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.

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:

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,, 202.250.3838

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Comments on “Prior Art On Verizon's VoIP Patents”

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Lee says:

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” 🙂

Webmaster X (user link) says:

Re: 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.

Dosquatch says:

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.

Wyatt says:

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.

Smorgus Borgue says:

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…

Dosquatch says:

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.

torqque says:

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.

Joseph says:

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?

Angry Dude says:

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!!

Wyatt says:

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.

Angryoaf says:

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.

Charles Griswold (user link) says:

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

RandomThoughts (user link) says:

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.

Brandon says:

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.

Daniel Berninger (profile) says:

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.

Stacey Reineccius (user link) says:

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 ( specifically*/

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.

Anonymous and Pissed! says:

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.

jose a says:

More and more prior art

Add 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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Vanessa (user link) says:

Verizon wins Vonage patent fight

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