Apple Inc. v. Voip-Pal.com, Inc., Case No. 20-CV-02460-LHK
| Decision Date | 11 December 2020 |
| Docket Number | Case No. 20-CV-02995-LHK,Case No. 20-CV-02460-LHK, Case No. 20-CV-03092-LHK |
| Citation | 506 F.Supp.3d 947 |
| Parties | APPLE INC., Plaintiff, v. VOIP-PAL.COM, INC., Defendant. AT&T Corp., et al., Plaintiffs, v. VoIP-Pal.com, Inc., Defendant. Cellco Partnership, Plaintiff, v. VoIP-Pal.com, Inc., Defendant. |
| Court | U.S. District Court — Northern District of California |
William Andrew Hector, Venable LLP, San Francisco, CA, Frank C. Cimino, Pro Hac Vice, Megan Sunkel Woodworth, Pro Hac Vice, Venable LLP, Washington, DC, for Plaintiff.
Lewis Emery Hudnell, III, Hudnell Law Group PC, Mountain View, CA, Nicolas Spiros Gikkas, The Gikkas Law Firm, P.C., Palo Alto, CA, for Defendant.
ORDER DENYING CONSOLIDATED MOTION TO DISMISS
Re: Dkt. No. 32
Plaintiffs Apple, Inc. ("Apple"); AT&T Corp., AT&T Services, Inc., and AT&T Mobility (collectively, "AT&T"); and Cellco Partnership d/b/a Verizon Wireless ("Verizon") (collectively, "Plaintiffs") each sue Defendant VoIP-Pal.com, Inc. ("Defendant") for a declaration of non-infringement and invalidity of U.S. Patent No. 10,218,606 ("the ’606 patent"). In addition, Apple sues Defendant for a declaration of non-infringement and invalidity of U.S. Patent No. 9,935,872 ("the ’872 patent"). Before the Court is Defendant's consolidated motion to dismiss Plaintiffs’ complaints.1 Having considered the parties’ submissions, the relevant law, and the record in this case, the Court DENIES Defendant's motion to dismiss.
This case represents the latest chapter in a long dispute between the parties regarding whether Plaintiffs infringe Defendant's patents, which relate to a system for routing internet-protocol communications. Below, the Court discusses in turn: (1) the parties; (2) Defendant's first set of lawsuits against the Plaintiffs, originally filed in the District of Nevada in 2016 ("the 2016 cases"); (3) Defendant's second set of lawsuits against Apple and Amazon, originally filed in the District of Nevada in 2018 ("the 2018 cases"); (4) Defendant's most recent lawsuits against Plaintiffs, filed in the Western District of Texas in April of 2020 ("the Texas cases"); and (5) the instant cases, which were filed by Plaintiffs in this Court in April and May of 2020.
Plaintiff Apple is a California corporation with its principal place of business in Cupertino, California. ECF No. 1 ¶ 7. Apple "designs, manufactures, and markets mobile communication and media devices and personal computers, and sells a variety of related software, services, accessories, networking solutions, and third-party digital content and applications." Id. Apple "provides, supports, and/or operates messaging technology, including iMessage, an instant messaging service supported by Apple's Messages application and computer infrastructure that allows smartphone and desktop users to send messages including text, images, video and audio to other users." VoIP-Pal.Com, Inc. v. Apple Inc. , 375 F. Supp. 3d 1110, 1117 (N.D. Cal. 2019) (quotation omitted).
Plaintiff AT&T Corp. is a New York corporation with its principal place of business in Bedminster, New Jersey. Case No. 20-CV-02995-LHK, ECF No. 1 ¶ 7. Plaintiff AT&T Services, Inc. is a Delaware corporation with its principal place of business in Dallas, Texas. Id. ¶ 8. Plaintiff AT&T Mobility LLC is a Delaware corporation with its principal place of business in Atlanta, Georgia. Id. ¶ 9. AT&T "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others." VoIP-Pal.Com , 375 F. Supp. 3d at 1117 (quotation omitted). AT&T also supports Voice over Internet Protocol products and services as well as a Wi-Fi based calling platform. Id. at 1117–18.
Plaintiff Cellco Partnership d/b/a Verizon Wireless is a Delaware corporation with its principal place of business in Basking Ridge, New Jersey. Case No. 20-CV-03092-LHK, ECF No. 1 ¶ 7. Verizon "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others." VoIP-Pal.Com , 375 F. Supp. 3d at 1118 (quotation omitted). Verizon also supports Voice over Internet Protocol products and services and a Wi-Fi based calling platform. Id.
Defendant VoIP-Pal is a Nevada corporation with its principal place of business in Bellevue, Washington. ECF No. 1 ¶ 8. Defendant owns a portfolio of patents relating to Internet Protocol based communication.
VoIP-Pal.Com, Inc. v. Apple Inc. , 411 F. Supp. 3d 926, 930 (N.D. Cal. 2019).
On February 9, 2016, Defendant sued Apple in the District of Nevada for infringement of U.S. Patent Nos. 8,542,815 ("the ’815 patent"), and 9,179,005 ("the ’005 patent"), both of which relate to a system for routing calls between a caller and a callee over Internet Protocol. VoIP-Pal.Com , 375 F. Supp. 3d at 1118, 1122. The following day, Defendant sued Verizon and AT&T in the District of Nevada for infringement of the same patents. Id. On October 6, 2016, Defendant sued Twitter in the District of Nevada for infringement of the same patents. Id. at 1121. The District of Nevada stayed the cases pending inter partes review. Id.
After the stays were lifted, on February 28, 2018, Twitter moved to change venue to the Northern District of California. VoIP-Pal.Com, Inc. v. Twitter, Inc. , Case No. 16-CV-02338, 2018 WL 3543031, at *1 (D. Nev. July 23, 2018). On July 23, 2018, the District of Nevada granted Twitter's motion for change of venue. Id. On October 1, 2018, the District of Nevada granted Verizon and Defendant's stipulation to transfer the case. VoIP-Pal.Com , 375 F. Supp. 3d at 1121. On October 4, 2018, the District of Nevada granted a similar stipulation by AT&T and Defendant. Id. The following day, the District of Nevada granted a similar stipulation by Apple and Defendant. Id. As a result, all four cases were transferred to this Court, where they were consolidated.
On March 25, 2019, this Court granted Apple, AT&T, Verizon, and Twitter's consolidated motion to dismiss all four cases. Id. at 1117. In a 45-page order, the Court concluded that the ’815 and ’005 patents were unpatentable under 35 U.S.C. § 101. Id. at 1138, 1144. On March 16, 2020, the Federal Circuit affirmed this Court's decision. VoIP-Pal.Com, Inc. v. Apple, Inc. , 798 F. App'x 644, 645 (Fed. Cir. 2020). On May 18, 2020, the Federal Circuit denied Defendant's petition for panel or en banc rehearing. VoIP-Pal.Com, Inc. v. Twitter , Case No. 2019-1808, ECF No. 99.
On May 24, 2018, Defendant sued Apple in the District of Nevada for infringement of four more patents: U.S. Patent Nos. 9,537,762 ("the ’762 patent") ; 9,813,330 ("the ’330 patent") ; 9,826,002 ("the ’002 patent") ; and 9,948,549 ("the ’549 patent"). VoIP-Pal.Com , 411 F. Supp. 3d at 934. Like the two patents that were the subject of the 2016 Cases, these four patents relate to a system for routing communications over Internet Protocol. Id. at 931. On June 15, 2018, Defendant sued Amazon in the District of Nevada for infringement of the same patents. Id. The lawsuits against Apple and Amazon were transferred from the District of Nevada to this Court, where they were consolidated and related to the 2016 cases. Id.
On November 1, 2019, this Court granted Apple and Amazon's consolidated motion to dismiss both cases with prejudice. Id. at 930. Just as with the 2016 Cases, the Court concluded, in a 68-page order, that the four patents were unpatentable under 35 U.S.C. § 101. Id. at 941. On November 3, 2020, the Federal Circuit affirmed this Court's decision. VoIP-Pal.Com, Inc. v. Apple, Inc. , 828 F. App'x 717, 717 (Fed. Cir. 2020). If Defendant chooses to petition for rehearing, the petition is due on December 17, 2020. See Order, VoIP-Pal.Com, Inc. v. Apple, Inc. , Case No. 2020-1241 (Fed. Cir. Nov. 9, 2020). If Defendant chooses to petition the United States Supreme Court for a writ of certiorari, Defendant's petition is due on April 3, 2021. See Order, March 19, 2020 (ordering that "the deadline to file any petition for a writ of certiorari due on or after the date of this order is extended to 150 days from the date of the lower court judgment").
In April of 2020, Defendant sued Apple, AT&T, Verizon, Amazon, Facebook, and Google in the Waco Division of the Western District of Texas for infringement of the six other patents that were examined by this Court in the 2016 and 2018 cases. Compare ECF No. 1-1 with VoIP-Pal.Com , Inc. v. Apple Inc. , Case No. 18-CV-06217-LHK, ECF No. 1-2.
On September 29, 2020, United States District Judge Alan Albright of the Western District of Texas stayed the six cases pending before him until this Court enters an order on the instant motion to dismiss and the motion to dismiss in a related declaratory judgment action, Twitter, Inc. v. VoIP-Pal.com, Inc. , Case No. 20-CV-02397-LHK. See VoIP-Pal.Com, Inc. v. Facebook, Inc. , Case No. 20-CV-00267-ADA, ECF No. 47 (W.D. Tex. Apr. 2, 2020).
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