Prior Art On Verizon's VoIP Patents

from the thanks-Dan dept

Tue, Apr 17th 2007 11:05am — Mike Masnick

Dan Berninger has been deeply involved in the VoIP world for many years. If you need to know anything about the early days of VoIP, Berninger is worth talking to. These days, he's an analyst for Tier1Research and has just published (and emailed to us) a note looking at the claims in Verizon's VoIP patents that a judge has ruled Vonage infringed on. There are just a few problems with that ruling -- with the key one being that 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. I've included Berninger's note after the jump. However, 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.

Daniel Berninger
VP, Sr Analyst
Tier1 Research

Verizon's two name translation patents anticipated by open standards groups

Eric Voit, the author of the two "name translation" patents (6,104,711-filed March 6, 1997; 6,282,574-filed February 24, 2000) in Verizon's patent litigation against Vonage, was not the original and first inventor of the claims in dispute. The 16 lines associated with the two surviving claims assert the invention of "name translation" in the context of VoIP call-set up and termination via a telephony gateway.
See claims and links to patents: http://scratchpad.wikia.com/wiki/Vonage

The topic of "call set up", "name translation", and "telephony gateways" was discussed extensively in the year prior to the first Voit patent by participants in both the two main VoIP open standards development efforts - SIP and H.323.

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.

See: IMTC Voice over IP Forum Technical Committee, "IMTC Service Interoperability Implementation Agreement", Draft 0.91, January 13, 1997.

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.

See: O. Kahane and S. Petrack, "Call Management Agent System: Requirements, Function, Architecture, and Protocol," IMTC VoIP Forum Contribution, Seattle, Washington, January, 1997.

The work of the VoIP Forum, publication plans, and disclosure requirements were noted in a correspondence between the VoIP Forum and the ITU Telecommunications Standardization Sector.

See: ITU Telecommunications Standardization Sector, Document AVC-1086, Istvan Sebestyen, December 5, 1996.

Verizon filed another patent application (6,298,062) in the same time period that does reference the Kahane-Petrack paper of January 1997.

The two Voit "name translation" patents address the identical subject matter with the '574 patent specifically labeled as a continuation of the '711 patent. They assert different claims, but they share the same abstract, references, and description sections.

In any case, the notion of "name translation" in "call set up" involving "telephony gateways" was by no means invented by Eric Voit in March 1997.

Noted documents available from: Daniel Berninger, VP, Senior Analyst, Tier1 Research, dan@tier1research.com, 202.250.3838

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

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47 Comments

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Anonymous Coward, 17 Apr 2007 @ 12:21pm

Wow...
I would like to patent a hard surface on which people may place things, stand, or write. I shall call this concept Zed and it will cost your soul to utilize said Zed.
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Matt Bennett, 17 Apr 2007 @ 12:23pm

Well, yeah, but didn't the Supreme court more or less rule that injunctions of the kind issued against Vonage aren't appropraite, especially when the patent is in question? So, at the least, Vonage should be successful appealing the injunction, and the patent should eventually go away, right?
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Lee, 17 Apr 2007 @ 12:43pm

And now we see the 2nd way that Verizon will win...keep filing processes against Vonage (knowing they're claims are bogus) until Vonage hits a point where they can't afford to pay the lawyers to defend it.

I personally think their should be a panel of judges that are appointed to watch out for bogus lawsuits like this and make final decisions. And once this panel makes a decision, all judges HAVE to follow this. This panel needs to be able to have supreme power over the rest of them. That's it...that's a great name for them "Judge Judy's Court" :)
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Dosquatch, 17 Apr 2007 @ 12:54pm

Price to pay
Not only all of that, but I'm sure that Verizon is completely clued on all of the above as well. These patent-based anticompetitive lawsuits will never stop, however, as long as there's no downside to the filing entity (in this case, Verizon). The worst-case scenario (for Verizon) is that the patents are overturned, and they served only as a one-shot deal. But what a shot, right? Vonage is dealt a possibly mortal wound, and Verizon is out, at most, the price of the lawyers for whom they're already paying retainer fees.

Why wouldn't they do this?

Oh, sure, I hear y'alll saying "quit paying the beast", but they are the only landline provider in my area. I don't even have the option of taking my money away and giving it to someone else. They have nothing to fear from pissing me off, I'm a captive audience.

What I'd love to see is the patents overturned, and Verizon forced to recomp Vonage for two or three times the business damage done. It'll never happen.
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Joseph, 17 Apr 2007 @ 12:57pm

I really don't understand how the Verizon patents were issued since every single VoIP system has to perform what the patents describe. It is as if they have patented the idea of VoIP itself, even though there are open standards for it as the post mentions.

I doubt that Vonage itself developed the software for their VoIP beyond setting up parameters and buying the necessary hardware from vendors. Does this mean every VoIP PBX sold by the major manufacturers that implements the open standards is also in violation of Verizon's patents?
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Anonymous Coward, 17 Apr 2007 @ 1:10pm

Vonage gets money from Verizon?
I'd think that Vonage should get some $100 million or whatever from Verizon for filing false lawsuits.
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Anonymous, 17 Apr 2007 @ 1:15pm

Kill Competition
What!? You do something that I do, but more affordably? That can't be! I know, you must be using my ideas to be able to provide these similar services as mine at a lower cost. I got the patent (*snicker*) to prevent exactly this situation.
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Angry Dude, 17 Apr 2007 @ 1:48pm

This "prior art" is plain BS. Who would realistically think that only now after the ruling against Vonage has been made that there is suddenly "prior art"? Hmm, how convenient. Where was this prior art before the case? Can someone please tell me that? Exactly. How can an economy flourish if all these false prior arts are allowed to be submitted and make the patents which are valuable IP invalid. It can't! Exactly! Oh, oh, oh and what about the third world nations? They wouldn't even have water to drink if it weren't for the technology innovation that we provide them. Hell, if it weren't for IP then there could be no way for even the most uncivilized cultures to survive. You all know it's true! Loosers!!
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Wyatt, 17 Apr 2007 @ 1:53pm

Re: Price to pay
Hey man you should be able to get a VoIP service yourself. Maybe even Vonage.. Though I wouldn’t recommend that since Verizon seems bent on putting them out of biz. Anyway, you do have the option of VoIP in most places. If you can get High-speed internet, you can get it! Its way cheaper and the service isn’t that bad.

Verizon is a pos company with low standards. They have no honor or morals. This is obviously not a legitimate law suit, but they probably feel justified in going forward with it. Like they have a right to tell everyone what they should think and do. Freaken bastards need to go home to mommy to teach em some manners. They are the definition of "the man". Again, bastards.
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Webmaster X, 17 Apr 2007 @ 1:54pm

Re:
If Vonage runs out of money over this crap they are stupid. Porn companies recently had to fight off another broad b/s patent from Acacia, if they can afford it a public company such as Vonage can. They've carried themselves horribly throughout this, they should have been the ones introducing prior art from the start. If porn can get an injunction so can VOIP.
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Wyatt, 17 Apr 2007 @ 1:57pm

Re: Angry Dude
Sorry to tell you this but, you are an idiot. The reason prior art wasn’t revealed until after the case is because Verizon made no attempt to find any prior art. Of course they didn’t, that would mean they are full of BS. If you took a single second to think about things in a logical way you would be a much less angry person.
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Anonymous Coward, 17 Apr 2007 @ 2:45pm

Re: Re: Angry Dude
sarcasm ...
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Mike (profile), 17 Apr 2007 @ 2:52pm

Re:
This "prior art" is plain BS.

Btw, I don't think this is the same "angry dude" who usually comments here about patent issues, but it's someone doing a weak approximation of what angry dude might say. Oh well.
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Angryoaf, 17 Apr 2007 @ 2:58pm

Re: Angry Dude
. How can an economy flourish if all these false prior arts are allowed to be submitted and make the patents which are valuable IP invalid.

Um... I think you just answered your own question. Obviously prior art isnt going to be "found" prior to a patent being filed if the entity filing said patent stands to make profit.... And you are right, these half assed systems legal systems are exploited on a daily basis which I guess does help keep the "economy flourishing"... for those doing the exploiting anyway.
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Chris Maresca, 17 Apr 2007 @ 3:25pm

Re: Re:
You need to implement real accounts....

Chris.
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boomer, 17 Apr 2007 @ 3:28pm

prior...something
im still looking for prior art for my human reproductive intercourse patent app!
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Charles Griswold, 17 Apr 2007 @ 4:08pm

Re: Angry Dude
This "prior art" is plain BS. [ . . . ] How can an economy flourish if all these false prior arts are allowed to be submitted and make the patents which are valuable IP invalid. [ . . . ] [Third world nations] wouldn't even have water to drink if it weren't for the technology innovation that we provide them. Hell, if it weren't for IP then there could be no way for even the most uncivilized cultures to survive.

So you're saying that IP patents are responsible for giving "third world nations" water to drink? And if prior art claims are filed against Vonage, what then? Will lots of innocent children suddenly die of thirst? I don't think so. With all due respect*, I have to ask: Good Lord, man, what does VOIP have to do with desalination plants or water purification technology?

* exactly none
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RandomThoughts, 17 Apr 2007 @ 6:29pm

Why does anyone care? Vonage was already dead, they just forgot to bury the body.

Look at their recent actions. First, they say they have a workaround, then in federal court they say they don't have a workaround.

That could be considered fraud. Had someone bought Vonage stock on those statements of a workaround, that could justify a lawsuit.

Even without the patent suit, Vonage was dying, maybe Verizon is just performing a mercy killing.

Personally, I think the lawsuit is bull, but thats the way the game is played.
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Joshua Jewell, 17 Apr 2007 @ 7:08pm

Judge Panel Patent
I am patenting a concept called "Judicial Review by Judges" whereby a panel of judges reviews a lawsuit for validity. All judges must adhere to this ruling and pay me making me the richest human being on this litiginous continent!
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Brandon, 17 Apr 2007 @ 8:51pm

Follow the law...
Just because the standards were published in January of '97 does not mean that a patent application filed in March of '97 is invalid because of the "prior art" standards. Under the U.S. patent laws, even if it was published, there is a one year grace period from the date of publication to file the patent. (It is true that the publication grace period usually involves someone disclosing their own idea and filing a patent later, which may or may not be the case here.) Also, the second patent mentioned, the '574 patent, claimed benefit of the earlier patent application, so it's entitled to the earlier March '97 filing date. I'm not saying Mr. Voit actually invented what is claimed in the patents, but what is stated in the article is somewhat misleading... If this "prior art" was known, why didn't someone bring this to Vonage's attention before trial when it could have been presented to invalidate the patent.
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angry dude, 17 Apr 2007 @ 9:48pm

Re:
Shut up, moron.

I am an angry dude here
Stop impersonating me, you, sick fuck...
[ link to this | view in thread ]
Anonymous Coward, 17 Apr 2007 @ 11:13pm

Exactly, you are a sick fuck, angry dude.
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Not so angry dude, 18 Apr 2007 @ 2:23am

Re: Stop drinking the Ayn Rand Brand Kool Aid
Many civilizations have come and gone without the need for patents. I think we'll survive for a while longer even if they do disappear overnight.
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Milt, 18 Apr 2007 @ 5:46am

Haven't any of you heard of the shopping cart patent. And that guy is still winning lawsuits.
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Thomason, 18 Apr 2007 @ 7:03am

Prior art
Brandon's got it right. The cited references were not published more than one year before the original filing date of the patents, so those would not appear to be "prior art" in the legal sense.
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Daniel Berninger, 18 Apr 2007 @ 8:30am

Prior Art
Brandon is correct only to the extent you make a number of assumptions that may or may not prove valid. The 12mo grace period is not automatic. The patentee will have the obligation to prove a pre-filing invention date in order to dispute prior art during the grace period. Also, keep in mind the two patents represent themselves as a single patent with the second a "continution" of the first. This requires the patentee to defend the new claims against the assetion they go outside the scope established by the first patent. Scrutiny of the claims in the second patent against prior art from any time before the second filing can be used to dispute the notion of continuation. For example, it can be argued that Verizon's continuation patent claims relied on subsequent market developments beyond what was established in the scope of the first patent. The prior art identified 12mo's before the first patent has the most utility, but other prior art within the grace period or between the patents may prove useful. The larger thesis of the article seeks to draw attention to the two VoIP open standards efforts (H.323, SIP) as sources for prior art dating back into 1996 with precussors developments back to 1972, as well as, the implications for the larger infotech sector. Finally, regarding why now. The challenge of finding 12+ year old records should be self-evident.
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Smorgus Borgue, 18 Apr 2007 @ 8:35am

Re: Price to pay
It really doesn't matter who your local POTS line provider is...it only matters if you can get an alternate internet source...cable for instance...
That way, you can pay any of the variety of other service providers for VOIP and THAT is what is scaring companies like Verizon...
Not to mention that Cell Phone providers are looking at making the move to IP phones and VOIP with wireless broadband access, merging several technologies.
Verizon is NOT one of the ones I have read about looking at this solution.
But, for the rest of us, if Verizon pisses on enough people, those people will give AT&T, Comcast, QWest, or ANYONE else their money for whatever service...
I don't think even Verizon would survive in the "high turn-over" business that is Tellecommunications if they piss people off...
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Stacey Reineccius, 18 Apr 2007 @ 8:55am

More Prior art on Verizon patent
I and my team did a lot of work on VOIP products and deployments in the early 1990s. Specifically creating low density gateways and writing applications for clients such as Net2Phone and ourselves. Check the internet archive (www.internetarchive.org) specifically http://web.archive.org/web/*/http://www.quicknet.net.

I recall direct discussions with Dialogic, Net2Phone, Microsoft, National Semiconductor and Intecom engineers on these issues.

I would point out that Net2Phone had a fully operational service doing VOIP through gateways and handling these sort of addressing issues in 1996.
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Anonymous Coward, 18 Apr 2007 @ 9:12am

Re:
Lee: Someone will get upset if they keep filing lawsuits that fail, and are obviously going to fail.

http://en.wikipedia.org/wiki/Vexatious_litigation
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Ken J, 18 Apr 2007 @ 10:15am

Is 1995 Early Enough For You?
If 1997 to too close to the patent date, try 1995... http://groups.google.com/group/comp.dcom.telecom/browse_thread/thread/1227ba19866a3426/22 f8ceae097f7f6d
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Dosquatch, 19 Apr 2007 @ 6:33am

Re: Re: Price to pay
It really doesn't matter who your local POTS line provider is...it only matters if you can get an alternate internet source...cable for instance...

True enough. Alas, no form of wired broadband is available to my front door except satellite, on which the latency and packet drop is entirely too high to use VoIP effectively.

Unless, you know, I were to do something really draconian like pop for a T1 line... want to fund that for me? Oh, but the CO would still be Verizon. Nevermind.
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Anonymous and Pissed!, 19 Apr 2007 @ 7:46am

Verizon Handcufs
The reason Verizon (VZ) has been able to keep it's train traveling is because all the passengers are handcuffed to their seats, this would be the wire running to your doorstep, oh no you say that's not true the fcc broke them all in to small balls of mercury to fend for themselves and I can select any provider I like because there is no phone monopoly any more… hummm… who else offers you a PSTN line if you are in a (Residential)VZ area? Last time I looked there was only one! If the BS claims of thease patents are upheld the entire IP Communications Community will suffer, am I saying that VOIP will die, NO I am saying that you had better get ready for VZ-VOIP it will be just like regular VOIP but at 3x the price!

I can go on but I won’t since I hope I am preaching to the choir and it looks as if I see many others on their soapboxes with me, simply put VS feels threatened by the fact that their comfortable position of providing poor service on a poorly maintained network for decades might be coming to an end, without VOIP they are still the only train at the station and that makes them a monopoly! If the bogus patens are upheld as valid I believe the next step should be to attack VZ as the monopoly they are, hummm but since they can’t win in fair competition they have to make false claims to the works of others to damage the competitors.
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Anonymous and Pissed!, 19 Apr 2007 @ 7:55am

Al Gore
OH Yeah and BTW...

Al Gore invented the Internet...
[ link to this | view in thread ]
Aaron Moore, 19 Apr 2007 @ 2:05pm

Prior Art
Looks like the information that Verizon patented was discussed as open standards on "the VoIP forum" in 1996:
http://www.pcworld.com/article/id,130864-c,webtelephonyconferencing/article.html
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Aaron Moore, 19 Apr 2007 @ 2:07pm

Oops!
Same guy who wrote opinion leading to this thread in the PC World article.
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Anonymous Coward, 23 Apr 2007 @ 11:52am

Re:
For "their claims, there should be"...a grammar checker on your PC
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torqque, 24 Apr 2007 @ 1:50pm

Re: Price to pay
This is how the "Legal System", ie United States, works. If you have money, You Win, if you don't, you lose. Lawyers have setup a system of control, with lauguage only they speak, so real people won't understand, that everyone believes is fair and just, Ha, Ha. Ever wonder why most politicians were lawyers before they went into politics. Not to many people can afford to be politicians and lawyers, having named themselves 'Professionals' as if there the only ones who work for money, take most of the money in every legal situation. Verizion is only taking advantage of our fair and just legal system. In 1984, Gov't brokeup the dreaded communications monoply and lawyers maded bizzillions of dollars. Twenty years later, Gov't put the telcom monopoly back together again and lawyers made bizzillions of dollars. And gov't, etc and lawyers made bizzillions of dollars. Etc, etc and lawyers made bizzillions of dollars. And... Now do you get it.
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FreeToCompete, 25 Apr 2007 @ 2:21pm

FreetoCompete.com
Check out how Vonage is defending itself, creating public awareness and letting consumers voice their opinions at FreeToCompete.com.
[ link to this | view in thread ]
jose a, 27 Apr 2007 @ 4:17pm

More and more prior art
Add http://pulverblog.pulver.com/archives/006846.html Apparently a book called "The Internet Phone Toolkit" was published describing in detail Eric Voit's "invention." Is Verizon ethical? No. They approached Vonage only a few days after the Vonage IPO for the first time. Their intentions were obvious. Is what Verizon doing right? No. Do ethics and rightness matter in winning a court case. Nope. Rules do. Remember to cross the t's and don't forget the tittles.
And why was piror art not brought up on the trial? How do you know? I tried getting the documents through PACER; they're not available online.
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brad leff, 4 Jun 2007 @ 2:43pm

verizon
whatever happened to the investigation into the mega lobby group verizon and two others aiding in wiretapping of 60 million(including loyal verizon customers and americans) phone calls.
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Whoever, 19 Oct 2007 @ 9:40pm

Re: Re: Angry Dude
Don't feed the trolls.
[ link to this | view in thread ]
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Verizon wins Vonage patent fight
Most patent trials drag on and on, and jurors take forever to sift through generally incomprehensible technological data. Then there's Verizon's patent suit against Vonage. It started last week, and ended yesterday after less than a day of deliberation. The winner: Verizon, in a split decision. The jury found that Vonage infringed on three of seven patents in the complaint, two of them related to billing. And because the infringements weren't found to be intentional, damages were not tripled. Vonage is getting away with $58 million plus 5.5 percent of its revenues from now on, if it keeps using the Verizon technology. Verizon had been looking for $197 million. Vonage says the ruling won't cause a service interruption, and will appeal the verdict and damages in any case.
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Victor Shark, 6 Mar 2009 @ 9:54am

VoIP termination routes required: Brazil mobile,Ecuador Porta,Philippines PLDT,Haiti mobile Digicel,Oman mobile,Ghana Areeba,Mali Malitel,Nigeria mobile MTN,etc.
Dear VoIP Partners, 7AAA Corp. has a positive experience and a good history of development on the VOIP market. Our company established good business relations with many telecoms and we will be glad to start cooperation with you. We have interest in buying wholesale VoIP routes at competitive rates and with good ASR/ACD. Our company is looking for 1. Belarus mobile termination 2. Afghanistan mobile Roshan termination 3. Nigeria mobile MTN termination 4. Peru mobile Lima termination 5. DRC mobile Vodacom Congo termination 6. DRC mobile Celtel termination 7. Morocco mobile termination 8. Cameroon mobile MTN termination 9. Monaco mobile KFOR termination 10. Ethiopia Addis Ababa termination 11. Mali mobile Malitel termination 12. Nicaragua mobile Enitel termination 13. Haiti mobile Digicel termination 14. Vietnam mobile and proper termination 15. Saudi Arabia mobile termination 16. Oman mobile termination 17. Italy mobile termination 18. Ecuador mobile Porta termination 19. Mali mobile Ikatel termination 20. Bolivia mobile Nuevatel termination 21. Portugal mobile termination 22. Afghanistan mobile Areeba termination 23. Pakistan mobile Mobilink termination 24. Brazil mobile termination 25. Ghana mobile Areeba termination If you can offer us any competitive VoIP termination routes - you are more than welcome. Our goal is to build strong and prosperous business relations with VoIP termination partners. If you would like to know more about our requirements - please contact our VoIP termination department and we will update you with all necessary information. Hope for your soon feedback. Regards, 7AAA Corp. VoIP termination department. Please check our web site for contact details. Victor Our WWW : http://voip.7aaa.com 7AAA Corp.
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Victor Shark, 19 Mar 2009 @ 4:15am

VOIP TERMINATION ROUTES REQUIRED !!! Ghana Areeba,Nigeria mobile MTN,Ecuador Porta,Philippines PLDT,Haiti mobile Digicel,Cameroon MTN,etc.
Dear Sirs,

7AAA Corp. has a positive experience and a good history of development on the VOIP market.
Our company established good business relations with many VOIP companies and we will be glad to start cooperation with new potential partners.
7AAA Corp. is opened for cooperation with VoIP termination providers of all regions of the world.
We have interest in buying wholesale VoIP routes at competitive rates and with stable quality.
We have a lot of VoIP termination traffic and we are looking for quality VoIP termination of different destinations.
7AAA Corp. is looking for VoIP partners to build long term and fruitful cooperation with them.

We are interested in such as
- Philippines PLDT termination
- Brazil mobile termination
- Bolivia mobile Nuevatel termination
- Haiti mobile Digicel termination
- Belarus mobile termination
- Cameroon mobile MTN termination
- Pakistan mobile Mobilink termination
- Peru mobile Lima termination
- Mali mobile Malitel termination
- Oman mobile termination
- Morocco mobile termination
- Afghanistan mobile Roshan termination
- Afghanistan mobile Areeba termination
- Vietnam mobile and proper termination
- Guinea mobile Areeba termination
- DRC mobile Vodacom Congo termination
- Ghana mobile Areeba termination
- Monaco mobile KFOR termination
- Ethiopia Addis Ababa termination
- Mali mobile Ikatel termination
- Ecuador mobile Porta termination
- Nigeria mobile MTN termination
- Saudi Arabia mobile termination
- Italy mobile termination

Our goal is to build strong and prosperous business relations with VoIP termination providers
If you would like to know more about our interests and requirements - please contact us and we will update you with all necessary information.
Hope for your soon feedback.

Welcome to cooperation !

Please check our web site for contact details.

Victor Shark
http://voip.7aaa.com
WWW : http://voip.7aaa.com
7AAA Corp.
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