Facebook Ireland Ltd v Voxer IP LLC

26 May 2021

Jaani Riordan acted for Facebook in this telecommunications patent trial heard in the Shorter Trials Scheme, which raised issues including the doctrine of equivalents, claim construction, and the Formstein defence.

Facebook commenced revocation proceedings in the STS concerning a patent entitled “Telecommunication and multimedia management method and apparatus”, relying on two pieces of prior art.

Voxer counterclaimed for infringement based on the functionality of the Facebook Live and Instagram Live broadcasting services, relying on the doctrine of equivalents in relation to two claim integers, and made two applications to amend the patent unconditionally.  Facebook and the Comptroller objected to the amendments for added matter and lack of clarity.

After construing the patent claims in issue and examining the operation of Facebook Live and Instagram Live, Birss LJ found that the patent was neither valid nor infringed.  Although the amendments did not add matter or lack clarity, on their correct construction the patent was invalid for obviousness over the prior art.

In any event, the Court held that the patent was not infringed either on a normal construction or on the basis of equivalents, inter alia because the Facebook broadcasting system did not provide a “live communication mode” within the meaning of the claims and did not store a copy of messages at each hop along the network path.  Birss LJ considered (obiter) the question of whether a Formstein defence (that an alleged equivalent lacks novelty or is obvious so that the claim scope must be confined to its normal construction in that respect) exists in English law.  Had it been necessary, his Lordship would have held that such a defence does exist in English law, and would have led to the conclusion that Voxer could not rely on the doctrine of equivalents in this case.

The decision provides one of the first examples of a telecommunications patent case proceeding to judgment in the Shorter Trials Scheme, having been issued in May 2020 and decided in May 2021.  It also adds to a growing list of cases considering the availability of a Formstein defence to infringement by an alleged equivalent.

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