Patents - Facebook Ireland Ltd v Voxer IP LLC


Jane Lambert

Patents Court (Lord Justice Birss) Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat) (26 May 2021)

This was an action by Facebook Ireland Ltd ("Facebook") for the revocation of EP 2 393 259 B1 ("the patent") held by Voxer IP LLC ("Voxer") and a counterclaim by Voxer for infringement of the patent. Voxer applied for the amendment of its patent and it was common ground that the patent would have to be revoked if the application had been refused. Facebook objected to the amendments on several grounds including added matter.   It also contended that amendment would not cure the patent's invalidity.  The action and counterclaim came on for trial before Lord Justice Birss between 12 and 15 April 2021. He delivered judgment in Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 1377 (Pat) on 26 May 2021.

The Patent

The invention for which the patent was granted is called a telecommunication and multimedia management method and apparatus. It is described as follows in the specification:

"This invention pertains to telecommunications, and more particularly, to a telecommunication and multimedia management method and apparatus that enables users to review the messages of conversations in either a live mode or a time-shifted mode and to transition the conversation back and forth between the two modes, participate in multiple conversations and to archive the messages of conversations for later review or processing."

Lord Justice Birss discussed the patent between para [35] and para [67] of his judgment.  The amended claims appear in the Annex.  The claims alleged to have been infringed are 1 and 5. Facebook challenged the validity of the patent on grounds of anticipation or obviousness over WO2006/121550 and US2006/0003740 A1 and insufficiency.


The judge considered Voxer's application to amend.  As I said above. Facebook objected to the application on grounds of added matter and lack of clarity. Objections had also been raised by the Comptroller.   His lordship addressed the lack of clarity objections between [118] and [132].  He said at [118]:

"The law is that although lack of clarity in claim language per se is not a ground on which a claim can be found invalid, unless it amounts to a species of insufficiency (which species is now being referred to as uncertainty, for the sake of clarity), nevertheless lack of clarity in claim language which would be introduced by an amendment is a reason for refusing that amendment under s75 of the 1977 Patents Act."

He discussed the lack of clarity objections but rejected them.

Turning to added matter, he said at [133]:

"The test requires a comparison between the application as filed and the patent as sought to be amended (as a whole). The fundamental question is whether or not the skilled person would learn anything different from the patent as amended compared to what they would learn from the application as filed. Aldous J (as he then was) explained how to carry out the comparison in Bonzel v. Intervention [1991] RPC 553. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly. This is the universal test for added matter. It applies regardless of whether the objection raised is said to belong to some particular sub-species, such as intermediate generalisation. The most up to date summary of the law in this area, picking up the other relevant cases, is in paragraphs 55-60 of the judgment of Floyd LJ in Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd [2020] EWCA Civ 1292."

Facebook had contended that  “the essential policy behind the rule against adding matter is to prevent the patentee from obtaining a different monopoly to that which the application originally justified, especially where that would not be ascertainable to third parties from the application”, citing Conversant at paragraph 55 in support (in fact the words relied on are based on para 10 of AP Racing v. Alcon Components [2014] EWCA Civ 40). His lordship rejected that contention at [134]:

"To extract those words from the authorities and then place emphasis on them in the way Facebook has, risks making a mistake. There is no doubt that the law of added matter is there to protect third parties by limiting the patentee’s room for manoeuvre by reference to the application as filed. It is also true that it prevents the patentee from obtaining certain kinds of different monopolies. But some differences between the monopoly claimed in the granted patent as opposed to whatever was claimed or disclosed in the application as filed are unproblematic and lawful, and are not prevented by the law of added matter. It is an error to focus simply on the idea of a difference in the monopolies and it is not what the previous cases were talking about. There is no substitute for applying the law as a whole as explained in Conversant using the comparison explained in Bonzel."

The main objection had been addressed by re-amendment.  The judge dealt with the remaining objections to claims 1, 3 and 5 between paras [138] to [148].  He allowed the amendments that appear in the Annexe.


The judge said at para [68] that the law relating to claim construction was familiar and did not need to be set out in his judgment.  For the benefit of my readers, that law is succinctly expressed in para [54] of Lord Neuberger's judgment in Eli Lilly v Actavis UK Ltd and others  [2017] Bus LR 1731, [2017] UKSC 48, [2017] RPC 21:

"In my view, notwithstanding what Lord Diplock said in Catnic [1982] RPC 183, 242, a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention. It is also apparent that the two issues comply with article 1 of the Protocol in that they involve balancing the competing interests of the patentee and of clarity, just as much as they seek to balance the encouragement of inventions and their disclosure with the need for a competitive market. In my view, issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence."

At [69] Lord Justice Birss broke claim 1 into integers and then analysed each of those integers between [70] and [116].

Lord Justice Birss reminded himself at [149] that the infringement case was advanced in relation to the Facebook website and the Facebook and Instagram Apps as they operate on iOS devices. In each case what was alleged to infringe was a live broadcast feature. The three live broadcast features were not identical to one another but they were very similar.  In the next 5 paragraphs, the judge discussed how those apps worked.  He described the live broadcast feature between [156] and [166].  He then considered whether Facebook's app fell within claim 1 as construed and decided that it did not.

S.60 (2) of the Patents Act 1977 provides:

"Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom."

His lordship dealt with that point shortly at [200]:

"On the conclusions I have reached this point does not arise. It was there to cover a case in which the Facebook systems did not infringe because the ultimate duration for which media was stored in the store on the user’s device was not under the control of the application software but rather was under the control of the operating system. In that case Voxer contended that the application software would be means essential under s.60 (2) and the supply of that software would infringe (Facebook denied the point itself but did admit the relevant knowledge). If I had reached the relevant conclusion which meant the point was in issue, I would have found in Voxer’s favour on this point."

From para [201] to [208], the judge then considered whether there was infringement by equivalence.  He said at [201]:

"One of the equivalents arguments was advanced on the premise that the requirement for persistently storing the incoming message was not satisfied because the retrieval function in the live broadcast feature was supplemented by network storage. It does not arise."

However, he added:

"in case this matter goes further I will say that I was not convinced that the live broadcast feature, if it does not satisfy the claim in that respect, would infringe by the doctrine of equivalents."

On a second argument relating to storage at each hop mentioned between [203] and [207], the judge was more amenable to Voxer.  He decided each of the Actavis questions in its favourHowever, Facebook contended that if there was an argument that it had infringed by equivalence then the Formstein defence would apply.


The Formstein defence is a German doctrine that a claim cannot be infringed by equivalence if the equivalent is not patentable for want of novelty, obviousness or for some other reason.  There is no reason why it should not apply in the UK because it is similar to the ratio of the House of Lords' decision in Gillette Safety Razor Co v Anglo-American Trading Co Ltd [1913] 30 RPC 465. Lord Justice Birss described the Formstein defence as "an extension of the Gillette defence to a case of equivalents so that if the Formstein defence is made out, it leads to the conclusion that there is no scope for equivalents in the given circumstances and the patent’s scope must be held to its normal construction" at [209].  He said at [211]:

"So imagine a case in which a claim on its normal construction is valid and not infringed, but a defendant’s device is (i) found to infringe by the doctrine of equivalents but also (ii) found to be obvious over the prior art. Is the right answer that the claim is infringed but invalid because its proper scope, taking into account equivalents, encompasses something obvious over the prior art; or is it valid but not infringed on the footing that part of the law of equivalents mandates that if these are the facts the equivalents doctrine does not expand the claim? Either answer can be justified logically. Indeed, if the matter was free from authority, given the way the scope of the claim is defined in the EPC itself, one might think the invalidity approach is a purer application of the letter of the law. After all it is how equivalents worked when they were taken into account as part of purposive construction before Actavis."

The judge noted that Formstein had been followed in the Netherlands and that the USA had a similar doctrine (Jang v Boston Scientific Nos 2016-1275, 2016-1575 29th Sept 2017 and We Care v Ultra-Mark 930 F. 2d 1567, 1564-65).  Although he did not have to decide the point, he would have held that "the right approach is the Formstein approach so that the conclusion if the equivalent device lacks novelty or is obvious is that the claim scope must be confined to its normal construction in that respect."


Lord Justice Birss dismissed the want of novelty objection peremptorily at [218]:

"As things have turned out there is no relevant lack of novelty objection over either item of prior art."


He referred to Pozzoli Spa v BDMO SA and another  [2007] Bus LR D117, [2007] FSR 37, [2007] EWCA Civ 588, [2007] BusLR D117 but did not see the need to set out the Windsurfing/Pozzoli test in his judgment. It is formulated at para [23] of Lord Justice Jacob's judgment in that appeal:

"(1) (a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

One of the conditions for the grant of a patent is that the invention involves an inventive step (see s. 1 (b) of the Patents Act 1977).   The words "inventive step" are defined as follows at s.3:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above)."

Lord Justice Jacob's test is intended to apply those sections in a consistent and systematic way,

Lord Justice Birss identified the skilled addressee as a team consisting of an application programmer with experience in multimedia (voice and video) networking, streaming and messaging and a back-end developer with knowledge of streaming protocols and responsible for server-side software at para [13] of his judgment.   He set out their common general knowledge between paras [15] and [34]. As for the second Pozzoli question, the judge said at [220]:

"In terms of identifying the inventive concept, this is a case in which is it unhelpful to paraphrase an abstraction over and above the claim language."

He analysed US2006/0003740 A1 between [221] and [241] and identified differences between the two inventions.   Finally, he considered whether those differences would have been obvious to the person skilled in the art or whether they required any degree of invention between [242] and [257] and concluded that claims 1 and 5 would have been obvious over that patent application,

The judge carried out the same exercise in respect of  WO2006/121550 between [258] and [267] but decided that claims 1 and 5 of the patent in suit were not obvious over WO2006/121550.


Facebook had contended that: 
  • the term “asynchronous messages” was wholly unclear; 
  • the skilled person would be unable to “demarcate” videos into messages; and 
  • the patent was no more enabling than the prior art and therefore subject to various squeezes.
His lordship considered each of those contentions between [275] and [282] before rejecting them.


The learned Lord Justice allowed the amendments in the Annex, he concluded that the amended claims were valid but that that the patent had not been infringed.


This case considers claim added matter, amendment of claims, claim construction, the Formstein defence and obviousness.  It is therefore likely to feature in the textbooks and skeleton arguments.   Anyone wishing to discuss this case or any of the issues discussed in it may call me on 020 7404 5252 during office hours or send me a message through my contact form at other times. 


Popular posts from this blog

Copyright - Ashley Wilde Group Ltd. v BCPL Limited

Copyright in Photographs: Temple Island Collections and Creation Records

What to do about the new Practice Direction - Pre-Action Conduct