Prior Art On Verizon's VoIP Patents
from the thanks-Dan dept
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.
VP, Sr Analyst
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, firstname.lastname@example.org, 202.250.3838