The Federal Circuit has decided not to come to the rescue of VoIP-Pal.com, Inc. (VPLM) in one of the declaratory judgment (DJ) actions filed against it by Twitter. This latest appeal stems from a fight over jurisdiction, as the publicly traded NPE has twice argued that there is no controversy because it has not formally asserted the patent at issue against Twitter. Late last year, the district court denied the first of those motions, finding that VPLM’s assertion of related patents, its public statements, and its refusal to grant a covenant not to sue established a live controversy. This prompted VPLM to file another similar motion to dismiss that included a conditional covenant not to sue. Yet the NPE also lodged a mandamus petition challenging that earlier denial, asking the Federal Circuit to rule before the district court decided its second motion. The appellate court has now denied that petition, stating that this “problem is one of VoIP-Pal’s own making”.
Twitter (5:21-cv-09773) has filed another complaint against VoIP-Pal.com, Inc. (VPLM), asking the Northern District of California for declaratory judgments that it has not infringed the publicly traded NPE’s family of “mobile gateway” patents. VPLM has turned to this family for assertion in the Western District of Texas—against Huawei and Samsung most recently, but against others as well—after patents from a first family met Alice demises in Northern California. In response to VPLM’s actions, Twitter has repeatedly filed cases there, which the court has declined to dismiss in response to the defendant’s motions, Twitter now pleading that “[o]n information and belief, VoIP-Pal plans to file a lawsuit against Twitter for infringement of the Mobile Gateway patents after Twitter’s 2021 DJ Action is dismissed”.
VoIP-Pal.com, Inc. (VPLM) has been litigating its sole campaign, begun in 2016, in three federal district courts: the District of Nevada, where the publicly traded NPE first filed suit; the Northern District of California, where Judge Lucy H. Koh has handed down two lengthy orders invalidating VPLM patents under Alice; and the Western District of Texas, where the matters filed before Judge Alan D. Albright have been piling up. Count two new cases—one filed against each of Huawei (6:21-cv-01247) and Samsung (6:21-cv-01246)—in that latter group, each over two patents characterized elsewhere as the plaintiff’s “gateway patents”. These two suits, against defendants appearing in the campaign for the first time, appear to be another VPLM attempt to escape Judge Koh, who has before her a motion for sanctions filed by Twitter, seeking a six-figure attorney fees award in light of VPLM’s alleged “vexatious and oppressive litigation conduct” after a December 2020 order that Twitter contends should have ended matters.
Describing the Federal Circuit as “hopelessly deadlocked” on the alleged interplay between Section 101 (governing patentable subject matter) and Section 112 (governing requirements for a patent’s specification), VoIP-Pal.com Inc. (VPLM) has asked the US Supreme Court to review the Federal Circuit’s summary affirmance of the Northern District of California’s invalidation of 20 claims of four VPLM patents. The request comes a week after the publicly traded NPE began asserting a family of patents new to litigation against Alphabet (Google), Amazon, Apple, AT&T, Facebook, T-Mobile, and Verizon in a set of Western District of Texas cases, which appears to have prompted two of those defendants to file declaratory judgment actions in Northern California: Apple (3:21-cv-05110) and AT&T (3:21-cv-05078).