The parent company of Facebook and Instagram has been ordered to pay nearly $175 million for infringing patents on the maker of a push-to-talk app founded by a former Green Beret who was trying to solve battlefield communication problems to solve problems he encountered in Afghanistan.
A federal jury in Austin, Texas, deliberated for a day before finding that Meta Platforms Inc. infringed two of Voxer Inc.’s patents and awarded Voxer $174.5 million in damages, court documents filed Wednesday show.
Voxer had accused social media giant Menlo Park, California, of taking its proprietary streaming technologies and integrating them with Facebook Live and Instagram Live after a possible collaboration fell through.
Tom Katis, co-founder and CEO of Voxer until 2015, was inspired by his battlefield experiences to find new technologies that would enable the transmission of voice and video communications “with the immediacy of live communications and the reliability and convenience of messaging.” could become court records.
He was drafted back after 9/11 and was serving as a communications sergeant with the Army Special Forces in 2003 when his unit was ambushed and, according to Voxer’s complaint, he was confronted with the shortcomings of existing systems when trying to coordinate paramedics and reinforcements.
Voxer launched the Voxer Walkie Talkie app in 2011, and Facebook soon approached the company about a possible collaboration, court documents say.
By February 2012, Voxer had shared its patent portfolio and proprietary technology with Facebook, but when initial meetings failed to result in an agreement, “Facebook identified Voxer as a competitor, despite the fact that Facebook had no live video or voice product at the time,” states in specified in the documents.
As a result, social media giant Voxer revoked access “to key components of the Facebook platform,” according to court filings.
The jury found that both Facebook Live, which launched in 2015, and Instagram Live, launched in 2016, “include Voxer’s technologies” and infringe two of Voxer’s patents.
The first involves a system that transmits streaming media incrementally over a network “while the streaming media is created and persistently stored, enabling hybrid digital communications that can be both real-time and deferred; and by providing video communications without first establishing an end-to-end connection across the network between the sender and receiver.
The second also involves the transmission of streaming media, “by generating two or more degraded versions of a streaming video message and transmitting a corresponding degraded version to each recipient; and by transcoding the video media of a video message,” the documents said.
In early 2016, Voxer met with senior Facebook executives and sent a statement describing the app’s patent portfolio “with particular reference to the patent families” of all patents that Meta was accused of infringing, according to court filings.
Katis had “a chance meeting” with a senior product manager of Facebook Live in late February 2016 and raised the platform’s patent infringement issue and encouraged the product manager to reach out to senior Facebook executives, the documents say.
“Facebook has prioritized live video messaging since the launch of Facebook Live and Instagram Live, with one report calling Facebook Live Facebook’s ‘top priority,'” the documents read.
In a statement to The Times, a Meta spokesman denied the claims and said the company believes evidence presented at the trial showed Meta did not infringe Voxer’s patents.
“We intend to pursue further remedies, including filing an appeal,” the spokesman said.
A lawyer for Meta referred a request for comment to the company.
Voxer’s attorneys did not respond to a request for comment Wednesday night.