Voip-Pal.Com, Inc. v. Apple Inc.

375 F.Supp.3d 1110

VOIP-PAL.COM, INC., Plaintiff,

v.APPLE INC., Defendant.

Voip-Pal.Com, Inc., Plaintiff,

v.AT & T Corp, Defendant.

Voip-Pal.Com, Inc., Plaintiff,

v.Twitter Inc., Defendant.

Voip-Pal.Com, Inc., Plaintiff,

v.Verizon Wireless Services, LLC, et al., Defendant.

Case No. 18-CV-06217-LHK

Case No. 18-CV-06177-LHK

Case No. 18-CV-04523-LHK

Case No. 18-CV-06054-LHK

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

Signed March 25, 2019

Adam R. Knecht, Kurt R. Bonds, Alverson Taylor Mortensen & Sander, Las Vegas, NV, David J. Kaminski, June Grace Felipe, Carlson & Messer LLP, Los Angeles, CA, Kevin N Malek, Pro Hac Vice, Malek Moss PLLC, New York, NY, for Plaintiff.

Brian D. Johnston, Pro Hac Vice, Susan Kennedy, Pro Hac Vice, Morgan Elizabeth Grissum, Pro Hac Vice, Samir Bhavsar, Pro Hac Vice, Baker Botts LLP, Dallas, TX, Bryant Carroll Boren, Jr., Baker Botts, Palo Alto, CA, Lauren M. Eaton, Pro Hac Vice, Baker Botts LLP, Palo Alto, CA, Michael D Rounds, Watson Rounds, PC, Reno, NV, Wayne O. Stacy, Baker Botts LLP, San Francisco, CA, Dreyer Lauren, Lauren Dreyer, Pro Hac Vice, Baker Botts LLP, Washington, DC, for Defendant.

ORDER GRANTING CONSOLIDATED MOTIONS TO DISMISS

LUCY H. KOH, United States District JudgePlaintiff Voip-Pal.Com, Inc. filed 4 related patent infringement suits against Defendants Apple Inc. ("Apple"), AT & T Corp. ("AT & T"), Twitter Inc. ("Twitter"), and Cellco Partnership d/b/a/ Verizon Wireless Services, LLC ("Verizon") (collectively, "Defendants"). Plaintiff alleges that Apple, AT & T, and Verizon (but not Twitter) infringe various claims of U.S. Patent No. 8,542,815 ("the '815 Patent") to Perreault et al. Plaintiff also alleges that all Defendants infringe various claims of U.S. Patent No. 9,179,005 ("the '005 Patent") to Perreault et al. In all 4 related cases, each Defendant filed an omnibus motion to dismiss, thus resulting in 4 omnibus motions to dismiss. However, the briefing on the omnibus motions to dismiss, Plaintiff's oppositions, and Defendants' replies is identical in all 4 cases. Thus, for ease of reference and unless otherwise specified, the Court refers to documents filed in the Twitter litigation, Case No. 18-CV-04523-LHK.

Before the Court is Defendants' consolidated motions to dismiss, which contend that the asserted claims of the patents-in-suit fail to recite patent-eligible subject matter under 35 U.S.C. § 101. ECF No. 71 ("Mot."). Having considered the submissions of the parties, the relevant law, and the record in this case, the Court GRANTS Defendants' consolidated motions to dismiss the asserted claims of the '815 Patent and the '005 Patent.

I. BACKGROUND

A. Factual Background

1. The Parties

Plaintiff is a Nevada corporation with its principal place of business in Bellevue, Washington. ECF No. 65 at ¶ 5. Plaintiff "owns a portfolio of [Voice over Internet Protocol] patents and patent applications." Id. at ¶ 1.

Defendant Twitter is a California corporation with its principal place of business in San Francisco, California. Id. at ¶ 6. 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." Id. at ¶ 23.

Defendant Apple is a California corporation with its principal place of business in Cupertino, California. Case No. 18-CV-06217-LHK, ECF No. 11 at ¶ 7. 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." Id. at ¶ 15.

Defendant AT & T is a Delaware corporation with its principal place of business in Bedminster, New Jersey. Case No. 18-CV-06177-LHK, ECF No. 59 at ¶ 2. AT & T "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others." Id. at ¶ 40. AT & T also offers Voice over Internet Protocol products and services "utilizing equipment at the customer or business premises and a collection of servers and gateways." Id. at ¶ 41. Moreover, AT & T "supports a Wi-Fi based calling platform ... [that] allows a mobile device to initiate a communication such as a call or text message between a caller, or a first participant, and a callee, or a second participant, using an AT & T assisted voice over IP ("VoIP") system." Id. at ¶ 42.

Defendant Verizon is a Delaware corporation with its principal place of business in Basking Ridge, New Jersey. Case No. 18-CV-06054-LHK, ECF No. 119 at ¶ 2. Verizon "supports and operates a messaging platform ... [that] allows smartphone users to send messages including text, images, video and audio to others." Id. at ¶ 40. Verizon also offers Voice over Internet Protocol products and services "utilizing equipment at the customer or business premises and a collection of servers and gateways." Id. at ¶ 41. Moreover, Verizon "supports a Wi-Fi based calling platform ... [that] allows a mobile device to initiate a communication such as a call or a text message between a caller, or a first participant, and a callee, or a second participant, using a [Verizon] assisted voice over IP ("VoIP") system." Id. at ¶ 42.

2. The Patents

The '815 Patent and the '005 Patent (collectively, the "Patents") are both titled "Producing Routing Messages for Voice over IP Communications." '815 Patent at front page; '005 Patent at front page. The '815 Patent was filed on November 1, 2007 and was issued on September 24, 2013. The '005 Patent was filed on August 13, 2013 and was issued on November 3, 2015. The '815 Patent and the '005 Patent share the same specification.

Defendants posit that the asserted claims of the Patents fall within two categories: "multi-network claims" and "single-network claims." Mot. at 2. Defendants argue that asserted claims 1, 7, 12, 27, 28, 72, 73, 92, and 111 of the '815 Patent and claims 49 and 73 of the '005 Patent are multi-network claims. Id. at 2, 2 n.2. Moreover, Defendants argue that asserted claims 74, 75, 77, 78, 83, 84, 94, 96, and 99 of the '005 Patent are single-network claims. Id. at 2, 2 n.3. The differences between the multi-network claims and the single-network claims will be explained below, but for present purposes, the Court finds Defendants' differentiation of the claims into 2 groups useful, and adopts Defendants' groupings.

In addition, Defendants identify claim 1 of the '815 Patent as representative of the multi-network claims, an identification that Plaintiff does not dispute. Defendants identify claim 74 of the '005 Patent as representative of the single-network claims, an identification that Plaintiff also does not dispute. Thus, the Court will adopt the parties' identification of representative claims. Claim 1 of the '815 Patent shall be representative of the multi-network claims, and claim 74 of the '005 Patent shall be representative of the single-network claims.

In general, the asserted claims of the Patents relate to the process of routing calls (either voice or video) between a caller and a callee, in which calls are classified as either public network calls or private network calls.¹ '815 Patent at 1:50-54. More specifically, the process of routing the call involves a computer "super node" routing a call based on "identifiers" associated with both the caller and the callee. Id. at 1:54-56. Such identifiers might include what are essentially, in layman's terms, the phone numbers of the caller and callee. Id. at 2:17-25.

A super node contains a call routing controller, which controls communication between a caller and a callee. 3:47-52. A caller sends a request to establish a call to the call routing controller. 1:54-56. The request includes the callee's identifier. Id. The call routing controller then compares the callee identifier with attributes of the caller identifier. Id. at 2:8-25. Based on the comparison between the callee identifier and the caller identifier, the call routing controller determines whether the callee is a subscriber to a private network. Id. at 2:45-47, 2:65-3:2. If the callee is a subscriber to a private network, then the call routing controller produces a routing message so that the call is directed to the callee's private network super node. Id. at 1:59-62, 14:24-34. If the callee is not a subscriber to a private network, then the call routing controller produces a routing message directing the call through a gateway to a public network. Id. at 1:62-64.

Figure 1 is helpful to understanding the invention. "[A] system for making voice over IP telephone/videophone calls is shown generally at [item] 10." Id. at 12:50-51. Item 11 is a super node located, for example, in Vancouver, Canada. Id. at 12:53-55. The Vancouver super node includes a call controller (item 14), a routing controller (item 16), a database (item 18), a voicemail server (item 19), and a media relay (item 9). Id. at 13:10-13. Users of the system such as a Vancouver user (item 12) and a Calgary user (item 15) communicate with the Vancouver super node using the internet (item 13). Id. at 13:17-21. It is important to note that the super node is implemented via a computer. According to the specification, it "may be implemented as separate modules on a common computer system or by separate computers, for example." Id. at 13:13-14

Assume that the Vancouver user (item 12) is attempting to call the Calgary user (item 15). The caller (item 12) will send a message to the Vancouver super node (item 10) and in response, the call controller (item 14) sends a call routing controller request to the routing controller (item 16).

Id. at 14:10-18. The routing controller (item 16) then queries the database (item 18), and then produces a routing message which is sent back to the call controller (item 14). Id. The call controller (item 14) communicates...