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Prison Phone Rivals Reach Confidential Deal in IP Row

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Law360

By Steven Trader

Law360, New York (December 5, 2017, 4:56 PM EST) -- Securus Technologies and Global Tel*Link have reached a confidential settlement to end their long-running infringement dispute over patents used in prison phone systems, according to a joint motion for dismissal filed Monday in Texas federal court.

The two prison communication system rivals have for years engaged in litigation over their various patents, accusing each other of infringement and alleging that the other’s patents should be invalidated. Each side on Monday agreed to voluntarily dismiss their claims in the latest iteration of the dispute, which started back in 2013, though both sides asked for dismissal without prejudice.

Counsel for both parties on Tuesday did not immediately return requests for comment.

Securus Technologies Inc. sued Global Tel*Link Corp. in May 2013, accusing its rival of infringing four patents related to inmate telecommunication technology. GTL later brought its own counterclaim against Securus seeking a declaration that those patents are invalid. It also asserted counterclaims for infringement of three of its own patents in January.

In July, GTL asked the court to stay the case in light of pending inter partes or covered business method reviews of three Securus patents, noting that two related cases involving patent infringement claims between the two companies are pending and currently stayed in Texas’ Northern District.

The court denied that motion in September, right around the time that both Securus and GTL filed a joint motion asking the court to dismiss without prejudice all claims related to two of the seven patents relevant to the case.

U.S. District Judge Ed Kinkeade in late September agreed to dismiss all infringement claims Securus had brought against GTL related to U.S. Patent Number 8,180,028, and all counterclaims GTL had lodged against Securus regarding U.S. Patent Number 8,515,031, leaving three of Securus’ patents and two of GTL’s patents remaining in the case.

Securus is represented by G. Michael Gruber, Anthony J. Magee and Robert D. Katz of Gruber Elrod Johansen Hail Shank LLP, and Bruce S. Sostek, Richard L. Wynne Jr., Adrienne E. Dominguez, Justin S. Cohen, Austin Teng and Matthew W. Cornelia of Thompson & Knight LLP.

GTL is represented by Linda R. Stahl and E. Leon Carter of Carter Scholer PLLC, Katherine Cooper, Kenneth Fetterman, Minsuk Han, Nicholas Hunter and Evan T. Leo of Kellogg Hansen Todd Figel & Frederick PLLC, and John C. Rozendaal, Michael E. Joffre and Uma N. Everett of Sterne Kessler Goldstein & Fox PLLC.

The case is Securus Technologies Inc. v. Global Tel*Link Corp., case number 3:16-cv-01338, in the U.S. District Court for the Northern District of Texas.

--Additional reporting by Kelly Knaub, Kevin Penton and Matthew Guarnaccia. Editing by Alanna Weissman.

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