On January 7, plaintiff Voxer filed a complaint against defendants Facebook and Instagram (Voxer, Inc. and Voxer IP LLC v. Facebook, Inc. and Instagram LLC 6:20-cv-00011-ADA) for patent infringement. The complaint was filed in the Texas Western District Court; the court is known for its patent infringement cases. Voxer is represented by Quinn Emanuel Urquhart & Sullivan.
The patents-in-suit are U.S. Patent Nos. 8,180,030; 9,634,969; 10,109,028; 10,142,270; and 10,511,557. Voxer alleged that the Facebook Live and Instagram Live live-streaming features infringe on its patents and technology.
Voxer co-founder and CEO, Tom Katis, and his team “began developing communications solutions … [that] enabled transmission of voice and video communications with the immediacy of live communication and the reliability and convenience of messaging. The technologies allowed transmission and reception under poor and varying network conditions and regardless of recipient availability.” Voxer launched its Voxer Walkie Talkie app in 2011 and was approached by Facebook for a possible collaboration. In 2012, Voxer disclosed its portfolio of patents and exclusive technology. Facebook viewed Voxer as a competitor and denied it access to key pieces of its platform, although neither company had live video or voice during this time. It was not until 2015 and 2016 when Facebook and Instagram launched their respective live components.
Voxer has alleged that Facebook and Instagram have infringed directly and indirectly through the creation and sale of their respective Live components and features and through the existence of the feature both on the apps and on servers that power the features.
The ’030 patent addresses “a specific improvement to the way computers operate, including by progressively transmitting streaming media over a network as the streaming media is created and persistently stored, therefore enabling hybrid digital communications that can be both real-time and time-shifted; and by allowing a progressive media stream which can be sent synchronously while another stream is received.”
The ’969 Patent improves computer operation by using “a late-binding communication system where a sender has the ability to transmit video media before or at the same time as an active delivery route over a communication network to the recipient is discovered.”
The ’028 Patent uses “an embeddable communications software module with an application programming interface that allows outgoing media to be progressively transmitted to an external communications device while the outgoing media is being created by the user.” It also uses “a message behavior policy to control how the embeddable communications software module responds to incoming messages or to control how to render incoming messages in a near real time mode or a time-shifted mode.”
The ’270 Patent “progressively transmit[s] streaming media over a network as the streaming media is created and persistently stored, therefore enabling hybrid digital communications that can be both real-time and time-shifted; and by delivering video communication without first establishing an end-to-end connection over the network between the sender and receiver.”
The ’557 Patent improves computer operation by “enabling hybrid digital communications that can be both real-time and time-shifted; by generating two or more degraded versions of a streaming video message and transmitting an appropriate degraded version to each recipient; and by trans-coding the video media of a message.”
Facebook and Instagram have allegedly infringed upon multiple claims of Voxer’s patents through Facebook Live and Instagram Live. For example, they infringed upon claim 1 of the ’030 Patent, which states, “[a] computer readable application embedded in a non-transitory computer readable medium and intended to run on a communication device.” Voxer alleged that Facebook and Instagram’s accused products infringe on this claim because “the Facebook and Instagram mobile applications are stored in a flash memory on mobile communication devices.”
Further, according to the complaint, Voxer warned Facebook and Instagram about their infringement, which they ignored and continue to infringe upon.
Voxer has sought injunctive relief and compensation for damages.
