What Is Obvious Not Always So in Patents
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The legal drama of 11th-hour stays of permanent injunctions is over in the patent-infringement battle between Vonage and Verizon. All that now remains are the actual facts of the case, as the two sides prepare for June 25 oral arguments before the U.S. Court of Appeals for the Federal Circuit.
According to an analyst whose roots extend deep into the VoIP world, Verizon's claims on its patents are invalid, or, as Daniel Beringer of Tier 1 said Thursday, "bogus." Perhaps it's obvious.
The patents, filed in 1997, cover the translation of domain names and IP addresses to telephone numbers when Internet calls are passed off to Ma Bell. Since a Voice over IP (VoIP) call is nothing more than another packet on the Internet, VoIP providers must translate an IP address into a telephone number recognized by the PSTN for the call to connect.
Verizon says its patents cover that process. But Vonage says the U.S. Patent and Trademark Office (PTO) should have never issued the patents to Verizon because the process involved was obvious to anyone with the minimum chops to understand how the Internet works, even if no previous patents were issued on the idea.
Beringer couldn't agree more.
"The basic idea of name translation [in VoIP] is a given. Every VoIP provider that starts a call is doing name translation," said Beringer, who helped launch Vonage and VoIP pioneer Jeff Pulver's Free World Dialup. A founding member of the VON Coalition, Beringer also worked on the original assessment of VoIP at Bell Labs.
A Virginia jury decided in March that Vonage infringed on the Verizon patents. Vonage appealed the decision, claiming the patents are invalid because the solution to interconnection was anticipated and well known prior to Verizon filing for the patents.
In a note to his clients in April, Beringer wrote, "Verizon was not the original and first inventor of the claims in dispute." Instead, he said, open standards groups anticipated the process of name translation as early as 1993.
"Think of it as a door," he said. "If you are going to build a house, it occurs to you to build a door." In other words, the process was "obvious" to those skilled in the VoIP arts.
"Obviousness involves what has already been done and the difference between what you did and what has already been done," said John Rabena, a partner and Internet patent litigation specialist in the Washington, D.C., office of Sughrue Mion.
Beringer said a 1996 VoIP Forum Technical Committee that included Cisco Systems, Microsoft, IBM, Nortel, Intel, Motorola, Lucent, and Vocaltec Communications, among others, discussed name translation and published information on it in 1997. The work of the group, publication plans and disclosure requirements were noted in correspondence between the VoIP Forum and the ITU Telecommunications Standardization Sector.
Yet the U.S. Patent and Trademark Office granted a patent on the process. Beringer noted the obligation to provide "prior art" on the claimed invention falls to the inventor. "The patent examiner is just handling the paperwork and he's also a generalist," Beringer said. "The backstop is self disclosure and [Verizon] didn't disclose."
At the district court trial in Virginia, Verizon claimed to have no prior knowledge of the name-translation process. In Judge Claude Hilton's instructions to the jury, Beringer said the district court put "too broad an interpretation" on what name translation actually means.
"Verizon is claiming to own the idea," he said. "That means everyone is infringing." Beringer predicted that, if not in the Vonage case, Verizon's patents will be eventually struck down because of the obviousness of the idea.
Vonage got a major boost to its case on April 30 when the Supreme Court tossed out an appeals court decision that gas pedal maker KSR infringed on rival Teleflex's patents by combining a sensor with a gas pedal. KSR claimed the combination of the two was obvious and a patent should never have been granted to Teleflex.
The high court agreed and ruled the Teleflex patents invalid. In the unanimous decision, Justice Anthony Kennedy wrote, "Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress."
Sughrue Mion's Rabena added, "Vonage is going to make a lot out of the KSR case. Most defendants are already making a lot of noise about KSR."
Vonage hopes to make as much out of the KSR decision as it can.
"The ability to perform name translations was not novel to the [Verizon patents], nor was it novel to provide these features on a packet network, such as the Internet, using the known domain name servers," Vonage wrote in its Wednesday appeals brief.
Verizon's response to Vonage's appeals brief is due later this month.