Facebook Ireland Ltd v Voxer IP LLC

For patent construction, “live” and “time-shifted” communication modes are assessed by reference to the user experience of a conversation. They form a continuum of delay, rather than distinct categories based solely on user choice. A method must support both modes using the same media.

“Asynchronous messages” are messages whose timing can be varied relative to one another; they may still produce a near-live experience. Persistent storage requires storage for later retrieval, but not permanent retention. In an “each hop” limitation, each relevant application server with storage capacity must store the message.

A live broadcast with an unavoidable ten-second delay did not support a live conversational mode. The patent was not infringed, but the amended claims were invalid for obviousness over Munje.

Facebook Ireland Ltd brought proceedings seeking revocation of European Patent (UK) No 2 393 259, concerning telecommunications and multimedia management. Voxer IP LLC counterclaimed for infringement based on Facebook and Instagram live-broadcast features operating through iOS applications and the Facebook website.

The court considered amendments to the claims, construction, added matter, clarity, infringement, equivalents, novelty, obviousness and insufficiency. The principal prior-art references were Atarius and Munje. An Android infringement allegation had been withdrawn before trial.

1. Construction. The live and time-shifted modes were modes of conducting a conversation. “Live” included a truly live or near-live experience, while appreciable delay placed the communication in the time-shifted mode. The distinction depended on the timing relationship between the incoming and outgoing messages. The claim required the same media to be reviewable in both modes.
2. “Asynchronous messages” meant messages capable of having their timing varied relative to one another. They could be rendered sufficiently quickly to produce a telephone-like experience. The claim did not require voice-only capability: a method conveying combined voice and video was sufficient. Sending a message without first establishing a connection meant without first establishing an end-to-end connection with the second device; a client-server architecture was likely, but did not automatically infringe.
3. Persistent storage required non-volatile storage retained for later retrieval. It need not be permanent. The temporary iOS tmp storage qualified because it supported later uploading or saving. The viewing-device cache also qualified where it permitted later replay after pausing or rewinding. RAM buffering and computer swapping did not.
4. “Each hop” referred to relevant application servers, not merely underlying network infrastructure. Storage was required at every relevant server having capacity to store the messages. Facebook’s networks included relevant servers which could store but did not store the messages, so this requirement was not met.
5. The proposed amendments satisfied the added-matter test. The court rejected the objections to the time-shifted mode, asynchronous-message rider, each-hop wording, and claims 3 and 5. The construction of “support” and “seamlessly transition” was sufficiently clear.
6. The live-broadcast features had a ten-second unavoidable transmission delay. They therefore did not support a live conversational mode. The website version also lacked the required outgoing persistent storage, while the application versions failed the each-hop requirement. The claim was not infringed.
7. The patent was novel and not obvious over Atarius. Claim 1 and claim 5 were obvious over Munje, including the obvious implementation of video, persistent local and network storage, and one-hop application-server architecture. The insufficiency objections failed.
8. The court did not need to decide the equivalents issues. It nevertheless indicated that the Formstein approach would be adopted in an appropriate case, and that the each-hop equivalent would otherwise have been available on the facts assumed.

The amendments were allowed. The patent was invalid for obviousness over Munje and was not infringed by the pleaded Facebook features.