There might be a silver lining (albeit faint) for Vonage, the Holmdel, NJ-based company currently enveloped in clouds of doom. The independent VoIP provider, which lost a patent case to Verizon Communications, today acknowledged that it doesn’t have a way of avoiding infringing on Verizon’s patents.
Now, in a note published to his clients, Tier 1 Research analyst Daniel Berninger (also a guest columnist for GigaOM) argues that the legitimacy of Verizon’s two key ‘name translation’ patents (6,104,711 filed on March 6, 1997; 6,282,574-filed February 24, 2000) are themselves subject to scrutiny.
In his note, Berninger writes that the Verizon patent applications authored by Eric Voit reflect contributions made by VocalTec Communications and were discussed at the VoIP Forum in 1996. Some of VocalTec’s technical claims were also formally published in an independent document in January 1997.
Moreover, the published document included contributions from Cisco Systems, Microsoft, IBM, Nortel, Intel and several other prominent technology companies. (See documents at the end of this report.) Records indicate that Verizon filed for its own patents in March 1997 and February 2000. Beringer’s note goes on to say:
The claims in both patents were anticipated by open standards assembled by the VoIP Forum 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.
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.
Verizon filed another patent application (6,298,062) in the same time period that does reference the Kahane-Petrack paper of January 1997.
We have contacted Verizon and seeking their response to the note. We will update the story to reflect their response.
1. O. Kahane and S. Petrack, “Call Management Agent System: Requirements, Function, Architecture, and Protocol,” IMTC VoIP Forum, Seattle, Washington, January, 1997, 44 pages. PDF
2. IMTC Voice over IP Forum Technical Committee, “Service Interoperability Implementation Agreement”, January 13, 1997. (PDF)
3. Minutes of the VoIP Forum meeting. (PDF)