Vonage appeals for retrial in Verizon patent spat

A pivotal US Supreme Court ruling designed to make it easier to challenge obvious patents has prompted Vonage to ask for a new trial in an ongoing dispute with Verizon.

One day after the high court released a unanimous opinion widely viewed as one of the most sweeping changes to patent law in years, the struggling internet phone company asked the US Appeals Court for the Federal Circuit to put its pending appeals process on hold and send the case back to the lower court for a new trial.

Vonage interim CEO Jeffrey Citron voiced confidence that the decision would have "positive implications" for his company's patent battle with the US' second-largest phone company.

In a statement, Vonage chief legal officer Sharon O'Leary said: "According to the Supreme Court's ruling, if you patent an orange picker, and then someone else comes along and puts a glove on it to protect the oranges against bruising, you can't patent this new invention as 'novel' as it is just an obvious improvement of the original invention. The Supreme Court's decision thus focuses on keeping only what's truly novel and original protected by patents."

In a court motion, attorneys for Vonage argued that the jury in the original trial was instructed to weigh the validity of Verizon patents based on a test for patent obviousness that the Supreme Court has now ruled is too rigid, making it harder to challenge suspect patents.

The jury went on to decide in March that three Verizon patents were valid and had been infringed by Vonage, which carried a damages award of $58m, plus royalties on future sales.

Because that conclusion was based on what Vonage claims are instructions contrary to the Supreme Court's latest ruling, questions remain about whether the patents at issue are even valid. The motion suggests the appeals court need not waste its time reviewing the merits of the lower court verdict if validity of the patents remains up in the air and should instead order a new trial.

Verizon deputy general counsel John Thorne dismissed the latest Vonage action and said his company planned to file a brief in response shortly. "There is no merit to Vonage's motion," he said through a company representative. "It's a delaying tactic to avoid final resolution of the appeal."

Vonage has consistently maintained that its service does not infringe on three Verizon patents in question, which deal with technologies involving connection of voice over IP calls to the traditional phone network, some features for implementing call-waiting and voicemail services, and VoIP calls using wi-fi handsets. It has said it relies on commercial, off-the-shelf technology.

Anne Broache writes for CNET News.com