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Kutak Rock Secures Final Win at the Patent Trial and Appeal Board for Smart Communications

News | January 21, 2022

Kutak Rock attorneys Jason Jackson and Sara Gillette previously secured the denial of two 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.

The ‘617 Patent is currently involved in infringement litigation in Pennsylvania and Tennessee.  GTL is defending the Pennsylvania case.  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. (“Fintiv”). The Board correctly denied institution under Fintiv in view of the status of the Tennessee case.

GTL subsequently sought rehearing as well as an administrative appeal to the PTAB’s Precedential Opinion Panel. In support of its requests, GTL filed a new and heavily redacted email purporting to be a Sotera-type stipulation from the Tennessee defendants regarding the prior art. GTL also hired the former law firm of the district court judge in the Pennsylvania case, thereby triggering a judicial recusal and derailing an imminent Markman hearing. On November 11, 2021 the PTAB declined GTL’s request for administrative appeal. On January 14, 2022 the PTAB affirmed their original denial under Fintiv.

“We’re thrilled the PTAB saw through GTL’s blatant efforts to game the system and manipulate the courts,” remarked Smart Communications’ CEO Jon Logan. “We appreciate Kutak Rock’s expertise and diligent efforts to convince the PTAB to affirm their original decision. We will continue our enforcement efforts and aggressively police the infringement of our groundbreaking and disruptive technology.”

“We are pleased the PTAB applied Fintiv to deny institution based on parallel litigation where the petitioner and its real parties are not named defendants. To my knowledge, this is the first Fintiv denial under these circumstances and the decision should be helpful to patent owners facing review at the PTAB” said Kutak Rock partner Jason Jackson.

A copy of the Decision Denying Petitioner’s Request for Rehearing can be found here.

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.