Facebook Ireland Ltd (a company incorporated in Ireland) v Voxer IP LLC (a company incorporated under the laws of the State of Delaware)

Hearing dates: 12th, 13th 15th April 2021

Approved Judgment

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

This case is about European Patent (UK) No. 2 393 259 entitled “Telecommunication and multimedia management method and apparatus”. The defendant Voxer contends that a live broadcast feature offered by the claimant Facebook infringes the patent. Facebook denies infringement and contends the patent is invalid. The proceedings were started by Facebook as an action for revocation. Voxer counterclaimed for infringement. The matter has been tried under the Shorter Trials Scheme.

The application for the patent was filed on 29 ^th April 2008 claiming priority from a series of US filings, the earliest of which was made on 28 ^th June 2007. This is the relevant priority date in this case. The patent was granted on 17 ^th August 2016 based on a divisional application.

Voxer made an unconditional application to amend the claims and then made a second unconditional application. The latter is the only set of claims now in issue. They are set out in Annex A. The amendments are objected to on added matter and clarity grounds, and on the basis that they fail to cure the invalidity. The Comptroller has made adverse observations about the amendments. Voxer contends that those observations essentially mirror and are based on points taken by Facebook in the litigation. If the amendments are refused entirely then it is common ground the patent must be revoked. It is conceivable that the only amendments which might be refused are to dependent claims, in which case, despite Facebook's submission to the contrary, I believe the right thing to do in that case would be to invoke the partial validity jurisdiction under the 1977 Act, allow the allowable amendments, refuse those which must be refused and renumber claims accordingly.

In terms of independent validity, the focus of the case has been on claim 1. Claim 5 is alleged to be independently valid and infringed. The allowability of the amendments to produce claims 2, 3, 4, and 10 needs to be considered and claim 10 is said to be independently valid but not infringed.

Voxer contends that the patent is infringed by the live broadcast feature offered to users via the Facebook website and through the Facebook and Instagram Apps as they operate on iOS devices (i.e. devices sold by Apple). Infringement is advanced on a normal construction of the relevant claims and on the basis of the doctrine of equivalents in two respects. Infringement under s60(2) is also alleged in certain respects. On equivalents, in addition to its denial, Facebook also contends it has a Formstein defence.

Voxer had claimed there was infringement by the feature offered via the same Apps as they operate on Android devices. However following clarification of how those Android Apps worked shortly before trial, Voxer withdrew the allegation of infringement. I dismissed that infringement claim and granted a declaration of non-infringement.

Facebook challenges validity on various grounds. The claims are alleged to lack novelty and/or be obvious over two items of 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 alleges the claims are invalid for insufficiency.

Facebook called expert evidence from Dr Tim Kindberg. Dr Kindberg is an expert in distributed systems and has 30 years experience as a platform and application developer. His opinions essentially supported Facebook's case. He was a good witness, seeking to help the court with his answers to questions posed in cross-examination. That does not mean I will necessarily accept everything Dr Kindberg said, for example I have not accepted some of his evidence about what was common general knowledge.

Voxer called expert evidence from Mr Ashley Unitt. Mr Unitt is a software engineer. In 2000 he co-founded what became a market leading media messaging company and served as its Chief Technology Officer for that company for 16 years. His opinions essentially supported Voxer's case.

Facebook submitted that Mr Unitt was argumentative and confused. He was neither of those things. Facebook also submitted that he was at times internally contradictory. The aspect where this point has significance arose from a contrast between his view about what was taught by the patent (which often focussed on conversations) and his broader view about the alleged infringement (which did not). That is a specific issue I have taken into account where it mattered. It is no reason to apply a general discount to his opinions.

Contrary to further submissions of Facebook about Mr Unitt:

i) The fact he could not recollect where a point of detail (half-duplex) had come from was not sinister. Mr Unitt plainly knew what half-duplex communication was. That was not something suggested to him by anyone else. He did not think his use of it to characterise a particular point had been suggested by the lawyers, but given all the discussions which had gone on, he could not say with 100% certainty.

ii) The fact he picked up some patent lawyer speak (such as the phrase “term of art”) and may have misunderstood it does not tell the court anything useful. The idea that he can be criticised for expressing the view that something may involve “an inventive step over” a particular item of prior art is absurd. There is a jargon in patent cases which experts inevitably pick up and use.

iii) The fact he sometimes said a document had to be read as a whole was unexceptional. There may be a specific point about how he approached Munje prior art but it has no wider significance.

iv) His focus on “use cases” was not unfortunate. It was helpful.

v) Mr Unitt did not lose sight of his job as an independent witness.

In my judgment, contrary to Facebook's submissions, Mr Unitt was in fact a good witness, also seeking to help the court with his answers to questions posed in cross-examination. That does not mean I will necessarily accept everything he said either, but I will address specific issues when they arise in context.

The skilled person

The patent is directed to someone (probably a team) concerned with designing and implementing a multimedia communications system. As Dr Kindberg put it, there would be an application programmer with experience in multimedia (voice and video) networking, streaming and messaging. There would also be a back-end developer with knowledge of streaming protocols and responsible for server-side software. I believe in substance these two amount to the same team/person as the one posited by Mr Unitt, who emphasised the need for experience in telecommunications networking, particularly voice over Internet Protocol (VoIP), and the processing and management of media. If there is a difference between them then I prefer Dr Kindberg's formulation because it explicitly highlights the significance of application software (on a mobile device running on a phone or laptop) and of server-side software, and because it explicitly highlights video as well as voice.

Dr Kindberg also contended there was a third member of the team, a mobile user interface developer. Mr Unitt did not agree. However, his disagreement came down to a point about the skills of the team. He agreed that the team would build a system with a user interface, but Mr Unitt's conception of the skilled team was one with sufficient skills to build a workable user interface without input from a specialist. I doubt it matters but if it does, then again I prefer Dr Kindberg's formulation. That is because I am quite satisfied that user interface development skills would be required of the skilled team (and did exist).

The common general knowledge

The law relating to common general knowledge is well known. There is a specific point about geography arising from an alleged distinction between what might be known in the USA as opposed to the UK. It relates to PTT (below). Separately, Voxer submitted that a fact known only to some skilled people is not common general knowledge and also that one may need to take care not to conflate knowledge of the details of something with knowledge that something existed or was possible. I agree with both of these submissions.

There is a great deal of technical background information about telecommunications and standards which is common ground and unnecessary to set out. In this section I address matters of common general knowledge which have a particular bearing on the issues to be decided.

One point is the difference in a communications system between applications which employ a peer to peer model and those which apply a client-server model. Consider two mobile phone devices connected to the...