IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

AUSTIN DIVISION 

VOXER, INC. AND VOXER IP LLC, § 

PLAINTIFFS, § 

§ 

V. § 

§ 

META PLATFORMS, INC. F/KIA § 

FACEBOOK, INC. AND § 

INSTAGRAM LLC, § 

DEFENDANTS. § 

FILED 

FEB 212023 

CAUSE NO. 1 :20-CV-00655-LY 

ORDER ON POST-TRIAL MOTIONS 

Before the court are (1) Defendants' Renewed Motion for Judgment as a Matter of Law 

Under Federal Rule of Civil Procedure 50(b), filed October 25, 2022 (Doc. #349); (2) Voxer's 

Opposition to Defendants' Renewed Motion for Judgment as a Matter of Law Under Federal Rule 

of Civil Procedure 50(b), filed November 21, 2022 (Doe. #3 57); (3) Defendants' Reply in Support 

of Their Renewed Motion for Judgment as a Matter of Law Under Federal Rule of Civil Procedure 

50(b), filed December 5, 2022 (Doc. #366); (4) Defendants' Rule 59 Motion for a New Trial, filed 

October 25, 2022 (Doc. #350); (5) Voxer's Opposition to Defendants' Rule 59 Motion for a New 

Trial, filed November 21, 2022 (Doc. #359); (6) Defendants' Reply in Support of Their Rule 59 

Motion for a New Trial, filed December 5, 2022 (Doc. #3 67); (7) Defendants' Motion for Judgment 

of Invalidity of the '270 Patent Under Federal Rule of Civil Procedure 52(c), filed October 25, 2022 

(Doe. #35 1); (8) Voxer's Opposition to Defendants' Motion for Judgment of Invalidity of the '270 

Patent Under Federal Rule of Civil Procedure 52(c), filed November 21, 2022 (Doe. #358); and (9) 

Defendants' Reply in Support of Motion for Invalidity of the '270 Patent Under Federal Rule of 

Civil Procedure 52(c), filed December 5, 2022 (Doe. #365). 

This court conducted a hearing on the motions on January 18, 2023. Having considered the 

Case 1:20-cv-00655-LY Document 380 Filed 02/21/23 Page 1 of 25
motions, responses, replies, the evidence produced at trial and at the hearing by all parties, arguments 

of counsel, and the applicable law, the court will deny Meta Platforms, Inc. f/k/a Facebook, Inc. and 

Instagram LLC's motions1 and will, by separate order, render final judgment in favor of Voxer, Inc. 

and Voxer IP LLC (collectively, "Voxer"). 

Background 

The court empaneled a jury and called this case for trial on September 12, 2022. At trial, 

Voxer asserted six claims from two patents: independent claim 34 and dependent claims 47,48, and 

51 of U.S. Patent No. 10,142,270 (the "270 Patent"); and independent claim 1 and dependant claim 

9 of U.S. Patent No. 10,511,557 (the "557 Patent"). The case was submifted to the jury for 

deliberation on September 20, 2022, and on September 21, 2022, the jury returned a verdict. By its 

verdict, the jury found that Voxer proved by a preponderance of the evidence that Facebook 

infringed one or more claims of the '270 Patent and the '557 Patent (collectively, the "Asserted 

Patents") through both Facebook Live and Instagram Live (collectively, the "Accused Products"). 

The jury also found that Facebook did not prove by clear-and-convincing evidence that any claim 

of the '557 Patent is invalid. The jury awarded $174,530,785 as a running royalty in damages to 

Voxer. 

By its motions, Facebook contends that the court should disregard the jury's verdict and 

render judgment as a matter of law in Facebook's favor or order a new trial. See FED. R. Civ. P. 

50(b), 59. Alternatively, Facebook asserts that it should be granted a new trial on the issue of 

damages or remittitur of the damages awarded by the jury. Facebook also asks the court to conclude 

Because the interests of the Defendants do not diverge, the court will refer to them 

collectively as "Facebook." 

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that asserted claims of the '270 Patent are invalid. See 35 U.S.C. § 101. The court will discuss each 

post-trial motion separately below. 

Judgment as a Matter of Law 

Leal Standard 

In an action tried by a jury, a motion for judgment as a matter of law is a challenge to the 

legal sufficiency of the evidence supporting the jury's verdict. I-Iarrington v. Harris, 118 F.3d 359, 

367 (5th Cir. 1997). "On motions for JMOL or a new trial, [the Federal Circuit] applies the law of 

the regional circuit, in this case the United States Court of Appeals for the Fifth Circuit." Finisar 

Corp. v. DirecTl' Grp., Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008). Judgment as a matter of law is 

appropriate against a party if that party "has been fully heard on an issue during a jury trial and the 

court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the 

party on that issue." FED. R. CIV. P. 50(a)(1); Rivera v. Union Pac. R. Co., 378 F.3d 502, 505 (5th 

Cir. 2004) ("A court may enter judgment as a matter of law under Rule 50 only where there exists 

"no legally sufficient evidentiary basis" for the jury's verdict." (citing FED. R. Civ. P. 50(a)(1); 

Vadie v. Mississippi State Univ., 218 F.3d 365, 372 (5th Cir. 2000)). There is sufficient evidentiary 

basis supporting a verdict if "the evidence [is of] such quality that reasonable and fair-minded 

persons would reach the same conclusion." Polcano v. City of Austin, 78 F.3d 968, 974 (5th Cir. 

1996); see also Threlkeld v. Total Petroleum, Inc., 211 F.3 d 887, 891(5th Cir. 2000). A court is to 

be "especially deferential" to a jury's verdict. Baisden v. I'm Ready Prods., Inc., 693 F.3d 491, 499 

(5th Cir. 2012) (quoting SM] Owen Steel Co. v. Marsh USA, Inc., 520 F.3d 432,437(5th Cir. 2008)); 

see also Hiltgen v. Sumrall, 47 F.3d 695, 700(5th Cir. 1995), reh 'g and suggestion for reh 'g en banc 

denied, 49 F.3d 730 (5th Cir. 1995) ("This court has consistently applied this standard to show 

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appropriate deference for the jury's determination."). 

In reviewing the evidence, the court draws "all reasonable inferences in favor of the 

nonmoving party" and "may not make credibility determinations or weigh the evidence." TaylorTravis v. Jackson State Univ., 984 F.3d 1007, 1112 (5th Cir. 2021), cert. denied, 142 S. Ct. 101 

(2021) (quoting Industrias Magromer Cuerosy Pieles S.A. v. Louisiana Bayou Furs Inc., 293 F.3d 

912, 918 (5th Cir. 2002), decision clarfled on denial of reh'g, 310 F.3d 786 (5th Cir. 2002)). 

Therefore, judgment as a matter of law should only be granted if "the facts and inferences point "so 

strongly and overwhelmingly in the movant's favor that reasonable jurors could not reach a contrary 

conclusion." One Beacon Ins. Co. v. 1'. Wade Welch &Assocs., 841 F.3d 669,675 (5th Cir. 2016) 

(quoting Baisden, 693 F.3d at 498). 

"Credibility determinations, the weighing of the evidence, and the drawing of legitimate 

inferences from the facts arejury functions, not those of ajudge." Wellogix, Inc v. Accenture, L.L.P., 

716 F.3d 867, 874 (5th Cir. 2013) (citation omitted). "Attributing weight to conflicting evidence, 

and drawing inferences from such evidence, are within the province of the jury and its decision 

should be given deference if the record contains any competent evidence to support its findings." 

Industrias, 293 F.3d at 918 (citing Gibraltar Say. v. LDBrinkman Corp., 860 F.2d 1275, 1297 (5th 

Cir. 1988)). 

"A party challenging ajury damages verdict 'must show that the award is, in view of all the 

evidence, either so outrageously high or so outrageously low as to be unsupportable as an estimation 

of a reasonable royalty." Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1345 (Fed. Cir. 2011) 

(citation omitted). "[O]n post-trial JMOL motions, district courtjudges must scrutinize the evidence 

carefully to ensure that the 'substantial evidence' standard is satisfied, while keeping in mind that 

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a reasonable royalty analysis 'necessarily involves an element of approximation and uncertainty." 

Lucent Techs. Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 (Fed. Cir. 2009) (quoting Unisplay, S.A. v. American Elec. Sign Co., 69 F.3d 512, 517 (Fed. Cir. 1995)). 

Analysis 

At the close of evidence, Facebook moved for judgment as a matter of law under Rule 50(a) 

on all claims brought by Voxer, urging that no reasonable jury could find either (1) that Facebook 

infringed the asserted claims, (2) that the asserted claims are not invalid, or (3) that Voxer was 

entitled to its requested damages. See FED. R. Civ. P. 50(a). The court denied the motion and 

submitted the cause to the jury. Thejury found that (1) both Accused Products infringed the asserted 

claims of the '270 Patent; (2) both Accused Products infringed the asserted claims of the '557 Patent; 

(3) Facebook did not prove by clear-and-convincing evidence that the asserted claims of the '557 

Patent are invalid; (4) Voxer proved it is entitled to $174,530,785 for Facebook's infringement up 

through the date of the verdict; and (5) the damages figure represents a running royalty. 

Facebook renews its motion forjudgment as a matter of law and argues that the court should 

grant judgment as a matter of law because there is no legally sufficient basis for a reasonable jury 

to find that Facebook infringed the asserted claims, that the asserted claims of the '557 Patent are 

not invalid, and that Voxer is not entitled to its requested damages. See One Beacon, 841 F.3d at 

676 ("Any argument made in a renewed motion for judgment as a matter of law under Rule 50(b) 

must have been previously made in a motion for judgment as a matter of law under Rule 50(a)." 

(citations omitted)). Facebook is entitled to renew its motion. 

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Infringement of the Asserted Patents 

The '270 Patent 

The jury found that both Accused Products infringe asserted claims 34,47,48, and 51 of the 

'270 Patent. Facebook argues that it established no infringement of the '270 Patent for the following 

reasons: (1) the Accused Products do not receive an "identifier identifying a recipient of a video 

communication," as described in claim 34(a); (2) the Accused Products do not ascertain a location 

used to deliver the video communication in response to receipt of the identifier, as described in claim 

3 4(b); and (3) Voxer failed to offer sufficient evidence that Facebook infringes the '270 Patent under 

the doctrine of equivalents. 

Claim 34(a) of the '270 Patent requires the step of "receiving an identifier associated with 

a video communication ..., the identifier identifying a recipient of the video communication." Dr. 

Michael Mitzenmacher, Voxer' s technical expert, testified that both Accused Products use identifiers 

of recipients as set forth in the claims. Voxer offered evidence to show that the claimed "identifiers" 

are the Facebook Live and Instagram Live privacy settings and addresses of Instagram Direct 

messages, and that there is no limitation in the claim or in the meaning of "recipient" that recipients 

must be guaranteed to receive videos. Voxer also offered evidence to show that Instagram Live's 

default settings were "associated with a video communication." 

Credibility determinations and the drawing of inferences are jury functions. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.. 133, 150(2000). The court may not make any inferences 

and credibility determinations favoring the movant when considering a motion for judgment as a 

matter of law. id.; see also Rideau v. Parkem Indus. Servs., Inc., 917 F.2d 892, 897 (5th Cir. 1990) 

("A jury may draw reasonable inferences from the evidence, and those inferences may constitute 

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sufficient proof to support a verdict." (citations omitted)). The court finds that there was substantial 

evidence for a reasonable july to find infringement of the '270 Patent. 

Under the doctrine of equivalents, an accused device infringes "if it performs substantially 

the same function in substantially the same way to obtain the same result." Sanitary Refrigerator 

Co. v. Winters, 280 U.S. 30, 42 (1929). Mitzenmacher testified that although the Accused Products 

literally infringe the claims, the Accused Products also infringe under the doctrine of equivalents. 

Mitzenmacher stated that, with respect to claim 34(a), identifiers had the same "function [which] is 

to control which users can receive a video communication" and "[o]nly the appropriate subset of 

users can receive the communication." Mitzenmacher further testified as to the presence of each 

claim limitation or its equivalent in the Accused Products. The court finds that there was substantial 

evidence for a reasonable jury to find infringement both literally and under the doctrine of 

equivalents. See, e.g., Energy Transp. Grp., Inc. v. Williams Demant Holding A/S, 697 F.3d 1342, 

1353 (Fed. Cir. 2012) (upholding infringement verdict finding either literally or under the doctrine 

of equivalents). 

The jury was free to accept Mitzenmacher's testimony. See, e.g., Arismendez v. Nightingale 

Home Health Care, Inc., 493 F.3d 602, 609 (5th Cir. 2007). The court concludes that there is 

sufficient evidence to support the jury's verdict of infringement of the '270 Patent. 

The '557 Patent 

The '557 Patent claim 1 requires in part "[a] method for operating a video message service 

infrastructure on a network, the method comprising ... selecting one of the degraded versions of the 

video media." At trial, it was contested whether the "selecting one of the degraded versions" occurs 

on the server or by the client device. Facebook asserts that it established no infringement of the '557 

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Patent because the undisputed evidence at trial established that selection of a degraded version of 

a video media happens at the client devicewhich is outside the alleged "video message service 

infrastructure." Voxer contends that the claim is not limited to just server selection but that even if 

it is, Voxer offered evidence at trial to show that this claim limitation is still satisfied because once 

the client makes its selection, the Facebook servers then retrieve the requested file from storage at 

the Facebook servers. 

The '557 Patent claim language further requires "selecting one of the degraded versions of 

the video media based on an ascertained bandwidth of the network." Facebook argues that 

"ascertaining" must happen on the servers, and that there was not sufficient evidence in front of the 

jury to show this requirement. Voxer asserts that there is no language in the claim requiring the 

servers to do the ascertaining and, in any event, Mitzenmacher explained how the server does that 

"ascertaining." 

The jury is free to choose among reasonable constructions of the evidence. See i4i Ltd. 

P 'ship v. Microsofi Corp., 598 F.3d 831, 848 (Fed. Cir. 2010), affcl, 564 U.S. 91(2011). The court 

concludes that there is sufficient evidence to support the jury's verdict of infringement of the '557 

Patent. See id. at 849-50 (upholding infringement finding where "there was sufficient evidence to 

support either" of the plaintiff's infringement theories) (emphasis in the original). 

Invalidity of the '557 Patent 

Facebook asserts that, given the evidence presented at trial, a reasonable jury could only 

conclude that claims 1 and 9 of the '557 Patent are either anticipated by the Seckin patent application 

or made obvious by Seckin. Voxer, however, offered evidence at trial to show that Seckin discloses 

only one-way communicationas opposed to back-and-forth communicationand therefore did not 

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disclose "video messages" or a "video message service infrastructure." Mitzenmacher also testified 

that Seckin does not disclose or render obvious different real-time streaming protocols because 

Seckin only disclosed one real-time streaming protocol. The court concludes that there was 

sufficient evidence presented to the jury for the jury to find that Seckin did not teach the "video 

message service infrastructure" in claim 1 of the '557 Patent that allow a user to send a "message" 

to another user. 

The jury was free to agree with Mitzenmacher's explanation. See i4i, 598 F.3d at 848. The 

court finds that Facebook failed to offer clear-and-convincing evidence that claim 1 of the '557 

Patent is invalid as anticipated by Seckin. The court also finds that Facebook failed to offer clearand-convincing evidence that claim 9 of the '557 Patent is invalid as obvious in light of Seckin. 

Damates 

The jury awarded Voxer $174,530,785 as a running royalty for Facebook's infringement of 

the '270 Patent and the '557 Patent. 

Running Royalty 

Facebook argues that there was no basis for the jury to select a running royalty versus a lump 

sum. Voxer, however, offered expert testimony regarding Facebook's business model, tying the 

royalty to marketplace success and avoiding over- or under-valuing the licensed technology. 

Additionally, Facebook argues that a lack of forward-looking analyses for Facebook Live or 

Instagram Live precludes a running royalty. Voxer argues that the availability of such analyses 

during the hypothetical negotiation in November2018 does not dictate a lump sum, and no precedent 

supports Facebook's assertion. Alan Ratliff, Voxer's damages expert, testified that he considered 

all of the informationincluding information dated after the hypothetical negotiationunder the 

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"book of wisdom" doctrine. 

The jury was free to credit this evidence and award a running royalty to Voxer. See Gaylord v. United States, 777 F.3d 1363, 1369 (Fed. Cir. 2015) (affirming award of per-unit royalty); see also 

Spectralytics, 649 F.3d at 1347 ("The jury was entitled to choose a damages award within the 

amounts advocated by the opposing parties." (citing Fuji Photo Film Co. v. Jazz Photo Corp., 394 

F.3d 1368, 1378 (Fed. Cir. 2005)). 

Apportionment 

Facebook asserts that it is entitled to a judgment of no damages due to the lack of sufficient 

apportionment. Facebook contends that Mitzenmacher failed to separate the infringing and noninfringing features of his apportionment analysis, which renders Ratliffs damages estimate invalid. 

Voxer asserts that Mitzenmacher explained in detail his technical-apportionment analysis, and that 

he testified about the nine key components of Facebook Live and Instagram Live, and apportioned 

appropriately. The jury was free to credit this expert testimony. See i4i, 598 F.3d at 848. 

Facebook also contends that Ratliff's apportionment analysis cannot property support the 

jury's damages award because he improperly relied on Mitzenmacher's economic apportionment. 

Voxer argues that Ratliff testified that he performed a further economic apportionment after 

considering Mitzenmacher's technical apportionment. The court concludes that the jury could 

properly rely on this damages-apportionment testimony. See Summit 6, LLC v. Samsung Elecs. Co., 

802 F.3d 1283, 1296-97 (Fed. Cir. 2015). 

Reasonable-Royalty Analysis 

Facebook asserts that Ratliff s damages model failed to distinguish among Voxer' s theories 

of infringement, and therefore invited the jury to award damages for conduct that does not constitute 

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infringement. The jury, however, could have agreed with one or all of the theories of infringement, 

and there would be sufficient evidence to support the damages. See Integrated Tech. Corp. v. Rudolph Techs., Inc., 734 F.3d 1352, 1360 (Fed. Cir. 2013). The verdict does not differentiate patent 

by patent or theory by theory with respect to damages, and thus any supported theory of infringement 

supports the damages verdict. 

"Was Live" Monetization 

Further, Facebook contends that Ratliff's inclusion of "was live" monetization as derivative 

damages is improper as a matter of law. Derivative sales, however, are appropriately considered in 

determining a reasonable royaltywhether as a factor influencing the royalty rate or the royalty base. 

See, e.g., Fufiflim Corp. v. Benun, 605 F.3d 1366, 1373 (Fed. Cir. 2010). Thejuryproperly credited 

this evidence. See i4i, 598 F.3d at 848. 

Hypothetical-Negotiation Date 

Finally, Facebook contends that Ratliff's only properly disclosed damages opinion used an 

incorrect hypothetical-negotiation date and that because Ratliff presented a damages opinion based 

on a hypothetical-negotiation date of November2018, he presented an undisclosed damages opinion. 

The court agrees with Voxer that the time for a Rule 26 objection has passed. The issue is whether 

sufficient evidence supports the jury's verdict. 

Here, the court finds that substantial evidence supports the jury's award, as the jury received 

the evidence, Facebook cross-examined, and the jury rendered its verdict. Crediting one party's 

witnesses while ignoring contrary evidence is not the standard applied on a Rule 50(b) motion. See 

Summit 6, 802 F.3d at 1297-1300 (denying judgment as matter of law and rejecting argument that 

apportionment methodology was unreliable.) 

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Conclusion 

On a Rule 50(b) motion, "[a] jury's damages award must be upheld unless the amounts is 

grossly excessive or monstrous, clearly not supported by the evidence, or based only on speculation 

or guesswork." Bayer Healthcare LLC v. Baxalta Inc., 989 F.3d 964, 984 (Fed. Cir. 2021) (citation 

omitted). Facebook's criticisms about the jury's award of damages are more appropriate for crossexamination of Voxer's experts. And, indeed, Facebook did cross-examine Ratliff about his 

methodology and presented testimony of its own damages expert, Catharine Lawton, in rebuttal. The 

court concludes that sufficient evidence supports thejury' s findings and thejury' s award of damages. 

See, e.g., American Home Assur. Co. v. United Space All., LLC, 378 F.3d 482, 487 (5th Cir. 2004) 

("A jury verdict must stand unless there is a lack of substantial evidence, in the light most favorable 

to the successful party, to support the verdict." (citing Liberty Mut. Ins. Co. v. Falgoust, 386 F.2d 

248, 253 (5th Cir. 1967))). 

The court will deny the renewed motion for judgment as a matter of law (Doc. #349). 

New Trial 

Legal Standard 

The court "has discretion to grant a new trial under Rule 5 9(a) of the Federal Rules of Civil 

Procedure when it is necessary to do so 'to prevent an injustice." Government Fin. Servs. One Ltd. 

P 'ship v. Peyton Place, Inc., 62 F.3d 767, 774 (5th Cir. 1995) (quoting United States v. Flores, 981 

F.2d 231, 237 (5th Cir. 1993)). New trials can be granted under Rule 59 "after a jury trial, for any 

reason for which a new trial has heretofore been granted in an action at law in federal court." FED. 

R. Civ. P. 59(a)( 1 )(A). The Federal Circuit reviews the question of a new trial under the law of the 

regional circuit. Z4 Techs., Inc. v. Microsoft Corp., 507 F.3d 1340, 1347 (Fed. Cir. 2007). 

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To be entitled to a new trial, Facebook must show that the verdict was against the great 

weight of the evidencenot merely against the preponderance of the evidence. Dresser-Rand Co. v. VirtualAutomation, Inc., 361 F.3d 831, 838-39 (5th Cir. 2004). A motion for new trial "must 

clearly establish either a manifest error of law or fact or must present newly disclosed evidence." 

Simon v. United States, 891 F.2d 1154, 1159 (5th Cir. 1990) (quoting Federal Deposit Ins. Corp. v. Meyer, 781 F.2d 1260, 1268 (7th Cir. 1986)). A jury verdict is entitled to great deference, and the 

court may not substitute its own judgment for that of the jury merely because the court would have 

reached a different conclusion. See Dawson v. Wal-Mart Stores, Inc., 978 F.2d 205, 208 (5th Cir. 

1992). The court must view the evidence in the light most favorable to the jury's verdict, affirming 

the verdict unless the evidence points so strongly and overwhelmingly in favor of the other party that 

the court believes that reasonable persons could not arrive at a contrary conclusion. See id.; see also 

Gibraltar, 860 F.2d at 1297 ("Weighing the conflicting evidence and the inferences to be drawn 

from that evidence, and determining the relative credibility of the witnesses, are the province of the 

jury, and its decision must be accepted if the record contains any competent and substantial evidence 

tending fairly to support the verdict." (citation omitted)). The decision to grant or deny a new trial 

is committed to the sound discretion of the trial court. See Allied Chem. Corp. v. Daflon, Inc., 449 

U.s. 33, 36 (1980). 

Analysis 

Facebook argues that: (1) a reimittitur or new trial is required because Ratliff' s only properly 

disclosed opinion was based on the wrong hypothetical-negotiation date; (2) a new trial on damages 

is required because Ratliff's opinion fails Daubert and should have been excluded; and (3) the court 

should order a new trial because Facebook was prejudiced by the inappropriate comments made by 

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Voxer's lawyer. 

Damages 

Facebook asserts that Voxer' s damages case was legally improper and should not have been 

presented to thejury. Facebook asserts that Ratliff' s opinions were inadmissible on multiple grounds 

(including that he needed tobut did notanalyze the entire record from the perspective of November 

2018), fail Daubert, and should have been excluded. Facebook contends that the only admissible 

evidence setting a royalty range was the Houlihan Lokey valuation that Voxer commissioned in 

2017, which valued a portfolio-wide royalty for Facebook as a lump-sum between $5 million and 

$22.91 million. Facebook asks the court to remit damages to a single lump-sum at the high-end of 

the Houlihan Lokey range ($22.91 million) or order a new trial on damages. 

There is no dispute that Ratliff applied the appropriate hypothetical-negotiation date of 

November 2018 at trial, and this court finds no evidence that he testified inconsistently regarding 

the appropriate hypothetical-negotiation date. When Ratliff updated his analysis due to the change 

in the hypothetical-negotiation date he elected to keep the royalty analysis the same; Ratliff testified 

that this change in the hypothetical-negotiation date did not necessitate a change to his royalty 

analysis. Facebook had the opportunity to fully cross-examine Ratliff about the effect of a change 

in the hypothetical-negotiation date on his royalty analysis, and the time for any objection regarding 

the scope of his expert reports under Federal Rules of Civil Procedure 26 and 37 has passed. Cases 

cited by Facebook to support its argument that Ratliff' s analysis must change in material ways if the 

hypothetical-negotiation date changes are inapposite; Ratliff applied the correct (agreed-upon) date. 

See RSA Protective Techs., LLC v. Delta Sd. Corp., No. LA CV19-06024 JAK (PLAx), 2021 WL 

4978462, at *4 (C.D. Cal. Oct. 20, 2021) (defendant's damages expert misstated hypothetical14 

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negotiation date); Cassidian Comm 'cns, Inc. v. Microdata GJS, Inc., No. 2:1 2-C V-00 1 62-JRG, 2013 

WL 11322510, at *2 (E.D. Tex. Dec. 3, 2013) (defendants "conceded that [their expert] used the 

wrong hypothetical negotiation date"). Any challenge by Facebook regarding the substance of the 

hypothetical-negotiation opinion goes to weightnot admissibility. See, e.g., Vectura Ltd. v. GlaxoSmithKlineLLC, No. 16-638-RGA, 2019 WL 1352767, at *4 (D. Del. Mar.26, 2019) (holding 

that the challenge "based on a failure to account for certain changes in circumstances goes to the 

weight and credibility of [the expert's] opinions, not their admissibility"). 

Both parties presented evidence at trial to support their respective positions. The jury was 

entitled to believe or disbelieve Ratliff' s testimony. See Caboni v. General Motors Corp., 398 F.3 d 

357, 361 (5th Cir. 2005) ("The trier of fact, however, is not bound by expert testimony and is entitled 

to weigh the credibility of all witnesses, expert or lay." (citation omitted)). Facebook's disagreement 

with Ratliff s analysis or the existence of conflicting evidence are insufficient bases for a new trial. 

Facebook also argues that Lawton could not present a Georgia-Pacific analysis because of 

the change in the hypothetical negotiation date. See Georgia-PacfIc Corp. v. United States Plywood 

Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970), modJIecl and aff'd, 446 F.2d 295 (2d Cir. 

1971). A party need not present expert testimony on damages or on every aspect of damages. A 

party runs the risk, however, of loss to its expert's credibility on cross-examination, if the expert 

does not. Voxer's cross-examination of Lawton's opinions in rebuttal to Ratliff's testimony is not 

a proper bases for a new trial. See Simon, 891 F.2d at 1159. 

Lawyer Commentary 

Facebook contends that Voxer's lawyer made repeated improper comments designed to 

inflame jurors' prejudice against Facebook and encourage the jury to decide the case on improper 

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grounds. 

The burden is on Facebook here to show a new trial is warranted. Sibley v. Lemaire, 184 

F.3d 481, 487 (5th Cir. 1999). The court resolved many objections in Facebook's favor, and juries 

are presumed to follow the court's instructions. See, e.g, CSX Transp., Inc. v. Hensley, 556 U.s. 

838, 841 (2009). Facebook does not present a reason for the court to conclude that the verdict 

resulted from passion or prejudice, and the court does not find that substantial injustice results from 

any of the challenged comments. See Learmonth v. Sears, Roebuck & Co., 631 F.3d 724, 731(5th 

Cir. 2011); Dixon v. International Harvester Co., 754 F.2d 573, 585 (5th Cir. 1985). 

Conclusion 

Facebook had a full and fair opportunity to defend itself. The court concludes the evidence 

at trial is sufficient to support the jury's verdict, and that remittitur is not warranted in this case. 

Consequently, the court concludes the verdict is not against the weight of the evidence and is not 

inadequate as a matter of law. 

The court will deny the motion for a new trial (Doc. #3 50). 

Invalidity 

Leal Standard 

In a bench trial, "[i]f a party has been fully heard on an issue ... and the court finds against 

the party on that issue, the court may enter judgment against the party on a claim or defense that, 

under the controlling law, can be maintained or defeated only with a favorable finding on that issue." 

FED. R. Civ. P. 52(c). "A judgment on partial findings must be supported by findings of fact and 

conclusions of law as required by Rule 52(a)." id. Such findings are made pursuant to Rule 52(a), 

under which "the court must find the facts specifically and state its conclusions of law separately." 

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FED. R. Civ. P. 52(a). The purpose of these findings is to "afford[] ... a clear understanding of the 

ground or basis of the decision of the trial court." S. S. Silberblatt, Inc. v. United States ex rel. 

Lambert Corp., 353 F.2d 545, 549 (5th Cir. 1965) (internal quotation marks omitted); see also 

Schlesinger v. Herzog, 2 F.3d 135, 139 (5th Cir. 1993) (explaining that trial courts need not "recite 

every piece of evidence" or "sort through the testimony of ... dozen[s] [of] witnesses"). "Rule 52(a) 

only requires weighing the evidence to determine whether the plaintiff has proven his case." 

Thanedar v. Time Warner, Inc., 352 F. App'x 891, 897 n.1 (5th Cir. 2009) (citing FED. R. CIV. P. 52(a)). 

"Rule 52(a) does not require that the district court set out findings on all factual questions 

that arise in a case." 1/alley v. Rapides Par. Sch. Bd, 118 F.3d 1047, 1054 (5th Cir. 1997) (citing 

Golf City, Inc. v. Wilson Sporting Goods, Co., 555 F.2d 426, 433 (5th Cir. 1977)). Rather, the 

district court is expected to provide a clear understanding of the analytical process by which ultimate 

findings and conclusions were reached. See Valley, 118 F.3d at 1053-54. In making a particular 

finding, the district court "does not ... draw any inferences in favor of the non-moving party and 

[instead] make[s] a determination in accordance with its own view of the evidence." Fairchild v. All Am. Check Cashing, Inc., 815 F.3d 959, 964 n. 1 (5th Cir. 2016) (internal quotation marks 

omitted). However, a district court still must arrive at each of its factual determinations based on 

the applicable burden of proof. See In re Medrano, 956 F.2d 101, 102 (5th Cir. 1992). Here, the 

relevant burden of proof is clear-and-convincing evidence. Berkheimer v. HP Inc., 881 F.3d 1360, 

1368 (Fed. Cir. 2018) ("Any fact, such as this one, that is pertinent to the invalidity conclusion must 

be proven by clear and convincing evidence." (citing Microsoft Corp. v. i4i Ltd. P 'ship, 564 U.s. 91, 

95(2011))). 

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Facebook moves under Federal Rule of Civil Procedure 52 for a judgment that all asserted 

claims of the '270 Patent are directed to subject matter that is not patentable under the Patent Act 

and are therefore invalid. See 25 U.S.C. § 101 ("Section 101"). Facebook contends that the '270 

Patent is directed to an abstract idea rooted in a long-standing and commonplace activity: routing 

messages to recipients identified by the sender without first requiring a connection between the 

sender and recipient. This activity, Facebook asserts, takes place in corporate mailrooms, telephone 

switchboards, and myriad other message-delivery systems. Facebook argues that these are the types 

of "well-understood, routine, conventional activities previously known to the industry" that are 

ineligible for patent protection under Alice Corp. Pty. Ltd v. CLS Bank International, 573 U.S. 208 

(2014). 

Voxer replies that the claimed server architecture overcomes the technical challenges 

inherent in transmitting real-time video communication "without having to first establish an end-toend connection," and directs the court to Mitzenmacher's testimony of the technical benefits of 

Voxer's claimed invention, such as improved scalability. 

The court, having considered the motion, the response, the reply, and the argument of 

counsel, now makes the following findings of fact and conclusions of law2 relating to Facebook's 

defense of invalidity for the '270 Patent. 

Findings of Fact 

The Federal Circuit has repeatedly acknowledged that the inquiry under Section 101 is a legal 

question that "may contain underlying factual issues." Mortgage Grader, Inc. v. First Choice Loan 

2 All findings of fact contained herein that are more appropriately considered conclusions 

of law are to be so deemed. Likewise, any conclusion of law more appropriately considered a 

finding of fact shall be so deemed. 

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Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (quotation and citation omitted). While neither 

the Federal Circuit nor the Supreme Court have defined exactly which aspects of the Section 101 

inquiry are legal or factual in nature, the Federal Circuit has explained that "whether a claim element 

or combination of elements is well-understood, routine and conventional to a skilled artisan in the 

relevant field is a question of fact." Berkheimer, 881 F.3d at1368. Accordingly, the court makes 

specific factual findings under the clear-and-convincing-evidence standard with respect to factual 

questions that underpin the court's Section 101 analysis: 

1. The issue of invalidity of the '270 Patent was not presented to the jury during trial. 

2. Facebook's motion forjudgment of invalidity only challenges the patent eligibility of the 

'270 Patent. 

3. The '270 Patent, also titled "Telecommunication and multimedia management method 

and apparatus," issued on November 27, 2018. 

4. Claim 34 is the only independent claim asserted by Voxer against Facebook. It recites: 

A video communication method, comprising: 

receiving an identifier associated with a video communication transmitted by a 

sending communication device over a network, the identifier identifying a recipient 

of the video communication; 

ascertaining, in response to receipt of the identifier, a location on the network for a 

second communication device associated with the recipient and connected to the 

network; 

receiving the video communication from the sending communication device 

independently of the location for the second communication device being 

ascertained; 

storing the video communication; and 

delivering portions of the video communication over the network to the second 

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communication device using the location, the delivery enabling the video 

communication to be at least partially rendered at the second communication device 

while the video communication is transmitted by the sending communication device, 

wherein receiving the video communication from the sending communication device 

occurs without having to first establish an end-to-end connection over the network 

between the sending and the second communication device. 

'270 Patent, ci. 34. 

5. The '270 Patent addresses 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 realtime and time-shifted; and by delivering video communication without first establishing an end-toend connection over the network between the sender and receiver. 

6. The improvement in existing communication systems is described as "delivering video 

communication without first establishing an end-to-end connection over the network between the 

sender and receiver." 

7. This "enabl[es] users to participate in conversations without waiting for a connection to 

be established with another participant or the network" and "even when there is no network 

available, when the network is of poor quality, or other participants are unavailable." 

Conclusions of Law 

1. Patent eligibility is an issue of law suitable for resolution under Rule 52(c). See 

Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1311 (Fed. Cir. 2016). 

2. Under Section 101, a patent may be obtained for "any new and useful process, machine, 

manufacture, or composition of matter, or any new and useful improvement thereof" 35 U.S.C. § 

101; see Diamond v. Chakrabarty, 447 U.S. 303, 305 (1980) ("In choosing such expansive terms as 

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'manufacture' and 'composition of matter,' modified by the comprehensive 'any,' Congress 

contemplated that the patent laws should be given wide scope[.}"). 

3. "[T]he language of [Section] 101 is extremely broad." i.E. M Ag Supply, Inc. v. Pioneer 

Hi-Bred Int'l, Inc., 534 U.S. 124, 130 (2001). 

4. Even so, Section 101 excludes abstract ideas from patentable subject matter. See Alice, 

573 U.S. at 216 ("We have long held that this provision contains an important implicit exception: 

Laws of nature, natural phenomena, and abstract ideas are not patentable." (quoting Association for 

Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013))). 

5. "At the same time, [the court] tread[s] carefully in construing this exclusionary principle 

lest it swallow all of patent law." Alice, 573 U.S. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71(2012)). 

6. "At some level, 'all inventions ... embody, use, reflect, rest upon, or apply laws of nature, 

natural phenomena, or abstract ideas.' Thus, an invention is not rendered ineligible for patent simply 

because it involves an abstract concept." Alice, 573 U.S. at 217 (citations omitted). 

7. "Accordingly, in applying the [Section] 101 exception, [courts] must distinguish between 

patents that claim the "buildin[g] block[s]" of human ingenuity and those that integrate the building 

blocks into something more, thereby 'transform[ing]' them into a patent-eligible invention." id. 

(citations omitted). 

8. "To distinguish between eligible and ineligible patent claims, the Supreme Court has 

fashioned a two-step test." Celispin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1314 (Fed. Cir. 2019) 

(citingAlice, 573 U.S. at 218). 

9. At step one, the court determines whether a claim "is 'directed to ... [a] patent-ineligible 

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concept[ ]," such as an abstract idea." Celispin, 927 F.3d at 1315 (quotingAlice, 573 U.S. at 217). 

10. This includes examining "the focus of the claimed advance over the prior art' to 

determine if the character of the claim as a whole, considered in the light of the specification, is 

directed to excluded subject matter." Trading Techs. Int'l, Inc. v. IBG LLC, 921 F.3d 1084, 1092 

(Fed. Cir. 2019) (quoting Intellectual Ventures 1 LLC v. Capital One Fin. Corp., 850 F.3d 1332, 

1338 (Fed. Cir. 2017)); see also Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 

1329, 1337 (Fed. Cir. 2017) (Courts "look to whether the claims in the patent focus on a specific 

means or method, or are instead directed to a result or effect that itself is the abstract idea and merely 

invokes generic processes and machinery." (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 

837 F.3d 1299, 1314 (Fed. Cir. 2016))). 

11. Under the second step of the Alice inquiry, even if a patent attempts to claim an 

otherwise abstract idea, the claim can be transformed into something patentable if it incorporates an 

inventive concept, defined by the Supreme Court as "an element or combination of elements that is 

'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the 

[ineligible concept] itself" Alice, 573 U.S. at 2 17-18 (quoting Mayo, 566 U.S. at 73). 

12. Thus, step two of the analysis is a "search for an 'inventive concept'i.e., an element or 

combination of elements that is sufficient to ensure that the patent in practice amounts to 

significantly more than a patent upon the ineligible concept itself" Alice, 573 U.S. at 221 (internal 

quotations and citations omitted). 

13. "These additional features cannot simply be "well-understood, routine, conventional 

activit[ies] previously known to the industry." ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 

759, 773 (Fed. Cir. 2019) (quotingAlice, 573 U.S. at 221); see also Berkheimer, 881 F.3d ati 367-68; 

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Intellectual Ventures ILLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017). 

14. Patents are presumed valid, and "[t]he burden of establishing invalidity of a patent or any 

claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282(a). 

15. In the context of other invalidity challenges, a party asserting invalidity must prove its 

defense by clear-and-convincing evidence to overcome presumptive invalidity. See, e.g, Microsoft, 

564 U.S. at 96. 

16. The Federal Circuit has noted that Section 101 "is independent ofand on an equal 

footing withany other statutory provision." Bascom Glob. Internet Servs., Inc. v. AT&T Mobility 

LLC, 827 F.3d 1341, 1347 (Fed. Cir. 2016) (citations omitted). 

17. The first step of the Alice inquiry is "a meaningful one," such that "a substantial class 

of claims are not directed to a patent-ineligible concept." Enfish LLC v. Microsoft Corp., 822 F.3d 

1327, 1335 (Fed. Cir. 2016). 

18. This step requires "determin[ing] whether the claim at issue is 'directed to' a judicial 

exception, such as an abstract idea." McRO, 837 F.3d at 1312 (quotingAlice, 573 U.S. 217-18). 

19. " [T]he claims are considered in their entirety to ascertain whether their character as a 

whole is directed to excluded subject matter." McRO, 837 F.3d at 1312 (quoting Internet Patents 

Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). The court must also consider 

that "[am inventive concept can be found in the non-conventional and non-generic arrangement of 

known, conventional pieces." Bascom, 827 F.3d at 1350. 

20. The Alice inquiry ends if the claims, as a whole, are not "directed to" an abstract idea. 

McRO, 837 F.3d at 1312. 

21. Every issued patent is presumed to have been issued properly, absent clear-and23 

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convincing evidence to the contrary. Ultramercial, Inc. v. Hulu, LLC, 722 F.3 d 1335, 1338-39 (Fed. 

Cir. 2013), vacated sub nom., on other grounds, WildTangent, Inc. v. Ultramercial, LLC, 573 U.s. 

942 (2014). 

22. Ultimately, based on the facts of this case, the claims themselves, and the claims as read 

in the context of the specification, the court concludes that Facebook has failed to show by clear-andconvincing evidence that the '270 Patent addresses only an abstract idea and presents no inventive 

concept. See Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1309 (Fed. Cir. 2020). 

23. AtAlice Step One, the court concludes that the '270 Patent is directed to improvements 

to communications systems rather than an unpatentable abstract idea. See Cellspin, 927 F.3d 1306 

at 1319. 

24. Because the court finds that the asserted claims of '270 Patent are not directed to an 

abstract idea under Alice Step One, the court need not and does not reach Alice Step Two. 

25. For the reasons set forth above, the court concludes that Facebook has failed to show by 

clear-and-convincing evidence that the asserted claims of the '270 Patent are ineligible under Section 

101. 

The court will deny the motion for judgment of invalidity (Doc. #35 1). 

Conclusion 

IT IS ORDERED that Defendants' Renewed Motion for Judgment as a Matter of Law 

Under Federal Rule of Civil Procedure 50(b), filed October 25, 2022 (Doc. #349), is DENIED. 

IT IS FURTHER ORDERED that Defendants' Rule 59 Motion for a New Trial, filed 

October 25, 2022 (Doc. #350), is DENIED. 

IT IS FINALLY ORDERED that Defendants' Motion for Judgment of Invalidity of the 

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'270 Patent Under Federal Rule of Civil Procedure 52(c), filed October 25, 2022 (Doc. #351), is 

DENIED. 

The court will render a Final Judgment separately. 

SIGNED this day of February, 2023. 

UNITED STATIS DISTII 

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