Twitter, Inc. v. Voip-Pal.com

• Decision Date: 02 November 2021
• Docket Number: 21-CV-02769-LHK
• Parties: TWITTER, INC., Plaintiff, v. VOIP-PAL.COM, INC., Defendant.
• Court: U.S. District Court — Northern District of California

TWITTER, INC., Plaintiff,
v.
VOIP-PAL.COM, INC., Defendant.

No. 21-CV-02769-LHK

United States District Court, N.D. California, San Jose Division

November 2, 2021

ORDER DENYING MOTION TO DISMISS

Re: Dkt. No. 25

LUCY H. KOH United States District Judge

Plaintiff Twitter, Inc. (“Twitter”) brings the instant case against Defendant VoIP-Pal.com, Inc. (“Defendant”) seeking a declaratory judgment that Twitter's products do not infringe U.S. Patent No. 9, 935, 872 (“the '872 patent”). ECF No. 1 (“Compl.”). Defendant moves to dismiss the instant case for lack of subject matter jurisdiction, lack of personal jurisdiction, and improper venue. ECF No. 25. Having considered the parties' submissions, the relevant law, and the record in this case, the Court DENIES Defendant's motion to dismiss.

I. BACKGROUND

Over the past five years, Defendant has litigated numerous cases involving a family of patents that relate to methods and systems for communicating over an internet protocol (“IP”) network. See VoIP-Pal.Com, Inc. v. Apple Inc., 375 F.Supp.3d 1110, 1118 (N.D. Cal. 2019).

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Defendant has asserted at least eight patents in this family against various telecommunications and internet companies, including Twitter. In turn, several companies, including Twitter, have filed actions against Defendant seeking declaratory judgments that those companies' products do not infringe Defendant's IP network patents and that those patents are invalid.

The '872 patent is part of the same patent family. Accordingly, the instant case is the most recent dispute between the parties about whether Twitter has infringed one of Defendant's IP network patents. Below, the Court describes in turn: (1) the parties; (2) the '872 patent and Defendant's patent family; (3) the previous cases involving Defendant's patent family; and (4) the procedural history of the instant case.

A. The Parties

Twitter is a Delaware corporation with its principal place of business in San Francisco, California. Compl. ¶ 14. Twitter “operates a global Internet platform for public self-expression and conversation in real time.” Id. ¶ 15. “Twitter uses and sells messaging services using messaging application software and/or equipment, servers and/or gateways that route messages to computing devices such as smartphones, tablet computers, and personal computers.” Twitter, Inc. v. VoIP-Pal.Com, Inc., No. 20-CV-02397-LHK, 2021 WL 3861446, at *1 (N.D. Cal. Aug. 30, 2021) (internal quotation omitted).

Defendant is a Nevada corporation with its principal place of business in Waco, Texas. Compl. ¶ 16. Defendants own a family of patents related to communications over IP networks. See VoIP-Pal.Com, 375 F.Supp.3d at 1118.

B. The '872 Patent and Defendant's Patent Family

The '872 patent is titled “Producing Routing Messages for Voice Over IP Communications.” The '872 patent describes and claims “methods and apparatus[es] for routing and billing” communications over an IP network. See '872 patent, col. 1:20-29; see, e.g., id., col. 37:28-38:10 (claiming a “method for routing a communication in a communication system between an Internet-connected first participant device associated with a first participant and an Internet-connected second participant device associated with a second participant”). The

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application for the '872 patent was filed on October 11, 2017, and the '872 patent issued on April 3, 2018.

The '872 patent is directly related to at least seven other patents that Defendant owns. Specifically, the '872 patent issued from a continuation of U.S. Patent Application No. 15/396, 344 (“the '344 application”), which is now U.S. Patent No. 9, 813, 330 (“the '330 patent”). U.S. Patent Nos. 9, 948, 549 (“the '549 patent”) and 9, 826, 002 (“the '002 patent”) also issued from continuations of the '344 application. In turn, the '344 application was a continuation of the application that became U.S. Patent No. 9, 537, 762 (“the '762 patent”), which issued from a continuation of the application that became U.S. Patent No. 9, 179, 005 (“the '005 patent”), which issued from a continuation of the application that became U.S. Patent No. 8, 542, 815 (“the '815 patent”). Finally, the '872 patent is the parent of U.S. Patent No. 10, 218, 606 (“the '606 patent”).

Thus, these eight patents have the same title, identical figures, nearly identical specifications, and similar claims.

C. Previous Related Cases

1. The 2016 Cases Involving the '815 and '005 Patents

In 2016, Defendant filed four actions in the District of Nevada asserting that Twitter, Apple Inc. (“Apple”), AT&T Corp. (“AT&T”), and Verizon Wireless Services, LLC (“Verizon) infringed claims of the '815 and '005 patents. See VoIP-Pal.Com, 375 F.Supp.3d at 1121-22. Because Apple filed petitions for inter partes reviews challenging the patentability of the asserted claims, the District of Nevada stayed all four cases. Id. After the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“PTO”) rejected Apple's challenges, the District of Nevada lifted the stays. Id.

On February 28, 2018, Twitter moved to transfer Defendant's action against Twitter 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 and transferred the case. Id.

In October 2018, Defendant stipulated to transfer its actions against Apple, AT&T, and

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Verizon to the Northern District of California as well. VoIP-Pal.Com, 375 F.Supp.3d at 1121. As a result, all four cases were transferred and assigned to this Court.

In November 2018, this Court entered an order consolidating all four cases. Id. at 1122.

On March 25, 2019, this Court granted Twitter, Apple, AT&T, and Verizon's consolidated motion to dismiss all four cases. Id. at 1117. In a 45-page order, the Court concluded that the asserted claims of 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 Fed.Appx. 644, 645 (Fed. Cir. 2020).

On April 8, 2020, Defendant issued a press release which stated that Defendant was “undeterred in [its] fight to assert [its] intellectual property rights” and that Defendant “remain[ed] firm in [its] resolve to achieve monetization for [its] shareholders.” See Compl. ¶ 4; ECF No. 1-4 at 2-3.

On April 15, 2020, Defendant filed a petition with the Federal Circuit requesting panel or en banc rehearing of its appeal. VoIP-Pal.Com, Inc. v. Twitter, Case No. 19-1808, ECF No. 89 (Fed. Cir. May 18, 2020). On May 18, 2020, the Federal Circuit denied Defendant's petition. Id., ECF No. 99.

2. The 2018 Cases Involving the '762, '330, '002, and '569 Patents

In 2018, Defendant filed two actions in the District of Nevada asserting that Apple and Amazon.Com, Inc. (“Amazon”) had infringed claims of the '762, '330, '002, and '549 patents. See VoIP-Pal.Com, Inc. v. Apple Inc., 411 F.Supp.3d 926, 934 (N.D. Cal. 2019). After both cases were transferred and assigned to this Court, this Court consolidated the two cases. Id.

On November 1, 2019, this Court granted Apple and Amazon's consolidated motion to dismiss both cases. Id. at 930. In a 68-page order, the Court concluded that the asserted claims of the '762, '330, '002, and '549 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 Fed.Appx. 717, 717 (Fed. Cir. 2020). On December 17, 2020, Defendant

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filed a petition with the Federal Circuit requesting panel or en banc rehearing of its appeal. VoIP-Pal.com, Inc. v. Apple, Inc., Case No. 20-1241, ECF No. 52 (Fed. Cir. Jan. 26, 2021). On January 26, 2021, the Federal Circuit denied Defendant's petition. Id., ECF No. 53.

On June 25, 2021, Defendant filed a petition for a writ of certiorari asking the United States Supreme Court to review the Federal Circuit's decision. See VoIP-Pal.com, Inc. v. Apple, Inc., Case No. 20-1809 (U.S. Oct. 4, 2021). On October 4, 2021, the Supreme Court denied Defendant's petition. See id., 2021 WL 4507874, at *1.

3. The 2020 Cases Involving the '606 and '872 Patents

On April 2, 2020, Defendant filed an action in the Waco Division of the Western District of Texas asserting that Facebook, Inc. (“Facebook”) infringed claims of the '606 patent. VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 1 (W.D. Tex. Apr. 2, 2020).

Between April 3, 2020 and April 7, 2020, Defendant filed actions in the Waco Division of the Western District of Texas asserting the '606 patent against Google LLC (“Google”), Amazon, and Apple. See VoIP-Pal.Com, Inc. v. Google LLC, Case No. 20-CV-00269-ADA, ECF No. 1 (W.D. Tex. Apr. 3, 2020); VoIP-Pal.Com, Inc. v. Amazon.Com, Inc.., Case No. 20-CV-00272-ADA, ECF No. 1 (W.D. Tex. Apr. 6, 2020); VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV-00275-ADA, ECF No. 1 (W.D. Tex. Apr. 7, 2020).

On April 10, 2020, Apple filed an action in the Northern District of California seeking a declaratory judgment that Apple's products do not infringe the '606 and '872 patents and that certain claims of those patents are invalid. Id.

On April 24, 2020, Defendant filed actions in the Waco Division of the Western District of Texas asserting the '606 patent against AT&T and Verizon. See VoIP-Pal.Com, Inc. v. AT&T Inc., Case No. 20-CV-00325-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.Com, Inc. v. Verizon Comms., Inc., Case No. 20-CV-00327-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020).

On April 30, 2020, AT&T filed an action in the Northern District of California seeking a declaratory judgment that AT&T's products do not infringe the '606 patent. Id.

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