Meta told to pay $175m to walkie-talkie techies for infringing IP
Facebook and Instagram Live use same programming described in Voxer patents, says jury
A Texas jury this week ordered Meta Platforms to pay more than $174 million for infringing patents held by walkie-talkie techies at Voxer, who sell an iPhone app that lets you instantly send messages across the internet as you are speaking.
Voxer filed the original patent case [PDF] in Austin in 2020, back when the social media giant was still called Facebook.
At issue were two patents developed by the live "push-to-talk" multi-user streaming comms platform that it said had been infringed by Meta's Facebook Live and Instagram Live.
The company said that Tom Katis, Voxer's co-founder and CEO, first began developing solutions for communication shortcomings he experienced during his overseas military service in 2006.
The idea was that, in a manner reminiscent of a walkie-talkie, the recipient could begin listening seconds after an audio or video message begins, while the sender continued to talk (rather than only being heard after it is recorded and sent).
The US case related to technologies that "enabled transmission of voice and video communications with the immediacy of live communication and the reliability and convenience of messaging," culminating in their applications for patents for technologies allowing "transmission and reception under poor and varying network conditions and regardless of a recipient's availability."
The first, granted in 2012, was US patent 8180030 ('030), enabling "users to review the messages of conversations in either a live mode or time-shifted mode." The second, '557, granted in 2018, covers the delivery of video comms "without first establishing an end-to-end connection over the network between the sender and receiver," among other elements.
During the case, Meta claimed [PDF] that Voxer's delivery method was "an abstract idea comparable to the corporate mailroom" and that both patents were lacking in any inventive concept, attempting to have them declared invalid. Federal judge Lee Yeakel denied the motion in February.
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Voxer, for its part, alleged in its original complaint that Facebook had approached it about a potential collaboration soon after Voxer's app was launched in 2011.
According to the complaint:
By February 2012, Voxer had disclosed its patent portfolio and proprietary technology to Facebook. When early meetings did not result in an agreement, Facebook identified Voxer as a competitor although Facebook had no live video or voice product at the time. Facebook revoked Voxer's access to key components of the Facebook platform and launched Facebook Live in 2015 followed by Instagram Live in 2016. Both products incorporate Voxer's technologies and infringe its patents.
Jurors found for Voxer on all claims this week [PDF] and awarded it running royalties of $174,530,785.
The Register spoke to the platform's then-CTO and co-founder, Matt Ranney, about the code development behind Voxer's technology back in 2011, when the platform was first launched. You can read the interview here.
We have asked Voxer's Katis for comment.
A Meta spokesperson told us: "We believe the evidence at trial demonstrated that Meta did not infringe Voxer's patents. We intend to seek further relief, including filing an appeal."
Voxer launched a similar action against Facebook in the UK and Germany in 2021. In the UK, the high court concluded that Voxer's European Patent (UK) No 2393259 was not infringed by Facebook Live or by live broadcast features on the Instagram apps on iOS. ®