Prior Art On Verizon Patents

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."

Comments

Fun way?

[E IS mC(Square)]

"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."

doing Vonage's job

[TheSHAD0W]

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?

All Vonage has to do...

[rs79]

(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.

Re:All Vonage has to do...

[Anonymous Coward]

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.

Re:So, the deal with patents and prior art ...

[Ungrounded Lightning]

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.

Re:The excuse...

[Anonymous Coward]

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.