Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 1 of 23
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE DIVISION
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`TWITTER, INC.,
`Plaintiff,
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`v.
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`VOIP-PAL.COM, INC.,
`Defendant.
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`Case No. 20-CV-02397-LHK
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`ORDER DENYING MOTION TO
`DISMISS
`Re: Dkt. No. 31
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`Northern District of California
`United States District Court
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`Plaintiff Twitter, Inc. (“Plaintiff”) sues Defendant VoIP-Pal.com, Inc. (“Defendant”) for a
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`declaration of non-infringement and invalidity of U.S. Patent No. 10,218,606 (“the ’606 patent”).
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`Before the Court is Defendant’s motion to dismiss Plaintiff’s complaint. Having considered the
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`parties’ submissions, the relevant law, and the record in this case, the Court DENIES Defendant’s
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`motion to dismiss.
`I.
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`BACKGROUND
`This case represents the latest chapter in a long dispute between the parties regarding
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`whether Plaintiff infringes Defendant’s patents, which relate to a system for routing internet-
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`protocol communications. Below, the Court discusses in turn: (1) the parties; (2) Defendant’s first
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`set of lawsuits against Plaintiff, Apple, AT&T, and Verizon, originally filed in the District of
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`Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 2 of 23
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`Nevada in 2016 (“the 2016 cases”); (3) Defendant’s second set of lawsuits against Apple and
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`Amazon, originally filed in the District of Nevada in 2018 (“the 2018 cases”); (4) Defendant’s
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`most recent lawsuits against Apple, AT&T, Verizon, Amazon, Facebook, and Google, filed in the
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`Western District of Texas in April of 2020 (“the Texas cases”); and (5) the instant case, which was
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`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
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`Francisco, California. ECF No. 1 ¶ 7. Twitter “operates a global Internet platform for public self-
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`expression and conversation in real time.” Id. ¶ 8. Twitter uses and sells “messaging services using
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`messaging application software and/or equipment, servers and/or gateways that route messages to
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`computing devices such as smartphones, tablet computers, and personal computers.” VoIP-
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`Pal.Com, Inc. v. Apple Inc., 375 F. Supp. 3d 1110, 1117 (N.D. Cal. 2019) (quotation omitted).
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`Defendant VoIP-Pal is a Nevada corporation with its principal place of business in
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`Bellevue, Washington. ECF No. 1 ¶ 8. Defendant owns a portfolio of patents relating to Internet
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`Protocol based communication. VoIP-Pal.Com, Inc. v. Apple Inc., 411 F. Supp. 3d 926, 930 (N.D.
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`Cal. 2019).
`B. The 2016 Cases
`On February 9, 2016, Defendant sued Apple in the District of Nevada for infringement of
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`U.S. Patent Nos. 8,542,815 (“the ’815 patent”), and 9,179,005 (“the ’005 patent”), both of which
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`relate to a system for routing calls between a caller and a callee over Internet Protocol. VoIP-
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`Pal.Com, 375 F. Supp. 3d at 1118, 1122. The following day, Defendant sued Verizon and AT&T
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`in the District of Nevada for infringement of the same patents. Id. On October 6, 2016, Defendant
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`sued Plaintiff in the District of Nevada for infringement of the same patents. Id. at 1121. The
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`District of Nevada stayed the cases pending inter partes review. Id.
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`After the stays were lifted, on February 28, 2018, Plaintiff moved to change venue to the
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`Northern District of California. VoIP-Pal.Com, Inc. v. Twitter, Inc., Case No. 16-CV-02338, 2018
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`WL 3543031, at *1 (D. Nev. July 23, 2018). On July 23, 2018, the District of Nevada granted
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`Northern District of California
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`Plaintiff’s motion for change of venue. Id. On October 1, 2018, the District of Nevada granted
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`Verizon and Defendant’s stipulation to transfer the case. VoIP-Pal.Com, 375 F. Supp. 3d at 1121.
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`On October 4, 2018, the District of Nevada granted a similar stipulation by AT&T and Defendant.
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`Id. The following day, the District of Nevada granted a similar stipulation by Apple and
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`Defendant. Id. As a result, all four cases were transferred to this Court, where they were
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`consolidated.
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`On March 25, 2019, this Court granted Apple, AT&T, Verizon, and Plaintiff’s
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`consolidated motion to dismiss all four cases. Id. at 1117. In a 45-page order, the Court concluded
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`that the ’815 and ’005 patents were unpatentable under 35 U.S.C. § 101. Id. at 1138, 1144. On
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`March 16, 2020, the Federal Circuit affirmed this Court’s decision. VoIP-Pal.Com, Inc. v. Apple,
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`Inc., 798 F. App’x 644, 645 (Fed. Cir. 2020). On May 18, 2020, the Federal Circuit denied
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`Defendant’s petition for panel or en banc rehearing. VoIP-Pal.Com, Inc. v. Twitter, Case No.
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`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
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`more patents: U.S. Patent Nos. 9,537,762 (“the ’762 patent”); 9,813,330 (“the ’330 patent”);
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`9,826,002 (“the ’002 patent”); and 9,948,549 (“the ’549 patent”). VoIP-Pal.Com, 411 F. Supp. 3d
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`at 934. Like the two patents that were the subject of the 2016 Cases, these four patents relate to a
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`system for routing communications over Internet Protocol. Id. at 931. On June 15, 2018,
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`Defendant sued Amazon in the District of Nevada for infringement of the same patents. Id. The
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`lawsuits against Apple and Amazon were transferred from the District of Nevada to this Court,
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`where they were consolidated and related to the 2016 cases. Id.
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`On November 1, 2019, this Court granted Apple and Amazon’s consolidated motion to
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`dismiss both cases with prejudice. Id. at 930. Just as with the 2016 Cases, the Court concluded, in
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`a 68-page order, that the four patents were unpatentable under 35 U.S.C. § 101. Id. at 941. On
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`November 3, 2020, the Federal Circuit affirmed this Court’s decision. VoIP-Pal.Com, Inc. v.
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`Apple, Inc., 828 F. App’x 717, 717 (Fed. Cir. 2020). If Defendant chooses to petition for
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`Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 4 of 23
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`rehearing, the petition is due on December 17, 2020. See Order, VoIP-Pal.Com, Inc. v. Apple, Inc.,
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`Case No. 2020-1241 (Fed. Cir. Nov. 9, 2020). If Defendant chooses to petition the United States
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`Supreme Court for a writ of certiorari, Defendant’s petition is due on April 3, 2021. See Order,
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`March 19, 2020 (ordering that “the deadline to file any petition for a writ of certiorari due on or
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`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
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`in the Waco Division of the Western District of Texas for infringement of the ’606 patent. VoIP-
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`Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 1 (W.D. Tex. Apr. 2,
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`2020); VoIP-Pal.Com, Inc. v. Google LLC, Case No. 20-CV-00269-ADA, ECF No. 1 (W.D. Tex.
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`Apr. 3, 2020); VoIP-Pal.Com, Inc. v. Amazon.Com, Inc.., Case No. 20-CV-00272-ADA, ECF No.
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`1 (W.D. Tex. Apr. 6, 2020); VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV-00275-ADA,
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`ECF No. 1 (W.D. Tex. Apr. 7, 2020); VoIP-Pal.Com, Inc. v. AT&T Inc., Case No. 20-CV-00325-
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`ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.Com, Inc. v. Verizon Comms., Inc., Case
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`No. 20-CV-00275-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020). Like the six patents that were the
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`subjects of the 2016 and 2018 Cases, the ’606 patent relates to a system for routing
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`communications over Internet Protocol. Specifically, the ’606 patent shares a common
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`specification, title, parent application, inventors, and owner with Defendants’ six other patents that
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`were examined by this Court in the 2016 and 2018 cases. Compare ECF No. 1-1 with VoIP-
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`Pal.Com, Inc. v. Apple Inc., Case No. 18-CV-06217-LHK, ECF No. 1-2.
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`On September 29, 2020, Judge Alan Albright of the Western District of Texas stayed the
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`six cases pending before him until this Court enters an order on the instant motion to dismiss and
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`the consolidated motion to dismiss in three related declaratory judgment actions, Apple, Inc. v.
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`VoIP-Pal.com, Inc., Case No. 20-CV-02460-LHK; AT&T, Inc. v. VoIP-Pal.com, Inc., Case No.
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`20-CV-02995-LHK; and Cellco Partnership, Inc. v. VoIP-Pal.com, Inc., Case No. 20-CV-03092-
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`LHK. See VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 47
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`(W.D. Tex. Apr. 2, 2020).
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 5 of 23
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`E. The Instant Case
`On April 8, 2020, six days after Defendant started filing lawsuits in the Western District of
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`Texas that alleged infringement of the ’606 patent, Plaintiff sued Defendant for a declaration of
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`non-infringement of the ’606 patent in the Northern District of California. ECF No. 1. On April
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`21, 2020, this Court granted Plaintiff’s motion to relate its declaratory judgment action to the 2016
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`case against Plaintiff. ECF No. 14.
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`Shortly after Plaintiff filed the instant case, the other three defendants in the 2016 cases
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`(Apple, AT&T, and Verizon) also filed declaratory judgment actions in the Northern District of
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`California for a declaration of non-infringement and invalidity of the ’606 patent. Case No. 20-
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`CV-02460-LHK, ECF No. 1; Case No. 20-CV-02995-LHK, ECF No. 1; Case No. 20-CV-03092-
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`LHK, ECF No. 1. On April 14, 2020, Apple amended its complaint to also seek a declaration of
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`non-infringement and invalidity of the ’872 patent. Case No. 20-CV-02460, ECF No. 10. The
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`Court then related Apple, AT&T, and Verizon’s cases to Defendant’s 2016 cases against them,
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`just as the Court had done in the instant case. Case No. 20-CV-02460-LHK, ECF No. 18; Case
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`No. 20-CV-02995-LHK, ECF No. 23; Case No. 20-CV-03092-LHK, ECF No. 18.
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`On May 26, 2020, this Court related the instant case to the Apple, AT&T, and Verizon
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`cases. ECF No. 24. On June 4, 2020, this Court consolidated the motion to dismiss briefing for the
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`Apple, AT&T, and Verizon cases but ordered that the motion to dismiss in the instant case be
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`briefed separately. ECF No. 26.
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`On July 10, 2020, Defendant filed a consolidated motion to dismiss the Apple, AT&T, and
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`Verizon cases. Case No. 20-CV-02460-LHK, ECF No. 32. On December 11, 2020, this Court
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`denied Defendant’s consolidated motion to dismiss. Case No. 20-CV-02460-LHK, ECF No. 60.
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`The Court concluded that there was personal jurisdiction over Defendant because Defendant had
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`purposefully directed its enforcement activities towards the forum state by litigating six lawsuits in
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`this district. Id. at 17–20. The Court also concluded that it would be reasonable and fair to assert
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`personal jurisdiction over Defendant. Id. at 20–23. Because the Court found that there was
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`personal jurisdiction over Defendant, the Court found that venue was proper in this district. Id. at
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`Case No. 20-CV-02397-LHK
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`23. Finally, the Court concluded that there was subject matter jurisdiction over Apple’s claim of
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`non-infringement and invalidity of the ’872 patent because Defendant had engaged in an
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`affirmative act sufficient to confer jurisdiction— Defendant’s prior litigation against Apple and
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`Defendant’s statement that Defendant would continue to litigate until Defendant achieved
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`monetization for Defendant’s shareholders. Id. at 25–26.
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`On June 26, 2020, Plaintiff filed an amended complaint. ECF No. 29. Like Plaintiff’s
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`original complaint, the amended complaint sought a declaration of non-infringement of the ’606
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`patent. Id. ¶¶ 35–40. However, the amended complaint also sought a declaration of invalidity of
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`the ’606 patent. Id. ¶¶ 41–46. In addition, the amended complaint included additional facts that
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`had arisen since Plaintiff filed its original complaint, including: (1) Defendant filing lawsuits
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`asserting infringement of the ’606 patent against AT&T and Verizon in the Western District of
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`Texas; and (2) Plaintiff asking Defendant whether Defendant would be willing to grant Plaintiff a
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`covenant not to sue based on the ’606 patent. Id. ¶¶ 5, 16–17.
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`On July 10, 2020, Defendant filed a motion to dismiss the instant case. ECF No. 31
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`(“Mot.”). On July 31, 2020, Plaintiff filed an opposition. ECF No. 36 (“Opp’n”). On August 14,
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`2020, Defendant filed a reply. ECF No. 37 (“Reply).
`II.
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`LEGAL STANDARD
`A. Motion to Dismiss Under Rule 12(b)(1)
`A defendant may move to dismiss for lack of subject matter jurisdiction pursuant to Rule
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`12(b)(1) of the Federal Rules of Civil Procedure. While lack of statutory standing requires
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`dismissal for failure to state a claim under Rule 12(b)(6), lack of Article III standing requires
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`dismissal for want of subject matter jurisdiction under Rule 12(b)(1). See Maya v. Centex Corp.,
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`658 F.3d 1060, 1067 (9th Cir. 2011).
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`“A Rule 12(b)(1) jurisdictional attack may be facial or factual.” Safe Air for Everyone v.
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`Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). “In a facial attack, the challenger asserts that the
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`allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction.”
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`Id. The Court “resolves a facial attack as it would a motion to dismiss under Rule 12(b)(6):
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Northern District of California
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`Accepting the plaintiff's allegations as true and drawing all reasonable inferences in the plaintiff's
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`favor, the court determines whether the allegations are sufficient as a legal matter to invoke the
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`court's jurisdiction.” Leite v. Crane Co., 749 F.3d 1117, 1121 (9th Cir. 2014). “[I]n a factual
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`attack,” on the other hand, “the challenger disputes the truth of the allegations that, by themselves,
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`would otherwise invoke federal jurisdiction.” Safe Air for Everyone, 373 F.3d at 1039. “In
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`resolving a factual attack on jurisdiction,” the Court “may review evidence beyond the complaint
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`without converting the motion to dismiss into a motion for summary judgment.” Id. The Court
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`“need not presume the truthfulness of the plaintiff's allegations” in deciding a factual attack. Id.
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`Once the defendant has moved to dismiss for lack of subject matter jurisdiction under Rule
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`12(b)(1), the plaintiff bears the burden of establishing the Court's jurisdiction. See Chandler v.
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`State Farm Mut. Auto Ins. Co., 598 F.3d 1115, 1122 (9th Cir. 2010).
`B. Motion to Dismiss Under Rule 12(b)(2)
`In a motion challenging personal jurisdiction under Federal Rule of Civil Procedure
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`12(b)(2), the plaintiff, as the party seeking to invoke the jurisdiction of the federal court, has the
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`burden of establishing that jurisdiction exists. See In re Boon Global Ltd., 923 F.3d 643, 650 (9th
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`Cir. 2019). “Where, as here, the defendant’s motion is based on written materials rather than an
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`evidentiary hearing, ‘the plaintiff need only make a prima facie showing of jurisdictional facts to
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`withstand the motion to dismiss.’” Ranza v. Nike, Inc., 793 F.3d 1059, 1068 (9th Cir. 2015)
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`(quoting CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1073 (9th Cir. 2011)).
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`However, this standard “is not toothless,” and the party asserting jurisdiction “cannot
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`simply rest on the bare allegations of its complaint.” In re Boon Global Ltd., 923 F.3d at 650
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`(quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004)). Thus,
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`courts may consider declarations and other evidence outside the pleadings to determine whether it
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`has personal jurisdiction. See id. At this stage of the proceeding, “uncontroverted allegations in
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`plaintiff’s complaint must be taken as true, and ‘[c]onflicts between parties over statements
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`contained in affidavits must be resolved in the plaintiff’s favor.’” Id. (quoting Schwarzenegger,
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`374 F.3d at 800). On the other hand, courts “may not assume the truth of allegations in a pleading
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Northern District of California
`United States District Court
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`which are contradicted by affidavit.” Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218,
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`1223 (9th Cir. 2011).
`C. Motion to Dismiss Under Rule 12(b)(3)
`Under Federal Rule of Civil Procedure 12(b)(3), a defendant may move to dismiss a
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`complaint for improper venue. Once the defendant has challenged the propriety of venue in a
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`given court, the plaintiff bears the burden of showing that venue is proper. Piedmont Label Co. v.
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`Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). When considering a motion to
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`dismiss for improper venue, a court may consider facts outside of the pleadings. Murphy v.
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`Schneider National, Inc., 362 F.3d 1133, 1138 (9th Cir. 2004).
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`Pursuant to 28 U.S.C. § 1406(a), if the court determines that venue is improper, the court
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`must either dismiss the action or, if it is in the interests of justice, transfer the case to a district or
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`division in which it could have been brought. Whether to dismiss for improper venue, or
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`alternatively to transfer venue to a proper court, is a matter within the sound discretion of the
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`district court. See King v. Russell, 963 F.2d 1301, 1304 (9th Cir. 1992).
`D. Leave to Amend
`If the Court determines that a complaint should be dismissed, it must then decide whether
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`to grant leave to amend. Under Rule 15(a) of the Federal Rules of Civil Procedure, leave to amend
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`“shall be freely given when justice so requires,” bearing in mind “the underlying purpose of Rule
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`15 to facilitate decisions on the merits, rather than on the pleadings or technicalities.” Lopez v.
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`Smith, 203 F.3d 1122, 1127 (9th Cir. 2000) (en banc) (alterations and internal quotation marks
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`omitted). When dismissing a complaint for failure to state a claim, “a district court should grant
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`leave to amend even if no request to amend the pleading was made, unless it determines that the
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`pleading could not possibly be cured by the allegation of other facts.” Id. at 1130 (internal
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`quotation marks omitted). Accordingly, leave to amend generally shall be denied only if allowing
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`amendment would unduly prejudice the opposing party, cause undue delay, or be futile, or if the
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`moving party has acted in bad faith. Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 532
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`(9th Cir. 2008).
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`III. DISCUSSION
`Defendant moves to dismiss the instant case for three reasons: (1) this Court lacks subject
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`matter jurisdiction over the instant case; (2) this Court lacks personal jurisdiction over Defendant;
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`and (3) venue is improper. Mot. at 4–10. The Court addresses each argument in turn.
`A. Subject Matter Jurisdiction
`Defendant first argues that this Court lacks subject matter jurisdiction over the instant case.
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`Mot. at 4–7. Defendant’s argument stems from the fact that Defendant has not yet sued Plaintiff
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`for infringement of the ’606 patent.
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`Generally, dismissal for lack of subject matter jurisdiction under Federal Rule of Civil
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`Procedure 12(b)(1) “is a procedural question not unique to patent law,” and is therefore governed
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`by regional circuit law. Toxgon Corp. v. BNFL, Inc., 312 F.3d 1379, 1380 (Fed. Cir. 2002).
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`However, “[w]hether an actual case or controversy exists so that a district court may entertain an
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`action for declaratory judgment of non-infringement and/or invalidity is governed by Federal
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`Circuit law.” 3M Co v. Avery Dennison Corp., 673 F.3d 1372, 1377 (Fed. Cir. 2012).
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`The Declaratory Judgment Act states that, “[i]n the case of actual controversy within its
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`jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may
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`declare the rights and other legal relations of any interested party in seeking such declaration.” 28
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`U.S.C. § 2201(a). The phrase “actual controversy” refers to “cases” and “controversies” that are
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`justiciable under Article III of the Constitution. Assoc. for Molecular Pathology v. U.S. Patent &
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`Trademark Office, 689 F.3d 1303, 1318 (Fed. Cir. 2012), rev’d in part on other grounds by Assoc.
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`for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). Thus, without a case or
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`controversy, there cannot be a claim for declaratory relief. ActiveVideo Networks, 975 F. Supp. at
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`1086.
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`The Court has subject matter jurisdiction in a declaratory judgment action when “the facts
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`alleged, under all the circumstances, show that there is a substantial controversy, between parties
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`having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a
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`declaratory judgment.” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007). Under the
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 10 of 23
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`“all the circumstances” test, courts have “unique and substantial discretion in deciding whether to
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`declare the rights of litigants.” Id. at 136.
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`In case law following MedImmune, the Federal Circuit has explained that, in the context of
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`patent disputes, an actual controversy requires “an injury in fact traceable to the patentee,” which
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`requires “both (1) an affirmative act by the patentee related to the enforcement of his patent rights
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`and (2) meaningful preparation to conduct potentially infringing activity.” Assoc. for Molecular
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`Pathology, 689 F.3d at 1318. In the instant case, the parties do not dispute the second factor
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`because Apple already markets the products and services at issue. Opp’n at 18.
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`In order to meet the affirmative act requirement, “more is required than ‘a communication
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`from a patent owner to another party, merely identifying its patent and the other’s product line.’
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`[But] [h]ow much more is required is determined on a case-by-case analysis.” 3M, 673 F.3d at
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`1378–79. In Cepheid v. Roche Molecular Systems, Inc., another court in this district listed factors
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`that the Federal Circuit and Supreme Court have generally considered in determining whether the
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`patentee has taken an affirmative act: (1) the strength of threatening language in communications
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`between the parties; (2) the depth and extent of infringement analysis conducted by the patent
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`holder; (3) whether the patent holder imposed a deadline to respond; (4) any prior litigation
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`between the parties; (5) the patent holder’s history of enforcing the patent at issue; (6) whether the
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`patent holder’s threats have induced the alleged infringer to change its behavior; (7) the number of
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`times the patent holder has contacted the alleged infringer; (8) whether the patent holder is a
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`holding company with no income other than enforcing patent rights; (9) whether the patent holder
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`refused to give assurance it will not enforce the patent; (10) whether the patent holder has
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`identified a specific patent and specific infringing products; (11) the extent of the patent holder’s
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`familiarity with the product prior to suit; (12) the length of time that transpired after the patent
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`holder asserted infringement; and (13) whether communications initiated by the plaintiff appear as
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`an attempt to create a controversy. ActiveVideo, 975 F. Supp. 2d at 1087–88 (citing Cepheid v.
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`Roche Molecular Systems, Inc., Case No C-12-4411 EMC, 2013 WL 184125, at *6 (N.D. Cal. Jan.
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`17, 2013)).
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`Case No. 20-CV-02397-LHK
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`Before determining whether Defendant has engaged in an affirmative act sufficient to
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`confer jurisdiction over Plaintiff’s declaratory judgment claims, the Court addresses what
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`complaint should be used to make this assessment. As explained above, Plaintiff filed its original
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`complaint on April 8, 2020 and an amended complaint on June 26, 2020. Although the original
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`complaint sought a declaration of non-infringement of the ’606 patent, the amended complaint
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`sought a declaration of non-infringement and invalidity of the ’606 patent. ECF No. 29 ¶¶ 35–46.
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`In addition, the amended complaint included additional facts that had arisen since Plaintiff filed its
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`original complaint, including: (1) Defendant filing lawsuits asserting infringement of the ’606
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`patent against AT&T and Verizon in the Western District of Texas; and (2) Plaintiff asking
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`Defendant whether Defendant would be willing to grant Plaintiff a covenant not to sue based on
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`the ’606 patent. Id. ¶¶ 16–17.
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`Defendant argues that subject matter jurisdiction must be assessed at the time that Plaintiff
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`filed its original complaint. However, “when a plaintiff files a complaint in federal court and then
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`voluntarily amends the complaint, courts look to the amended complaint to determine
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`jurisdiction.” Rockwell Int’l Corp. v. United States, 549 U.S. 457, 473–74 (2007). In the instant
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`case, Plaintiff voluntarily amended its complaint to add additional facts that transpired since the
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`filing of the original complaint. Accordingly, the Court uses Plaintiff’s amended complaint to
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`determine whether Defendant engaged in an affirmative act sufficient to confer jurisdiction over
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`Plaintiff’s declaratory judgment claims.
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`Analyzing “all the circumstances,” the Court concludes that Defendant engaged in an
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`affirmative act sufficient to confer jurisdiction over Plaintiff’s declaratory judgment claims.
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`MedImmune, Inc., 549 U.S. at 127. The Court comes to this conclusion based primarily on
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`Defendant’s prior litigation against Plaintiff; Defendant’s current ’606 patent litigation against all
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`the other defendants in the 2016 cases; and Defendant’s statements about its intentions with
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`respect to asserting its patent rights.
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`The Federal Circuit has repeatedly held that prior litigation on related patents can be an
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`affirmative act that supports subject matter jurisdiction over a declaratory judgment claim. See
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Northern District of California
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`Arkema, 706 F.3d at 1358 (concluding that prior litigation was a “sufficient affirmative act on the
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`part of the patentee for declaratory judgment purposes”); Danisco, 744 F.3d 1331 (“[A] history of
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`patent litigation between the same parties involving related technologies, products, and patents is
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`another circumstance to be considered, which may weigh in favor of the existence of subject
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`matter jurisdiction.”); Teva Pharm. USA, Inc. v. Novartis Pharm. Corp., 482 F.3d 1330, 1344
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`(Fed. Cir. 2007) (“[R]elated litigation involving the same technology and the same parties is
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`relevant in determining whether a justiciable declaratory judgment controversy exists on other
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`related patents.”).
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`The Court concludes that Defendant’s prior litigation weighs heavily in favor of a finding
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`that Defendant has engaged in an affirmative act related to the enforcement of its patent rights.
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`Specifically, Defendant previously filed lawsuits in 2016 against Plaintiff, Apple, AT&T, and
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`Verizon for infringement of patents that share a common specification, title, parent application,
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`inventors, and owner with the ’606 patent. Defendant also filed lawsuits in 2018 against Apple and
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`Amazon for infringement of patents that share a common specification, title, parent application,
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`inventors, and owner with the ’606 patent. Defendant then sued Apple, AT&T, and Verizon—all
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`the defendants in the 2016 cases except for Plaintiff—for infringement of the ’606 patent. The
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`Court concludes that, under these circumstances, Plaintiff did not need to wait for Defendant to
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`sue Plaintiff for infringement of the ’606 patent.
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`Furthermore, Defendant has publicly stated that it will continue to assert its patent rights
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`until it is successful. In an April 8, 2020 press release, which was issued after the dismissal of
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`Defendant’s first lawsuit was affirmed by the Federal Circuit and immediately after Defendant
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`filed its most recent lawsuits, Defendant’s CEO stated:
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`[W]e are undeterred in our fight to assert our intellectual property
`rights. . . . I can tell you; we are not finished . . . We remain firm in
`our resolve to achieve monetization for our shareholders and will
`continue to see this fight through until a successful resolution is
`reached.
`ECF No. 1-7; ECF No. 29-7. Although the Court does not find this statement sufficient to
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`demonstrate an affirmative act on its own, the statement provides helpful context as to
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`Case No. 20-CV-02397-LHK
`ORDER DENYING MOTION TO DISMISS
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`Northern District of California
`United States District Court
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`

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`Case 5:20-cv-02397-LHK Document 50 Filed 12/14/20 Page 13 of 23
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`Defendant’s intentions with respect to asserting its patent rights.1
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`Assessing “all the circumstances,” the Court concludes that Defendant has engaged in an
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`affirmative act related to the enforcement of its patent rights based on Defendant’s extensive
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`history of litigation and Defendant’s statement that Defendant would continue to litigate until
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`Defendant achieved monetization for Defendant’s shareholders. See Monolithic Power Sys., No. C
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`07-2363 CW, 2007 WL 2318924, at *3 (N.D. Cal. Aug. 13, 2007) (“[T]he assertion of rights,
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`evidenced through a prior lawsuit between the same parties regarding the same technology . . . and
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`solidified through the express press release statement indicating an intent to sue alleged patent
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`infringers, presents enough evidence to establish the case or controversy required for declaratory
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`judgment jurisdiction.”). Thus, the Court has subject matter jurisdiction over Plaintiff’s claim for a
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`declaration of non-infringement and invalidity of the ’606 patent.2
`B. Personal Jurisdiction
`Defendant next moves to dismiss the instant case because the Court lacks personal
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`jurisdiction over Defendant in this district, where Plaintiff is headquartered. Mot. at 7–9.
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`Defendant made the same argument in the three declaratory judgment actions that w