Vonage Playing Supreme Court Card

Vonage  is playing a Supreme Court card in its latest appeal to set aside Verizon's $58 million patent infringement judgment against the Voice over IP provider.

The company filed an appeal yesterday invoking a recent high court ruling on the obviousness of an invention as a primary basis for setting aside patent infringement decisions.

In its April 30 KSR v. Teleflex ruling, the Supreme Court said the U.S. Court of Appeals for the Federal Circuit, which exclusively hears patent appeal cases, is "too rigidly" applying the standard of deciding whether a claimed invention is obvious to those "skilled in the art." The same court is set to hear oral arguments in the Vonage case on June 25.

Vonage is asking the appeals court to set aside the patent infringement ruling, as well as a permanent injunction that followed. "In light of the Supreme Court's KSR opinion, the Federal Circuit should find as matter of law that the asserted claims [by Verizon] are invalid," Vonage wrote in its May 9th filing to the Federal Circuit. "Or, in the alternative, remand the case for a new trial on validity."

The Supreme Court decision came a little more than a month after a Virginia jury rejected Vonage's contention that Verizon's patents are invalid since the technology claimed is obvious to those familiar with the workings of Voice over IP (VoIP).

"The improper legal standard for obviousness, on which the district court instructed the jury, prevented the jury from properly evaluating the invalidity of the asserted claims," Vonage wrote in its brief.

Two of the patents at the core of the dispute involve "advanced" routing concepts to DNS servers when Internet VoIP traffic interconnects with the public switched telephone network (PSTN). The Verizon patents claim to cover the translation of domain names and IP addresses to telephone numbers on the PSTN.

Vonage said in its brief Verizon's patents were already anticipated by open, well-known public VoIP standards such as Session Initiation Protocol (SIP). According to Vonage, the ordinary meaning of translation to those familiar with DNS technology is a change in protocol from a higher level to a lower level.

"The ability to perform name translations was not novel to the [Verizon patents], nor was it novel to provide these features on a packet network, such as the Internet, using the known domain name servers," Vonage wrote.

Verizon, however, has argued that there were no previous published solutions to the translation issue when the original patent applications hit the U.S. Patent and Trademark Office in 1997. In the KSR case, the Supreme Court ruled "ordinary innovation" that "does no more than yield predictable results" deserves no patent protection.

Patent attorney John Rabena, who specializes in Internet, e-commerce and software litigation, told internetnews.com, "Obviousness involves what has already been done and the difference between what you did and what has already been done."

Rabena, a partner in the Washington D.C. office of Sughrue Mion, said the KSR decision will "make it harder to get patents or to hold patents."

While not handicapping the upcoming appeal by Vonage, Rabena also noted the Federal Circuit reverses lower court decisions 40 percent of the time. That rate is by far the largest of any other appellate courts, which average a 3-5 percent reversal rate.

"Add on the KSR decision and that makes a defendant feel a whole lot better," Rabena said.