1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 1 of 9
`
`
`
`
`
`PERKINS COIE LLP
`Sarah Fowler (Bar No. 264838)
`Amisha Manek (Bar No. 305163)
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Phone: 650.838.4300
`SFowler@perkinscoie.com
`AManek@perkinscoie.com
`
`PERKINS COIE LLP
`Gene W. Lee (not yet admitted)
`Thomas Matthew (not yet admitted)
`1155 Avenue of the Americas, 22nd floor
`New York, NY 10112-0015
`212.262.6900
`GLee@perkinscoie.com
`TMatthew@perkinscoie.com
`
`Attorneys for Plaintiff Twitter, Inc.
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`TWITTER, INC., a Delaware corporation,
`Plaintiff,
`
`v.
`VOIP-PAL.COM, INC., a Nevada
`corporation,
`
`Defendant.
`
`
`No. 20-cv-2397
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`
`
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 2 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`I. INTRODUCTION
`1.
`This Complaint for declaratory judgment of noninfringement (“Declaratory
`Judgment Complaint”) arises from a real and immediate controversy between plaintiff Twitter,
`Inc. (“Twitter”), and defendant VoIP-Pal.com Inc. (“VoIP-Pal”), as to whether Twitter infringes
`any claims of U.S. Patent 10,218,606 (the “’606 patent”; Exhibit 1), entitled, “Producing Routing
`Messages For Voice Over IP Communications.”
`2.
`The ’606 patent is a member of a family that includes six other patents that VoIP-
`Pal has asserted in prior lawsuits in this Court against Twitter, Apple, AT&T, Verizon Wireless,
`and Amazon (“first and second wave actions”). The ’606 patent shares a common specification
`with the six previously-asserted patents. All six of the previously-asserted patents were found to
`be invalid under 35 U.S.C. § 101 for claiming ineligible subject matter.
`3.
`During the past week (April 2-7, 2020), VoIP-Pal filed new lawsuits in the
`Western District of Texas asserting the ’606 patent against Facebook, WhatsApp, Google,
`Amazon, and Apple (the “Texas lawsuits”). The claims of the ’606 patent asserted in these new
`lawsuits are very similar to the claims of one or more of the patents that VoIP-Pal previously
`asserted in the first and second wave actions and were found to be invalid by this Court.
`4.
`On April 8, 2020, VoIP-Pal issued a press release stating that VoIP-Pal is
`considering taking further action and is not finished taking action in the wake of a recent decision
`by the Court of Appeals for the Federal Circuit in favor of Twitter, Apple, AT&T, and Verizon
`that affirmed this Court’s judgment that two of VoIP-Pal’s previously-asserted patents are invalid
`under 35 U.S.C. § 101.
`5.
`Twitter believes that it does not infringe and has not infringed any claims of the
`’606 patent.
`6.
`VoIP-Pal’s actions have created a real and immediate controversy between VoIP-
`Pal and Twitter as to whether Twitter’s products and/or services infringe any claims of the ’606
`patent. The facts and allegations recited herein show that there is a real, immediate, and
`justiciable controversy concerning this issue.
`
`
`
`
`
`2
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 3 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`II. PARTIES
`7.
`Plaintiff Twitter is a company incorporated under the laws of Delaware, with
`headquarters at 1355 Market Street, Suite 900, San Francisco, California.
`8.
`Twitter operates a global Internet platform for public self-expression and
`conversation in real time. People with a Twitter account can post “Tweets”— messages of 280
`characters or less, sometimes with pictures or video and these messages can be read by other
`people using the Twitter platform. They may, in turn, “Retweet” those messages to their own
`followers. Users can include “hashtagged” keywords (indicated by a “#”) in their Tweets to
`facilitate searching for messages on the same topic. People who use Twitter can also send direct
`messages to other users that can contain images and video. Each day, people post hundreds of
`millions of Tweets, engaging in public conversation on virtually every conceivable topic.
`9.
`Based on information and belief, including VoIP-Pal’s complaints in the Texas
`litigations, defendant VoIP-Pal is a company incorporated under the laws of Nevada, with its
`principal place of business at 10900 NE 4th Street, Suite 2300, Bellevue, Washington 98004.
`10.
`Based on information and belief, including VoIP-Pal’s complaints in the Texas
`litigations, VoIP-Pal is the owner of the ’606 patent.
`III. JURISDICTION AND VENUE
`11.
`This Declaratory Judgment Complaint includes a count for declaratory relief under
`the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
`12.
`Twitter seeks declaratory relief under 28 U.S.C. §§ 2201 and 2202.
`13.
`This Court has subject matter jurisdiction over the claims alleged in this action
`under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202 because this Court has exclusive
`jurisdiction over declaratory judgment claims arising under the patent laws of the United States
`pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202. Jurisdiction is also proper under 28 U.S.C.
`§ 1332 because Twitter and VoIP-Pal are citizens of different states, and the value of the
`controversy exceeds $75,000.
`14.
`This Court can provide the declaratory relief sought in this Declaratory Judgment
`Complaint because an actual case and controversy exists between the parties within the scope of
`3
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 4 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`this Court’s jurisdiction pursuant to 28 U.S.C. § 2201. An actual case and controversy exists at
`least because VoIP-Pal previously filed lawsuits against Twitter and other defendants alleging
`infringement of U.S. Patent 9,179,005 (the “’005 patent”; Exhibit 2) and other related patents; the
`’606 patent is a member of a family that includes six other patents that VoIP-Pal previously
`asserted in the first and second wave actions and shares a common specification with those six
`patents; the claims of the ’005 patent that were previously asserted in litigation against Twitter are
`very similar to claims of the ’606 patent that VoIP-Pal is now asserting in the new Texas
`lawsuits—including against Amazon and Apple, which were previously sued by VoIP-Pal; VoIP-
`Pal’s public statements to the effect that it is considering taking further action and is not finished
`taking action in the wake of recent decision by the Federal Circuit affirming the judgment that the
`claims of the ’005 patent that VoIP-Pal previously asserted against Twitter are invalid; and
`Twitter does not infringe and has not infringed any claims of the ’606 patent.
`15.
`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has engaged
`in actions in this District that form the basis of Twitter’s claims against VoIP-Pal—namely, the
`prosecution of a prior patent infringement lawsuit involving the ’005 patent against Twitter in this
`District, voluntarily transferring to this District the first wave actions against Apple, AT&T, and
`Verizon, and filing the second wave actions against Apple and Amazon in this District. VoIP-
`Pal’s actions have created a real, live, immediate, and justiciable case or controversy between
`VoIP-Pal and Twitter.
`16.
`As a result of VoIP-Pal’s conduct described above, VoIP-Pal has consciously and
`purposely directed allegations of infringement of the ’606 patent at Twitter, a company that
`resides and operates in this District.
`17.
`In doing so, VoIP-Pal has established sufficient minimum contacts with the
`Northern District of California such that VoIP-Pal is subject to specific personal jurisdiction in
`the Northern District of California. Further, the exercise of personal jurisdiction based on these
`repeated and highly-pertinent contacts does not offend traditional notions of fairness and
`substantial justice.
`
`
`
`
`
`4
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 5 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`A.
`
`18.
`Venue is proper under this district under 28 U.S.C. §§ 1391 and 1400, including
`because, under Ninth and Federal Circuit law, venue in declaratory judgment actions for
`noninfringement of patents is determined under the general venue statute, 28 U.S.C. § 1391.
`19.
`Under 28 U.S.C. § 1391(b)(1), venue is proper in any judicial district where a
`defendant resides. An entity with the capacity to sue and be sued, such as VoIP-Pal, is deemed to
`reside, if a defendant, in any judicial district in which such defendant is subject to the court’s
`personal jurisdiction with respect to the civil action in question under 28 U.S.C. § 1391(c).
`20.
`As discussed above, VoIP-Pal is subject to personal jurisdiction with respect to
`this action in the Northern District of California, and thus, for the purposes of this action, VoIP-
`Pal resides in the Northern District of California and venue is proper under 28 U.S.C. § 1391.
`IV. FACTUAL BACKGROUND
`VoIP-Pal’s Prior Lawsuits (First And Second Wave Actions)
`21.
`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Twitter, Apple,
`AT&T, and Verizon Wireless, alleging infringement of two patents, U.S. Patents 8,542,815 and
`9,179,005 (the “’815 patent” and “’005 patent,” respectively). Between August and November of
`2018, all four of those actions were transferred to this Court and consolidated for pretrial
`purposes: Twitter (Case No. 5:18-cv-04523-LHK), Verizon Wireless (Case No. 18-cv-06054-
`LHK), AT&T (Case No. 3:18-cv-06177-LHK), and Apple (Case No. 3:18-cv-06217-LHK)
`(collectively, the “first wave actions”).
`22.
`Twitter and the other defendants in the first wave actions filed a motion to dismiss
`under Fed. R. Civ. P. 12(b)(6) that the asserted claims of the ’815 and ’005 patents are invalid
`under 35 U.S.C. § 101. On March 25, 2019, this Court granted the motion to dismiss and found
`all asserted claims of the ’815 and ’005 patents to be invalid. VoIP-Pal appealed. On March 16,
`2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
`23.
`In October and November 2018, VoIP-Pal filed two additional lawsuits against
`Apple (Case No. 5:18-cv-06216-LHK) and Amazon (Case No. 5:18-cv-07020-LHK)
`(collectively, the “second wave actions”). In these lawsuits, VoIP-Pal alleged infringement of
`four patents, U.S. Patents 9,537,762; 9,813,330; 9,826,002; and 9,948,549. These four patents are
`5
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 6 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`in the same family as and share a common specification with the two patents that were asserted in
`the first wave actions.
`24.
`In the second wave actions, Apple and Amazon filed a motion to dismiss under
`Fed. R. Civ. P. 12(b)(6) that the asserted claims of the four asserted patents are invalid under
`35 U.S.C. § 101. On November 19, 2019, this Court granted the motion to dismiss and found all
`asserted claims of the patents in the second wave actions to be invalid. VoIP-Pal has filed an
`appeal, which is pending.
`B.
`VoIP-Pal’s New Texas Lawsuits And Press Release
`25.
`During the past week (April 2-7, 2020), VoIP-Pal filed four new lawsuits in the
`Western District of Texas, Waco Division, against defendants Facebook and WhatsApp (Civil
`Action No. 20-cv-267) and Google (Civil Action No. 20-cv-269) and previously-sued defendants
`Amazon (Civil Action No. 20-cv-272), and Apple (Civil Action No. 20-cv-275) (collectively, the
`“Texas lawsuits”). (Complaints attached as Exhibits 3-6.)
`26.
`In the Texas lawsuits, VoIP-Pal alleges infringement of U.S. Patent 10,218,606
`(the “’606 patent”; Exhibit 1), which is entitled, “Producing Routing Messages For Voice Over IP
`Communications,” and, on its face, issued on February 26, 2019.
`27.
`The ’606 patent is in the same family as and shares a common specification with
`the six patents that VoIP-Pal asserted in the first and second wave actions and were found to be
`invalid by this Court.
`28.
`The complaints in the Texas lawsuits identify claims 1, 8, 15, and 19 of the ’606
`patent as examples of claims that are infringed by one or more defendants in the Texas lawsuits
`(Exhibits 3-6). These exemplary claims of the ’606 patent are very similar to claims of the ’005
`patent that VoIP-Pal asserted against Twitter, Apple, AT&T, and Verizon in the first wave actions
`(for example, claim 74 of the ’005 patent).
`29.
`VoIP-Pal’s infringement allegations in the Texas lawsuits are similar to VoIP-
`Pal’s infringement allegations in the first wave and second wave actions (including against some
`of the same defendants), and are directed to accused instrumentalities that are similar to Twitter’s
`products and services (for example, communications involving text, images, and videos).
`6
`
`
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 7 of 9
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`Twitter believes that it does not infringe and has not infringed any claims of the
`
`30.
`’606 patent.
`31.
`On April 8, 2020, VoIP-Pal issued a press release that announced the filing of the
`Texas lawsuits (Exhibit 7 and https://www.voip-pal.com/voip-pal-new-patent-lawsuits-april-).
`The press release also mentioned the Federal Circuit’s affirmance of this Court’s judgment of
`invalidity in the first wave lawsuits against Twitter, Apple, AT&T, and Verizon. The press
`release states that, in the wake of the Federal Circuit decision, VoIP-Pal is considering taking
`further action and “planning their next moves.” VoIP-Pal’s CEO is quoted as saying, “Our legal
`team is assessing our next moves regarding this Alice decision and we expect to announce our
`intentions soon. I can tell you; we are not finished.” (Exhibit 7 (emphasis added).)
`
`FIRST CLAIM FOR RELIEF
`(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ’606 PATENT BY TWITTER)
`
`32.
`The facts and allegations contained in the preceding paragraphs are incorporated
`by reference herein.
`33.
`In view of the facts and allegations set forth above, there is an actual, justiciable,
`substantial, and immediate controversy between Twitter, on the one hand, and VoIP-Pal, on the
`other, regarding whether Twitter’s products and services infringe any claims of the ’606 patent.
`34.
`For example, an actual case and controversy exists at least because VoIP-Pal
`previously filed lawsuits against Twitter and other defendants alleging infringement of the ’005
`patent and other related patents in the first and second wave actions; the ’606 patent is a member
`of a family that includes six other patents that VoIP-Pal previously asserted in the first and second
`wave actions and shares a common specification with those six patents; the claims of the ’005
`patent that were previously asserted in litigation against Twitter are very similar to claims of the
`’606 patent that VoIP-Pal is now asserting in the new Texas lawsuits—including against Amazon
`and Apple, which were previously sued by VoIP-Pal; VoIP-Pal’s public statements to the effect
`that it is considering taking further action and is not finished taking action in the wake of recent
`decision by the Federal Circuit affirming the judgment that the claims of the ’005 patent that
`
`
`
`
`
`7
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`
`
`
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 8 of 9
`
`
`
`VoIP-Pal previously asserted against Twitter are invalid; and Twitter believes that it does not
`infringe and has not infringed any claims of the ’606 patent.
`35.
`Twitter does not infringe and has not infringed any claims of the ’606 patent
`because, for example, no Twitter product or service meets or embodies the limitation of
`“processing the new second participant identifier, using the at least one processor, to determine
`whether the second network element is the same as the first network element,” “when the second
`network element is determined to be the same as the first network element, producing a routing
`message identifying a first network address associated with the first network element,” and “when
`the second network element is determined not to be the same as the first network element,
`producing a routing message identifying a second network address associated with the second
`network element.”
`36.
`In view of the foregoing, there is an actual, justiciable, substantial, and immediate
`controversy between Twitter, on the one hand, and VoIP-Pal, on the other, regarding whether
`Twitter’s products and services infringe any claims of the ’606 patent.
`37.
`Twitter is entitled to a judgment declaring that no Twitter products or services
`infringe the ’606 patent.
`
`PRAYER FOR RELIEF
`Twitter respectfully requests that this Court enter judgment against VoIP-Pal as follows:
`A.
`A declaration that the Twitter products and services do not infringe any claims of
`the ’606 patent;
`B.
`For attorney’s fees and costs;
`C.
`Such other and further relief as this Court or a jury may deem just and proper.
`
`
`
`
`
`
`8
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`

`

`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 5:20-cv-02397 Document 1 Filed 04/08/20 Page 9 of 9
`
`DATED: April 8, 2020
`
`
`
`
`
`PERKINS COIE LLP
`
`By: /s/ Sarah Fowler
`Sarah Fowler
`Amisha Manek
`Gene Lee
`Thomas Matthew
`
`Attorneys for Plaintiff Twitter, Inc.
`
`
`
`9
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 20-CV-2397
`
`