The business of Internet, wireless, and telecom law.

VoIP Process of Translating Calls Arguably Obvious

Posted by Barlow Keener

Although reported today by the New York Times  as a “Setback” for Verizon v Vonage, the United States Court of Appeals for the Federal District denied in its May 3, 2007 order Vonage’s May 1, 2007 motion for a new trial based on the recent April 30, 2007 Supreme Court opinion in KSR v. Teleflex.   KSR v. Teleflex created a new, more liberal standard, for the obviousness of a patent.  The May 3, 2007, order was not a setback, if anything, it was an effective method of presenting early to the U.S. Court of Appeals, outside the regular briefing schedule, the argument that the three Verizon patents at issue are obvious and should be invalidated.

Vonage filed its motion for a new trial on May 1, 2007, one day after the Supreme Court decision was issued, not as part of the appellate briefing order but as a separate motion based solely on Supreme Court recent decision.  The May 3, 2007 appellate order, denying Vonage’s motion for a new trial, was not part of the regular scheduled appeals process outlined in the appellate court’s procedural order of April 24, 2007 order.   In the April 24, 2007 procedural order, the appeals court granted Vonage’s motion to stay the trial court’s order and set the briefing and oral argument dates.   The scheduling order requires Vonage to file it’s brief on May 9, 2007, Verizon to file its brief on May 23, 2007, followed by the Vonage’s reply brief on May 30, 2007.  Oral argument is set for June 25, 2007.

In all likelihood, the Vonage team filed the motion for a new trial based on the recent Supreme Court patent decision as a way of educating appeals court about Vonage’s argument that the Verizon patent is obvious in advance of filing its brief next week.   This will no doubt be the central focus of the Vonage brief.  As noted shortly after the Supreme Court decision in several blogs such as Eric Bangeman’s ARSTechnica , the KSR v Teleflex was good news for Vonage as many consider the three Verizon patents at issue to be obvious.   The Supreme Court, in KSR v Teleflex overruled the judges in the very court Vonage is appealing to.  The KSR v Teleflex decision held that held that the obviousness test, that “person having ordinary skill in the art” using prior art could have created the invention, would going forward not be as strictly interpreted in favor of patent owners as it had been for many years:

“The Circuit first erred in holding that courts and patent examiners should look only to the problem the patentee was trying to solve …Second, the appeals court erred in assuming that a person of ordinary skill in the art attempting to solve a problem will be led only to those prior art elements designed to solve the same problem.” 

Contrary to the NYT’s editorializing headlines there is more to come of Verizon v Vonage.   

The key to the VoIP patent issue is not just obviousness but that the process described in the three Verizon patents was prior art and was being performed – read “invented” – by others before the Verizon patents were filed.  At least this is the claim of the numerous VoIP service providers and VoIP equipment vendors.

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