Bertin Ron

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  • 1. Navigating Patent Uncertainty March 17, 2008 Spring VON By: Robert Bertin
  • 2. Overview
    • Verizon Patent Enforcement
    • Other Portfolios Being Enforced
    • Impact on the Telecommunications Space
    • Best Practices To Minimize Risk
  • 3. Verizon Patent Enforcement Verizon v. Vonage; Verizon v. Cox and Charter
    • Verizon sued Vonage for infringement of 7 patents in the Eastern District of Virginia
    • Went to trial on 5 patents in < 1 year
    • Jury found infringement of claims in 3 patents
    • Jury Awarded Damages:
      • $58 million for past infringement
      • 5.5 % royalty on future sales
    • Judge issued Injunction -- stayed pending appeal
  • 4. Verizon Patent Enforcement Verizon v. Vonage; Verizon v. Cox and Charter
    • Court of Appeals for the Federal Circuit:
      • Affirmed the claim construction of the ‘574 and ‘711 patents
      • Vacated the judgment on the ‘880 patent because of erroneous claim construction
      • Vacated the damages award
      • Affirmed the injunction as to the ‘574 and ‘711 patents
    • Next steps were to litigate Vonage’s “Design Around” in District Court
    • New Trial on Damages, ‘880 patent infringement/validity
    • Vonage settled case for over $100 million
  • 5. Sprint Patent Enforcement Verizon v. Vonage; Verizon v. Cox and Charter
    • Verizon v. Cox
      • Verizon filed against Cox in the Eastern District of Virginia in January
      • Eight patents are asserted
        • Four patents asserted from the original Vonage case
        • Four new patents asserted that Verizon acquired from MCI
    • Verizon v. Charter
      • Filed against Charter Communications in ED Texas in February
      • Same eight patents asserted
      • ED Texas is a popular plaintiff’s venue
  • 6. Verizon Patent Enforcement Verizon Patents - Scope
    • Previously Asserted
      • Name Translation patents:
        • USP 6,104,711 -- Enhanced internet domain name server.
        • USP 6,282,574 -- Method, server and telecommunications system for name translation on a conditional basis and/or to a telephone number.
      • VoIP Session management patents:
        • USP 6,430,275 -- This patent relates to hybrid PSTN - packet based networks and a control object between the networks that performs session management including authorizing callers, pricing and keeping records of call progress.
        • USP 6,137,869 -- This patent is very similar to the 275 patent.
  • 7. Verizon Patent Enforcement Verizon Patents - Scope
    • Newly asserted Patents:
      • USP 6,970,930 -- &quot;Method and system of providing differentiated services.&quot; It relates to using SIP and other protocols to set up telecommunications at a guaranteed quality of service (QoS) level.
      • USP 6,335,927 -- System and method for providing requested quality of service in a hybrid network. This patent is similar to the above.
      • USP 6,292,481 -- Inter-carrier signaling and usage accounting architecture for internet telephony.
      • USP 6,636,597 -- Method of and system for providing services in a communications network. This patent relates to identifying and ranking resources for use in establishing communications.
  • 8. NTP Patent Enforcement - A few years later NTP - History
    • NTP sued RIM for infringing 5 patents on wireless email over RIM’s blackberry device
    • Patents relate to wireless email delivery through a “push” type of model
    • The RIM case settled for over $600 million
    • RIM launched a Re-Examination proceeding at the Patent Office
      • Re-exam still pending
      • All claims rejected as not patentable
  • 9. NTP Patent Enforcement - A few years later NTP - Aftermath
    • NTP has sued Palm, Verizon Wireless, AT&T, Sprint-Nextel and others
    • Defendants have succeeded in staying the case for the pendancy of the re-exam proceeding
    • The value of the NTP portfolio and the relevance of the portfolio going forward now depends largely on the Patent Office’s re-exam proceeding
  • 10. Other Patent Portfolios
    • Klausner - voicemail display
      • Litigating in TX vs. Vonage and others
      • Some defendants have settled
    • Rates Technology - Least cost routing
      • Litigating all over the place in the VoIP space
      • Seeks to license the industry
    • J2 Communications
      • Large portfolio on unified messaging and message delivery
  • 11. Other Patent Portfolios
    • Web Telephony - Browser controlled routing
      • Litigating in Texas against AT&T, Verizon,
    • C2 - Routing between switches using IP
      • Litigating against carriers including Verizon and others
    • IDT - Speech signal processing, language xlation
      • Asserted one patent against EBay / Skype in New Jersey
    • EBay
      • Sued IDT and its Net2Phone unit, indicating IDT's PennyTalk calling cards infringe a patent for Internet-based telephone calls.
  • 12. Navigating the Patent Landscape Best Practices
    • Obtain copies of the patents and assess relevance to operations
    • Work with a patent attorney on matters of interpretation and applicability of patents
    • Consider getting exculpatory opinions to have in the file to avoid willful infringement
    • Consider contributory infringement issues when dealing with third parties
  • 13. Navigating the Patent Landscape Best Practices
    • Consider design changes to avoid conflict
    • Seek patents on design changes, innovations
    • Collect prior art that is relevant, but not considered by the Patent Office
    • Consider Launching Reexamination To Challenge Validity at the Patent Office
    • Consider invalidity opinions
  • 14. Navigating the Patent Landscape What does the future hold?
    • More patents are being asserted and litigated in the VoIP space
    • The emergence of the industry invites these lawsuits
    • The prudent approach is to “clear” new products and services before introducing them and investigate existing products and services
  • 15. © 2007 Bingham McCutchen LLP 150 Federal Street, Boston, MA 02110-1726 ATTORNEY ADVERTISING To communicate with us regarding protection of your personal information or if you would like to subscribe or unsubscribe to some or all of Bingham McCutchen LLP’s electronic and mail communications, please notify our privacy administrator at privacyUS@bingham.com or privacyUK@bingham.com. Our privacy policy is available at www.bingham.com/privacy.asp. We can also be reached by mail in the U.S. at 150 Federal Street, Boston, MA 02110-1726, ATT: Privacy Administrator, or in the U.K. at 41 Lothbury, London, England EC2R 7HF, ATT: Privacy Administrator, or in the U.S. by telephone at 617.951.8000. This communication is being circulated to Bingham McCutchen LLP’s clients and friends. It is not intended to provide legal advice addressed to a particular situation. Prior results do not guarantee a similar outcome. Circular 230 Disclosure: Internal Revenue Service regulations provide that, for the purpose of avoiding certain penalties under the Internal Revenue Code, taxpayers may rely only on opinions of counsel that meet specific requirements set forth in the regulations, including a requirement that such opinions contain extensive factual and legal discussion and analysis. Any tax advice that may be contained herein does not constitute an opinion that meets the requirements of the regulations. Any such tax advice therefore cannot be used, and was not intended or written to be used, for the purpose of avoiding any federal tax penalties that the Internal Revenue Service may attempt to impose.