Session Border Control

When Sprint Nextel filed its lawsuit last month against theglobe.com, Voiceglo and Vonage Holdings for allegedly infringing on its proprietary technology, it may have catapulted all voice over IP (VoIP) service providers into the complicated world of patent litigation.

 

Whether the two defendants eventually have their day in court or settle matters privately still remains to be seen. As of this article's publication date, no response has yet been filed by either defendant. But legal experts familiar with the case generally agree that Sprint is executing on a well-constructed legal strategy that the puts the defendants before an uphill climb.

 

The heart of Sprint Nextel's case is seven patent claims entitled "Broadband Telecommunications System" and "Method, System and Apparatus for Telecommunications Control" that were issued to an inventor named Joseph Michael Christie. Although the disputed patents were issued between 2001 and 2003, the actual patent filings date back to the mid-1990s. Sadly, Christie never fully enjoyed the fruits of his labors as he died in 1996. He was a Sprint employee at the time of his death.

 

"Though some of the patents may show filing dates after his death, they relate back to cases that were originally filed when he was alive," explained Debra Peterson, Sprint spokeswoman.

 

And that earlier filing date could play a critical role for the plaintiff should the case reach the courts, one legal expert explained. "The earlier the filing date, the better it is for you," said Cameron Tousi, partner at Washington-based Genus Law Group.

 

In general, the patent claims deal with "a processing system to control a packet communication system" and "a system for providing virtual connections through an ATM interworking multiplexer on a call-by-call basis." Using sweeping generalities in his initial patent filings, Christie claimed inventions for a communications systems and methodology for processing controls that are located outside of a switch of the Public Switched Telephone Network (PSTN). And it is that very oversimplification of the language within the filings that has in the past incensed Ed Cespedes, president of theglobe.com and Voiceglo.

 

On the day after Sprint filed its suit, Cespedes told eWeek that the dispute patent claims could actually apply to the entire VoIP industry, not just Vonage and his own company. Also, he has previously stated his belief that Sprint's suit only represents a legal tactic to stave off the landline erosion that all incumbent telecommunications are experiencing.

 

"Use of the Internet for communications is open to all," Cespedes said in a press statement. "Products like ours that are low cost or free, easy to acquire and global are a natural threat to incumbent telecommunications companies."

 

Genus Law's Tousi believes Christie's patent filings are very deliberate – intentionally crafted to specifically capitalize on those generalities. That's because the broader the claim, the more enforceable the patent, the lawyer explained. All patent examiners look at any claims in an effort to distinguish inventions from what is known as "Prior Art" – that is, previous claims that would prove an invention isn't novel. Using Prior Art, the patent examiner would then try to get the patent attorney to narrow down the claim.

 

"I would try to keep that claim as broad as possible. I would try to make that as broad as I possibly can. And I would have just enough so that I distinguish my invention to what came before mine," Tousi said. That is exactly why the early filing date plays such a critical role in this case – the earlier the filing date, the greater the likelihood that no prior art will be found.

 

Defense attorneys could also rely on two legal tactics. The first is the use of non-patent resources to invalidate the dispute claims; however, Tousi added it is "very difficult to convince a jury that there is some prior art that invalidates the claim if it's already reviewed by the patent examiner." Of greater likelihood is the defense team will use what is known as "claims construction," which is really more of a deconstruction of the disputed claims.

 

"According to the way the Court of Appeals for the Federal Circuit have ruled their recent case logs, you would do an analysis of the claims word-by-word. In order for there to be infringement, every single claim must be found to be infringing. The defendants will read the claims and try to find anything that isn't specifically done by the product. For example, if the claim refers to processing system, then we would determine what that processing system means," Tousi continued.

 

Complicating matters for the defendants is the fact that the inventor is now deceased. That's because it is standard practice for defense attorneys to dispose and cross-examine an inventor to make it seem like the actual claim doesn't match the declaration when the inventor first filed the patent.

 

"It's always nice to cross-examine and the fact that the inventor is deceased is a problem for the defendants because they'd like to go after the inventor…anything you can do to make it seem like the inventor doesn't understand what he is claiming," Tousi added.

 

While Voiceglo said it is still reviewing the complaint, it believes the suit has no merit and that in due course the courts will rule in its favor. Cespedes declined to comment on case after repeated attempts to reach the Voiceglo official. Vonage has no comment. Sprint has also declined requests to interview company officials. However, it did issue the following statement:

 

"While Sprint prefers to resolves disputes amicably, Sprint will take all necessary steps to protect the creativity and innovation of its employees."

 

The case isn't likely to go to court until next year.

 

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Robert Liu is Executive Editor at TMCnet. Previously, he was Executive Editor at Jupitermedia and has also written for CNN, A&E, Dow Jones and Bloomberg. For more articles, please visit Robert Liu's columnist page.