`Voxer, Inc. and Voxer IP LLC
`
`Plaintiffs,
`
`
`v.
`
`Facebook, Inc. and Instagram LLC
`
`
`Civil Action No. 6:20-cv-00011
`
`
`Jury Trial Demanded
`
`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 1 of 42
`
`
`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Defendants.
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiffs Voxer, Inc. and Voxer IP LLC (collectively “Voxer”) assert the following
`
`claims for patent infringement against Defendants Facebook, Inc. (“Facebook”) and Instagram
`
`LLC (“Instagram”), and allege as follows.
`
`INTRODUCTION
`
`1.
`
`Voxer brings this action to redress Facebook and Instagram’s extensive
`
`unauthorized use of its patented communications technologies.
`
`2.
`
`Tom Katis is Voxer’s co-founder and served as CEO until 2015. He reenlisted in
`
`the United States Army after the attacks of September 11, 2001, and served as a Special Forces
`
`Communications Sergeant in a combat deployment to Afghanistan. When his combat unit was
`
`ambushed in Kunar Province in 2003, Mr. Katis coordinated medevac, tactical reinforcements,
`
`and close air support under enemy fire. He completed his mission but experienced the
`
`shortcomings of existing communications systems. These systems could operate only in real-
`
`time or after complete message composition, and were ill-suited for time-sensitive
`
`communications with multiple groups in a highly disruptive environment.
`
`
`
`1
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 2 of 42
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`3.
`
`Mr. Katis and his team began developing communications solutions in 2006 to
`
`remedy these shortcomings. The new technologies 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.
`
`4.
`
`Voxer launched the Voxer Walkie Talkie app in 2011. It became an immediate
`
`success and was named Best Overall App in the First Annual Silicon Valley Business App Awards
`
`in 2013.
`
`5.
`
`Facebook approached Voxer about a potential collaboration soon after the app’s
`
`launch. 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.
`
`NATURE OF THE ACTION
`
`6.
`
`This is a civil action for infringement under the patent laws of the United States of
`
`America, 35 U.S.C. § 1 et seq.
`
`7.
`
`Voxer is the owner of all rights, title, and interest in U.S. Patent Nos. 8,180,030;
`
`9,634,969; 10,109,028; 10,142,270; and 10,511,557 (collectively, the “Asserted Patents”).
`
`8.
`
`Defendants have infringed and continue to infringe, directly and indirectly, one or
`
`more claims of Voxer’s Asserted Patents by making, using, selling, and offering to sell the
`
`Facebook and Instagram mobile applications, mobile devices running the Facebook or Instagram
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`mobile applications, and systems, servers, and services used with Facebook Live or Instagram
`
`
`
`2
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 3 of 42
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`Live in the United States, including in this District. Voxer seeks injunctive relief and monetary
`
`damages.
`
`THE PARTIES
`
`9.
`
`Plaintiff Voxer, Inc. is a Delaware corporation with its principal place of business
`
`at 1185 Mission St., San Francisco, California. Plaintiff Voxer IP LLC is a Delaware limited
`
`liability company and the legal owner by assignment of the Asserted Patents, which were duly
`
`and legally issued by the United States Patent and Trademark Office (“USPTO”). Voxer IP LLC
`
`is a wholly owned subsidiary of Voxer, Inc.
`
`10.
`
`Defendant Facebook is a Delaware corporation with a principal place of business
`
`at 1 Hacker Way, Menlo Park, California. Facebook maintains offices in Austin, Texas, operates
`
`and owns the facebook.com and instagram.com websites, and markets, offers, and distributes the
`
`Facebook Live and Instagram Live services, as well as the Facebook and Instagram applications
`
`for mobile and other devices throughout the United States including in this District.
`
`11.
`
`Defendant Instagram is a Delaware limited liability company. Instagram is a
`
`wholly owned subsidiary of Facebook that operates and owns the instagram.com website. It
`
`markets, offers, and distributes the Instagram Live service and the Instagram application for
`
`mobile and other devices throughout the United States including in this District.
`
`12.
`
`Each of the Defendants directly and indirectly develops, designs, manufactures,
`
`distributes, markets, offers to sell, and sells infringing products and services in the United States,
`
`including in this District, and otherwise purposefully directs infringing activities to this District
`
`in connection with the facebook.com and instagram.com websites, the Facebook Live and
`
`Instagram Live services, the Facebook and Instagram applications for mobile and other devices,
`
`and devices running the Facebook or Instagram applications.
`
`
`
`3
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`13.
`
`Defendants have been and are acting in concert, and are otherwise liable jointly,
`
`severally, or otherwise for relief related to or arising out of the same transaction, occurrence, or
`
`series of transactions or occurrences related to the making, using, selling, offering for sale, or
`
`otherwise distributing the facebook.com and instagram.com websites, the Facebook Live and
`
`Instagram Live services, the Facebook and Instagram applications for mobile and other devices,
`
`and devices running the Facebook or Instagram applications in this District.
`
`14.
`
`In addition, this action involves questions of law and fact that are common to all
`
`Defendants. For example, Facebook and Instagram use at least some common servers and
`
`software to provide the infringing Facebook Live and Instagram Live services. As another
`
`example, in 2014, Facebook migrated Instagram data from third party servers onto its own data
`
`centers.1 Accordingly, Facebook is acting in concert with Instagram in connection with the
`
`provision of their live messaging services.
`
`JURISDICTION AND VENUE
`
`15.
`
`This is a civil action for patent infringement arising under the patent laws of the
`
`United States, 35 U.S.C. § 1 et seq. This Court has subject matter jurisdiction over the matters
`
`asserted in this Complaint under 28 U.S.C. §§ 1331 and 1338(a) and 35 U.S.C. §§ 271 et seq.
`
`16.
`
`This Court has personal jurisdiction over Facebook in accordance with due
`
`process and/or the Texas Long Arm Statute because, in part, Facebook “recruits Texas residents,
`
`directly or through an intermediary located in this state, for employment inside or outside this
`
`state.” Tex. Civ. Prac. & Rem. Code § 17.042(3).
`
`17.
`
`This Court has personal jurisdiction over Facebook, in part because Facebook
`
`does continuous and systematic business in this District, including by providing infringing
`
`
`1 Instagram Engineering, Migrating from AWS to FB (June 25, 2014), https://instagram-
`engineering.com/migrating-from-aws-to-fb-86b16f6766e2.
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`4
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 5 of 42
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`products and services to residents of this District that Facebook knew would be used within this
`
`District, and by soliciting business from residents of this District.
`
`18.
`
`For example, Facebook is subject to personal jurisdiction in this Court because,
`
`inter alia, it has a regular and established place of business at its offices in this District, including
`
`Facebook offices located in Austin, Texas, and elsewhere in Texas.2 The Facebook Austin
`
`location is its fourth-largest office, and Facebook employs more than 1,200 people in Austin.3
`
`The Travis County Appraisal District website indicates that Facebook owns property in this
`
`judicial district appraised at a total of $26,976,598 at the following addresses: 300 West 6th
`
`Street 1000, Austin, Texas 78701; 600 Congress Avenue 1700, Austin, Texas 78701; 221 West
`
`6th Street 300, Austin, Texas 78701; 11601 Alterra Parkway 1000, Austin, Texas 78758; and
`
`11801 Domain Drive Floor 2, Austin, Texas 78758.4
`
`19.
`
`Facebook’s Austin offices are a regular and established places of business at least
`
`because these locations include many members of Facebook’s important teams, including
`
`Software Engineering, Legal, Finance, Facilities & Admin, Enterprise Engineering, People &
`
`Recruiting, Design & User Experience, Infrastructure, Data & Analytics, Sales & Marketing,
`
`
`2 The Facebook Austin office expanded to a large office building known as “Third + Shoal” and
`has multiple addresses listed, including 607 West 3rd Street, Austin, Texas 78701. See Cindy
`Widner, Facebook’s New Austin Office Has 14 Art Installations and a Jam Room (Sept. 11,
`2019), https://austin.curbed.com/2019/9/4/20849712/facebook-new-office-austin-open.
`Facebook takes up “most of the space” in this 29-story building, an estimated 256,500 square
`feet of office space of the 345,000 square feet available. Id. Facebook maintains, or previously
`maintained, a number of additional offices in this judicial district, including at 300 West 6th
`Street, Austin, Texas 78701, 11601 Alterra Parkway, Austin, Texas 78758, and 13011 McCallen
`Pass, Building D, Austin, Texas 78753.
`3 Id.
`4 Property Search Options, Travis CAD, http://propaccess.traviscad.org/clientdb (search in
`search bar for “Facebook”) (last visited Jan. 6, 2020).
`
`
`
`5
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 6 of 42
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`WhatsApp, and Global Operations.5 Facebook is currently advertising approximately 110 jobs in
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`Austin.6
`
`20.
`
`Based on publicly-available information, since 2012, Facebook has been the
`
`employer of approximately 125 recipients of H-1B visas who work and reside in Austin.7
`
`21.
`
`Facebook, directly and through agents, regularly conducts, solicits, and transacts
`
`business in this District and elsewhere in Texas, including through the facebook.com and
`
`instagram.com websites, the Facebook Live and Instagram Live services, the Facebook and
`
`Instagram applications for mobile and other devices, and devices running the Facebook or
`
`Instagram applications.
`
`22.
`
`In particular, Facebook has committed and continues to commit acts of
`
`infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, distributed, offered
`
`for sale, and sold infringing products in Texas, including in this District, and engaged in
`
`infringing conduct within and directed at or from this District. The infringing facebook.com and
`
`instagram.com websites, the Facebook Live and Instagram Live services, the Facebook and
`
`Instagram applications for mobile and other devices, and devices running the Facebook or
`
`Instagram applications have been and continue to be distributed to and used in this District.8
`
`Facebook’s acts cause injury to Voxer, including injury suffered within this District.
`
`
`5 See Jobs in Austin, TX, Facebook, https://www.facebook.com/careers/locations/austin (last
`visited January 6, 2020).
`6 Id.
`7 Facebook, H-1B Data,
`https://h1bdata.info/index.php?em=facebook&job=&city=austin&year=All+Years (last visited
`Jan. 6, 2020).
`8 For example, the City of Austin hosted a “Facebook Live Panel Discussion” from Austin City
`Hall in April 2019. Press Release, City of Austin, City of Austin to Host Facebook Live Panel
`Discussion on Venue Sustainability, (Apr. 25, 2019), http://austintexas.gov/news/city-austin-
`host-facebook-live-panel-discussion-venue-sustainability.
`
`
`
`6
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`

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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 7 of 42
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`23.
`
`This Court has personal jurisdiction over Instagram in accordance with due
`
`process and/or the Texas Long Arm Statute because, in part, Instagram “recruits Texas residents,
`
`directly or through an intermediary located in this state, for employment inside or outside this
`
`state.” Tex. Civ. Prac. & Rem. Code § 17.042(3).
`
`24.
`
`This Court has personal jurisdiction over Instagram, in part because Instagram
`
`does continuous and systematic business in this District, including by providing infringing
`
`products and services to the residents of this District that Instagram knew would be used within
`
`this District, and by soliciting business from the residents of this District. For example,
`
`Instagram is subject to personal jurisdiction in this Court because, inter alia, Instagram directly
`
`and through agents regularly conducts, solicits, and transacts business in this District and
`
`elsewhere in Texas, including through the instagram.com website, the Instagram application, and
`
`devices running the Instagram application.
`
`25.
`
`In particular, Instagram has committed and continues to commit acts of
`
`infringement in violation of 35 U.S.C. § 271, and has made, used, marketed, distributed, offered
`
`for sale, and sold infringing products in Texas, including in this District, and engaged in
`
`infringing conduct within and directed at or from this District. The infringing instagram.com
`
`website and Instagram application have been and continue to be distributed to and used in this
`
`District. Instagram’s acts cause injury to Voxer, including within this District.
`
`26.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b) because a
`
`substantial part of the events or omissions giving rise to the claims occurred in this District, and
`
`because Defendants have committed acts of infringement in this District and have a regular and
`
`established place of business in this District.
`
`
`
`7
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 8 of 42
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`27.
`
`In particular, Facebook has a regular and established place of business located at
`
`607 West 3rd Street, Austin, Texas 78701.
`
`28.
`
`Instagram is a wholly owned subsidiary of Facebook. Facebook does not
`
`separately report revenue from Instagram in its filings to the Securities Exchange Commission,
`
`but rather reports combined revenue from its various products including Facebook and
`
`Instagram. Market analysis indicates that Facebook and Instagram and their respective products
`
`are viewed in the market as an integrated package with each of the products benefiting from
`
`substantial network effects.9
`
`29.
`
`On information and belief, Facebook not only “owns” but also “operates”
`
`Instagram, including the cooperative development, improvement, and support of Instagram’s
`
`services. Instagram’s Data Policy describes “the information [Instagram] process[es] to support
`
`Facebook, Instagram, Messenger, and other products and features offered by Facebook.”10 On
`
`further information and belief, Facebook and Instagram have endeavored to integrate their
`
`products from a technical standpoint, including, but not limited to: linking Instagram and
`
`Facebook accounts;11 allowing users to double-post Instagram stories directly to Facebook from
`
`the Instagram app;12 offering a unified messages inbox that lets businesses see and reply to their
`
`
`9 See Max A. Cherney, The YouTube and Instagram Secret that Google and Facebook Don’t
`Want You to Know (Jan. 29, 2018), https://www.marketwatch.com/story/the-youtube-and-
`instagram-secret-that-google-and-facebook-dont-want-you-to-know-2018-01-26 (“For some
`analysts, the question of breaking out revenue for Instagram is moot, however, because the
`company essentially sells ads for Facebook and Instagram as a single package . . . .”).
`10 See Instagram, Data Policy (Apr. 19, 2018), https://help.instagram.com/155833707900388.
`11 See Instagram, Linking Accounts, https://help.instagram.com/1094643983940381 (last
`visited Jan. 6, 2019).
`12 See Josh Constine, Instagram Stories Launches Cross-Posting to Facebook Stories,
`TechCrunch (Oct. 4, 2017), https://techcrunch.com/2017/10/04/instaface.
`
`
`
`8
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 9 of 42
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`Facebook, Messenger, and Instagram interactions in one place;13 providing cross-application
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`notifications for Facebook, Messenger, and Instagram;14 and using at least some common servers
`
`and software to provide the infringing Facebook Live and Instagram Live services.
`
`FACTUAL BACKGROUND
`
`I.
`
`VOXER’S ORIGINS AND EARLY TECHNOLOGICAL DEVELOPMENT
`
`30.
`
`Tom Katis is Voxer’s co-founder and served as CEO until 2015. He reenlisted in
`
`the United States Army after the attacks of September 11, 2001, and served as a Special Forces
`
`Communications Sergeant in a combat deployment to Afghanistan. When his combat unit was
`
`ambushed in Kunar Province in 2003, Mr. Katis coordinated medevac, tactical reinforcements,
`
`and close air support under enemy fire. He completed his mission but experienced the
`
`shortcomings of existing communications systems. These systems could operate only in real-
`
`time or after complete message composition, and were ill-suited for time-sensitive
`
`communications with multiple groups in a highly disruptive environment.
`
`31. Mr. Katis and his team began developing communications solutions in 2006 to
`
`remedy these shortcomings. The new technologies 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.
`
`
`13 See Jon Fingas, Facebook and Instagram Are Finally Integrated, Sort of, Engadget (Nov. 15,
`2016), https://www.engadget.com/2016/11/15/facebook-and-instagram-unified-business-inbox.
`14 See Gordon Gottsegen, Facebook Puts Messenger, Instagram Notifications in One Place,
`CNET (May 19, 2017), https://www.cnet.com/news/facebook-messenger-instagram-cross-
`notifications.
`
`
`
`9
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 10 of 42
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`32.
`
`Voxer launched the Voxer Walkie Talkie app in 2011, and it became an immediate
`
`success. Users soon numbered over seventy million, and it was named Best Overall App in the
`
`First Annual Silicon Valley Business App Awards in 2013.15
`
`II.
`
`VOXER’S PATENTS
`
`33.
`
`Voxer applied for and has been granted over 70 United States patents since the
`
`company’s inception.
`
`34.
`
`U.S. Patent No. 8,180,030 (the “’030 patent”) is entitled “Telecommunication and
`
`multimedia management method and apparatus” and issued on May 15, 2012. A true and correct
`
`copy of the ’030 patent is attached as Exhibit A to this Complaint. Voxer IP LLC is the owner of
`
`all rights, title, and interest in and to the ’030 patent, with the full and exclusive right to file suit
`
`to enforce the ’030 patent, including the right to recover for past infringement. The ’030 patent
`
`is valid and enforceable under United States patent laws.
`
`35.
`
`The ’030 patent claims are directed to a patent-eligible, non-abstract idea. They
`
`address, among other things, 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.
`
`36.
`
`U.S. Patent No. 9,634,969 (the “’969 patent”) is entitled “Real-time messaging
`
`method and apparatus” and issued on April 25, 2017. A true and correct copy of the ’969 patent
`
`is attached as Exhibit B to this Complaint. Voxer IP LLC is the owner of all rights, title, and
`
`
`15 Voxer, Voxer Business Named Best Overall App in the First Annual Silicon Valley Business
`App Awards (Nov. 18, 2013), https://www.voxer.com/blog/voxer-business-named-best-overall-
`app-in-the-first-annual-silicon-valley-business-app-awards/.
`
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`10
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 11 of 42
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`
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`interest in and to the ’969 patent, with the full and exclusive right to bring suit to enforce the
`
`’969 patent, including the right to recover for past infringement. The ’969 patent is valid and
`
`enforceable under United States patent laws.
`
`37.
`
`The ’969 patent claims are directed to a patent-eligible, non-abstract idea. They
`
`address, among other things, a specific improvement to the way computers operate, including by
`
`utilizing 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; by enabling the progressive transmission of video media to the
`
`recipient without first requiring a synchronous connection over the network between the sender
`
`and recipient; and by progressively transmitting the video media over the network as hops along
`
`the delivery route to the recipient are discovered.
`
`38.
`
`U.S. Patent No. 10,109,028 (the “’028 patent”) is entitled “Embeddable
`
`communications software module” and issued on October 23, 2018. A true and correct copy of
`
`the ’028 patent is attached as Exhibit C to this Complaint. Voxer IP LLC is the owner of all
`
`rights, title, and interest in and to the ’028 patent, with the full and exclusive right to bring suit to
`
`enforce the ’028 patent, including the right to recover for past infringement. The ’028 patent is
`
`valid and enforceable under United States patent laws.
`
`39.
`
`The ’028 patent claims are directed to a patent-eligible, non-abstract idea. They
`
`address, among other things, a specific improvement to the way computers operate, including by
`
`utilizing 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; and by using a
`
`message behavior policy to control how the embeddable communications software module
`
`
`
`11
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`
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`responds to incoming messages or to control how to render incoming messages in a near real
`
`time mode or a time-shifted mode.
`
`40.
`
`U.S. Patent No. 10,142,270 (the “’270 patent”) is entitled “Telecommunication
`
`and multimedia management method and apparatus” and issued on November 27, 2018. A true
`
`and correct copy of the ’270 patent is attached as Exhibit D to this Complaint. Voxer IP LLC is
`
`the owner of all rights, title, and interest in and to the ’270 patent, with the full and exclusive
`
`right to bring suit to enforce the ’270 patent, including the right to recover for past infringement.
`
`The ’270 patent is valid and enforceable under United States patent laws.
`
`41.
`
`The ’270 patent claims are directed to a patent-eligible, non-abstract idea. They
`
`address, among other things, 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 delivering video communication without first establishing an end-to-end
`
`connection over the network between the sender and receiver.
`
`42.
`
`U.S. Patent No. 10,511,557 (the “’557 patent”) is entitled “Telecommunication
`
`and multimedia management method and apparatus” and issued on December 17, 2019. A true
`
`and correct copy of the ’557 patent is attached as Exhibit E to this Complaint. Voxer IP LLC is
`
`the owner of all rights, title, and interest in and to the ’557 patent, with the full and exclusive
`
`right to bring suit to enforce the ’557 patent, including the right to recover for past infringement.
`
`The ’557 patent is valid and enforceable under United States patent laws.
`
`43.
`
`The ’557 patent claims are directed to a patent-eligible, non-abstract idea. They
`
`address, among other things, a specific improvement to the way computers operate, including by
`
`progressively transmitting streaming media over a network as the streaming media is created and
`
`
`
`12
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 13 of 42
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`persistently stored, therefore 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 video message.
`
`44.
`
`Voxer’s Asserted Patents claim, among other things, a specific implementation of
`
`a solution to a problem in the software arts, including the deficiencies in earlier forms of
`
`communications. For example, the patents identify numerous specific advantages that Voxer’s
`
`claimed techniques provide compared to traditional forms of communication. See, e.g., Ex. A,
`
`’030 patent at 6:10-7:10. Further, the claimed technologies cannot be performed as mental steps
`
`by a human, nor do they represent the application of a generic computer to any well-known
`
`method of organizing human behavior.
`
`45.
`
`The Asserted Patents claim inventive concepts that are significantly more than
`
`any patent-ineligible, abstract idea. In particular, the claimed technologies, including individual
`
`limitations as well as ordered combinations of limitations, were not well-understood, routine, or
`
`conventional, and cover multiple advantages, and combinations of advantages, that were not
`
`well-understood, routine, or conventional. See, e.g., Ex. A, ’030 patent at 3:66-4:26; 6:10-7:10;
`
`9:7-20; 9:38-42; 10:24-37; 14:8-15:42; 17:3-18:20; 21:7-22:42; 22:44-23:58.
`
`III. DEFENDANTS’ USE OF VOXER’S PATENTS
`
`46.
`
`In early 2012, representatives from Facebook contacted Voxer to discuss potential
`
`collaboration. The parties conducted a series of meetings during which various possibilities were
`
`considered, including a license to Voxer’s patented technologies. Voxer repeatedly disclosed the
`
`existence and nature of Voxer’s patent portfolio in these meetings. The discussions did not lead
`
`to any agreement between the parties.
`
`
`
`13
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 14 of 42
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`47.
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`Facebook identified Voxer as a competitor at or around the time of these
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`meetings. In January 2013, Facebook revoked the Voxer app’s access to key components of the
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`Facebook platform, including removing access to the Find Friends feature that would allow users
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`to connect with their existing Facebook friends.16 This measure curtailed user growth for
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`Voxer’s app.
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`48.
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`Facebook launched its Facebook Live product to select users in August 2015.
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`Over the following months, Facebook released Facebook Live to the general public, including to
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`all U.S. iPhone users in January 2016.
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`49.
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`In early 2016, Voxer met with senior executives from Facebook and shortly after
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`sent Facebook a Patent Overview and IP Statement. The Patent Overview and IP Statement
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`disclosed the existence and nature of Voxer’s patent portfolio, and specifically referenced the
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`patent families of all of the Asserted Patents.
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`50.
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`In late February 2016, Mr. Katis had a chance meeting with a senior product
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`manager of Facebook Live. Mr. Katis raised the issue of Facebook Live’s infringement of
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`Voxer’s patents and encouraged the product manager to follow up with the senior executives Mr.
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`Katis had recently met with. Facebook declined to enter any agreement with Voxer regarding its
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`continued use of Voxer’s patented technologies, and Defendants launched the Instagram Live
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`product in November 2016.
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`16 On September 13, 2019, the United States House of Representatives identified Facebook’s
`exclusion of Voxer in its investigation of Facebook’s anticompetitive activities. See Letter from
`U.S. House of Representatives Committee on the Judiciary to Mark Zuckerberg, CEO,
`Facebook, Inc. (Sept. 13, 2019),
`https://judiciary.house.gov/sites/democrats.judiciary.house.gov/files/documents/Facebook%20R
`FI%20-%20Signed.pdf.
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`14
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 15 of 42
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`51.
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`Facebook has prioritized live video messaging since the launch of Facebook Live
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`and Instagram Live, with one report identifying Facebook Live as Facebook’s “top priority.”17
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`Facebook has noted that “on average people watch a live video more than three times longer
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`when it is live compared to when it is not live.”18 As of this date, there have been billions of
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`Facebook Live and Instagram Live broadcasts.19
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`COUNT I: INFRINGEMENT OF U.S. PATENT NO. 8,180,030
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`52.
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`Voxer incorporates by reference and re-alleges all of the foregoing paragraphs of
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`this Complaint as if fully set forth herein.
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`53.
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`Defendants have directly infringed, continue to infringe, and have induced or
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`contributed to the infringement of at least claim 1 of the ’030 patent by making, using, selling,
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`and offering for sale, without authority or license, the facebook.com and instagram.com
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`websites, the Facebook Live and Instagram Live services, the Facebook and Instagram
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`applications for mobile and other devices, and devices running the Facebook or Instagram
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`applications (collectively, “the ’030 Accused Products”) in violation of 35 U.S.C. § 271(a). The
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`’030 Accused Products are non-limiting examples that were identified based on publicly
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`available information, and Voxer reserves the right to identify additional infringing activities,
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`products, and services, including, for example, on the basis of information obtained during
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`discovery.
`
`
`17 Deepa Seetharaman, Facebook, Rushing into Live Video, Wasn’t Ready for Its Dark Side,
`Wall St. J. (Mar. 6, 2017), https://www.wsj.com/articles/in-rush-to-live-video-facebook-moved-
`fast-and-broke-things-1488821247.
`18 Vadim Lavrusik & Dave Capra, Bringing Facebook Live to Android and More Countries
`(Feb. 26, 2016), https://newsroom.fb.com/news/2016/02/bringing-facebook-live-to-android-and-
`more-countries.
`19 99firms.com, 28 Facebook Live Stats to Know in 2019 (May 13, 2019),
`https://99firms.com/blog/facebook-live-stats/.
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`15
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`Case 6:20-cv-00011-ADA Document 1 Filed 01/07/20 Page 16 of 42
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`54.
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`Defendants also actively, knowingly, and intentionally induce infringement of one
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`or more claims of the ’030 patent under 35 U.S.C. § 271(b) by actively encouraging others to
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`make, use, sell, and offer to sell in the United States, the ’030 Accused Products or products
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`containing the infringing components of the ’030 Accused Products.
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`55.
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`Defendants further contribute to the infringement of one or more claims of the
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`’030 patent under 35 U.S.C. § 271(c) by offering to sell and selling a component of the ’030
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`Accused Products, or a material or apparatus for use in practicing a process claimed in the ’030
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`patent, that constitutes a material part of the inventions, knowing the same to be especially made
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`or especially adapted for use in an infringement of the ’030 patent, and is not a staple article or
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`commodity of commerce suitable for substantial noninfringing use.
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`56.
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`By at least February 12, 2012, Voxer disclosed in meetings with Facebook the
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`existence and nature of Voxer’s patent portfolio. By the end of February 2012, Facebook knew
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`of the existence of the applications that led to the ’030 patent. Facebook communicated this
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`knowledge to Instagram. The ’030 patent issued on May 15, 2012.
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`57.
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`In early 2016, Voxer met with senior executives from Facebook and shortly after
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`sent Facebook a Patent Overview and IP Statement. The Patent Overview disclosed the
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`existence and nature of Voxer’s patent portfolio, and specifically mentioned the family of patents
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`that included the ’030 patent.