Patents Post Grant Blog

The Electronic Frontier Foundation (EFF) Case Study

On January 29, 2010 the USPTO ordered ex parte reexamination of claims 1-6 and 13-18 of C2 Communication Technologies’ U.S. Patent 6,243,373 (90/010,716) at the request of the EFF.  On the same day, USPTO ordered a second ex parte reexamination (90/009,637) of claims 1-24 of the ‘373 patent at the request of PaeTec Holdings Corp.^[1] 

The ‘373 patent is directed to a method and apparatus for implementing a computer network/internet telephone system (VoIP).  The patent has been the subject of litigation since 2006, when C2 filed patent infringement suits against AT&T, Inc. (AT&T), Verizon Communications, Inc. (Verizon), BellSouth Corp., Sprint Nextel Corp. (Sprint) and other telecommunications companies. In 2008, AT&T, Verizon and Sprint agreed to take licenses under the patent to settle their litigation. Qwest Communications International, Inc., Global Crossing, Ltd. and Level 3 Communications, Inc. in September 2008, also agreed to settlements and license agreements.

The factual background of this reexamination, concurrent litigation, and multiple reexamination requests, is quite common.  As such, I was especially shocked to see this fairly common occurrence widely reported across Internet news outlets.  Of course, this was before I took the time to review the colorful press release of the EFF. 

The Release identifies the ‘373 Patent as “dangerous” and states that ”[t]he Electronic Frontier Foundation (EFF) has won reexamination of an illegitimate patent on voice-over-Internet protocol (VoIP) that could cripple the adoption of new VoIP technologies.” (emphasis added)

Theatrical language aside, of most interest to me is the characterization of the reexamination as having been “won.”^[2] By the USPTO’s own statistics, roughly 94% of reexamination requests are granted…seems virtually every requestor is a “winner” in that sense.  Likewise, while the granted request indicates that a reasonable examiner may have found the submitted references important, this does not necessarily mean that a prima facie case of unpatentability is presented; clearly, the grant of the reexamination is but a preliminary step and by no means a victory. 

For example, the claims of the ‘373 patent appear to be directed to a technology near and dear to my heart, telecommunication protocols.  The claims appear to require conversion of data to an internet protocol (at least based upon my, in depth, 5 minute review).  In the request, the third parties identify Asynchronous Transfer Mode (ATM) as an Internet protocol consistent with the requirement of the claims. Yet, Internet Protocol appears to be explicitly defined at col. 3 line 63 of the ‘373 Patent as a layer 3 technology (which of course it is).  ATM is a layer 2 technology, the difference between a connectionless protocol (IP) and a connection oriented protocol (ATM) is quite significant.  Likewise, even absent such an explicit definition in the ‘373 patent, at least in my opinion, those skilled in the art would not consider ATM to be an Internet Protocol.  

Surely, for organizations like the EFF which appear to rely on public support for their “patent busting,” colorful press releases have their place; especially when speaking to the radical, anti-software patent fringe. On the other hand, public companies especially, should err on the side of caution to avoid the potential for embarrassment, if not outright shareholder revolt, down the line.

 

---

 [1] The PaeTec Request includes similar art to the EFF request, but pointed out an interesting 1.131 declaration issue. These two requests will likely be merged into a single ex parte reexamination proceeding.

 [2] This information is the opinion of the author, provided for discussion purposes only. Nothing in this blog commentary constitutes legal advice.  The parties to the above noted dispute have no relationship to the author or the Oblon Spivak firm.