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Facebook wins the patent infringement lawsuit against Voxer in the UK

Release time:

2021-11-17 15:08

Facebook wins the patent infringement lawsuit against Voxer in the UK

In May, the UK High Court found that social media platforms Facebook and Instagram do not infringe a patent owned by Voxer. Furthermore, Facebook succeeded in invalidating Voxer’s “Live Broadcast” patent.

 

Voxer is an American app development company, and it is best known for its free Voxer Walkie Talkie app for smartphones, providing a live “push-to-talk” system and a voice messaging system. The patent in issue was EP (UK) 2 393 259 entitled “Telecommunication and Multimedia Management Method and Apparatus”. The invention relates to enabling two-mode conversation. Users can communicate in either a near-synchronous or “live” conversation. The two modes provide a user experience in a standard full-duplex phone call or in a series of back and forth time-delayed transmissions. Therefore, two individual users can send recorded voice messages back and forth to each other and review the messages whenever convenient, or at a rate where they essentially merge into a live, synchronous voice conversation.

 

In 2020 in the UK, Voxer contended that Facebook infringed the EP259 patent through Facebook and Instagram’s live functionality feature over the iOS operating system. However, Facebook then counterclaimed the invalidity in 2021 as an action for revocation and denying infringement. Facebook challenged the validity on various grounds. Facebook mentioned two reference documents and stated that the claims lack novelty and/or are obvious over the prior art: WO 2006/121550 (Atarius) and US 2006/0003740 A1 (Munje). Both were published before the earlier claimed priority date of the patent. Facebook also stated that the claims are invalid for insufficiency. The patent was based on a lack of novelty and/or obviousness over two pieces of prior art cited by Voxer in its patent application.

 

At first, presiding judge Birss allowed Voxer’s two unconditional claims to amend the patent, which made the patent novel, not obvious, and sufficient. Finally, however, Birss found the patent obvious over US 2006/0003740 A1 (Munje). As a result, the UK High Court has decided that EP 259 is non-infringed and invalid, and revoked the patent. The case therefore represents a success for Facebook in the UK, although proceedings are ongoing in the US and Germany.

 

In the US and Germany, decisions have gone the other way for Facebook. In May 2021, the Patent Trial and Appeal Board in the Western District of Texas found four Voxer patents valid. Furthermore, in June, Munich Higher Regional Court found that the ‘Live’ functionality in the Facebook and Instagram iOS apps and the Facebook website infringed the Voxer patent.

 

Coming from different decisions in three countries, the patent battle between the two companies is still hanging in the balance.

Reference:

  1. Facebook and Voxer take live broadcast patent dispute to Europe - JUVE Patent (juve-patent.com)
  2. Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 (Pat) (19 March 2021) (bailii.org)
  3. Facebook Ireland Ltd v Voxer IP LLC [2020] EWHC 1806 (Pat) (07 July 2020) (bailii.org)
  4. https://www.bailii.org/ew/cases/EWHC/Patents/2021/1377.html
  5. https://www.theregister.com/2021/04/16/facebook_voxer_ip_patent_trial/
  6. https://www.mondaq.com/uk/patent/1076680/facebook-ireland-limited-v-voxer-ip-llp
  7. https://jakemp.com/en/news/facebook-succeed-in-invalidating-voxers-live-broadcast-patent-in-the-uk

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