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Facebook Succeed in Invalidating Voxer’s “Live Broadcast” Patent in the UK

27 May 2021

The high court has handed down a judgement in the case Facebook v Voxer. The case concerned European Patent (UK) No. 2 393 259, entitled “Telecommunication and multimedia management method and apparatus” and forms part of an international dispute between the parties relating to the live broadcast features offered by Facebook and Instagram over iOS devices. Voxer alleged that these live broadcast features infringed the patent. The proceedings were started by Facebook as an action for revocation, denying infringement and asserting invalidity of the patent, with Voxer counterclaiming for infringement.

The invention of the patent was intended to enable two modes of conversation. Users can conduct communications in either a near-synchronous or "live" conversation, providing a user experience similar to a standard full duplex phone call, or in a series of back and forth time-delayed transmissions referred to as a “time-shifted mode”. Users engaged in a conversation can transition from the live mode to the time-shifted mode and back again. Two individuals using the system could therefore send recorded voice messages back and forth to each other and review the messages when convenient, or the messages can be sent at a rate where they essentially merge into a live, synchronous voice conversation.

The infringement case was advanced in relation to live broadcast features on the Facebook website and the Facebook and Instagram Apps as they operate on iOS devices but not Android. After consideration of the claims and potential equivalents, the court concluded that the patent was not infringed by any of these live broadcast features. Regardless of this, after considering the available prior art, the court further concluded that the claims were obvious and therefore invalid. The case therefore represents a success for Facebook, although proceedings are ongoing in the US.

Also of interest is the discussion of the so-called “Formstein” defence. This derives from German case law but has been applied in the Netherlands and has a similar effect to some US precedent. A Formstein defence asserts that the patent claim should not be broadened by extending it to equivalents of claim features if the broader scope of protection would not be novel. Thus it is a squeeze argument similar to the Gillette defence. To date, UK courts have recognised that a Formstein defence is a possibility but have yet to apply it. Here Birss LJ found non-infringement without considering the Formstein defence but expressly stated that had it been necessary he would have followed the Formstein approach.

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