The mad scramble over VoIP patents

Olga Kharif
26 Mar 2007

Anthony Cataldo, chief executive of Internet-calling provider VoIP, Inc. (VOII), closely watched the recent patent dispute between Verizon Communications (VZ) and Vonage Holdings (VG). Upon learning of the Mar. 8 decision by a jury that Vonage infringed on Verizon patents, Cataldo asked lawyers to start proceedings against companies that he says are using his company's technology. 'You are going to see a lot of demand letters going out from us,' he says.

Letters will go out from him"”and a lot of others. On the heels of the Verizon verdict, expect a flurry of lawsuits by holders of patents on the technology that delivers phone calls the same way e-mail travels over the Internet, legal experts and industry executives say. 'We were waiting to see how [the Verizon-Vonage case] was going to work out,' says VoIP Chief Operating Officer Shawn Lewis. '[The verdict] has opened up the validity of protecting the patents.'

There are plenty of VoIP (voice-over-Internet Protocol) patents to protect. The Patent & Trademark Office says there are 2,273 such patents. Many belong to telecom stalwarts like Verizon, AT&T (T), Motorola (MOT), Broadcom (BRCM), and Cisco Systems (CSCO). More than 150 patents, filed as early as 1999, were granted as recently as 2007.

Settlements Likely

Lawsuits could come from inventors both big and small. A Long Island (N.Y.)-based patent holder, Rates Technology, which has received payments from the likes of Cisco and Verizon, has claims pending against Cablevision (CVC) and a small telecom equipment manufacturer in New York. 'Where the monetary temptation looks high, there's a greater incentive to bring the suits,' explains Jerry Cohen, partner and co-chair of intellectual-property practice at Boston law firm Burns & Levinson.

Before the ruling in the Verizon case (which Vonage is appealing), the benefits of suing for patent infringement in VoIP cases were far from clear (see, 3/9/07, 'What the Verizon Verdict Means for Vonage'). Last year, the U.S. District Court for the Eastern District of Texas ruled that Comcast's (CMCSA) Digital Voice service did not infringe on a patent held by Caritas Technology. In 2006, Time Warner's (TWX) AOL settled a $200 million lawsuit from Klausner Technologies alleging it infringed on Klausner's technology for visual message notification; the terms were not disclosed. Indeed, terms of many VoIP dispute settlements have not been made public.

In the future, much litigation may remain out of public view. In light of the Verizon decision, Vonage may choose not to risk another lengthy trial and instead settle with service provider Sprint Nextel (S), says John Rabena, partner at Washington law firm Sughrue Mion. Sprint Nextel is suing Vonage, alleging the Web-calling outfit infringes on seven of its patents. Sprint's complaint, filed with the U.S. District Court for the District of Kansas, is set to go to trial on Sept. 7.

Good-Bye to Open Standards‾

Wherever the litigation plays out, the view of Web calling will change. It's long been viewed as an open-standards, off-the-shelf technology, rather than one protected by patents. While Web calling does use Internet Protocol (IP), an open standard, 'that doesn't mean that anything that touches Internet Protocol isn't protectable,' says Glenn Woroch, executive director of the Center for Research on Telecommunications Policy at the University of California Berkeley's Haas School of Business. Verizon's patents, for instance, apply to older technologies such as call-waiting and a method of ensuring call security.

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