Vonage: we've got a workaround for Verizon patents

Posts: 37 · Vonage Forum Junior Joined: Apr 07, 2006 Posts: 37

http://arstechnica.com/news.ars/post/20070510-vonage-weve-got-a-workaround-for-verizon-patents.html

Vonage reported its quarterly earnings earlier today and iVonage CEO Jeffrey Citron disclosed that the company would be ready "shortly" to deploy a workaround for two of the patents it was found to have infringed.

"We believe we have workable designs for the two name translation patents and intend to begin deploying the solution to our customers shortly," said Citron. "In addition, we are continuing our development of the workaround for the wireless patent."

The wireless patent referred to by Citron is number 6,359,880, for a "public wireless/cordless Internet gateway." It describes a number of ways for phone calls to be made wirelessly, including over the Internet. The other two, 6,104,711 and 6,282,574, cover translating calls between IP address and phone numbers. When we examined all three of the patents last month, we concluded that if nothing else, they illustrated the dire mess that the US patent system has become and provide another indicator of the need for patent reform.

Citron didn't provide any details about how the workarounds would function, simply saying during a conference call with reporters and analysts that "we believe they will work." It may prove to be tough: all three of the patents cover a concept rather than a specific application, making a workaround more difficult to employ.

After Vonage was found to have infringed on the Verizon patents, a judge barred the company from signing up new customers while ruling that it could continue operations. Vonage has appealed the verdict, and the appeals court has lifted the injunction against expanding its customer base for the duration of the appeal. In the wake of the Supreme Court's decision on KSR v. Teleflex, which held that a lower court did not sufficiently consider the question of a patent's obviousness, Vonage asked for a new trial. That request was denied, but the court did rule that the VoIP company could raise the issue as part of its appeal.

This isn't the first report of a patent workaround. Ars reported last month that an agreement Vonage signed with VoIP, Inc. would provide a workaround for the translation patents. Vonage later denied that a workaround was in place.

If Vonage does indeed have a workaround ready, it should go a long way towards dispelling the dark cloud hovering over the company's New Jersey headquarters. Its appeal may succeed, and Verizon's patents may be overturned, but in the case that neither of those two things happens, Vonage should be able to continue operations with the workaround in place... assuming they can stop losing money. Things are looking slightly better on that front: the VoIP provider's adjusted loss narrowed to $58 million during the first quarter, a 20 percent improvement from the previous year's $73 million figure.

Posts: 90 · Vonage Forum Senior Joined: May 05, 2005 Posts: 90

Here is Cllaim 1 of U.S. Patent No. 6,104,711

1. A server, comprising:

an interface for coupling the server to a system of interlinked packet data networks using packet addresses defined in a first protocol;

a central processing unit coupled to the interface;

a data storage system accessible by the central processing unit; and

software running on the central processing unit for processing a query for translation of a name specified in a second protocol received via the interface to generate a reply message for transmission via the interface, wherein:

the software controls the central processing unit to include an address conforming to the first protocol and relating to a first destination in the reply message if parameters relating to the query satisfy a first criteria defined in a routing control record stored in the data storage system, and

the software controls the central processing unit to include information relating to a second destination in the reply message if parameters relating to the query satisfy a second criteria defined in the routing control record.

* * * *

What the heck does this claim mean? Well, you'd have to read the Patent to really understand it, as well as the file wrapper history. Claims like t his illustrate why armchair analysis is pretty tricky.

But to design around it, all you would have to do is set up a system that eliminates ONE ELEMENT of this claim. The "all elments rule" it is called. You can't partially infringe, just as you can't be partially pregnant.

For example, if you got rid of these "first and second criteria" that alone would do it. Or many be the critera could be stored elsewhere than in a "routing control record".

There is no law against "designing around" and in fact, Patent case law encourages this.

Claims 2 and 3 describe this criteria as:

2. A server as in claim 1, wherein the first and second criteria relate to time windows.

3. A server as in claim 1, wherein the first and second criteria relate to status of a predetermined destination terminal device.

"In the wake of the Supreme Court's decision on KSR v. Teleflex, which held that a lower court did not sufficiently consider the question of a patent's obviousness, Vonage asked for a new trial. That request was denied, but the court did rule that the VoIP company could raise the issue as part of its appeal."

The teleflex case is not trivial, as the SC has indicated it intends to severely overhaul the John Deere doctrine. The entire thing might get booted on obviousness. The problem is, the SC did not provide a good roadmap for obvious, other than the one they use for pornography ("I know it when I see it"). So the case could be one of first impression.

By then, lawyers fees may have sunk the company!