UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

Voxer, Inc. and Voxer IP LLC,

Plaintiffs,

v.

Facebook, Inc. and Instagram LLC,

Defendants.

Civil Action No. 1:20-cv-00655-ADA

Jury Trial Demanded

PLAINTIFFS’ RESPONSE TO DEFENDANTS’ MOTION FOR JUDGMENT ON THE

PLEADINGS UNDER FED. R. CIV. P. 12(c)

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TABLE OF CONTENTS

Page

I. INTRODUCTION.........................................................................................................1

II. FACTUAL BACKGROUND ........................................................................................2

III. LEGAL STANDARD ...................................................................................................4

IV. FACEBOOK’S MOTION FOR JUDGMENT SHOULD BE DENIED ...........................5

A. The ’270 Patent Is Directed to Patent Eligible Subject Matter ..............................5

1. Facebook’s Alice Step One Analysis Grossly Oversimplifies the 

Asserted Independent Claims ..................................................................5

2. Facebook’s Alice Step Two Analysis Ignores Factual Disputes...............10

3. Facebook Fails to Separately Analyze the Dependent Claims .................13

B. The ’030 Patent Is Directed to Patent Eligible Subject Matter ............................14

1. Facebook’s Alice Step One Analysis Oversimplifies the Asserted 

Independent Claims ..............................................................................14

2. Facebook’s Alice Step Two Analysis Ignores Factual Disputes...............17

3. Facebook Fails to Separately Analyze the Dependent Claims .................18

V. CONCLUSION...........................................................................................................20

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TABLE OF AUTHORITIES

Page

Cases

3G Licensing, S.A. v. HTC Corp.,

2019 WL 2904670 (D. Del. July 5, 2019) ............................................................................. 7

A Pty Ltd. v. eBay, Inc.,

149 F. Supp. 3d 739 (W.D. Tex. 2016) ................................................................................10

Aatrix Software, Inc. v. Green Shades Software, Inc.,

882 F.3d 1121 (Fed. Cir. 2018) ............................................................................................ 2

Affinity Labs of Texas, LLC v. Amazon.com Inc.,

838 F.3d 1266 (Fed. Cir. 2016) ...........................................................................................10

Alice Corp. v. CLS Bank Int’l,

573 U.S. 208 (2014).................................................................................................. 4, 10, 11

Ashcroft v. Iqbal,

556 U.S. 662 (2009)............................................................................................................. 4

Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,

827 F.3d 1341 (Fed. Cir. 2016) ...........................................................................................11

Bell Atlantic Corp. v. Twombly,

550 U.S. 544 (2007)............................................................................................................. 4

Berkheimer v. HP Inc.,

881 F.3d 1360 (Fed. Cir. 2018) .......................................................................................5, 10

Cellspin Soft, Inc. v. Fitbit, Inc.,

927 F.3d 1306 (Fed. Cir. 2019) ............................................................................................ 4

DDR Holdings, LLC v. Hotels.com, L.P.,

773 F.3d 1245 (Fed. Cir. 2014) ...........................................................................................15

Enfish, LLC v. Microsoft Corp.,

822 F.3d 1327 (Fed. Cir. 2016) ................................................................................. 5, 15, 16

Finjan, Inc. v. Blue Coat Sys., Inc.,

879 F.3d 1299 (Fed. Cir. 2018) ............................................................................................ 9

Guidry v. Am. Pub. Life Ins. Co.,

512 F.3d 177 (5th Cir. 2007) ................................................................................................ 4

In re TLI Comm’cns LLC Patent Litig.,

823 F.3d 607 (Fed. Cir. 2016) .............................................................................................16

Intellectual Ventures I LLC v. Symantec Corp.,

838 F.3d 1307 (Fed. Cir. 2016) ...........................................................................................10

Lormand v. US Unwired, Inc.,

565 F.3d 228 (5th Cir. 2009) ................................................................................................ 4

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Slyce Acquisition Inc. v. Syte-Visual Conception Ltd.,

2020 WL 278481 (W.D. Tex. Jan. 10, 2020)............................................................ 2, 4, 9, 11

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

874 F.3d 1329 (Fed. Cir. 2017) ...........................................................................................10

Uniloc USA, Inc. v. LG Elecs. USA, Inc.,

957 F.3d 1303 (Fed. Cir. 2020) .........................................................................................5, 6

Statutes

35 U.S.C. § 101....................................................................................................................... 4

Rules

Fed. R. Civ. P. 12(d)................................................................................................................ 2

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I. INTRODUCTION

Facebook’s 12(c) motion (Dkt. 85, “Mot.”) should be denied because its section 101 

analysis of Voxer’s ’270 and ’030 patents suffers two fundamental flaws: it grossly oversimplif ies 

the asserted claims for purposes of Alice Step One; and it ignores factual disputes under Alice Step 

Two. Moreover, as this Court has previously noted, resolving a patent’s eligibility is rarely 

appropriate based solely on the pleadings. Accordingly, because the obstacles to Facebook’s 

motion are insurmountable, its motion should be denied.

The asserted claims of the ’270 and ’030 patents are directed to improvements to 

communication systems and computer functionality rather than any abstract ideas. For example, 

Voxer’s inventive architecture breaks up audio and video communications into discrete portions 

that can be transmitted regardless of recipient availability and rendered at recipient devices in realtime and time-shifted modes. In its Step One analysis, however, Facebook oversimplifies the ’270 

patent as being akin to routing historic hard copy mailroom “messages,” while, in reality, Voxer’s 

claimed server architecture overcomes the technical challenges inherent in transmitting real-time

video communication “without having to first establish an end-to-end connection.” Similar ly, 

Facebook oversimplifies the ’030 patent by comparing it to older technologies like TV and VCR, 

while ignoring that Voxer’s claimed “progressive and persistent” storage architecture permits 

streaming media to be rendered in both real-time and time-shifted modes. These technologies 

improve performance and enable capabilities not present in existing communication systems. 

Notwithstanding its conclusory assertions and attorney arguments, Facebook also cannot 

prevail at Alice Step Two because the asserted claims recite both individual limitations and 

combinations of limitations that are more than well-known, routine, and conventional activities. 1 

 

1

 And to the extent there is any doubt, Voxer submits the declaration of Dr. Michael 

Mitzenmacher with this brief, which confirms the innovative and unconventional nature of the 

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Furthermore, nothing within the scope of the pleadings suggests otherwise. Thus, because 

Facebook has not come close to meeting its clear and convincing evidence burden on the applicable 

questions of fact, its Motion should be denied. 

II. FACTUAL BACKGROUND

Voxer’s complaint alleges Facebook infringes U.S. Patent Nos. 8,180,030 (the “’030 

patent”); 9,634,969; 10,109,028; 10,142,270 (the “’270 patent”); and 10,511,557. Dkt. 1 

(“Compl.”) ¶ 7. All six patents are directed to solving “deficiencies in earlier forms of 

communication” that Voxer’s co-founder and first named inventor, Tom Katis, experienced firsthand as a Special Forces Communications Sergeant in Afghanistan, where he “coordinated 

medevac, tactical reinforcements, and close air support under enemy fire.” Id. ¶¶ 30, 44. As part 

of his tour of duty, Mr. Katis observed that “existing communications systems” “could operate 

only in real-time or after complet[ion],” but “were ill-suited for time-sensitive communications 

with multiple groups in a highly disruptive environment.” Id. ¶ 30. 

The patents challenged by Facebook—the ’270 and ’030 patents—share a common 

specification and are both directed to overcoming these shortcomings in existing communication 

systems. The patents explain that “[t]he current state of voice communications suffers from 

inertia” in that it requires either “wait[ing] for a connection to be made, and then engag[ing] in a 

 

asserted claims. Slyce Acquisition Inc. v. Syte-Visual Conception Ltd., 2020 WL 278481, at *4 

(W.D. Tex. Jan. 10, 2020) (explaining that obstacles to proving Section 101 at the pleading stage 

“may be insurmountable, e.g., if the patentee simply included a declaration from . . . [an] expert 

explaining how the asserted claims are more than well-understood, routine, [and] conventional 

activities previously known to the industry”). The Court may consider Dr. Mitzenmacher’s 

declaration under Fed. R. Civ. P. 12(d) by treating Facebook’s request to resolve disputed factual 

issues “as one for summary judgment under Rule 56.” Fed. R. Civ. P. 12(d). To the extent the 

Court is inclined to grant Facebook’s motion without considering Dr. Mitzenmacher’s 

declaration, Voxer requests leave to amend its complaint to incorporate facts set forth in that 

declaration. See Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1126 (Fed. 

Cir. 2018) (“The subsequent refusal to permit an amended complaint was erroneous because at 

that stage there certainly were allegations of fact that . . . would preclude the dismissal.”).

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full-duplex, synchronous conversation” or separate and burdensome “voice mail systems.” ’030 

patent at 1:30-55; see also id. at 1:60-62 (“Current telephone systems are based on relatively 

simplistic usage patterns: real-time live calls or disjointed voice mail messages, which are typically 

deleted as they are heard.”). This defect is present not just in traditional telephone technology but 

has persisted “[i]n spite of automated switching, high bandwidth networks and technologies such 

as satellites, fiber optics, Voice over IP (VoIP), wireless and cellular networks.” Id. at 1:31-34.

The ’270 and ’030 patents bridge these technical gaps between synchronous conversations 

and asynchronous messaging. Voxer’s technical insights include treating communications as 

inherently asynchronous but capable of being rendered to provide a synchronous experience. Id.

at 4:27-32. Instead of using separate communication technologies for real-time conversations and 

time-shifted messages, in the asserted patents each “conversation consists of a series of discrete 

recorded messages”—also called “Vox packets”—that “are recorded in a number of locations,” 

including at the sender, intermediate server(s), and receiver. Id. at 4:27-32, 9:15-18. 

Voxer’s inventive architecture enables a host of improvements to existing communication 

systems. Id. at 6:10-7:11. The ’270 and ’030 patents claim some of these improvements. Thus, 

the ’270 patent claims2improve existing communication systems by “delivering video 

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

sender and receiver.” Compl. ¶ 41; see also ’270 patent at 6:41-48 (“enabling 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”). And the ’030 patent claims3improve existing communication 

 

2

 Independent claims 34 and 55 and dependent claims 36-38, 40-41, 43-44, 47-49, 51.

3

 Independent claims 1 and 33 and dependent claims 4, 13, 16, 36, 38, 44, 47-48.

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systems by “enabling hybrid digital communications that can be both real-time and time-shifted” 

and “allowing a progressive media stream which can be sent synchronously while another stream 

is received.” Compl. ¶ 35; see also ’030 patent at 6:17-22 (“enabling users to review the messages 

of conversations in either a live mode or time-shifted mode” and “to seamlessly transition a 

conversation between a synchronous ‘live’ mode and a time shifted mode’”).

III. LEGAL STANDARD

The standard for a Rule 12(c) motion is the same as a Rule 12(b)(6) motion to dismiss. 

Guidry v. Am. Pub. Life Ins. Co., 512 F.3d 177, 180 (5th Cir. 2007). A plaintiff need plead only 

enough facts “to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 556 U.S. 

662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 547 (2007)). The Court 

must accept the complaint’s factual allegations as true and “draw all reasonable inferences in the 

plaintiff’s favor.” Lormand v. US Unwired, Inc., 565 F.3d 228, 232 (5th Cir. 2009). 

Moreover, “[p]atents . . . are presumptively valid,” and this “presumption of validity 

extends to patent eligible subject-matter.” Slyce, 2020 WL 278481, at *4 (citing Cellspin Soft, Inc. 

v. Fitbit, Inc., 927 F.3d 1306, 1329 (Fed. Cir. 2019)). As this Court previously explained, when 

mounting a section 101 challenge at the pleading stage, “the movant needs to overcome both a 

factual deck stacked against it and a heightened burden of proof” and “[i]n some cases, these dual 

obstacles may be insurmountable.” Slyce, 2020 WL 278481, at *4 (emphasis in original). As 

discussed below, this is one such case.

Patent eligibility under 35 U.S.C. § 101 is governed by the two-step framework set forth 

by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). Under Alice Step 

One, a court must decide “whether the focus of the claims is on the specific asserted improvement 

in computer capabilities”—rendering them patent eligible—“or, instead, on a process that qualifies 

as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft 

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Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); see also id. at 1336 (finding claims patent eligible 

where “the plain focus of the claims is on an improvement to computer functionality itself”). Alice

Step Two is “a question of fact”: claims are patent eligible if any “claim element or combination 

of claim elements” requires “more than performance of well-understood, routine, [and] 

conventional activities previously known to the industry.” Berkheimer v. HP Inc., 881 F.3d 1360, 

1367-68 (Fed. Cir. 2018) (internal quotation marks omitted). And “[w]hether something is wellunderstood, routine, and conventional to a skilled artisan at the time of the patent is a factual 

determination.” Id. at 1369; see also id. (“The mere fact that something is disclosed in a piece of 

prior art, for example, does not mean it was well-understood, routine, and conventional.”).

IV. FACEBOOK’S MOTION FOR JUDGMENT SHOULD BE DENIED

The ’270 and ’030 patents are directed to improvements to existing communication 

systems—improving how computers communicate real-time video or other media—and achieve 

those improvements using innovative technical solutions. Under Federal Circuit precedent, 

claims, like those asserted here, that improve “the functionality of [a] communication system” are 

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

A. The ’270 Patent Is Directed to Patent Eligible Subject Matter

1. Facebook’s Alice Step One Analysis Grossly Oversimplifies the 

Asserted Independent Claims

The asserted independent claims of the ’270 patent (claims 34 and 55) are directed to 

improved communication systems for transmitting real-time video—i.e., video that is rendered 

even “while the video communication is transmitted by the sending communication device.” ’270 

patent at 44:32-48. The claims are written from the perspective of an intermediate server that 

communicates with both “a sending communication device” transmitting the real-time video and 

“a second communication device” receiving and rendering that real-time video. Id. at 47:23-47,

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50:3-36. This intermediate server begins “receiving” the real-time video “independently of the 

location for the second communication device being ascertained,”4 “stor[es] the video 

communication” at that server, and then “deliver[es] portions of the video communication to the 

second communication device.” Id. at 47:32-42. Significantly, by having an intermediate server 

between the sender and receiver, the claimed method allows the “sending communication device” 

to begin transmitting real-time “video communication” even “without having to first establish an 

end-to-end connection.” Id. at 47:43-47.

The ’270 patent thus claims a hybrid real-time/time-shifted communication system that 

allows real-time video to be transmitted before there is an end-to-end connection from the sender 

to the receiver. The challenged claims improve upon existing communication systems, including 

both traditional telephones and VoIP, which required a user to “wait for a connection to be made” 

before “engag[ing] in a full-duplex, synchronous conversation with the dialed party.” Id. at 1:37-

44 (explaining this deficiency persisted “[i]n spite of automated switching, high bandwidth 

networks and technologies such as satellites, fiber optics, Voice over IP (VoIP), [and] wireless and 

cellular networks”); see also id. at 1:56-59 (describing “current voice mail systems” where “a 

connection must be made between the caller and the voice mail system before a message can be 

left”) (emphasis added); id. at 2:45-46 (“If there is no radio connection between the two parties, 

there can be no communication.”). Thus, the claims improve the capabilities of the communication 

system itself, rendering the claims patent eligible under Alice Step One. 

The Federal Circuit’s analysis in Uniloc USA is on point. There, the claim recited just two 

steps: “broadcasting a series of inquiry messages” and “adding to each inquiry message . . . an 

 

4

 This quote is from claim 34, but claim 55 similarly requires “ascertaining of the one or more 

locations occurring while the receiving and storing of the video communication is occurring.” 

Id. at 50:19-25.

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additional data field for polling at least one secondary station.” 957 F.3d at 1305-06. The Federal 

Circuit concluded that the claim “changes the normal operation of the communication system 

itself” and was “directed to a specific asserted improvement to the functionality of the 

communication system itself.” Id. at 1308-09. The same reasoning applies here. 

In response, Facebook re-writes and grossly oversimplifies the asserted claims to conceal 

the technological improvements they embody. According to Facebook, “[t]he ’270 patent . . . 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.” Mot. at 1. But Facebook’s 

characterization ignores that the ’270 patent claims are not directed to generic “messages” and 

instead require transmitting real-time “video communication.” See, e.g., ’270 patent at 47:23. This 

is significant because transmitting non-real-time messages—e.g., traditional e-mails—before 

establishing a connection to a destination is trivial, as there are no practical latency limitations. 

Mitzenmacher Decl. ¶ 14. The same is not true for the claims of the ’270 patent, where “the 

delivery enabl[es] 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.” ’270 patent at 47:37-42 (emphasis added). Facebook’s failure to 

correctly characterize the asserted claims of the ’270 patent and their focus, as required under Alice

Step One, is alone sufficient basis to deny Facebook’s motion. See 3G Licensing, S.A. v. HTC 

Corp., 2019 WL 2904670, at *2 (D. Del. July 5, 2019) (“While it may be possible that claim 1 

could be accurately characterized as directed to some abstract idea, all I need to decide today is 

that the claim is not directed to the abstract idea articulated by defendant.”). 

But even if Facebook’s characterization of the focus of the ’270 patent were correct and 

the claims were directed to “routing messages to recipients identified by the sender without first 

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requiring a direct connection between the sender and recipient” (Mot. at 1), this concept is not an 

abstract idea. “[W]ithout first requiring a direct connection” is a technical concept—Facebook 

does not contend that network connections were a “fundamental economic practice” or “performed 

by a human” (Mot. at 6)—and not an abstract idea. Mitzenmacher Decl. ¶¶ 12-14. For example, 

the ’270 patent describes how existing communication systems, including traditional telephones, 

VoIP, and radio communication, all required that a connection be made before any communication 

can take place. ’270 patent at 1:37-46, 1:63-67, 2:45-46. These are all patent eligible 

communication technologies in their own right and not abstract ideas. Indeed, during claim 

construction, Facebook described “end-to-end connection” as a “technical term” (Dkt. 63 at 17-

18) and Facebook’s expert, Dr. Jeffay, looked to “technical dictionaries” and “a bedrock principle 

of modern computer networking” when construing for this term (Dkt. 60-16 ¶¶ 33-34). 

Accordingly, regardless of whether the “technical term” is phrased as an “end-to-end connection” 

or a “direct connection,” enabling transmission of messages without first requiring such a 

connection is a technical concept and not an abstract idea.

Facebook’s attempt to analogize the claims to “the long-standing practice of using a 

corporate mailroom” only further demonstrates that the ’270 patent does not claim a patent 

ineligible abstract idea. Mot. at 6. According to Facebook, “[l]ong before the Internet age, office 

workers sent interoffice communications using ‘identifiers’ (such as a name or initials) specifying 

the intended recipient” and “[t]he corporate mailroom would then map the ‘identifier’ to a 

‘location’ associated with the recipient (such as an office or inbox) and then ‘deliver’ the 

communication ‘using the location.’” Id. This analogy is deeply flawed because Facebook’s 

“interoffice communication[],” unlike the claimed “video communication” is not real-time: the 

sender writes the complete letter, that completed letter is received by the mailroom, and only then 

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is the mailroom tasked with ascertaining the correct destination and delivering the letter. As this 

Court has previously found, analogies such as the one advanced by Facebook “are often unhelpful 

because they abstract away important technical details that could impact the court’s eligibility 

decision and/or are contrived, reverse-engineered analogies rather than actual ‘certain methods of 

organizing human activity.’” See Slyce, 2020 WL 278481, at *7 (internal citation omitted). Here, 

Facebook’s strained, litigation-driven analogy demonstrates the weakness of their position.5 

Facebook also attempts to justify ignoring the “without . . . connection” limitation by 

arguing “the claims . . . use purely functional language to describe a desired outcome.” Mot. at 8-

9; see also id. at 6 (“The claims describe no structure for performing these functions . . . .”). This 

is false. For example, as discussed above, the asserted claims of the ’270 patent require an 

intermediate server acting as a buffer between the sender and receiver, which allows the “sending 

communication device” to begin transmitting real-time “video communication” even “without

having to first establish an end-to-end connection.” ’270 patent at 47:37-47. Far from just a 

“desired outcome,” the “without . . . connection” limitation is an integral part of the claimed 

solution, which includes not just an outcome, but also how that outcome is achieved. See Finjan, 

Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) (rejecting argument that claims 

are “abstract because they do not sufficiently describe how to implement that idea” because the 

claims “recite specific steps . . . that accomplish the desired result”). Indeed, Facebook cannot 

erase claim limitations that it finds unhelpful by labelling them “functional language” or “a desired 

 

5 Although it still does not capture the full breadth of the invention, a more apt analogy for the 

’270 patent claims might be a corporate mailroom receiving the sender’s letter and delivering the 

same while the sender is still writing that letter in real time. See, e.g., ’270 patent, claim 34 

(“the delivery enabling the video communication to be at least partially rendered at the second 

communication device while the video communication is transmitted.”) (emphasis added). Of 

course, no such mailroom has ever existed.

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outcome.” See Mot. at 8. The asserted claims of the ’270 patent must be considered as a whole.

The cases relied upon by Facebook do not compel a different conclusion. In Affinity Labs 

of Texas, LLC v. Amazon.com Inc., the Federal Circuit found it significant that “[t]he patent . . . 

does not disclose any particular mechanism for wirelessly streaming content to a handheld device.” 

838 F.3d 1266, 1269 (Fed. Cir. 2016). By contrast, the ’270 patent claims require more than 

transmitting real-time “video communication,” and specify how that transmission is 

accomplished—i.e., via an intermediate server “without having to first establish an end-to-end 

connection.” ’270 patent at 47:24-47, 50:3-36. Similarly, Two-Way Media Ltd. v. Comcast Cable 

Commc’ns, LLC, 874 F.3d 1329 (Fed. Cir. 2017) is inapposite because there the claims were 

directed to “routing” or “forwarding” “streams of audio and/or visual information,” but included 

no details as to how that “routing” or “forwarding” was implemented. Id. at 1334-35, 37.6

Accordingly, the ’270 patent claims are patent eligible because they are directed to an 

improvement to existing communication systems. And even if Facebook’s characterization of the 

“focus” of the challenged claims were accurate (it is not), that alleged focus is not an abstract idea.

2. Facebook’s Alice Step Two Analysis Ignores Factual Disputes

Facebook’s challenge to the ’270 patent under Alice Step Two requires resolving questions 

of fact that, at a minimum, render Facebook’s motion premature. See Berkheimer, 881 F.3d at 

1369 (“Whether something is well-understood, routine, and conventional to a skilled artisan at the 

time of the patent is a factual determination.”). The patent’s claims include inventive concepts 

sufficient to confer patent eligibility, especially under the applicable pleading standard (Voxer’s 

allegations are accepted as true) and presumption of validity (Voxer’s patents are presumed valid).

 

6

Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317-18 (Fed. Cir. 2016) and A 

Pty Ltd. v. eBay, Inc., 149 F. Supp. 3d 739, 744-45 (W.D. Tex. 2016) are both readily 

distinguishable because those cases involved automating human activity or longstanding 

business practices, neither of which is at issue here. 

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First, the challenged method claims are written from the perspective of an intermediate 

server that, inter alia, receives “the video communication” and “an identifier associated with [the] 

video communication, “store[s] the video communication” for long enough to allow the “sending 

communication device” to begin transmitting even “without having to first establish an end-to-end 

connection,” “ascertain[s] . . . a location on the network for a second communication device 

associated with the recipient,” and then “deliver[s] portions of the video communication over the 

network to the second communication device” so it can be rendered in real time. ’270 patent at 

47:23-47, 50:3-36. As explained by Voxer’s expert, Dr. Mitzenmacher, this approach is contrary 

to conventional wisdom in the field of real-time communication—and thus more than “wellunderstood, routine, conventional activity”—where existing, e.g., VoIP systems performed steps 

recited in the claims (if at all) at an end-point instead of an intermediate server. Mitzenmacher 

Decl. ¶ 26-27; see also Slyce, 2020 WL 278481, at *4 (explaining that defendant’s “dual obstacles 

may be insurmountable, e.g., if the patentee simply included a declaration from . . . [an] expert 

explaining how the asserted claims are more than well-understood, routine, [and] conventional 

activities previously known to the industry”). 

Thus the ’270 patent claims are comparable to the claims found patent eligible in Bascom 

Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). There, even 

though “[f]iltering content on the Internet was already a known concept,” the Federal Circuit held 

that performing that filtering at an “ISP server” (instead of a user computer) was “a technical 

improvement over prior art ways of filtering such content” and thus an inventive concept under 

Alice Step Two. Id. at 1349-50. Here, using an intermediate server performing the steps of the 

challenged claims constitutes an inventive concept, regardless of whether any of those steps 

individually or in isolation are inventive.

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Second, the challenged claims include an inventive concept because they permit 

transmission of real-time “video communication” even “without having to first establish an endto-end connection.” ’270 patent at 47:23-47, 50:3-36. This capability is far from “wellunderstood, routine, conventional activity” in the context of real-time “video communication.” 

Mitzenmacher Decl. ¶ 28. For example, Facebook cites “prior art VoIP technology” for the 

proposition that “[r]eal-time communication over computer networks was not new at the time of 

the alleged invention.” Mot. at 11 (citing ‘270 patent prior art description). But such “prior art 

VoIP technology” required establishing an end-to-end connection before allowing any “video 

communication” to flow over the network. Mitzenmacher Decl. ¶¶ 15-18.

7

 

Unable to dispute the innovative nature of the “without having to first establish an end-toend connection,” Facebook again resorts to trying to delete that limitation from the claims, this 

time arguing that “th[e] limitation uses generic functional language to describe the abstract idea 

itself.” Mot. at 11. As discussed in connection with Alice Step One, an “end-to-end connection” 

is a technical concept, not an abstract idea. Either the “without . . . connection” step is part of the 

focus of the ’270 patent claims, in which case the claims are not directed to an abstract idea and 

pass muster under Alice Step One, or the claims are directed to a broader abstract idea, in which 

case “without . . . connection” supplies an inventive concept and the claims pass muster under 

Alice Step Two. What Facebook cannot do, however, is ignore this limitation under both Alice

Step One and Alice Step Two. Accordingly, factual disputes regarding whether the challenged 

claims of the ’270 patent recite an inventive concept render Facebook’s motion premature.

3. Facebook Fails to Separately Analyze the Dependent Claims

Facebook argues that “[t]he asserted dependent claims of the ’270 patent are also invalid,” 

 

7 Moreover, the ‘270 Patent issued over that prior art VoIP technology, and after the Supreme 

Court’s decision in Alice.

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but does not perform the two-step Alice analysis required to demonstrate patent ineligibility. Mot. 

at 11-13. For this reason alone, Facebook’s motion should be denied as to all dependent claims.

At best, Facebook contends that the dependent claims fail to add an inventive concept under 

Alice Step Two because “they only add additional abstraction, generic computer components, or 

insignificant post-solution activity.” Mot. at 11. Even there, Facebook’s analysis falls short. For 

example, claims 37 and 38 requires “start[ing] transmission of the video communication over the 

network before the location for the second communication devices is ascertained” and “regardless 

of whether the second communication device is available or not available on the network,” 

respectively. ’270 patent at 47:61-48:4. These are innovate steps beyond “well-understood, 

routine, conventional activity” in existing communication systems, including VoIP. 

Mitzenmacher Decl. ¶¶ 12-18, 29. Tellingly, Facebook asserts that these steps are “‘particular 

choices’ from the range of conventional transmission methods” (Mot. at 12), but cites nothing in 

support of that attorney argument. 

As another example, dependent claims 41 and 51 require enabling a communication device 

to render video communication “while the second communication is sent by a remote 

communication device” and/or “in a time-shifted mode.” ’270 patent at 48:13-23. 49:5-15. 

Facebook asserts that “[n]either of these claims ‘enables a computer . . . to do things it could not 

do before’” (Mot. at 13) but does not provide any substantive analysis of these additional 

limitations or how they tie back to the steps required by the asserted independent claims. As 

further discussed below in connection with the ’030 patent, enabling hybrid real-time/time-shifted 

communication in the manner required by claims 41 and 51 goes beyond “well-understood, 

routine, conventional activity” and constitutes another inventive concept that confers patent 

eligibility. Mitzenmacher Decl. ¶¶ 10-11, 19-20, 30-32.

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Because Facebook failed to perform the necessary analysis, even though it bears the dual 

burdens of overcoming its clear and convincing evidence burden of proof and the presumption of 

validity, Facebook’s motion should be denied. 

B. The ’030 Patent Is Directed to Patent Eligible Subject Matter

1. Facebook’s Alice Step One Analysis Oversimplifies the Asserted 

Independent Claims

Facebook’s section 101 attack on the ‘030 patent is also fatally flawed. The asserted 

independent claims of the ’030 patent (claims 1 and 33) are directed to an improved 

communication system for use in connection with streaming media. The claims require 

“progressively and persistently stor[ing] streaming media created using [a] communication devices 

as the streaming media is created.” ’030 patent at 43:8-26, 45:46-64. That same “streaming 

media” is also simultaneously “progressively transmit[ted] . . . as the streaming media is created 

and persistently stored.” Id. On the receiving end, “streaming media” being received is 

“progressively and persistently store[d] . . . as the streaming media is received.” Id. By 

“progressively and persistently” storing the streaming media, the “communication device” can 

“provide rendering options to selectively render the received streaming media, for the first time, 

in both a real-time mode as the streaming media is received over the network and in a time-shifted 

mode by retrieving and rendering the retrieved media from persistent storage.” Id.

The ’030 patent is thus directed to an improvement over existing communication systems: 

using “progressive[] and persistent[]” storage to allow selective rendering of “the received 

streaming media, for the first time, in both real-time mode . . . and in a time-shifted mode.” Id. 

Existing communication systems did not allow the receiver of a particular “streaming media” to 

render that stream using “both” options. ’030 patent at 1:30-50 (contrasting “[t]he current state of 

voice communications,” which enabled “full-duplex, synchronous conversation” or “a one-way 

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asynchronous voice message”); Compl. ¶ 35; Mitzenmacher Decl. ¶¶ 10-11, 19-22, 31-32. 

Indeed, during claim construction Facebook agreed that the focus of the claims was not 

some abstract idea, but using “persistent storage” to “improve[]” upon existing communication 

“systems”: 

As is evident from the language of the asserted claims, the persistent storage of 

messages is central to the supposedly inventive features of the ’030 Patent. The 

specification claims that storing messages so that they are available for later 

retrieval improves upon prior art telephone and walkie-talkie systems because a 

user’s “attention can be temporarily diverted from the conversation and then the 

conversation can be later reviewed when convenient” and “the conversation can be 

paused for seconds, minutes, hours, or even days, and can be picked up again where 

left off[.]” Id. at 4:32-44. 

Dkt. 60 at 2 (emphasis added). The ’030 patent claims are thus patent eligible because they 

“enable[] a computer . . . to do things it could not do before” (Finjan, 879 F.3d at 1305): i.e., 

“selectively render[ing] the received streaming media, for the first time, in both real time mode” 

and “time-shifted mode.” ’030 patent at 43:21-26, 45:58-64. See also Enfish, 822 F.3d at 1336 

(finding claims patent eligible where “the plain focus of the claims is on an improvement to 

computer functionality itself”).

The challenged ’030 patent claims are also patent eligible because “the claimed solution is 

necessarily rooted in computer technology in order to overcome a problem specifically arising in 

the realm of computer networks.” See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 

1257 (Fed. Cir. 2014). Just like in DDR, here the solution to the problem of rendering streaming 

media in both “a real time mode” and “a time-shifted mode” is necessarily rooted in computer 

technology, in this case communications systems. ’030 patent at 3:57-62 (“[T]elephone, voicemail 

and tactical voice communications systems are inadequate . . . . [I]mprovements in delivering voice 

and other media over packet-based networks, is therefore needed”). In DDR, the Federal Circuit 

concluded that claims directed to “address[ing] a business challenge (retaining website visitors)” 

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were patent eligible because “it is a challenge particular to the Internet.” Id. at 1257. Here, the 

’030 patent claims use “persistent storage” at sender and recipient device to address a “challenge” 

in user experience (rendering streaming media “in both real time mode” and “time-shifted mode”), 

but that challenge is particular to communication systems. The fact that the steps of the ’030 patent 

claims are implemented in software does not make them any less patent eligible. Enfish, 822 F.3d 

at 1335 (“Software can make non-abstract improvements to computer technology just as hardware 

improvements can . . . .”).

Facebook argues that “[t]he ’030 patent . . . is directed to the abstract idea of transmitting, 

receiving, and storing streaming media, and rendering it either in real time or after the fact.” Mot. 

at 1. As demonstrated above, these are not abstract ideas. Moreover, Facebook’s attempt to 

analogize the asserted claims to broadcast television and telephonic communications (Mot. at 14-

15) once again grossly oversimplifies the claimed invention in a contrived, unhelpful manner by 

ignoring that the claims are directed to a “communication device” that use persistent storage of 

both outgoing and incoming “streaming media” to enable hybrid digital communications that can 

be both real-time and time-shifted. ’030 patent at 43:21-26, 45:58-64. Even under Facebook’s 

characterization, existing television, VCR, and telephony technology lacked such a 

“communication device.” Mitzenmacher Decl. ¶ 20. Moreover, Facebook relies entirely on 

attorney argument. There is not a single cite to support Facebook’s allegations as to what 

constitutes “longstanding practice[s]” in those fields. Mot. at 14.

In support of its arguments, Facebook principally relies on In re TLI Comm’cns LLC Patent 

Litig., 823 F.3d 607 (Fed. Cir. 2016), which is readily distinguishable. While the claims in that 

case recited steps related to storing, transmitting, and receiving digital images, “the focus of the 

patentee and of the claims was not on an improved telephone unit.” Id. at 610, 613; see also id. at 

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 20 of 26
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612 (“[T]he problem facing the inventor was not how to combine a camera with a cellular 

telephone . . . .”). Instead, the claims were “directed to the abstract idea of classifying and storing 

digital images in an organized manner”—“a basic concept.” Id. at 613. The ’030 patent claims 

have the opposite focus: they are analogous to the “improved telephone unit” or “combin[ing] a 

camera with a cellular telephone” because they improve upon existing communication systems by 

using persistent storage to combine real-time and time-shifted communication in the form of a 

single “streaming media” that can be selectively rendered “in both a real-time mode . . . and in a 

time-shifted mode.” ’030 patent at 43:21-26, 45:58-64. Again, this characterization was 

uncontroversial during claim construction—when Facebook admitted that “the persistent storage 

of messages is central” to the claims, and that the ’030 patent “improves upon prior art telephone 

and walkie-talkie systems” (Dkt. 60 at 2)—and demonstrates that the ’030 patent claims are not 

directed to an abstract idea and instead patent eligible under Alice Step One.

2. Facebook’s Alice Step Two Analysis Ignores Factual Disputes

For Alice Step Two, Facebook cites to the ’030 patent specification as allegedly showing

that the claimed “hardware of a Device 13 used for storing and executing the Client application 

12” was “nothing more than generic computer components” (Mot. at 17-18), but it makes no 

attempt to show that the “storing,” “transmitting,” “receiving,” and “selectively rendering” steps 

performed by that hardware constitute “well-understood, routine, conventional activity.” At best, 

Facebook asserts that “the claims recite generalized steps to carry out generic computer functions ” 

with no support. Id. at 18. Considering Facebook faces the dual burden of the applicable pleading 

standard and overcoming a presumption of validity, Facebook cannot prevail based on attorney 

argument, hand-waving, and ignoring the actual steps performed by the claimed invention.

In any event, Facebook’s conclusory assertions lack merit. “[P]rogressively and 

persistently stor[ing]” both outgoing and incoming “streaming media” and using that storage “to 

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 21 of 26
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provide rendering options to selectively render the received streaming media, for the first time, in 

both a real-time mode . . . and in a time-shifted mode” was far from “well-understood, routine, 

conventional activity”—it was inventive. Mitzenmacher Decl. ¶¶ 10-11, 19-20, 13-32. 

Facebook’s motion refers to VoIP, broadcast television, and telephones as examples of existing 

communication systems. Mot. at 14. Yet, none of those technologies included the claimed 

combination of storing, transmitting, receiving, and selectively rendering required by the 

challenged claims. Mitzenmacher Decl. ¶¶ 20, 32. 

Accordingly, even if the Court finds that the challenged claims are directed to an abstract 

idea under Alice Step One, those claims further include an inventive concept sufficient to confer 

patent eligibility under Alice Step Two. At a minimum, Alice Step Two presents questions of fact 

necessitating the denial of Facebook’s motion.

3. Facebook Fails to Separately Analyze the Dependent Claims

As with the ’270 patent, Facebook failed to separately analyze each asserted dependent 

claims of the ’030 patent under Alice (especially Alice Step One) and also did not attempt to show 

that the independent claims are representative of all dependent claims. See Mot. at 18-20. For that 

reason alone, Facebook’s motion should be denied as to the dependent claims.

Facebook’s arguments for the dependent claims also fall short under Alice Step Two. For 

example, dependent claims 16, 36, and 47-48 all leverage the steps of the independent claims to 

enable “transition[ing]” from rendering the streaming media in “the real-time mode”/ 

“synchronously” to rendering in “the time-shifted mode”/“asynchronously,” or vice versa. ’030 

patent at 44:22-26, 46:8-10, 46:55-62. These dependent claims thus add an additional capability 

absent from existing communication systems—you could not transition an existing telephone or 

VoIP call from real time to time-shifted mode and back—and constitute more than “wellunderstood, routine, conventional activity.” Mitzenmacher Decl. ¶ 33; see also Finjan, 879 F.3d 

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 22 of 26
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at 1305 (claim that “enables a computer . . . to do things it could not do before” is patent eligible). 

Although Facebook argues that claims 16, 47, and 48 are “just as non-specific and resultsoriented as the independent claims,” Facebook cites nothing to support that assertion, and its 

argument is contradicted by the fact that the transitioning is enabled by the claimed persistent 

storage. See Mot. at 18. Facebook further argues “any distinction between synchronous and 

asynchronous communications and real-time or after-the-fact (i.e., time-shifted) rendering is 

immaterial for purposes of Section 101” because “the distinction between ‘synchronous’ and 

‘asynchronous’ communications simply depends on the rate at which users decide to review and 

respond to incoming messages.” Mot. at 18-19. Far from being “immaterial,” using the same 

“streaming media” messages for both real-time and time-shifted communication is an innovative 

technical improvement. ’030 patent at 4:27-32. Existing communication systems lacked this 

insight, and for that reason had a division between “synchronous conversation” and “asynchronous 

voice messag[ing].” Id. at 1:30-50.

As another example, dependent claims 13 and 44 (which further dependent from claims 12 

and 43, respectively) further require “ascertain[ing] if the communication device is disconnected 

from the network when the streaming media is created” and “transmitting the streaming media out 

of persistent storage when the communication device re-connects to the network.” ’030 patent at 

44:4-14, 46:37-48. These dependent claims are more than “well-understood, routine, conventional 

activity.” Mitzenmacher Decl. ¶ 34. Here again Facebook relies on attorney argument that “claims 

13 and 44 use purely ‘result-based functional language’” and ignores that the other claim 

limitations do describe how the alleged “results” are achieved by “progressively and persistently 

stor[ing] streaming media created . . . as the streaming media is created.” Mot. at 19-20; ’030 

patent at 23:49-58 (storing “media payloads . . . in multiple location” “provides the system 10 with 

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 23 of 26
20

both resilience and operability even . . . when a Participant of a Conversation is not connected to 

the network). And Facebook’s attempted analogies (Mot. at 20) fail to show claims 13 and 44 are

directed to abstract ideas because (1) these analogies themselves rely on technical innovation; and 

(2) Facebook has no support for its allegations—for example, what broadcasters “typically” do. 

In any event, whether these alleged actions by broadcasters constitute “well-understood, routine, 

conventional activity” is a question of fact that cannot be resolved at the pleading stage.

As a final example, claim 38 requires “encoding the streaming media indexed media 

payloads” and storing them as such. ’030 patent at 46:15-18. This concept is part of the 

implementation that permits the “streaming media” to be subsequently rendered “in both a real 

time mode” and “a time-shifted mode.” ’030 patent at 23:45-48 (“Since each packet 95 is indexed, 

time-stamped, and given a sequence identifier, the individual packets can be segmented into 

Messages. By sequentially threading the individual Messages together, Conversations may be 

constructed.”). The use of “indexed media payloads” for this purpose constitutes more than “wellunderstood, routine, conventional activity.” Mitzenmacher Decl. ¶ 35. In response, Facebook 

argues that “indexed media payloads” are “a particular, well-known type of communication,” but 

Facebook’s only support for that assertion relates to generic “packet-based communication 

networks” and says nothing about “indexed media payloads.” Mot. 19.

Accordingly, Facebook offers only attorney argument and conclusory assertions for the 

challenged dependent claims, falling far short of meeting its dual burden of demonstrating that 

each of the dependent claims are invalid notwithstanding the applicable pleading standard and the 

presumption of validity.

V. CONCLUSION

For the foregoing reasons, Voxer respectfully requests that this Court deny Facebook’s 

motion for judgment on the pleadings.

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 24 of 26
21

Dated: April 19, 2021 Respectfully submitted,

By: /s/ Sam Stake

J. Mark Mann

State Bar No. 12926150

G. Blake Thompson

State Bar No. 24042033

MANN | TINDEL | THOMPSON

300 West Main Street

Henderson, Texas 75652

Telephone: (903) 657-8540

Fax: (903) 657-6003

mark@themannfirm.com

blake@themannfirm.com

Kevin P.B. Johnson

California Bar No. 177129

Robert W. Stone

California Bar No. 163513

QUINN EMANUEL URQUHART &

SULLIVAN, LLP

555 Twin Dolphin Drive, 5th Floor

Redwood Shores, California 94065

Telephone: (650) 801-5000

Fax: (650) 801-5100

kevinjohnson@quinnemanuel.com

robertstone@quinnemanuel.com

Sam Stake

California Bar No. 257916

QUINN EMANUEL URQUHART &

SULLIVAN, LLP

50 California Street, 22nd Floor

San Francisco, California 94111

Telephone: (415) 875-6600

Fax: (415) 875-6700

samstake@quinnemanuel.com

Attorneys for Plaintiffs Voxer, Inc. and Voxer 

IP LLC

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 25 of 26
1

CERTIFICATE OF SERVICE

I hereby certify that on the 19th day of April, 2021, true and correct copies of the 

foregoing document were served on the following counsel of record at the addresses and in the

manner indicated:

VIA CM/ECF

Robert Van Nest

rvannest@keker.com

Christa Anderson

canderson@keker.com

David Silbert

dsilbert@keker.com

Eugene Paige

epaige@keker.com

Matthew Werdegar

mwerdegar@keker.com

Paven Malhotra

pmalhotra@keker.com

Shayne H. Henry

shenry@keker.com

Kristen E. Lovin

klovin@keker.com

Puja V. Parikh

pparikh@keker.com

Philip J. Tassin

ptassin@keker.com

Jee Young (Grace) Kim

gkim@keker.com

Molly Villagra

mvillagra@keker.com

Ryan Hayward

rhayward@keker.com

KEKER, VAN NEST & PETERS LLP

633 Battery Street

San Francisco, CA 94111-1809

Tel: 415-391-5400

Michael E Jones

mikejones@potterminton.com

Patrick C. Clutter

patrickclutter@potterminton.com

POTTER MINTON, PC

110 North College, Suite 500

Tyler, Texas 75702

Tel: 903-597-8311

Fax: 903-593-0846

/s/ Sam Stake

Sam Stake

Case 1:20-cv-00655-LY Document 87 Filed 04/19/21 Page 26 of 26