Kutak Rock attorneys Jason Jackson and Sara Gillette recently secured the denial of both petitions for Inter Partes Review (“IPR”) filed by Global Tel*Link Corporation (“GTL”) at the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office. The two petitions challenged the validity of U.S. Patent No. 10,291,617 (the “‘617 Patent”) owned by HLFIP Holding, Inc. d/b/a/ Smart Communications IP Holdings (“Smart Communications”), which is related to Smart Communications’ MailGuard Postal Mail Elimination^® system. 

In 2015, Smart Communications changed the corrections space forever through the development and introduction of its MailGuard^® service, a critical new offering that stops the infiltration of drugs and other contraband into correctional facilities through inmate postal mail. Smart Communications’ patented MailGuard^® service increases inmate and jail staff safety and reduces a facility’s mail-handling costs.  Smart Communications’ MailGuard^® system is the subject of numerous pending patent applications.

On June 22, 2021 the PTAB exercised its discretion to deny institution of the first of two GTL IPR petitions—IPR2021-00445—as an unnecessary parallel petition challenging the ‘617 Patent.  One month later, on July 22, 2021, the PTAB exercised its discretion to deny institution of GTL’s second IPR petition challenging the ‘617 Patent—IPR2021-00444—under Apple v. Fintiv, Inc.

“We’re thrilled by the denial of institution in these proceedings,” remarked Smart Communications’ CEO Jon Logan. “Kutak Rock’s determined efforts convinced the PTAB to dismiss these cases. We are thankful that the PTAB declined to reward GTL for waiting until the last minute to file its petitions and correctly noted that GTL was an unnamed, but de facto, defendant in the related Pennsylvania district court litigation. We will continue our enforcement efforts in litigation and will aggressively police the infringement of our groundbreaking and disruptive patented technology.”

“Our team is pleased to have achieved these denials at the PTAB for Smart Communications,” said Kutak Rock partner Jason Jackson.

Jason Jackson is the founder and head of the firm’s Post-Grant Proceedings Group, which handles cases before the PTAB. He is counsel in all areas of intellectual property including litigation, prosecution, and licensing.

Sara Gillette is a registered patent attorney devoted to protecting the intellectual property interest of individuals and companies. Sara regularly represents clients at the United States Patent and Trademark Office, including specifically the Trademark Trial and Appeals Board and PTAB.