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Prior Art On Verizon Patents

Posted by kdawson on Tue Apr 17, 2007 08:21 PM
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."
+ -
story

Related Stories

[+] Vonage Loses VoIP Case With Verizon 150 comments
cdrudge writes "A federal jury on Thursday said Vonage Holdings Corp. violated 3 of 5 patents of Verizon Communications Inc. and ordered the upstart Internet-phone company to pay $58m in damages as well as 5.5% in royalty fees per month per customer. Verizon said it would seek an injunction to block Vonage from using its patented technology. The jury did reject Verizon's claim of $200m in damages and that Vonage deliberately violated Verizon's patents. As you might expect, Vonage said it would appeal the decision and seek a stay if an injunction is granted. Judge Claude Hilton set a hearing for March 23 on whether to grant an injunction."
[+] Vonage Goes To Court III - The AT&T Suit 113 comments
kickabear writes "AT&T has filed a lawsuit against Vonage, claiming patent infringement. This is the third major lawsuit to have been brought against Vonage by a major phone company. Vonage lost the previous two lawsuits, brought by Sprint-Nextel and Verizon. How much more money can Vonage afford to give away? How can Vonage educate a jury on prior art? 'It said in a filing to the U.S. Securities & Exchange Commission that AT&T is seeking injunctive relief, compensatory and treble damages and attorneys' fees in unspecified amounts. Vonage said the lawsuit was filed in the U.S. District Court of the Western District of Wisconsin on October 17.'"
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  • Fun way? (Score:5, Interesting)

    by E IS mC(Square) (721736) on Tuesday April 17 2007, @08:27PM (#18776743) Journal
    "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."
    • The excuse... (Score:5, Insightful)

      by EmbeddedJanitor (597831) on Tuesday April 17 2007, @08:48PM (#18776927)
      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.

      • Re: (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...
        • With zero accountability the USPTO basically encourages bums and benefits from having slack employees. It can't improve without getting some quality metric in.

          Sure these folk would have been bums anywhere else, but then they'd probably have been fired too!

        • by Nullav (1053766) <<Nullav.gmail> <ta> <com>> on Wednesday April 18 2007, @01:07AM (#18778549)

          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.
        • Re:The excuse... (Score:4, Interesting)

          by Anonymous Coward on Wednesday April 18 2007, @07:20AM (#18780289)
          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.

      • Re: (Score:3, Insightful)

        That can only happen if the USPTO is help accountable

        While I am no opponent of accountability this is suing yourself.

        The USTPO is *you*. They are supposed to represent the commons: To ensure that the patent system delivers the balance between commercial interests and The Public Good (tm).

        Holding them accountable is ... errrm... how exactly can you hold them accountable?
        Firing individuals makes it harder (more $$$) to attract new-hires -- so a more costly IP system with high turn-over and low knowledge

        • Re: (Score:3, Insightful)

          Suing the USTPO is suing yourself -- the guv *is* your money afterall -- while an individual *might* "win" at suing the guv, the public and the economy *always* loses, so while lawyers win at this, you will (like the lottery) lose on averages

          This isn't a valid argument - right now the public is bleeding money to lawyers, because of lawsuits over patents. If the patent office were made liable to pay for these damaging costs whenever they are the result of its own mistakes, then it would have an incentive

      • by tlambert (566799) on Tuesday April 17 2007, @11:11PM (#18777889)
        A patent examiner is GS-5 $38K job to start

        http://usptocareers.gov/jobsearch.asp [usptocareers.gov]

        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
        • Re: (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
        • by thebdj (768618) on Wednesday April 18 2007, @06:36AM (#18779969) Journal

          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.
    • Re:Fun way? (Score:5, Funny)

      by schon (31600) on Tuesday April 17 2007, @09:17PM (#18777177) Homepage

      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.
        • Re: (Score:3, Informative)

          The USPTO's examiner positions start at the GS-5 pay grade, which can run anywhere from $38,435 - $49,964, depending on time in service. The highest grade you're likely to achieve working there after many years is GS-13 (tops out at $113,151), unless you can weasel your way into a GM rate after 15 years or more.

          For the qualifications they're demanding, those are ludicrous salaries, and some of the qualifications themselves just don't make sense.
  • i use vonage (Score:2, Interesting)

    by Anonymous Coward
    ...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)
    • I'm torn on this. On the one hand they provide a valuable service to millions of subscribers. On the other hand they made that AWFUL AWFUL FUCKING UNHOLY AWFUL woohoo commercial. I wish they could stay in business, but maybe have all of their senior execs and marketing department executed by skinning them and drowning them in saline solution.
    • by rs79 (71822) <hostmaster@open-rsc.org> on Tuesday April 17 2007, @09:37PM (#18777309) Homepage
      (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.

      • What reasonable judge wouldn't go along with this line of thinking?
        Now the hard part is finding a reasonable judge.
      • by Anonymous Coward on Tuesday April 17 2007, @11:20PM (#18777939)
        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.
  • doing Vonage's job (Score:5, Interesting)

    by TheSHAD0W (258774) on Tuesday April 17 2007, @08:28PM (#18776753) Homepage
    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?
    • Re: (Score:3, Insightful)

      Vonage had 30 minutes to reply in court, to a non-technical jury. Go rocket docket. Goodnight irene.
      • Verizon will probably buy Vonage then double the prices.
        • Re: (Score:3, Insightful)

          It doesn't take 30 minutes to explain to any non-technical person the concept of "the date of this article is earlier than the date their patent was filed on".

          No, but it would take a lot longer than that to convince them that the documents cover the patent claims in question, especially if Verizon is claiming otherwise.
    • If Vonage held the patents, they would be playing it just as hard-ball as Verizon.
      • If Vonage held the patents, they would be playing it just as hard-ball as Verizon.

        Of course. But that's not the point. People want Vonage to win because the system is broken and in serious need of fixing. It's being abused in order to squash competition, which is bad for all of us.
          • Re: (Score:3, Insightful)

            I too would like to see both sides lose, the better to hasten the end of patents. I mean, sure, It's be better if no one has to die to convince people that something is dangerous, but I don't see that happening. Intellectual property law has made technology like the wild west, with businesses both upright and shady being gunned down every other week by small-time patent trolls, or by large, organized rivals, with undertakers loving every minute of it. The bigger gangs have made truces with each other, bu
  • Wasn't verizon required to disclose prior art with their patent application ?
    • no (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.
      • Re:no (Score:4, Informative)

        by |Cozmo| (20603) on Tuesday April 17 2007, @09:59PM (#18777465) Homepage
        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.
        • Re: (Score:3, Insightful)

          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.

          And the lawyers don't get hammered for recommending such a willful disregard of due diligence? There's part of the problem right there. It sounds to me like they're effectively advocating fraud against the federal government.
    • Wasn't Verizon required to disclose prior art with their patent application ?

      Why would a company submit information with their patent application showing they weren't the ones that came up with the idea to begin with? Wouldn't that negate the whole purpose of applying for a patent.
      • Is it fraud if there was evidence they knew about the prior art but applied for the patent anyway?
        • The point being that if you're aware of prior art and don't intend to deceive anyone, why would you go to the trouble of doing the application to begin with? You already know you're not going to get your application. The expectation shouldn't be on the company trying to get the patent in their own name, that's just another version of the fox guarding the hen house.

          Isn't the whole point of a patent examiner to search out this evidence to start with?
      • Re: (Score:3, Informative)

        From wikipedia:

        "In the United States, inventors and their patent agents or attorneys are required by law to submit any prior art they are aware of to the United States Patent and Trademark Office so that the patent examiner can take the prior art into account when examining the patent application."

        Now is a telephone company going to claim that they had no knowledge of discussions within a standards setting body which was setting standards for making telephone calls over IP - the very subject of this patent
    • I have an invention:

      A method or device for extracting a Patent Examiner's head from his or her ass before reviewing Patent Applications.

      To be fair, examiners surely have some specialized knowledge that I lack, just as I have knowledge in the field of software that they, chronically, seem to lack. Software patents are debatable, but there's no doubt that tech companies with deep pockets are totally scamming the PTO with crap like this.

      If Vonage goes under trying to defend themselves against a patent that wi
  • by joe_n_bloe (244407) on Tuesday April 17 2007, @08:38PM (#18776829) Homepage
    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.
    • by Aardpig (622459) on Tuesday April 17 2007, @09:21PM (#18777213)
      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?
      • 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: (Score:2, Interesting)

      by Anonymous Coward
      "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
      • Perhaps people think someone should take this fight to the Supreme Court and get some sense back into interpretation of patent law.

        It's not the Supreme Court's job to fix stupid laws, only unconstitutional ones. Patent law is actually pretty clearly within the constitutional domain of Congress. It's up to Congress to fix the law, not the courts.

        Think about it--do you really want the least representative branch of government in charge of making laws AND ruling on their validity? There's a balance of power fo
  • by 3seas (184403) on Tuesday April 17 2007, @08:49PM (#18776931) Homepage Journal
    ... 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.
      • The desires of the general population don't mean shit when the big corporations want something else,

        what happened to democracy?

        This has actually been my point for quite some time now, that "one (wo)man, one vote" doesn't mean shjit anymore. "One million dollars, one policy" is more like what we're calling democracy today. While far from perfect, Canada has been trying hard to limit the impact of political contributions by (at least) limiting individual contributions. There's still lots of work to be done

  • by hcmtnbiker (925661) on Tuesday April 17 2007, @09:28PM (#18777247)

    The article links to a wikia article [wikia.com] 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?

    • 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?

      you apparently want me to spell it out so i will..

      c - o - r - r - u - p - t - i - o - n

    • Wow. So Verizon invented the mapping table. Whod'-a-thunk it?

    • by Anonymous Coward on Tuesday April 17 2007, @10:21PM (#18777611)
      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.

      • Not quite.

        Claim 26 is using a domain name server (or some other database server connected to the internet or some other PUBLIC net) to translate a name to a (POTS bridge server address, phone number) tuple.

        It doesn't cover the old 800-number translation because that request went to a server that was connected to a phone-system internal net that wasn't accessible to the general public. This claim covers emulating the behavior using a publicly-accessible server.

        (In other words they're patenting letting the g
    • by syukton (256348) on Wednesday April 18 2007, @05:19AM (#18779673)
      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.
  • Too Late (Score:3, Interesting)

    by fozzmeister (160968) on Wednesday April 18 2007, @02:51AM (#18779015)
    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?