Twitter, Inc. v. VoIP-Pal.com, Inc.

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

Case No. 20-CV-02397-LHK

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

December 14, 2020

ORDER DENYING MOTION TO DISMISS

Re: Dkt. No. 31

Plaintiff Twitter, Inc. ("Plaintiff") sues 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"). Before the Court is Defendant's motion to dismiss Plaintiff's complaint. Having considered the parties' submissions, the relevant law, and the record in this case, the Court DENIES Defendant's motion to dismiss.

I. BACKGROUND

This case represents the latest chapter in a long dispute between the parties regarding whether Plaintiff infringes 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 Plaintiff, Apple, AT&T, and Verizon, 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 Apple, AT&T, Verizon, Amazon, Facebook, and Google, filed in the Western District of Texas in April of 2020 ("the Texas cases"); and (5) the instant case, which was filed by Plaintiff in this Court in April of 2020.

A. The Parties

Plaintiff Twitter is a Delaware corporation with its principal place of business in San Francisco, California. ECF No. 1 ¶ 7. Twitter "operates a global Internet platform for public self-expression and conversation in real time." Id. ¶ 8. 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." VoIP-Pal.Com, Inc. v. Apple Inc., 375 F. Supp. 3d 1110, 1117 (N.D. Cal. 2019) (quotation omitted).

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).

B. The 2016 Cases

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 Plaintiff 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, Plaintiff 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 grantedPlaintiff'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 Plaintiff'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.

C. The 2018 Cases

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 forrehearing, 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").

D. The Texas Cases

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 '606 patent. VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 1 (W.D. Tex. Apr. 2, 2020); 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); 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-00275-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020). Like the six patents that were the subjects of the 2016 and 2018 Cases, the '606 patent relates to a system for routing communications over Internet Protocol. Specifically, the '606 patent shares a common specification, title, parent application, inventors, and owner with Defendants' 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, 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 consolidated motion to dismiss in three related declaratory judgment actions, Apple, Inc. v. VoIP-Pal.com, Inc., Case No. 20-CV-02460-LHK; AT&T, Inc. v. VoIP-Pal.com, Inc., Case No. 20-CV-02995-LHK; and Cellco Partnership, Inc. v. VoIP-Pal.com, Inc., Case No. 20-CV-03092-LHK. See VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 47 (W.D. Tex. Apr. 2, 2020).

E. The Instant Case

On April 8, 2020, six days after Defendant started filing lawsuits in the Western District of Texas that alleged infringement of the '606 patent, Plaintiff sued Defendant for a declaration of non-infringement of the '606 patent in the Northern District of California. ECF No. 1. On April 21, 2020, this Court granted Plaintiff's motion to relate its declaratory judgment action to the 2016 case against Plaintiff. ECF No. 14.

Shortly after Plaintiff filed the instant case, the other three defendants in the 2016 cases (Apple, AT&T, and Verizon) also filed declaratory judgment actions in the Northern District of California for a declaration of non-infringement and invalidity of the '606 patent. Case No. 20-CV-02460-LHK, ECF No. 1; Case No. 20-CV-02995-LHK, ECF No. 1; Case No. 20-CV-03092-LHK, ECF No. 1. On April 14, 2020, Apple amended its complaint to also seek a declaration of non-infringement and invalidity of the '872 patent. Case No. 20-CV-02460, ECF No. 10. The Court then related Apple, AT&T, and Verizon's cases to Defendant's 2016 cases against them, just as the Court had done in the instant case. Case No. 20-CV-02460-LHK, ECF No. 18; Case No. 20-CV-02995-LHK, ECF No. 23; Case No. 20-CV-03092-LHK, ECF No. 18.

On May 26, 2020, this Court related the instant case to the Apple, AT&T, and Verizon cases. ECF No. 24. On June 4, 2020, this Court consolidated the motion to dismiss briefing for the Apple, AT&T, and Verizon cases but ordered that the motion to dismiss in the instant case be briefed separately. ECF No. 26.

On July 10, 2020, Defendant filed a consolidated motion to dismiss the Apple, AT&T, and Verizon cases. Case No. 20-CV-02460-LHK, ECF No. 32. On December 11, 2020, this Court denied Defendant's consolidated motion to dismiss. Case No. 20-CV-02460-LHK, ECF No. 60. The Court concluded that there was personal jurisdiction over Defendant because Defendant had purposefully directed its enforcement activities towards the forum state by litigating six lawsuits in this district. Id. at 17-20. The Court also concluded that it would be reasonable and fair to assert personal jurisdiction over Defendant. Id. at 20-23. Because...