Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 1377 (Pat)
In Facebook’s first visit to the UK Patents Court, it sought revocation of a telecommunications messaging patent owned by Voxer. The counterclaim raised infringement by the doctrine of equivalents, in response to which Facebook advanced a novel Formstein defence. The case was tried under the Shorter Trials Scheme, with Judgment handed down 364 days after issue of the Claim Form. The Court held that Facebook did not infringe, and that the patent as amended was invalid.
In respect of the doctrine of equivalents, Lord Justice Birss (sitting at 1st instance) held that a Formstein defence is available to a defendant in the UK (see paragraph 216), and had earlier held at the pre-trial review that a patentee seeking to rely on the doctrine of equivalents must plead it (see Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 657 (Pat), paragraph 7).
Mark Vanhegan QC acted for Facebook. Brian Nicholson QC and Christopher Hall acted for Voxer.