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Prior Art On Verizon Patents

Posted by kdawson on from the taking-down-an-industry-on-a-sham dept.

greenbird sends in word that Techdirt has up information from Daniel Berninger documenting prior art in the Verizon patents being used to destroy Vonage. "...due to the fun way the patent system works, introducing that kind of prior art to the USPTO for it to review the validity of Verizon's VoIP patents will take quite a bit of time and effort — much longer than Vonage has to fight Verizon in court." From Berninger's note: "In particular, the claims in both patents were anticipated by open standards assembled by the VoIP Forum (H.323) in 1996 and published in January 1997 with the participation of members from Cisco Systems, Microsoft, IBM, Nortel, Intel, Motorola, Lucent, and VocalTec Communications, among others... The Eric Voit patent applications reflect, in particular, contributions made by VocalTec Communication to the VoIP Forum during 1996 and formally published at the same time as a separate document."

12 of 170 comments (clear)

  1. Fun way? by E+IS+mC(Square) · · Score: 4, Interesting

    "due to the fun way the patent system works, introducing that kind of prior art to the USPTO for it to review the validity of Verizon's VoIP patents will take quite a bit of time and effort."

    Oh okay. And I thought one of the basic ideas behind creating a dedicated body to examine and grant patents was to create a way to examine all important aspects. Clearly, prior art is not one of them - even if "the concepts in those patents were clearly discussed and published by others prior to the patent being filed. Berninger says that the ideas were discussed at the VoIP forum meeting in 1996 and published in January of 1997. The patents in question were filed after that."

  2. i use vonage by Anonymous Coward · · Score: 2, Interesting

    ...really hope they don't end up going down. I know it's hard to believe that i'm a slashdotter (albeit an AC) and i use the phone for a good hour, long distance, every night. their unlimited plan is just great for me (and the rest of the family)

  3. doing Vonage's job by TheSHAD0W · · Score: 4, Interesting

    So why hasn't Vonage been able to dig up this information? They certainly had enough motivation. Is it too late to do any good?

  4. Re:So, the deal with patents and prior art ... by Anonymous Coward · · Score: 2, Interesting

    "A published discussion, even if broad and comprehensive, about voice over IP, is not necessarily likely to count against the issuance of a VoIP patent later on."

    So help me out here because I'm confused. I work in a niche research area which involves concepts of considerable commercial value. Our small startup company, which has extremely limited funds and cannot afford to take out patents, protect ourselves by publishing key algorithms and concepts. None of the board, CTO, engineers or managers believe in or support the concept of software patents. They are a nuicance to us and potential threat. Legal advice to us has indicated that by publication we are establishing a significant and defensible body of prior art. In other words we publish as an insurance policy against being patent snookered. We do not see widespread publication as a threat or impedence because we are leaders in a very narrow field and have most of the expertise to stay well ahead of the curve.

    Are you saying that by publishing rigorous and detailed scientific literature about research activities we are exposing ourselves to potential crooks from the United States who can legally take out patents on our published work and deny us a market in the US?

  5. All Vonage has to do... by rs79 · · Score: 4, Interesting

    (IANAL)

    I assume all Vonage has to do is say to the judge "We have found prior art. We'd like the injuctions extended until we can invalidate the Verizon patent. We can show you the prior art and we have an extremely good chance of winnnig".

    What reasonable judge wouldn't go along with this line of thinking?

    I just bought a router that has two phone ports for Vonage and I've been waiting to turn them on. As an aside I'm sorta freaked I can buy a router for $100 with a $50 rebate. I'm used to writing very big checks for routers.

    But I guess that was in a different century.

    --
    Need Mercedes parts ?
    1. Re:All Vonage has to do... by Anonymous Coward · · Score: 4, Interesting

      No, you're completely correct. The parent article is incorrect. Patent litigation doesn't have to WAIT for the USPTO to evaluate prior art and then render the patent invalid; the major POINT of most patent litigation is to prove that there is applicable prior art (for the person attacking the validity of the patent).

      The USPTO only issues the patent initially -- it's exactly like Congress passing a law. If Congress passes a law, and that law is unjust or unconstitutional, when someone challenges the law in court, it can be rendered null. That's called checks and balances. You don't have to wait for Congress to say "oh you're right, that's a bad law." That's the whole point of the court.

      Similarly, if there exists prior art or the invention covered by a patent does not satisfy non-obviousness conditions during the course of patent litigation, the court can immediately find the patent without merit with respect to the case at hand. That doesn't mean the patent is invalid in all other cases (only the USPTO can actually retract the granting of a patent), but it DOES mean that you'll have a hell of a time enforcing that patent against any similar institutions.

      However, most people have no clue how patent litigation really works anyway. The patent holder has a (moderately) narrowly-defined patent, and attempts to broaden the interpretation of that definition as much as possible. For example, I might argue that my definition of a "telephone" also covers a "wireless telephone". Meanwhile, the opposing party attempts to show how that narrowish definition is in conflict with prior art, or how their product or the source of the complaint doesn't actually conflict with the narrowish definition. For example, I might say that my phone is not a "telephone" or a "wireless telephone", but an "uncorded interpersonal communication device". Obviously the definitions are more technical and nuanced than that, but you get the point.

      If this prior art DOES in fact apply to the case at hand, you can be sure that Vonage's lawyers have dug it up. Sad truth is that recent patent rulings favor patent holders anyway, establishing a precedent that encourages holders of frivolous or over-broad patents to sue and win. So big companies are just buying up patents and shooting off the litigation. No big surprises there, eh.

  6. Re:The excuse... by shofutex · · Score: 3, Interesting

    I met a couple of people who worked at the USPTO. They claimed they work on a quota system and all they had to do was a few quick Google searches and then grant the patent. As long as they met their quota they seemed to be able to be bums the rest of the week...

    Granted, these particular folks would probably be bums at any job...

  7. Re:So, the deal with patents and prior art ... by Ungrounded+Lightning · · Score: 4, Interesting

    But if the "prior art" is not exactly prior art, but is a different way to implement the same functionality, then can't Vonage use this alternative approach to replace the Verizon IP that they are infringing?

    Unfortunately, Verizon patented the very fundamental underpinnings of doing VoIP at all. The patent claims are so broad they don't just cover particular ways of:
      - Using a server to advertise a route from a VoIP client to another user's POTS phone.
      - Using a server to advertise a route from a VoIP client to another user's VoIP client and a backup route to his POTS phone.
      - Using a server to advertise a route to a wireless handset with a VoIP client or POTS connection.
    They patented DOING IT AT ALL.

    The prior art is not another way of doing something equivalent. It is a particular way of "doing it". So it infringes on the patent claims.

    It also invalidates them. But getting that into "judicial notice" before Vonage dies is another can of worms.

    --
    Bantam Dominique roosters crow a four-note song. Once you've heard it as "Happy BIRTHday" you can't NOT hear it that way
  8. Too Late by fozzmeister · · Score: 2, Interesting

    OK Bogus patents bring down a company, surely though if those patents are overturned due to prior art after going bust, those previous share holders can take Verizon to court for massive damages?

  9. Re:It's more basic then this by syukton · · Score: 3, Interesting

    It seems like the best way to solve this problem is a middle step. If only verizon can translate an IP to a telephone number, Vonage should translate IPs to VonageNumbers which are then translated to IP numbers. Vonage can easily claim both steps as their own. Since the correlation is indirect, I think it would sidestep that claim of the patent. Another middle step would be converting the phone communications into generic encrypted data packets and adopting encrypted data transfer services as another branch of business. Then they aren't transmitting phone communications over TCP/IP, they're transmitting generic encrypted data packets over TCP/IP. It may be more involved than all this, but it seems like a viable-enough workaround.

    --
    Reinvent the wheel only at either a lower cost, greater effectiveness, or your own personal enrichment and satisfaction.
  10. Re:The excuse... by Anonymous Coward · · Score: 1, Interesting

    Not exactly true. Many junior examiners are forced to reject (via prior art) every claim that comes their way. This depends on their boss, but I can vouch that this *is* the current practice being taught in the Patent Training Academy (newbie examiners).

    Instead of having b.s. allowances, you'll see b.s. rejections (ridiculous prior art gets cited).

  11. Re:The excuse... by Anonymous Coward · · Score: 4, Interesting
    They claimed they work on a quota system and all they had to do was a few quick Google searches and then grant the patent. As long as they met their quota they seemed to be able to be bums the rest of the week...

    That's not been my experience. Our company has had a very difficult time getting any claims by the patent examiners. The prior art which has been cited against us thus far (we're on our 7th patent or so) have not been particularly relevant, and we've easily overcome them. On the flip side, the examiners seem to reject before they accept, and that's a process that takes years to deal with, and is, of course, very expensive -- especially for a smaller company like us which is actively developing the products underlying our patents.