28 Comments

Summary:

Software patents deserve to die. What is needed instead is exactly the opposite — a formal process of contributing software innovations to the public domain.

The $250 million Vonage burned through as a result of the patent lawsuit brought by Verizon et al provides yet another example of why patents for business processes implemented on computers (a.k.a. software patents) deserve to die. Verizon’s two successful “name translation” patents negate an open standard assembled by Cisco, Microsoft, IBM, Intel and Vocaltec via the VoIP Forum during 1996. The threat of patent litigation cleared the landscape of independent VoIP companies the VoIP Forum sought to make possible.

Vonage survived and can look forward to a prosperous future as the third player in an oligopoly with the regional telcos and cablecos, but this hardly seems like the success story sought with the opening of patent protection to business methods in 1999. The work of the VoIP Forum built on the ITU H.323 standard, which dates back to 1991 , so Vonage’s loss in court does not owe to a lack of prior art. Vonage lost because of the difficulty in finding the proper documentation of prior art 15 years after the fact.

The antidote to software patents involves creating their exact opposite — a formal process of contributing software innovations to the public domain. Vonage’s experience, however, illustrates that the various standards-creating processes represent only a first step. A successful open-source model for patents requires creating a searchable archive of prior art in which inventors contribute their innovations in order to get protection from subsequent litigation.

This would replace the patent office’s dependence on the oath signed by patent applicants “acknowledging the duty to disclose all information known to be material to patentability.” Vonage’s decision to base its technical implementations on the work of the VoIP Forum and IETF seems reasonable. Who would have guessed the patent office granted Verizon a patent on the same subject matter?

Verizon’s “name translation” patents address the process of converting between an IP address and a telephone number during call setup. Absent the expectation of end users dialing IP addresses, all VoIP implementations will involve some form of “name translation.” A patent examiner trying to meet expectations of reviewing a patent per day can be excused for having missed the fact that the name translation issue arose with the ITU H.323 standard.

Questions remain over how Verizon failed to disclose the H.323 standard in their declaration, never mind the VoIP Forum’s efforts that built on the H.323 standard. Verizon’s first name-translation patent (’711) has a filing date two months after the VoIP Forum published the results of their efforts. Verizon’s prior art disclosures also failed to mention VocalTec Communications, the company credited with bringing the VoIP category to public awareness in February 1995. The author of the patent in question, Eric Voit, initiated a relationship with Lior Haramaty, a co-founder of VocalTec, in the same month he filed the first patent.

As project director for VocalTec, I was around then; I also led a joint venture with Digital Equipment that involved implementing Verizon’s first VoIP pilot in 1998. Eric Voit’s second patent, from February 2000 (’574), incorporates ideas addressed in detail during this pilot. However, Verizon filed the second patent as a continuation of the first — and it, too, was absent any disclosure about VocalTec or the VoIP Forum. The filing of the second patent as a continuation gives the claims the same prior art grace period as the first patent.

A formal process of filing prior art to the public domain will protect an emerging infocom industry better than just depending on overworked patent examiners and applicants for prior art searches.

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By Daniel Berninger
  1. Seems like the right way….But isnt the problem of software being patentable itself is stupid. How can you patent a mathematical solution. Thats something outright stupid in itself

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  2. 100rabh,

    Yep. Software patents violate the long standing prohibition against patenting “ideas”. However, there exists very little hope the various apparatus of government will be able to provide a fix anytime soon.

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  3. Dan
    Powerful information re: the Verizon patent. This one smelled from the beginning. db

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  4. If as you say there was prior art, Vonage would surely have raised that issue in court and invalidated Verizon’s patent. You seem to have very limited understanding of patent law. Better leave these issues to those who are better informed.

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  5. Nice post! very informative.

    nhick
    http://www.itrush.com

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  6. Steve, read the article again and see if you can comprehend why they lost the second time around.

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  7. [...] Software patents cost Vonage $250 million, despite the existence of prior art: The work of the VoIP Forum built on the ITU H.323 standard, which dates back to 1991 , so Vonage’s loss in court does not owe to a lack of prior art. Vonage lost because of the difficulty in finding the proper documentation of prior art 15 years after the fact. [...]

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  8. I suspect a better solution to the overall problem is fighting fire with fire. I think we need a Patent Cooperative to which we contribute all our patents (contributing some of them being against its charter). The Coop should be highly litigious, pay high success fees to the nastiest patent attorneys in the business, and sue the crap out of any non-members. The Coop’s charter should prevent settling out of court, so that the only way to avoid paying damages if awarded is joining the Coop with ALL of ones patents, losing the ability to enforce them against other members and cut 1-on-1 cross-licensing deals.

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  9. There are a lot of issues here that are conflated. First, one could argue that there is a real distinction between “business process” patents (e.g. Amazon one-click) and “software algorithm” patents (e.g. RSA crypto algorithm); a new algorithm is a theoretical engineering R&D result, no different than physical. Second, there is no difference between “software” and “hardware”, either in theory (people who whip out the “but it is math” argument apparently slept through their math classes) or in practice these days; I have patents for pure algorithm R&D, and they explicitly cover the continuum from software to hardware precisely because there is no meaningful distinction. Third, software algorithm patents are completely indistinguishable from the venerable chemical process patents that no one complains about (swap molecules with bits and you have an algorithm patent); you patent the abstract chemical process and then also license a copyrighted reduction to practice — asserting that this is a unique feature of software algorithm patents is simply ignorance.

    Any problem with software algorithm patents is a problem with all patents. The vast majority of non-software patents are frivolous as well. Most “business process” patents are frivolous because they are obvious (and frequently have prior art), but that is far from true in the algorithm design space. Designing a more efficient algorithm is not much different than designing a more efficient engine, and I know of new algorithm patents that had years of intensive R&D invested in the result. I do not care so much about what is done regarding patents so long as the application is consistent. A lot of problems have stemmed from the fact that patent tradition blithely pretends distinctions exist that provably do not, allowing all sorts of subjective redrawing of the lines when convenient.

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  10. Interesting article.

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