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

411 F.Supp.3d 926

VOIP-PAL.COM, INC., Plaintiff,

v.APPLE INC., Defendant.

Voip-Pal.Com, Inc., Plaintiff,

v.Amazon.com, Inc., and Amazon Technologies, Inc., Defendants.

Case No. 18-CV-06216-LHK

Case No. 18-CV-07020-LHK

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

Signed November 1, 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.

Michael J. McCue, Meng Zhong, Lewis Roca Rothgerber Christie LLP, Las Vegas, NV, Peter Curtis Magic, Emily H. Chen, Desmarais LLP, San Francisco, CA, Tom BenGera, Pro Hac Vice, Ameet A. Modi, Pro Hac Vice, John M. Desmarais, Pro Hac Vice, Joze Faye Welsh, Michael J.X. Matulewicz-Crowley, Pro Hac Vice, Raymond Nathan Habbaz, Robert C. Harrits, Pro Hac Vice, Desmarais LLP, New York, NY, for Defendant.

ORDER GRANTING CONSOLIDATED MOTION TO DISMISS WITH PREJUDICE

Re: Dkt. No. 89

Re: Dkt. No. 67

LUCY H. KOH, United States District Judge Plaintiff Voip-Pal.Com, Inc. filed two related patent infringement suits alleging infringement of 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") (collectively, the "Patents-in-Suit"). One suit is against Defendant Apple Inc. ("Apple"), Case No. 18-CV-06216, and the other is against Defendants Amazon.com, Inc. and Amazon Technologies, Inc. (collectively, the "Amazon Defendants"), Case No. 18-CV-07020. Before the Court is Defendants' consolidated motion to dismiss Plaintiff's amended complaints pursuant to Federal Rule of Civil Procedure 12(b)(6). Defendants 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. 67¹ ; Case No. 18-CV-06216, ECF No. 89 (collectively, "Def. Cons. Mot. to Dismiss"). Having considered the submissions of the parties, the relevant law, and the record in this case, the Court GRANTS Defendants' consolidated motion to dismiss with prejudice.

I. BACKGROUND

A. Factual Background

The following facts are drawn from Plaintiff's amended complaints, ECF No. 61 and Case No. 18-CV-06216, ECF No. 81, as the Court must accept the allegations therein as true at the motion to dismiss stage, Manzarek v. St. Paul Fire & Marine Ins. Co. , 519 F.3d 1025, 1031 (9th Cir. 2008).

1. The Parties and Technologies

Plaintiff is a Nevada corporation with its principal place of business in Bellevue, Washington. ECF No. 61 ("Amazon FAC"). Plaintiff, through its wholly owned subsidiary Digifonica, owns various patents relating to "Internet Protocol (‘IP’) based communication." Id. ¶¶ 23, 46. An IP-based system uses the Internet to carry voice and other communications instead of a traditional switched circuit network, such as the Public Switched Telephone Network ("PSTN"). Id. ¶¶ 17, 21.

Amazon.com, Inc. is a Delaware corporation with its principal place of business in Seattle, Washington. Id. ¶ 2. Amazon Technologies, Inc. is a Nevada corporation with its principal place of business in Seattle, Washington. Id. ¶ 3. Of relevance to the present case, the Amazon Defendants sell systems and devices that "support communications, including calling and messaging," using what Plaintiff refers to as the "Amazon Alexa Calling and Messaging System." Id. ¶ 46. These devices include, but are not limited to "the Amazon Echo, Echo Plus, Echo Dot, Echo Spot, Echo Show, Echo Connect, Amazon Tap," and certain Amazon Fire devices, as well as phones and tablets equipped with certain versions of the Alexa app. Id. ¶ 47.

Apple is a California corporation with its principal place of business in Cupertino, California. Case No. 18-CV-06216, ECF No. 81 ("Apple FAC") ¶ 2. Apple operates two systems that are relevant to the present case. First, "Apple's iMessage® system and service allows devices to communicate between participants, e.g., as between a first participant or user registered with Apple (such as through an Apple identifier) or that is using an Apple device, and a second user or participant that may or may not be a user registered with Apple or that may or may not be using an Apple device." Id. ¶ 48. Second, "Apple's Facetime® system and service allows devices to initiate an audio or video/audio communication between at least two participants which may or may not be associated with an Apple identification or Apple devices/software." Id. ¶ 49. In addition, "Apple enables the use of WiFi Calling in conjunction with its iMessage® and Facetime® systems and services, which allows an Apple device to initiate communications between participants using internet protocol (IP) based communication methods and participants using external networks, such as the PSTN." Id. ¶ 50.

2. The Patents-in-Suit

Plaintiff alleges that Defendants infringe four patents: the '762 Patent, the '330 Patent, the '002 Patent, and the '549 Patent. The '762 Patent was filed on October 7, 2015 and issued on January 3, 2017. The '330 Patent was filed on December 30, 2016 and issued on November 7, 2017. The '002 Patent was filed on January 12, 2017 and issued on November 21, 2017. The '549 Patent was filed on October 19, 2017 and issued on April 17, 2018. The Patents-in-Suit are all entitled "Producing Routing Messages for Voice over IP Communications." The Patents-in-Suit share the same specification, which is also the specification for the two patents in a related case. The parties cite the specification of the '002 Patent, so the Court does the same.

Specifically, Plaintiff asserts the following twenty claims:

Patent No. Asserted Claims
  '762          6, 16, 21, 26, 30
  '330          3, 4, 12, 14
  '002          1, 12, 22, 26, 29
  '549          2, 6, 9, 12, 17, 24

In general, the Patents-in-Suit relate to a "system architecture and operation," FAC ¶ 35, for routing IP-based communications, including communications between private IP-based networks and external networks such as the Public Switched Telephone Network ("PSTN"). FAC ¶ 26. The PSTN is the traditional landline telephone system, used primarily for voice communications. FAC ¶ 28. An IP-based communication system, by contrast, uses the Internet to carry communications such as phone calls—commonly referred to as "Voice-over-IP"—and other media (video, photos, etc.). IP telephones are "typically personal computer (PC) based telephones connected within an IP network, such as the public Internet or a private network of a large organization." '002 Patent at 1:22-26. A private network is an organization's internal communication network. FAC ¶ 29. Private networks predate the Patents-in-Suit and Voice-over-IP generally.

FAC ¶¶ 24, 29. One common form of private network is the "private branch exchange (PBX)," which employs private numbering schemes such as "extensions." FAC ¶¶ 24, 29.

Of course, from time to time, users on a private network may need to place a call to someone outside of the private network, such as through the PSTN or the public Internet. For that reason, "IP telephony switches installed within the IP network enable voice calls to be made within or between IP networks, and between an IP network and a switched circuit network (SCN), such as the public switched telephone network." '002 Patent at 1:30-34. The Patents-in-Suit refer to communications within the private network as "system communications" and communications with someone outside of the private network as "external network communications." The Court does the same.

One conventional method for routing calls to an external network is "to require users to input a special code (e.g., a prefix digit of ‘9’)" in order to initiate a call on the PSTN; otherwise, the call proceeds on the private network. FAC ¶¶ 24, 30. The Patents-in-Suit here disclose a different method for routing calls through the appropriate network and, ultimately, to the recipient of the call.

Specifically, the Patents-in-Suit disclose a process for routing a call (or transmission of other media) using "identifiers" associated with "callers and callees."² '002 Patent at 1:58-64. Such identifiers could be, in layman's terms, a phone number or username. See id. at 2:13-17; 15:23-25. According to Plaintiff, the technology "evaluat[es] a called party identifier based on profile settings (‘attributes’) associated with the calling party." FAC ¶ 32. Based upon that evaluation, the technology "produces a routing message," id. ¶ 34, containing an appropriate routing "address"—"e.g., an address in the system associated with the second participant or of a gateway to an external network," id. ¶ 40—"for receipt by a call controller ..., thereby causing the call controller to establish the call," id. ¶ 34. Thus, "the asserted claims ... use a caller's attributes to evaluate a callee identifier against network routing criteria to cause a call to automatically be routed over a system network or another network (e.g., such as the PSTN) interconnected to the system network through a gateway ... without the user manually specifying which network to use for routing ... (e.g., by dialing a prefix of ‘9’ to make a PSTN call)." FAC ¶ 33. Notably, there is no need for the user to manually specify which network to use for routing the call. FAC ¶ 33.

Figure 1 of the specification is helpful to understanding the invention.

Looking at Figure 1, "a system for making voice over IP telephone/videophone calls is shown generally at [item] 10." '002 Patent at 13:20-21. Item 11 is a "super node" located, for example, in Vancouver, Canada and providing service to a user (item 12) in Vancouver. Item 21 is a "super node" located, for example, in London, England and providing service to a user in London. Id. at 13:21-26. 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. ...