Walkie-Talkie maker Voxer sues Amazon, Twitch over video communication patents: previously prevailed over Meta

Context: Voxer is a Dallas-based mobile app maker founded in 2007, most widely known for its free, telecommunications app for smartphones, Walkie-Talkie. In January 2020, it sued Meta in the Western District of Texas over two patents related to Voxer’s Live Messaging and Store-and-Stream technologies, which were allegedly being used on Facebook and Instagram Live (January 7, 2020 Western District of Texas complaint). In July 2023, the court awarded Voxer $206 million in damages, as well as ongoing running royalties. Meta filed an appeal, but, less than six months later, the two parties settled their dispute (February 7, 2024 motion to vacate).

What’s new: Voxer has filed a fresh lawsuit against Amazon and its subsidiary Twitch in the District of Delaware over the alleged infringement of five patents related to similar video communication technologies. It is seeking both damages and a permanent injunction.

Direct impact and wider ramifications: Two of the five asserted patents were also asserted in Voxer’s case against Meta. The plaintiff notes that Meta had filed petitions for inter partes review of those patents and, in both cases, institution was denied. Meta also sought ex parte reexamination of the patents, but the United States Patent and Trademark Office (USPTO) simply upheld their validity. This, Voxer alleges in its complaint against Amazon, confirms they cover patentable subject matter and are not directed to an abstract idea or any patent-ineligible concept. While the remaining three patents were not asserted against Meta, USPTO’s allowance of original claims for the first two patents, after granting Meta’s ex parte reexamination requests, similarly confirms the patentable subject matter of the latter three patents, Voxer has also alleged.

Voxer’s Walkie-Talkie App, launched in 2007, allows users to talk with other users “live”, listen to messages out of storage at their convenience in a time-shifted mode, and conduct or participate in multiple conversations. The app was downloaded approximately 60 million times within the first year of its release, and, in 2012, its number of unique monthly users was in the double-digit millions.

The patents-in-suit, all entitled “Telecommunication and multimedia management method and apparatus”, include:

U.S. Patent No. 10,142,270
U.S. Patent No. 10,511,557
U.S. Patent No. 11,146,516
U.S. Patent No. 11,777,883
U.S. Patent No. 11,658,929

Voxer alleges that Amazon was aware of all five patents “by at least 2018”, and had notice of the first two asserted patents because they were enforced in the dispute against Meta, which was publicly accessible, widely publicized, and known by industry participants.

It also claims that Amazon has benefited and is currently benefiting from Voxer’s innovations, which enable Twitch to receive, store, and stream high-quality video more efficiently, more effectively, and more scalably to millions of users. Amazon is deriving revenue from the patent infringement, and Voxer has filed this action to bring an end to its unathorized and unlicensed use of those patents, it has added.