet connection to the central data center.

The patent originally had 27 claims; Securus was able to get 25 of them instituted at the PTAB, and the PTAB cancelled all but two of the claims (claim 9 and claim 10). So now that GTL has lost the appeal, only those two are remaining and all others have been found unpatentable. Securus clearly does not infringe these two (2) remaining claims.

“We were pleased that the United States Court of Appeals viewed these key elements/claims as being invalid and they again ruled in Securus’ and the PTAB’s favor,” said Richard A. (“Rick”) Smith, Chairman and Chief Executive Officer of Securus Technologies.

“Ultimately, we enjoy significant advantages over GTL in Issued Patents, Pending Patents, and our Patent Win-Loss Record – and we have license agreements with most significant carriers in our sector including two (2) previous license agreements that GTL had with Securus over a ten (10) year period,” said Smith. “This advantage is material and will last for the foreseeable future given our acquisitions and advanced development efforts. The “Patent Related Metrics” that I referred to are provided below in this Press Release.”

Patent Related Metrics

  Securus GTL Advantage Ratio
Issued Patents 167 67 Securus 2.5X
Pending Patents 104 271 Securus 3.9X
Issued + Pending Patents 271 94 Securus 2.9X
Patent Win-Loss Record 19 – 0 0 – 2 Securus NA

1Published filings; non-published filings are not available at this time.

“GTL has previously indicated to me on two (2) occasions that they recognize that Securus’ technology bundle is very good – so they use continued patent litigation efforts to ‘confuse the market.’ That technique clearly has not worked for them as we continue to take much more business from them than we lose to them. That ratio is approximately 5.4:1.0, so a great win/loss ratio for me,” said Smith.

“I have attempted multiple times to extend the olive branch to GTL and settle our patent disputes, so we both can spend our time helping inmates communicate with friends/family members, and help law enforcement and corrections officials make all of us safer. I have asked the executives of GTL to do the right thing – for their investors, inmates, friends/family, and corrections/law enforcement,” said Smith.

“I have fielded questions regarding the ultimate resolution here – what will I be willing to settle for to end our patent wars. My response is to look at the settlement proposal that I provided – it is a killer deal and I cannot do better than that,” said Smith.

“I don’t believe that our patent invalidation and patent infringement litigation is about patents at all. That is what my competition has told me. It’s really about a competitor having a larger product set, a larger patent portfolio, our high level of customer service – it’s about the fundamental attributes of a business,” concluded Smith.

ABOUT SECURUS TECHNOLOGIES
Headquartered in Dallas, Texas, and serving more than 3,450 public safety, law enforcement and corrections agencies and over 1,200,000 inmates across North America, Securus Technologies is committed to serve and connect by providing emergency response, incident management, public information, investigation, biometric analysis, communication, information management, inmate self-service, and monitoring products and services in order to make our world a safer place to live. Securus Technologies focuses on connecting what matters®. To learn more about our full suite of civil and criminal justice technology solutions, please visit SecurusTechnologies.com.