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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."

23 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."

    1. Re:Fun way? by schon · · Score: 5, Funny

      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" Come on, while VoIP concepts may have been discussed, it's quite clear that nobody would have thought of implementing them on the internet.
  2. 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?

    1. Re:doing Vonage's job by Lanboy · · Score: 3, Insightful

      Vonage had 30 minutes to reply in court, to a non-technical jury. Go rocket docket. Goodnight irene.

  3. So, the deal with patents and prior art ... by joe_n_bloe · · Score: 5, Insightful

    The thing that people don't get about prior art and patents is that prior art is narrowly interpreted. 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. In fact, the prior art may establish that the subject is actually of commercial interest.

    Saying that a patent describes "just another way" to do some obvious thing, and is therefore trivial, is missing the point. It's exactly that "just another way" that a patent is intended to protect. Patents covering radical ideas are the exception, not the norm. If you have some obvious thing you need done, but you can't find "just another way" to do it that someone else hasn't already patented, and you don't have a license covering one of those other ways, you are S.O.L.

    1. Re:So, the deal with patents and prior art ... by Aardpig · · Score: 3, Insightful

      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?

      --
      Tubal-Cain smokes the white owl.
    2. Re:So, the deal with patents and prior art ... by Elladan · · Score: 4, Insightful

      Basically, your question is:

      "Is the US patent system absolutely bat-shit psychopathic lunatic insane?"

      Yes.

      "Could this be used to harm or destroy our business in unpredictable and random ways?"

      Yes.

      Any more questions?

    3. 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
  4. no by Lanboy · · Score: 3, Insightful

    The submitters of these patents are midlevel tech specialists. They get a 1000 dollar bonus per patent, they have no tools or desire to look for prior art.

    1. Re:no by |Cozmo| · · Score: 4, Informative

      Not only that but at least where I work we're not allowed to look for prior art. The lawyers won't let us due to liability for double damages should it be discovered in the future that we're infringing on someone else's patent and it was possible that we knew about it.

  5. The excuse... by EmbeddedJanitor · · Score: 5, Insightful
    We're all human and even patent examiners make mistakes!

    Well I don't buy it! I think the USPTO is broken in a few ways.

    First off, the examiners are likely working to some sort of quota: Gotta process 10 claims a week or whatever. They can spend a reasonable amount of time investigating the application, or they can process it quickly. If they find some prior art, they send it back to the applicant who will send in a more supporting paperwork resulting in more work for the examiner to clear the patent application. The shortest route to clearing the patent is to just grant it. Come Friday and you're a few behind for the week, well they get slipped through double-quick.

    Secondly Uncle Sam makes a bundle out of the USPTO. Each examiner can crank out a few grand's worth of work a day. Make it harder to get patents and less people will apply (and the processing costs would increase). It is easier to just make patents as easy to get as one of those credit card college degrees.

    Thirdly, the USPTO is not held accountable to any quality measures. USPTO does not wear the costs of bad patents. Heads don't roll if patents get overturned. The lawyers love it. All the patent applications bring in money. Bad patents == more work. Nobody is motivated to improve patent quality.

    Basically everything is stacked to delivering poor patents. I have a few patents, more than half of which I think are crap. I recently searched one of my patents and was suprised to see that other patents were granted for the same idea, even though the application quoted my patent. This really sucks. A patent is supposed to be property, but here the USPTO have clearly sold the same property many times over.

    Is there a solution to this all? Perhaps. Firstly, patent quality needs to improve. That can only happen if the USPTO is help accountable. For example, if they grant a patent that is later overturned, then the USPTO could be held accountable for costs and losses incurred.

    --
    Engineering is the art of compromise.
    1. 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...

    2. Re:The excuse... by Nullav · · Score: 5, Funny

      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.
      Well I know where I want to work now.
      --
      I just read Slashdot for the articles.
    3. 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.

  6. software patents... by 3seas · · Score: 4, Insightful

    ... since they are in essence acts of fraud and the patent office is supporting them....

    Consider who you are dealing with.

    The way to win the software patent game is to not play it, don't participate. Let it fall upon itself to flush out the reality of software not being patentable.

    By fighting againts software patents via prior art, you are doing so in a supporting the existance of software patents.

    The real fight is exposing and getting the general population to recognize that due the nature of software it is simply not patentable and any organization supporting software patents are commiting fraud against others.

  7. It's more basic then this by hcmtnbiker · · Score: 5, Informative

    The article links to a wikia article on the subject, which provides a very nice summary of the arguments. My question is how is this stuff even patentable?

    Patent 6,282,574 clearly states that no one except Verizon can legally translate an IP to a telephone number and vice versa. The rest of the patents are basically saying Verizon owns the only right to transmit other various phone communications over TCP/IP.

    WTF? How can someone be awarded a patent for their idea for an application layer protocol that depends on something like TCP/IP to even opperate?

    --
    If i had one dollar for every brain you dont have, i would have $1.
    1. Re:It's more basic then this by Anonymous Coward · · Score: 5, Informative
      Patent #1 - 6,282,574 - Method, server and telecommunications system for name translation on a conditional basis and/or to a telephone number

      Upheld - claim 27 of the '574 patent.
      26. A method comprising:

      receiving a name translation request at a server coupled to a public packet data network;

      translating a name included in the request into a destination telephone number associated with a name included in the request; and

      transmitting a reply containing both the destination telephone number and a packet data network address of a telephone gateway coupled between the public packet data network and a telephone network through the public packet data network to a calling device.

      27. A method as in claim 26, wherein the address is an Internet Protocol address.


      Claim 26 is spurious because the phone companies had been doing network-based address translation over public packet networks for many years. This is how 800 number lookups worked, for example - the 800 number is mapped to an area code+local exchange number suitable for routing over the PSTN. The classic telecommunications packet networks used by the phone companies are different than the TCP/IP data networks we're familiar with - the links are synchronous and connections have to be set up and physically reserved in advance. But they're still packet-based.

      As for Claim 27, that seems to be a good description of the Domain Name Service which existed for decades. Now, Verizon's lawyers may argue that it means something other than that. Tough, it's ambiguous because the terse way it was drafted ("A method as in claim 26, wherein...") can be interpreted in any number of different ways. They shouldn't be allowed to impose the most convenient interpretation for themselves many years after the fact.

    2. 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.
  8. 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.

  9. A patent examiner is GS-5 $38K job to start by tlambert · · Score: 4, Informative

    A patent examiner is GS-5 $38K job to start

    http://usptocareers.gov/jobsearch.asp

    Key requirements (redux):

    - US Citizenship
    - Ability to travel
    - BA or BS from a community college accredited by ABET _or_ 2nd year coursework in 5 of 7 areas: physics, chemistry, architecture, computer science, mathematics, hydrology, or geology
    - Registered as a professional engineer by a state, DC, Guam, or Puerto Rico
    - Pass a written test for "Engineer In Training" or professional registration test
    - 60 semester hours of courses in basic sciences/physics/math/engineering

    So you've got to really want to be a patent examiner, be willing to live with a salary far below what you'd get in private industry with the same paper qualifications.

    And then you get to do the scut work for a couple of years.

    If you want to have your pay grade go up, you need time in grade and even more qualifications.

    So it's pretty much the same deal that entry level teachers get, only you don't get the summer off.

    -- Terry

    1. Re:A patent examiner is GS-5 $38K job to start by backbyter · · Score: 3, Informative

      Actually the link provided will show that the starting levels are:

      Patent Examiner, GS-5/7/9 ($38,435/$47,610/$55,518)
      or
      Patent Examiner, GS-11 ($63,885)

      Rates above are for starting salaries (Step 1 of 10 in each grade with step 10 being $11k-$19K higher than base)

      You're not going to be staying at these beginning levels very long unless you're very slow.

      As you gain proficiency (and pass qualification testing) you're looking at making up to $133,702 (GS-14, Step 10) without being in a supervisory position.

      The above are BASE salaries. Now add in "bonuses" of up to 30% (IIRC) for exceeding your quotas. Miss your quotas and expect "counseling".

    2. Re:A patent examiner is GS-5 $38K job to start by thebdj · · Score: 4, Informative

      A patent examiner is GS-5 $38K job to start Actually, starting examiners are typically taken at GS-7, with a starting pay around $56,000. I should know, I was one before I left that nut house. You would have no way to pull people into the NoVA/Maryland/DC area with $38k, which would be like taking an engineering job in the midwest at about $25k. Trust me, the salaries are relatively comparitive to starting salaries for engineers coming out of college.

      Key requirements (redux):

      - US Citizenship
      - Ability to travel
      - BA or BS from a community college accredited by ABET _or_ 2nd year coursework in 5 of 7 areas: physics, chemistry, architecture, computer science, mathematics, hydrology, or geology
      - Registered as a professional engineer by a state, DC, Guam, or Puerto Rico
      - Pass a written test for "Engineer In Training" or professional registration test
      - 60 semester hours of courses in basic sciences/physics/math/engineering I do not know which section you took this from, but for EE or CIS, the requirements are basically a degree. Nothing more to it. The minimal requirement at the USPTO in most areas is a BS in an appropriate area of study.
      --
      "Some days you just can't get rid of a bomb."