Patents - Facebook Ireland Ltd v Voxer IP LLC
Patents Court (Lord Justice Birss) Facebook Ireland Ltd v Voxer IP LLC  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  EWHC 1377 (Pat) on 26 May 2021.
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."
"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  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  EWCA Civ 1292."
"In my view, notwithstanding what Lord Diplock said in Catnic  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."
"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."
"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  to , the judge then considered whether there was infringement by equivalence. He said at :
"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."
"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."
"As things have turned out there is no relevant lack of novelty objection over either item of prior art."
"(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;
"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."
- 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.