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/K/A 

FACEBOOK, INC.) and INSTAGRAM 

LLC,

Defendants

§

§

§

§

§

§

§

§

§

Civil Action No. A:20-cv-00655-LY

JURY TRIAL DEMANDED

DEFENDANTS’ MOTION FOR JUDGMENT AS A MATTER OF LAW UNDER 

FEDERAL RULE OF CIVIL PROCEDURE 50(A)

Case 1:20-cv-00655-LY Document 317 Filed 09/20/22 Page 1 of 26
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TABLE OF CONTENTS

I. LEGAL STANDARD........................................................................................................ 1

II. ARGUMENT..................................................................................................................... 1

A. The Court Should Grant Judgment of Noninfringement on the Asserted 

Claims of the ’270 and ’557 Patents...................................................................... 1

1. Voxer Failed to Offer Sufficient Evidence That Defendants 

Infringe the Asserted Claims of the ’270 Patent........................................ 2

2. Voxer Failed to Offer Sufficient Evidence That Defendants 

Infringe the Asserted Claims of the ’557 Patent........................................ 4

3. Voxer Failed to Offer Sufficient Evidence That Defendants 

Infringe under the Doctrine of Equivalents. .............................................. 5

B. Voxer Failed to Offer Sufficient Evidence of Willful Infringement. .................... 6

C. The Asserted Claims of the ’270 Patent Are Ineligible under Section 101........... 7

D. Defendants Presented Undisputed, Clear and Convincing Evidence of the 

Invalidity of Claims 1 and 9 of the ’557 Patent..................................................... 8

1. Claim 1 of the ’557 Patent Is Invalid as Anticipated by Seckin. ............... 9

2. Claim 9 of the ’557 Patent Is Invalid as Obvious in View of 

Seckin....................................................................................................... 10

E. Voxer, Inc. Lacks Standing and Should Be Dismissed from the Case. ............... 10

F. Defendants Are Entitled to Judgment of No Damages Because Voxer 

Failed to Offer Sufficient Evidence to Support Its Requested Damages............. 11

1. Defendants Are Entitled to Judgment of No Damages Due to the 

Lack of Sufficient Apportionment........................................................... 11

2. Mr. Ratliff’s Damages Model Fails to Distinguish Among Voxer’s 

Theories of Infringement, and Thus Invites the Jury to Award 

Damages for Conduct That Does Not Constitute Infringement............... 15

3. Mr. Ratliff’s Use of Facebook and Instagram’s Total Revenue Is 

Improper as a Matter of Law. .................................................................. 16

4. Mr. Ratliff’s Use of Total Watch Time or Total Number of Users 

Is Improper as a Matter of Law................................................................ 17

5. Mr. Ratliff’s Inclusion of “Was Live” Monetization as Derivative 

Damages Is Improper as a Matter of Law................................................ 18

6. Mr. Ratliff’s Use of a Running Royalty Is Unsupported......................... 19

7. Mr. Ratliff’s Only Properly Disclosed Damages Opinion Used the 

Incorrect Hypothetical Negotiation Date................................................. 19

III. CONCLUSION................................................................................................................ 20

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TABLE OF AUTHORITIES

Federal Cases

Alice Corp. Pty. Ltd. v. CLS Bank Int’l,

573 U.S. 208 (2014)............................................................................................................ 7

Am. Piledriving Equip., Inc. v. Geoquip, Inc.,

637 F.3d 1324, 1336 (Fed. Cir. 2011)................................................................................. 5

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 

788 F.3d 1371, 1378 (Fed. Cir. 2015)................................................................................. 8

ART+COM Innovationpool GmbH v. Google, Inc., 

2016 WL 10033420, at * 2 (D. Del. Sept. 9, 2016)............................................................ 7

Bayer Healthcare LLC v. Baxalta Inc., 

989 F.3d 964, 987 (Fed. Cir. 2021)..................................................................................... 7

Biedermann Techs. GmbH & Co. KG v. K2M, Inc., 

528 F. Supp. 3d 407, 431 (E.D. Va. 2021) ......................................................................... 7

Brooke Grp. Ltd. v. Brown & Williamson Tobacco Corp.,

509 U.S. 209, 242 (1993).................................................................................................... 1

Commonwealth Sci. & Indus. Research Org. v. Cisco Sys., Inc., 

809 F.3d 1295, 1301 (Fed. Cir. 2015)............................................................................... 18

Diodem, LLC v. Lumenis Inc., 

2005 WL 6219898, at *13 (C.D. Cal. Sept. 14, 2005)...................................................... 11

DSU Med. Corp. v. JMS Co., Ltd., 

471 F.3d 1293, 1304 (Fed. Cir. 2006)................................................................................. 6

Evans v. Ford Motor Co., 

484 F.3d 329, 334 (5th Cir. 2007) ...................................................................................... 1

Huawei Techs. Co. v. T-Mobile US, Inc., 

2017 WL 4385567, at *3–4 (E.D. Tex. Sept. 9, 2017)....................................................... 5

Intellectual Ventures I LLC v. Capt’l One Fin. Corp., 

850 F.3d 1332, 1341–42 (Fed. Cir. 2017)........................................................................... 8

Intellectual Ventures I LLC v. Symantec Corp., 

838 F.3d 1307, 1316–18 (Fed. Cir. 2016)........................................................................... 7

Case 1:20-cv-00655-LY Document 317 Filed 09/20/22 Page 3 of 26
II. table of authorities (continued)

Page(s)

iii

Intellectual Ventures II LLC v. Sprint Spectrum, L.P., 

2019 WL 1987172, at *2 (E.D. Tex. Apr. 12, 2019).......................................................... 6

Interactive Pictures v. Infinite Pictures, 

274 F.3d 1371, 1385 (Fed. Cir. 2001)............................................................................... 20

King Pharm., Inc. v. Eon Labs, Inc., 

616 F.3d 1267, 1274 (Fed. Cir. 2010)................................................................................. 8

LaserDynamics, Inc. v. Quanta Comput., Inc., 

694 F.3d 51, 69, 76 (Fed. Cir. 2012)..................................................................... 15, 17, 20

Lucent Techs., Inc. v. Gateway, Inc., 

580 F.3d 1301, 1323, 1324 (Fed. Cir. 2009)............................................................... 11, 15

MedIdea, L.L.C. v. DePuy Orthopaedics, Inc., 

422 F. Supp. 3d 459, 470–72 (D. Mass. 2019), 

aff’d, 833 F. App’x 338 (Fed. Cir. 2021)............................................................................ 5

Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 

811 F.3d 1314, 1324–25 (Fed. Cir. 2016)........................................................................... 8

Philp v. Nock, 

84 U.S. 460, 462 (1873).................................................................................................... 11

Polanco v. City of Austin, 

78 F.3d 968, 974 (5th Cir. 1996) ........................................................................................ 1

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 

711 F.3d 1348, 1371 (Fed. Cir. 2013)............................................................................... 15

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 

904 F.3d 965, 977 (Fed. Cir. 2018)....................................................................... 13, 14, 16

Promega Corp. v. Life Techs. Corp., 

875 F.3d 651, 657 (Fed. Cir. 2017)....................................................................... 11, 14, 19

Propat Int’l Corp. v. RPost, Inc., 

473 F.3d 1187, 1189 (Fed. Cir. 2007)............................................................................... 10

Realtime Data, LLC v. Oracle Am., Inc., 

2017 WL 11574028, at *5 (E.D. Tex. Mar. 30, 2017)...................................................... 15

Reeves v. Sanderson Plumbing Prods., Inc., 

530 U.S. 133, 150–51 (2000).............................................................................................. 1

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II. table of authorities (continued)

Page(s)

iv

ResQNet.com, Inc. v. Lansa, Inc., 

594 F.3d 860, 869 (Fed. Cir. 2010)................................................................................... 15

Sec. & Exch. Comm’n v. Life Partners Holdings, Inc., 

2013 WL 12076934, at *3 (W.D. Tex. Nov. 8, 2013)...................................................... 20

Senju Pharm. Co. v. Lupin Ltd., 

780 F.3d 1337, 1341 (Fed. Cir. 2015)................................................................................. 9

Sloan Valve Co. v. Zurn Indus., Inc,

33 F. Supp. 3d 984, 997 (N.D. Ill 2014)........................................................................... 18

Tex. Instruments Inc. v. Cypress Semiconductor Corp., 

90 F.3d 1558, 1567 (Fed. Cir. 1996)................................................................................... 6

Travis v. Bd. of Regents of the Univ. of Tex. Sys., 

122 F.3d 259, 263 (5th Cir. 1997) ...................................................................................... 1

Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 

874 F.3d 1329, 1337–38 (Fed. Cir. 2017)........................................................................... 7

Uniloc USA, Inc. v. Microsoft Corp., 

632 F.3d 1292, 1301 (Fed. Cir. 2011)................................................................................. 2

Virnetx, Inc. v. Cisco Sys., Inc., 

767 F.3d 1308, 1329 (Fed. Cir. 2014)............................................................................... 17

WBIP, LLC v. Kohler Co., 

829 F.3d 1317, 1341 (Fed. Cir. 2016)................................................................................. 6

X One, Inc. v. Uber Techs., Inc., 

440 F. Supp. 3d 1019, 1044 (N.D. Cal. 2020).................................................................... 5

Federal Statutes

35 U.S.C. § 101............................................................................................................................... 8

35 U.S.C. § 102............................................................................................................................... 8

35 U.S.C. § 281............................................................................................................................. 10

35 U.S.C. § 103............................................................................................................................... 8

Case 1:20-cv-00655-LY Document 317 Filed 09/20/22 Page 5 of 26
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Defendants Meta Platforms, Inc. (f/k/a Facebook, Inc.) and Instagram LLC move for 

judgment as a matter of law under Rule 50(a) on all claims brought by Plaintiffs Voxer, Inc. and 

Voxer IP LLC because no reasonable jury could find that Defendants infringed the asserted claims, 

that the asserted claims are not invalid, or that Voxer is entitled to its requested damages.

I. LEGAL STANDARD

Judgment as a matter of law is appropriate “[i]f a 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). “A court should 

grant a Rule 50(a) motion not only when the non-movant presents no evidence, but also when there 

is not a sufficient conflict in substantial evidence to create a jury question.” Travis v. Bd. of 

Regents of the Univ. of Tex. Sys., 122 F.3d 259, 263 (5th Cir. 1997) (citation omitted).

There is “substantial evidence” supporting a verdict only if “the evidence [is of] such 

quality that reasonable and fair-minded persons would reach the same conclusion.” Polanco v. 

City of Austin, 78 F.3d 968, 974 (5th Cir. 1996). “[T]he court should give credence to the evidence 

favoring the nonmovant as well as that evidence supporting the moving party that is uncontradicted 

and unimpeached....’” Evans v. Ford Motor Co., 484 F.3d 329, 334 (5th Cir. 2007) (quoting 

Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150–51 (2000)). “When an expert 

opinion is not supported by sufficient facts to validate it in the eyes of the law, or when indisputable 

record facts contradict or otherwise render the opinion unreasonable, it cannot support a jury’s 

verdict.” Brooke Grp. Ltd. v. Brown & Williamson Tobacco Corp., 509 U.S. 209, 242 (1993).

II. ARGUMENT

A. The Court Should Grant Judgment of Noninfringement on the Asserted 

Claims of the ’270 and ’557 Patents.

Voxer has not proven that each limitation of the asserted claims is met by the accused 

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products. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011).

1. Voxer Failed to Offer Sufficient Evidence That Defendants Infringe 

the Asserted Claims of the ’270 Patent.

No reasonable juror could find that the evidence Voxer presented at trial demonstrated that 

any of the accused products (1) receive an “identifier identifying a recipient of a video 

communication” or (2) ascertain a location used to deliver the video communication in response 

to receipt of the identifier as required by each of the asserted claims. Further, Voxer’s evidence at 

trial failed to provide any evidence that the Instagram privacy settings that Voxer accuses of 

infringement are “associated with a video communication.”

Dr. Mitzenmacher asserted that the claimed “identifiers” are the Facebook and Instagram 

privacy settings and Instagram Direct. Rough Trial Tr. Vol. 3 at 12:23–13:19 (Mitzenmacher). 

But he did not assert that they “identify[] a recipient of the video communication” as required by 

claim 34. Instead, he characterized the accused “public” identifiers as something that would “make 

the video or communication that you’re setting available to everyone.” Id. at 17:7–8 

(Mitzenmacher). He never testified that what he calls identifiers identify a recipient of the video, 

i.e., a person that would actually receive the video. Instead, he testified that “the identifier tells 

you who are the authorized recipients.” Id. at 24:3–4. He also admitted that not everyone given 

access to a Facebook Live video will actually receive a copy of it. See id. at 93:12–25; id. at 

95:12–15, 96:6–9 (same); id. at 97:17–20 (not everyone allowed access to Instagram Live will 

receive a copy); id. at 98:10–13 (not everyone allowed access will receive a notification). Nor 

would Instagram Direct identify a recipient of a live video, because the message sent by that 

optional function “doesn’t contain the actual bits or files of the message” and delivery of the video 

“would require some sort of user approval which sets off that process.” Id. at 102:21–103:1.

Facebook and Instagram users do not know who will be a recipient of any videos they 

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broadcast.1 Instagram Direct “can’t control who receives [a video] because it can’t control who 

will actually tap on the entry point to request the live video.” Rough Trial Tr. Vol. 5 at 124:20–

24 (Stinson). Defendants’ technical expert Professor Bhattacharjee also explained in unrebutted 

testimony that the so-called identifiers do not identify a recipient. Id. at 140:5–19 (Bhattacharjee).

There was also no evidence that the location used to deliver the video is “ascertain[ed] ... 

in response to receipt of the [alleged] identifier” as required by claim 34; rather, it is ascertained 

(if ever) only at a later point when an HTTP GET request for the video is made.2 Dr. Mitzenmacher 

and Facebook engineers testified that the receipt of the alleged identifier triggered “a sequence of 

steps” that eventually might result in a location being ascertained.3

 Professor Bhattacharjee 

likewise explained the video was delivered using the location ascertained from the HTTP GET 

request. See Rough Trial Tr. Vol. 5 at 149:12–150:5 (Bhattacharjee). But the claims are clear: 

the video must be “delivered ... using the location” that was “ascertain[ed]” “in response to receipt 

of the identifier.” And delivery using the location ascertained from an HTTP GET request is not 

delivery using a location ascertained “in response to receipt of the identifier.”

The Instagram privacy and blocking settings that Voxer has accused of infringement are 

1 Rough Trial Tr. Vol. 5 at 72:2–5 (Leland) (Facebook privacy selector does not “enable broadcasters to 

determine who will ultimately get a copy of a Facebook Live video”); id. at 72:10–13 (Facebook does not 

“allow broadcasters to dictate the people to whom Facebook will actually send their Facebook Live video”); 

id. at 109:21–110:4 (Stinson) (Instagram users do not know who will receive videos broadcast from public 

accounts); id. at 110:12–19 (same from private accounts). 

2 Rough Trial Tr. Vol. 3 at 25:18–22 (Mitzenmacher); id. at 24:5–7 (“The authorized represent [sic] will 

then request the live video, and then Facebook and Instagram will ascertain the IP addresses accordingly.”); 

id. at 35:5–7 (“The system uses that location, ascertains that location, from that request and transmits 

information back accordingly.”); id. at 88:7–11 (admitting that “live video data is requested by the user’s 

device using what are called ‘HTTP GET’ requests”); id. at 105:15–19 (admitting that “the address they 

use to deliver the video is the address that was in the request that came to them from the user’s device”). 

3 Rough Trial Tr. Vol. 3 at 25:10 (Mitzenmacher); see also id. at 88:21 (“that’s one step in a rather 

significantly large process”); Rough Trial Tr. Vol. 4 at 140:23–141:3 (Larumbe) (CDN server delivers live 

video in response to request that includes IP address and port); id. at 143:4–9 (Facebook determines IP 

address to deliver live video at the moment of receiving segment request); Rough Trial Tr. Vol. 5 at 81:3–

9 (Leland) (video sent to Facebook news feed in response to HTTP GET request).

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also not “associated with a video communication.” Dr. Mitzenmacher conceded that the Instagram 

privacy setting is a “global default” that “applies to all your content.” Rough Trial Tr. Vol. 3 at 

97:9–13 (Mitzenmacher). Likewise, blocking settings apply to “various content” and “becomes 

the default” when used. Id. at 98:19–99:1; see also Rough Trial Tr. Vol. 5 at 114:25–115:5 

(Stinson) (“Neither of these settings are specific to Instagram Live videos. Those are general 

account privacy settings that apply to all content.”); id. at 199:13–16 (Bhattacharjee) (“the 

identifier must be associated with a video communication”). But default settings that apply to 

every bit of content on Instagram are not “associated with” any particular video communication—

it “serves to restrict who may view” all videos. Id. at 141:20–25 (Bhattacharjee).

The remaining asserted claims all depend from claim 34 and therefore cannot be infringed 

if claim 34 is not infringed. Thus, judgment as a matter of law that Defendants do not infringe the 

asserted claims of the ’270 patent is appropriate.

2. Voxer Failed to Offer Sufficient Evidence That Defendants Infringe 

the Asserted Claims of the ’557 Patent.

Claim 1 of the ’557 patent covers “a method for operating a video message service 

infrastructure on a network” including the step of “selecting” a “degraded version of the video 

media based on an ascertained bandwidth on the network.” Voxer asserted at trial that the “video 

message service infrastructure” consists of Facebook’s servers. Rough Trial Tr. Vol. 3 at 45:15–

18 (Mitzenmacher). And the trial evidence is clear that this “selecting” step in the accused 

products happens only at the client devices.4

 The server in Facebook’s infrastructure does not 

“select” the version of the video that will be sent to the client. The unrebutted testimony 

4 Rough Trial Tr. Vol. 4 at 139:13–18 (Larumbe) (“[T]he viewer device is the one that selects ... the CDN 

just returns the file.”); 139:22–24 (Q: “Does the CDN ever[] send live video without first receiving a request 

from the viewing device? A: No, it doesn’t”); 139:25–140:9; Rough Trial Tr. Vol. 3 at 117:19–23 (“Q: And 

the client makes the request for the version of the video that it wants .... A: “Yeah.”); 118:16–119:1.

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established that the Facebook servers do not receive any information about ascertained bandwidth, 

and they thus could not possibly “select[] one of the degraded versions of the video media based 

on an ascertained bandwidth on the network.”5 The “selecting” step happens outside the “video 

message service infrastructure,” and claim 1 (and thus claim 9) of the ’557 patent is not infringed.

Any argument that claim 1 would be infringed even if the “selecting” step happened at the 

client and not the server would be foreclosed as a result of the position Voxer took before the 

Patent Office. In opposing institution of the IPR, Voxer repeatedly distinguished prior art because 

claim 1 of the ’557 patent requires that the server must actively participate in bandwidth estimation 

and selection of the degraded version of the video. Rough Trial Tr. Vol. 5 at 67:3–69:1 (Jeffay). 

“Federal Circuit precedent supports applying prosecution disclaimer even when an examiner 

rejects the patentee’s argument but nonetheless allows the claims.” X One, Inc. v. Uber Techs., 

Inc., 440 F. Supp. 3d 1019, 1044 (N.D. Cal. 2020); see also Am. Piledriving Equip., Inc. v. 

Geoquip, Inc., 637 F.3d 1324, 1336 (Fed. Cir. 2011) (prosecution disclaimer even though “the 

examiner explicitly disagreed with [the patentee’s statement]”). Voxer is precluded from taking a 

position here contrary to what it presented to the Patent Office. See, e.g., Huawei Techs. Co. v. TMobile US, Inc., 2017 WL 4385567, at *3–4 (E.D. Tex. Sept. 9, 2017), report and recommendation 

adopted, 2017 WL 4310161 (E.D. Tex. Sept. 28, 2017); MedIdea, L.L.C. v. DePuy Orthopaedics, 

Inc., 422 F. Supp. 3d 459, 470–72 (D. Mass. 2019), aff’d, 833 F. App’x 338 (Fed. Cir. 2021).

3. Voxer Failed to Offer Sufficient Evidence That Defendants Infringe 

under the Doctrine of Equivalents.

Dr. Mitzenmacher purported to offer opinions that Defendants infringe the asserted claims 

5 Rough Trial Tr. Vol. 4 at 136:6–11 (Larumbe) (Q: What role does the CDN play in deciding which version 

of a video to deliver to the viewer device? A: It doesn’t play any role. The viewer device selects and then 

specifies the specific file name”); id. at 136:25-137:2 (“Q: When the client device estimates the network 

bandwidth, is that information ever transmitted back to the CDN? A: No, it’s not.”). 

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under the doctrine of equivalents. But his analysis on each claim was superficial and general. And 

the law is clear that to sustain a claim under the doctrine of equivalents, the “evidence must be 

presented on a limitation-by-limitation basis. Generalized testimony as to the overall similarity 

between the claims and the accused infringer’s product or process will not suffice.” Tex. 

Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996).

B. Voxer Failed to Offer Sufficient Evidence of Willful Infringement.

Plaintiffs have not presented any evidence that could provide a reasonable jury a legally 

sufficient basis to find that Defendants willfully infringed the asserted patents. 

“Knowledge of the patent alleged to be willfully infringed continues to be a prerequisite to 

enhanced damages.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016); see also 

DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (willfulness requires 

knowledge of the particular patents). And Voxer acknowledged that Facebook had no pre-suit 

knowledge of either of the patents-in-suit. Rough Trial Tr. Vol. 2 at 125:10–16 (Katis) (admitting 

that he never named specific patents in discussions with Facebook in 2012).

Voxer rests its willfulness claim on Facebook’s alleged general awareness of Voxer’s 

“patent portfolio.” Rough Trial Tr. Vol. 2 at 119:8–22, 124:19–24, 125:24–126:23 (Katis). But 

even if a reasonable jury could find that Facebook was aware of Voxer’s patent portfolio generally, 

that cannot—as a matter of law—support a finding of willfulness because “knowledge of other 

patents in the same portfolios, with some of those being within the same family as the asserted 

patents, ... [is] insufficient to defeat a motion for summary judgment for pre-suit willfulness.” 

Intellectual Ventures II LLC v. Sprint Spectrum, L.P., 2019 WL 1987172, at *2 (E.D. Tex. Apr. 

12, 2019), report and recommendation adopted, 2019 WL 1979866 (E.D. Tex. May 3, 2019). This 

makes sense because knowledge of a “patent portfolio” does not provide notice of any future patent 

application, and certainly is not notice that any patent will ever issue.

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The filing of Voxer’s complaint may have put Facebook on notice of the patents-in-suit. 

But simply continuing to offer an accused product during the pendency of infringement litigation 

does not support a finding of willfulness. See, e.g., Biedermann Techs. GmbH & Co. KG v. K2M, 

Inc., 528 F. Supp. 3d 407, 431 (E.D. Va. 2021). Voxer must also demonstrate that Facebook “had 

a specific intent to infringe at the time of the challenged conduct.” Bayer Healthcare LLC v. 

Baxalta Inc., 989 F.3d 964, 987 (Fed. Cir. 2021). There is no such evidence.

C. The Asserted Claims of the ’270 Patent Are Ineligible under Section 101.

The Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 

(2014), provides a two-step analysis for determining patent eligibility in this context: (1) whether 

the claims are directed to an abstract idea, and if so, (2) whether there is an “inventive concept” in 

the claims that is “sufficient to ensure that the patent in practice amount to significantly more than 

a patent upon [the abstract idea] itself.” Id. at 217–18.6

Under Alice step one, each of the asserted claims is directed to the abstract idea of routing 

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

the sender and recipient. Dkt. 85 at 5; see, e.g., Two-Way Media Ltd. v. Comcast Cable Commc’ns, 

LLC, 874 F.3d 1329, 1337–38 (Fed. Cir. 2017) (routing “streams of audio and/or visual 

information” over a communication network was directed to an abstract idea); Intellectual 

Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316–18 (Fed. Cir. 2016) (stating that 

“receiving, screening, and distributing e-mail” was an abstract idea).

Under Alice step two, the claims of the ’270 patent fail to provide an “inventive concept” 

6 As Defendants have explained (Dkt. 260 at 8), and as the Court indicated at the September 7 hearing, the 

eligibility of the asserted patents is a legal question for the Court. The Court may wish to address this issue 

post-trial. But it is also a permissible basis for resolution under Rule 50(a). See ART+COM Innovationpool 

GmbH v. Google, Inc., 2016 WL 10033420, at * 2 (D. Del. Sept. 9, 2016) (Dyk, J., sitting by designation) 

(“Several circuits have indicated that purely legal issues may be raised in a Rule 50 motion.”).

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that is “significantly more” than the claimed idea. Alice, 573 U.S. at 218. “[C]onventional, routine 

and well understood applications in the art” are insufficient. Ariosa Diagnostics, Inc. v. Sequenom, 

Inc., 788 F.3d 1371, 1378 (Fed. Cir. 2015). The asserted claims fail this second step.

Voxer admitted at trial it did not invent livestreaming video, instant messaging, text 

messaging, push-to-talk, live voice communications, and time-shifting of videos; instead, all of 

these functionalities were “conventional, routine, and well understood” at the time of the asserted 

patents. Id.; Rough Trial Tr. Vol. 2 at 140:9–141:12, 197:19–198:19. Furthermore, implementing 

the abstract idea on generic computer components does not transform the abstract idea into patenteligible subject matter.7

 Moreover, Voxer failed to provide any evidence that the claims contain 

any technological improvement nor is there anything inventive in the way the claims organize the 

communication, and thus, lacks an inventive concept.

The asserted claims of the ’270 patent are directed to patent-ineligible subject matter under 

35 U.S.C. § 101 as a matter of law.

D. Defendants Presented Undisputed, Clear and Convincing Evidence of the

Invalidity of Claims 1 and 9 of the ’557 Patent. 

Defendants presented unrebutted evidence that claims 1 and 9 of the ’557 patent are invalid 

based on U.S. Pat. App. Pub. No. 2004/0240390 (“Seckin”) (DTX249). “Under 35 U.S.C. § 102

a claim is anticipated if each and every limitation is found either expressly or inherently in a single 

prior art reference.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010)

(citation and internal quotation marks omitted). The “obviousness inquiry [under 35 U.S.C. § 103] 

7 Alice, 573 U.S. at 225–26 (“implement[ing] the abstract idea ... on a generic computer” was not sufficient 

“to transform an abstract idea into a patent-eligible invention”); Intellectual Ventures I LLC v. Capt’l One 

Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2017) (“using generic computer components and 

conventional computer data processing activities” was not sufficient to find an “inventive concept”); Mortg. 

Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer 

components such as an “network” and “database” fail to satisfy the “inventive concept requirement”).

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assesses ‘the differences between the subject matter sought to be patented and the prior art’ to 

ascertain whether ‘the subject matter as a whole would have been obvious at the time the invention 

was made to a person having ordinary skill in the art to which said subject matter pertains.’” Senju 

Pharm. Co. v. Lupin Ltd., 780 F.3d 1337, 1341 (Fed. Cir. 2015).

1. Claim 1 of the ’557 Patent Is Invalid as Anticipated by Seckin. 

The trial evidence shows that Seckin discloses each element of claim 1 of the ’557 patent:

1 Pre Rough Trial Tr. Vol. 4 at 164:5–23; DTX249 at Fig. 2 (116, 232, 226, 218)

1a Rough Trial Tr. Vol. 4 at 167:25–168:24; DTX249 at Fig. 2 (Content Providers (101) 

sending “Live Content” to Content Management System Unit 228 (“Live Content”))

1b Rough Trial Tr. Vol. 4 at 168:25-170:16; DTX249 at Fig. 2 (Transcoders 204), ¶ 26 

(identifying multiple degraded versions of the video media), ¶ 47 (describing 

transcoding of the media file)

1c Rough Trial Tr. Vol. 4 at 170:17–172:8; DTX249 at Fig. 2 (Streaming Servers 200), ¶ 

22 (the dynamic bandwidth algorithm adjusts the bit rates being served based on the 

client device’s available bandwidth), ¶¶ 29, 31 (describing the selection of a lower 

quality bitrate based on bandwidth changes)

1d Rough Trial Tr. Vol. 4 at 172:9–173:13; DTX249 at Fig. 2 (Terminal Devices 108), 

¶¶ 26, 28 (the selected bit rate version of the video media is “streamed” to the receiving 

device 108)

1e(i) Rough Trial Tr. Vol. 4 at 173:14–174:21; DTX249 at Fig. 2 (live content from content 

providers 101 being delivered to terminal devices 108), ¶¶ 46–47 (same)

1e(ii) Rough Trial Tr. Vol. 4 at 174:22–175:22; DTX249 at Fig. 2 (content providers 101 

and terminal devices 108 not directly connected and instead separated by the streaming 

system116, storage 232, content management system 226, and first subsystem 218)

The only element of claim 1 that Plaintiffs disputed was the disclosure of a “video message 

service infrastructure” or “video messages.” Rough Trial Tr. Vol. 6 at 190:9–17 (Mitzenmacher). 

Plaintiffs asserted that Seckin only disclosed one-way communication and hence did not disclose 

“video messages” or a “video message service infrastructure.” But as Plaintiffs’ expert asserted, 

a “video message” is simply a “live stream” (Rough Trial Tr. Vol. 3 at 46:12–15), and the ’557 

patent itself simply defines “message” as “an individual unit of communication from one User to 

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another” (PTX004 at 8:9–10). Plaintiffs’ expert admitted that this very definition only described 

“one-way” communication. Rough Trial Tr. Vol. 6 at 214:19–25. The unrebutted evidence 

demonstrated that Seckin disclosed communications from one user to another. DTX249 ¶ 35 

(describing “communication of data from the content providers 101 to the client device(s) 108); 

DTX249 at Fig. 1 (same), ¶ 34 (noting Seckin’s application to live video streams and “other type 

of data that can be made available via an Internet”).

2. Claim 9 of the ’557 Patent Is Invalid as Obvious in View of Seckin. 

The same is true of claim 9 of the ’557 patent.

9 Rough Trial Tr. Vol. 4 at 176:6–178:20 (common to build streaming systems using 

one protocol for ingest and another protocol for delivering video); DTX249 at Fig. 2 

(showing streaming system ingesting and delivering live content), ¶ 42 (describing use 

of real-time transport protocol (RTP) used for streaming), ¶ 141 (noting the 

embodiments could be used with any protocol)

Voxer only disputed the absence of disclosure of two real-time streaming protocols for 

receiving and transmitting of the video message. Rough Trial Tr. Vol. 6 at 197:14–17 

(Mitzenmacher). But as Defendants’ expert testified, the use of two real-time streaming protocols 

was obvious because Seckin disclosed that it could be used with a variety of protocols (¶ 141) and 

that use of such protocols was common knowledge among those skilled in the art as evidenced by 

other real-time streaming systems such as that disclosed in U.S. Patent No. 6,389,473 (“Carmel”). 

Rough Trial Tr. Vol. 4 at 178:6–10 (Jeffay). Voxer’s expert did not rebut this testimony regarding 

common knowledge or even address how that was reflected in prior art like Carmel. 

E. Voxer, Inc. Lacks Standing and Should Be Dismissed from the Case.

“[A] suit for infringement of patent rights ordinarily [must] be brought by a party holding 

legal title to the patent.” Propat Int’l Corp. v. RPost, Inc., 473 F.3d 1187, 1189 (Fed. Cir. 2007); 

see also 35 U.S.C. § 281 (authorizing “[a] patentee” to sue for infringement). Plaintiffs failed to 

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offer any evidence that Voxer, Inc. owns the patents or that it qualifies as an exclusive licensee. 

Voxer, Inc. cannot rely on its parent-subsidiary relationship with Voxer IP LLP for standing, 

because a “parent-subsidiary relationship does not endow” either with a share in the other’s title 

to a patent. Diodem, LLC v. Lumenis Inc., 2005 WL 6219898, at *13 (C.D. Cal. Sept. 14, 2005). 

F. Defendants Are Entitled to Judgment of No Damages Because Voxer Failed to 

Offer Sufficient Evidence to Support Its Requested Damages.

Voxer’s experts’ opinions are untethered to any recognized methodology, are contrary to 

law, unsupported and unreliable, and are otherwise insufficient evidence from which a reasonable 

jury could award damages.8 “The burden of proving damages falls on the patentee” (Lucent 

Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009)), and “[t]he [patentee] must 

show his damages by evidence” (Philp v. Nock, 84 U.S. 460, 462 (1873)). Because Voxer failed 

to provide sufficient evidence to support its damages award, it failed to meet its burden and the 

Court should grant judgment of no damages as a matter of law. See, e.g., Promega Corp. v. Life 

Techs. Corp., 875 F.3d 651, 657 (Fed. Cir. 2017) (affirming judgment of no damages as a matter 

of law because “a patent owner may waive its right to a damages award when it deliberately 

abandons valid theories of recovery in a singular pursuit of an ultimately invalid damages theory”).

1. Defendants Are Entitled to Judgment of No Damages Due to the Lack 

of Sufficient Apportionment

Dr. Mitzenmacher’s technical apportionment analysis, adopted by Mr. Ratliff in his 

damages model, is insufficient on multiple grounds, and cannot support any damages award. The 

8 Defendants maintain and renew their objection to the admission of Dr. Mitzenmacher’s and Mr. Ratliff’s 

opinions, as they both fail Rule 702 and Daubert. The Court should exclude that testimony under Rule 702 

(see Dkts. 185, 189 (Daubert motion briefing)) and then grant judgment of no damages under Rule 50(a) 

because without a cognizable damages model, the jury cannot award damages. But even if the experts’ 

opinions remain in the record, separately and in addition to being inadmissible, those opinions are also 

insufficient to meet Voxer’s burden of proof and therefore also warrant judgment under Rule 50(a). See, 

e.g., Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965, 977 (Fed. Cir. 2018).

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Court should grant judgment of no damages given the lack of a cognizable apportionment analysis.

a) No Reasonable Jury Could Award Damages Based on Dr. 

Mitzenmacher’s Subjective, Unreliable, and Unsupported 

“Technical Apportionment” Analysis.

Mr. Ratliff relied entirely on the opinion of Dr. Mitzenmacher in apportioning damages, 

but Dr. Mitzenmacher’s “technical apportionment” analysis is unreliable, subjective, and 

unsupported. No reasonable jury may rely on it in awarding damages. See Dkts. 189, 211. 

Dr. Mitzenmacher assigned an arbitrary quality to the components of the accused products 

based on his subjective opinion as to whether the components were “basic,” “medium,” or 

“sophisticated.” Rough Trial Tr. Vol. 3 at 61:16–67:21 (Mitzenmacher). He did not provide any 

basis for the values he assigned, or explain why he valued the components as he did. 

Dr. Mitzenmacher then testified to the “technical contribution” of Voxer’s patents to the 

accused products. He asserted that at a “maximum,” Voxer’s patents contributed the entirety of 

the Facebook Live Server’s value, or 23.5% of the value of the accused product. But, to be 

“conservative,” he decided on a “declared minimum contribution of 20 percent” (~85% of the 

Facebook Live Server’s value). Id. at 69:12–16. Dr. Mitzenmacher likewise testified that Voxer’s 

patents contributed at a “maximum” the entirety of the value of Facebook’s encoding service, or 

5.9% of the value of the accused product, but he then discounted that amount “down to 2.5 percent” 

(~42% of the encoding service’s value). Id. at 70:4–10. In total, he asserted that Voxer’s patents 

contributed 22.5% of the value of the accused products. Id. at 70:11–14 (Mitzenmacher). 

These estimates are not grounded in any objective facts or data. Dr. Mitzenmacher could 

not point to a single other example of such a methodology being used, a published paper adopting 

such a methodology, or even a prior instance in which he himself used such a methodology. Id. at 

120:6–122:18 (Mitzenmacher). Dr. Jeffay confirmed that Dr. Mitzenmacher’s valuation was not 

supported by any academic scholarship and was untethered to any objective methodology. Rough 

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Trial Tr. Vol. 4 at 193:20–195:2 (Jeffay). Dr. Jeffay was not even cross-examined on this point. 

No reasonable jury could award damages based on Dr. Mitzenmacher’s subjective, 

unreliable, and unsupported technical apportionment analysis. 

b) Dr. Mitzenmacher’s Failure to Separate the Infringing and 

Non-Infringing Features in His Apportionment Analysis 

Renders Mr. Ratliff’s Damages Estimate Invalid.

Dr. Mitzenmacher’s so-called technical apportionment also does not satisfy the legal 

standard for apportionment in patent damages such that Mr. Ratliff could rely on it because it does 

not identify what portion of the component of the accused product is infringing. 

“[W]here multi-component products are accused of infringement, the royalty base should 

not be larger than the smallest salable unit embodying the patented invention.” Power 

Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 904 F.3d 965, 977 (Fed. Cir. 2018). And 

“[e]ven when a damages theory relies on the smallest salable unit as the basis for calculating the 

royalty, the patentee must estimate what portion of that smallest salable unit is attributable to the 

patented technology when the smallest salable unit itself contains several non-infringing features.” 

Id. (emphasis added). The “fundamental concern about skewing the damages horizon—of using 

a base that misleadingly suggests an inappropriate range—does not disappear simply because the 

smallest salable unit is used.” Id.

The smallest salable unit (“SSU”) here are the accused products, Facebook Live and 

Instagram Live. And though Dr. Mitzenmacher identifies certain components of that SSU (the 

Facebook Live Server and the encoding service), he fails to identify the features of those 

components that are infringing and separate them from non-infringing features. Rough Trial Tr. 

Vol. 3 at 67:7–21 (Mitzenmacher). He thus failed to perform the requisite level of apportionment 

necessary for an award of patent damages. See Power Integrations, 904 F.3d at 977.

As Facebook’s engineers and Dr. Jeffay explained, the Facebook Live Server contains all 

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sorts of innovative technologies that Facebook developed. See, e.g., Rough Trial Tr. Vol. 4 at 

196:5–22 (Jeffay). They were not cross-examined on this point, and there is no competing 

evidence. It is clear and undisputed that the Facebook Live Server—even if it contains an 

infringing feature—contains plenty of non-infringing features that have nothing to do with Voxer’s 

technology. Dr. Mitzenmacher fails to discuss any of the non-infringing features of the Facebook 

Live Server and encoding service to explain how Voxer’s patents contributed ~85% of the value 

of the Facebook Live Server and ~42% of the encoding service. Rough Trial Tr. Vol. 3 at 69:12–

16, 70:4–10; see also id. at 70:11–14 (Mitzenmacher) (“add[ing] up the contributions from the 

Facebook Live server and from the encoding ... gives a minimum of 22.5 percent.”).

This failure by Dr. Mitzenmacher requires judgment of no damages because Mr. Ratliff 

relied solely on that apportionment in defining the royalty base for his damages opinion. Rough 

Trial Tr. Vol. 3 at 166:17–167:3 (Ratliff); Vol. 4 at 34:1–11 (Ratliff). Mr. Ratliff used the 

“technical apportionment” from Dr. Mitzenmacher’s testimony that 22.5% of the ad revenue 

“allocable” to Facebook Live and Instagram Live can be attributed to the asserted claims of the 

patents-in-suit. Id. Mr. Ratliff provided no apportionment analysis himself. See Dkt. 185 at 14. 

Because Mr. Ratliff bases his damages opinion on Dr. Mitzenmacher’s subjective, unreliable, 

unsupported, arbitrary, and not apportioned “technical apportionment,” Mr. Ratliff’s royalty base 

is also unreliable and unsupported; and judgment of no damages should be entered. See, e.g., 

Power Integrations, 904 F.3d at 977; Promega Corp., 875 F.3d at 657.

c) Mr. Ratliff’s Use of Dr. Mitzenmacher’s Technical 

Apportionment as a Substitute for Performing an Economic 

Valuation is Improper as a Matter of Law.

Mr. Ratliff’s sole reliance on a technical opinion to determine the economic value of the 

patents is fatal, because “proof of damages” must be “carefully tie[d]” to “the claimed invention’s 

footprint in the market place.” ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 

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2010); see also LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 69 (Fed. Cir. 2012)

(“This complete lack of economic analysis to quantitatively support the one-third apportionment 

echoes the kind of arbitrariness of the ‘25% Rule’ that we recently and emphatically rejected from 

damages experts.”). While technical opinions “about the incremental benefit conferred by the 

patented features of the accused products on the technology may be an input into the damages 

expert’s opinion about the proper apportionment value,” it “may not be the final apportionment 

value itself.” Realtime Data, LLC v. Oracle Am., Inc., 2017 WL 11574028, at *5 (E.D. Tex. Mar. 

30, 2017). Mr. Ratliff takes Dr. Mitzenmacher’s opinions regarding the technical benefits he 

asserted were conferred by the patented technology, and uses it as the “final apportionment value” 

in his economic analysis to support his damages theory, which is impermissible as a matter of law.

2. Mr. Ratliff’s Damages Model Fails to Distinguish Among Voxer’s

Theories of Infringement, and Thus Invites the Jury to Award

Damages for Conduct That Does Not Constitute Infringement.

A patentee may recover damages only for the “number of instances of actual infringing 

use.” Lucent Techs., 580 F.3d at 1323. In addition, a patentee is not “entitled to compensatory 

damages for injury caused by infringing activity that occurred outside the territory of the United 

States.” Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1371 (Fed. 

Cir. 2013). As a result, the jury is permitted to award damages only for 1) the instances of actual 

infringement 2) that occur wholly within the United States. Mr. Ratliff’s damages model invites 

the jury to exceed both these boundaries. 

For the ’270 patent, Voxer argued at trial that the claimed “identifier” in claim 34 of the 

’270 patent could be either various privacy settings or the use of Instagram Direct. Rough Trial 

Tr. Vol. 3 at 12:21–14:9 (Mitzenmacher). But if the jury were to find infringement, it may not 

have found that all of them constitute identifiers. The jury could find, for example, that use of 

Instagram Direct is infringing, but making broadcasts available to the “public” is not. Indeed, Dr. 

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Mitzenmacher provided different justifications for deeming the different settings to be 

identifiers. Compare, e.g., id. at 13:6–19, with id. at 13:20–14:4. 

For the ’557 patent, Voxer has argued that claim 1 is infringed even when the “selecting” 

limitation was performed on a client—namely, a smartphone or other device. As discussed above, 

this theory of infringement fails. And it is doubly improper because some portion of those clients 

performed the selection outside the United States. Rough Trial Tr. Vol. 4 at 51:6–15 (Ratliff). 

And while Mr. Ratliff purports to narrow his calculation to only those instances where servers are 

located in the United States, he made no adjustment to account for the scenario wherein clients are 

found to perform one or more limitations but are outside the United States. 

Voxer provided the jury no way to award damages only for the conduct it found to be 

infringing, and only the acts of infringement that occurred within the United States. The Court 

should preclude the jury from considering the unlawful damages model proffered by Mr. Ratliff. 

3. Mr. Ratliff’s Use of Facebook and Instagram’s Total Revenue Is

Improper as a Matter of Law.

The royalty base of a multicomponent product “should not be larger than the smallest 

salable unit embodying the patented invention.” Power Integrations, 904 F.3d at 977. 

Mr. Ratliff concedes the Facebook and Instagram apps are multicomponent products and 

that Facebook Live and Instagram Live have their own specifically tracked revenue (Rough Trial 

Tr. Vol. 4 at 57:3–14, 66:12–19 (Ratliff)), thus making these products the smallest salable units. 

Yet, Mr. Ratliff begins his calculation with all of the Facebook app and Instagram app ad revenues 

as his royalty base. Id. at 57:3–7 (using Facebook and Instagram “worldwide app advertising 

revenues” as his “starting point”). Mr. Ratliff does not even attempt to satisfy the strictures of the 

entire market value rule, nor could he. He concedes that Facebook and Instagram were popular 

and had valuable non-infringing features, such as video-on-demand. Id. at 66:12–18 (Ratliff).

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Mr. Ratliff claims he need not use the SSU as the royalty base because Facebook has not 

started to fully monetize Facebook Live and Instagram Live. Rough Trial Tr. Vol. 4 at 72:13–19 

(Ratliff). This is based entirely on Mr. Ratliff’s unsupported speculation. Facebook Live and 

Instagram Live, launched in 2015 and 2016 respectively, each have their own tracked monetization 

methods. And as of the time Facebook studied Facebook Live’s effects on the “core business 

model,” Facebook found that Facebook Live did not “provide more revenue as a result of that 

additional [watch] time.” Rough Trial Tr. Vol. 6 at 44:7–16 (Poffenberger).

But even if Mr. Ratliff’s assertion regarding live monetization were correct, it is irrelevant, 

as courts have repeatedly rejected plaintiffs’ attempts to “hide behind” a defendant’s “sales model 

to avoid the task of apportionment.” Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1329 (Fed. 

Cir. 2014); LaserDynamics, 694 F.3d at 69 (rejecting claim that “assembling and selling complete 

laptop computers, not independent [accused components]” made basing its royalty on the price of 

an entire laptop computer “a practical and economic necessity”). The Court should reject Mr. 

Ratliff’s contention that Facebook and Instagram’s “business model” relieves Voxer of its 

obligation to “identify a patent-practicing unit, tangible or intangible, with a close relation to the 

patented feature.” Virnetx, 767 F.3d at 1329.

4. Mr. Ratliff’s Use of Total Watch Time or Total Number of Users Is 

Improper as a Matter of Law.

Mr. Ratliff multiplied total ad revenue for the Facebook and Instagram apps by the fraction 

obtained by dividing total Facebook Live and Instagram Live watch time (i.e., the total time that 

users spent watching live videos) by what he calls total Facebook and Instagram app “watch time” 

(i.e., the total time users spent on each app). Rough Trial Tr. Vol. 4 at 50:6–21 (Ratliff). But he 

had no basis for concluding that this calculation would estimate “the incremental value that the 

patented invention adds to the end product.” Commonwealth Sci. & Indus. Research Org. v. Cisco 

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Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015).

There is no evidence in the record supporting Mr. Ratliff’s assumption that the time spent 

watching Facebook Live and Instagram Live (as opposed to time spent on the Facebook or 

Instagram platform generally) causes an increase in total Facebook and Instagram ad revenues. 

Rough Trial Tr. Vol. 4 at 60:16–22 (Ratliff). To the contrary, the evidence at trial established that 

Facebook Live and Instagram Live do not have any impact on Facebook’s overall revenue. Rough 

Trial Tr. Vol. 6 at 44:7–16 (Poffenberger). 

And Mr. Ratliff’s assumption that watch time provides an appropriate basis for calculating 

that amount is wholly unsupported in any case. Rough Trial Tr. Vol. 4 at 60:16–22 (Ratliff). Mr. 

Ratliff’s “methodology” does not take into account that different products monetize at different 

rates on the Facebook and Instagram platforms, and that time spent using Facebook Live 

cannibalizes higher revenues that might be earned on other parts of the platform. Mr. Ratliff 

simply allocated total platform advertising revenue by the percentage of Facebook Live and 

Instagram Live watch time—assuming, without any basis for doing so, that live video monetizes 

the same as other surfaces. Rough Trial Tr. Vol. 4 at 50:6–21 (Ratliff).

5. Mr. Ratliff’s Inclusion of “Was Live” Monetization as Derivative 

Damages Is Improper as a Matter of Law.

Mr. Ratliff includes revenues from “was live” videos in his damages model as derivative 

of “is live” videos. Rough Trial Tr. Vol. 4 at 47:15–20, 80:13–20 (Ratliff). But as he admitted at 

trial, many “was live” videos, such as recorded videos that were never “live,” existed and can exist 

in the absence of “is live.” Id. at 81:17–20. Mr. Ratliff’s opinions attributing “was live” revenue 

as derivative of “is live” sales are therefore unsupported by the evidence.

In addition, Mr. Ratliff’s “but-for” reasoning is divorced from a hypothetical negotiation 

and is improper. In Sloan Valve Co. v. Zurn Indus., Inc., the court held that a 100% upward 

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adjustment for the sale of collateral products was improper under Georgia Pacific factor 6 because 

it sought to circumvent the EMVR and collect lost profits. 33 F. Supp. 3d 984, 997 (N.D. Ill. 

2014). While Georgia Pacific factor 6 allowed “qualitative[]” adjustments for collateral sales, the 

factor “do[es] not apply quantitively to add a specific figure to the royalty base.” Id. Mr. Ratliff’s 

quantitative upward adjustment here using a 1.5 times multiplier is just the sort of “quantitative” 

adjustment Sloan found improper. That multiplier was also arbitrary and unsupported. 

6. Mr. Ratliff’s Use of a Running Royalty Is Unsupported.

Mr. Ratliff does not provide any basis for selecting a running royalty rather than a lump 

sum in the context of a hypothetical negotiation. Mr. Ratliff opines that Voxer would have 

preferred and sought a running royalty based on Facebook’s use of the patented technology by 

way of a running royalty. But as Mr. Ratliff acknowledged, there is no evidence that Facebook 

has ever entered into a running royalty agreement. Rough Trial Tr. Vol. 4 at 85:4–18 (Ratliff). 

This is yet another reason why no reasonable jury could award damages for Voxer based on the 

model Mr. Ratliff has presented. In addition, no reasonable jury could award a running royalty 

given the trial evidence. The Court should award judgement of no damages, or at least judgment 

of no running royalty, under Rule 50(a). Promega Corp., 875 F.3d at 657.

7. Mr. Ratliff’s Only Properly Disclosed Damages Opinion Used the 

Incorrect Hypothetical Negotiation Date.

Mr. Ratliff’s disclosed opinions were based on a hypothetical negotiation date in August 

2015. However, this date was based on a patent earlier in the priority chain, which Voxer is no 

longer asserting. After Voxer narrowed the case to only the ’270 and ’557 patents (Dkt. 287 at 1), 

which were issued on November 27, 2018 and December 17, 2019, respectively, the date of the 

hypothetical negotiation is now November 2018, which is over three years after August 2015. The 

parties agree that the correct hypothetical negotiation date is November 2018. Rough Trial Tr. 

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Vol. 3 at 131:16–21.

“The correct determination of [the hypothetical negotiation] date is essential for properly 

assessing damages,” and “the date of the hypothetical negotiation is the date that infringement 

began.” LaserDynamics, Inc., 694 F.3d at 75 (alterations in original) (citation omitted). The 

reasonable royalty must be based on the parties’ expectations at the relevant time. See, e.g.,

Interactive Pictures v. Infinite Pictures, 274 F.3d 1371, 1385 (Fed. Cir. 2001) (stating that “the 

rule [] recognizes sales expectations at the time when infringement begins as a basis for a royalty 

base as opposed to an after-the-fact counting of actual sales”). If the wrong hypothetical 

negotiation date is used at trial, the Federal Circuit will “remand for a new trial on damages 

pursuant to the [correct] hypothetical negotiation date.” LaserDynamics, Inc., 694 F.3d at 76.

The Court permitted Mr. Ratliff to testify based on a new hypothetical negotiation date 

(November 2018) even though that opinion was not disclosed in his report. Rough Trial Tr. Vol. 

3 at 135:11–21 (Ratliff). “Under Rule 37(c)(1), if a party fails to disclose the information required 

by Rule 26(a), its expert may not testify as to that information—‘unless such failure is harmless.’” 

Sec. & Exch. Comm’n v. Life Partners Holdings, Inc., 2013 WL 12076934, at *3 (W.D. Tex. Nov. 

8, 2013). Defendants maintain and renew their objection to Mr. Ratliff presenting an undisclosed 

damages opinion based on a new hypothetical negotiation. And if that new, undisclosed opinion 

were excluded, then Voxer would have no properly disclosed damages model, and Defendants 

would be entitled to judgment of no damages.

III. CONCLUSION

The Court should grant judgment for Defendants as a matter of law under Rule 50(a) on 

all the claims and issues discussed above.

Case 1:20-cv-00655-LY Document 317 Filed 09/20/22 Page 25 of 26
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September 20, 2022 Respectfully submitted,

By: s/ Robert A. Van Nest, 

with permission by Michael E. Jones

Robert A. Van Nest

rvannest@keker.com 

Christa M. Anderson 

canderson@keker.com 

David J. Silbert 

dsilbert@keker.com 

Eugene M. Paige 

epaige@keker.com

Matthew W. Werdegar

mwerdegar@keker.com

Paven Malhotra 

pmalhotra@keker.com 

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111 

Tel: 415-391-5400 

Michael E. Jones

SBN: 10929400 

Shaun W. Hassett

SBN: 24074372 

POTTER MINTON, PC

110 North College, Suite 500 

Tyler, Texas 75702 

Tel: 903-597-8311 

Fax: 903-593-0845 

mikejones@potterminton.com 

shaunhassett@potterminton.com 

Attorneys for Defendants

META PLATFORMS, INC., f/k/a FACEBOOK, 

INC. and INSTAGRAM LLC

Case 1:20-cv-00655-LY Document 317 Filed 09/20/22 Page 26 of 26