Telecommunications Expert Witness Opines on Patent Infringement Case

Case: Sprint Communications Co. L.P. v. Vonage Holdings Corp. United States District Court, D. Kansas.August 7, 2007500 F.Supp.2d 1290

Background: Telecommunications company brought patent infringement suit against their competitor, alleging that the competitor’s voice-over internet protocol (VoIP) infringed 61 claims of seven of its patents for new telecommunications system. The case began when Joe Christie, an employee at Sprint’s Advanced Technology Laboratory, invented a new telecommunications system. A talented developer, he was specialized in SS7 signaling, packet networks, and audio forensics. S7 signaling is the language used by conventional telephone networks to set up calls and communicate between telecommunications components in the Public Switched Telephone Network (PSTN). In 1993, virtually all voice traffic was carried over the PSTN using switches and other well-established components. Joe combined two types of systems in order to create a newer, more efficient model. He invented a series of components and architectures of components that would allow the PSTN to “talk” to packet networks and intelligently set up and route telephone calls across the disparate networks through traditional soft switch technology. Mr. Christie’s invention was significant in that it had the potential to render obsolete major components within the PSTN. Sprint immediately began the process of patenting Mr. Christie’s invention; however, in 2004 they became aware that Vonage was offering residential telephone services that used the Internet to connect calls to and from the PSTN calling this system as VoIP.

Expert witness: Vonage asserted that its VoIP system did not infringe the asserted patents and in support of its defense provided a testimony of the expert witness, Joel M. Halpern. Plaintiff challenged the expert stating that he lacks sufficient knowledge and experience to testify in this case. The court addressed the key issue whether Mr. Halpern is sufficiently qualified to provide the testimony in telecommunication case.

Daubert Challenge: Sprint contends that Mr. Halpern’s qualifications fall far below these requirements. Mr. Halpern has a bachelor degree in mathematics rather than in electrical engineering, computer engineering, or computer science. He also does not have experience inthe telecommunications industry. Although he has had some general exposure to the field, he has never worked for a telecommunications company and telecommunications was not the principal focus of any of his positions. His work on wireless and cellular networks involved data networking, not telephony or the PSTN. Therefore his qualifications fall far behind the requirements of a person of ordinary skill in the industry.

Conclusion: Despite some arguable deficiencies in Mr. Halpern’s qualifications, the court was satisfied that he possess sufficient knowledge, skill, experience, training, or education in the field of the invention as to make it appear that his opinion would rest on substantial foundation and tend to aid the trier of fact in its search for the truth. The court stated the expert does not have to have educational background in computer engineering in order to testify as a telecommunications / cellular technology expert. If the expert has sufficient professional experience in the industry, he should be excluded just because he lacks sufficient educational degree.

Mr. Halpern has more than twenty-seven years of experience in the computer and networking industries. His relevant experience is predominantly with data networks, including projects involving wireless and cellular telephone data networks and their user interface (UI) with the Internet. He has professional experience with Session Initial Protocol (SIP), the signaling protocol used in the Vonage system for establishing a VoIP call. He has served as Chief Technology Officer of a company that designs and builds devices that interface between the Internet and such other networks. He is experienced in ATM technology. Even though his bachelors degree is in mathematics rather than electrical engineering, computer engineering, or computer science, he testified in his deposition that although he does not have a formal degree in computer science, he studied computer science extensively, including some graduate-level classes in computer science. His expert report demonstrates that he clearly possesses relevant technical knowledge that would tend to aid the trier of fact.