Voip-Pal.com, Inc. v. Twitter, Inc. DC

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).

It is not every week that a patentholder offers money to a one-time defendant (turned plaintiff) to dismiss its declaratory judgment action, but early December 2020 apparently saw just that. According to Twitter, in a new complaint seeking a declaratory judgment of noninfringement of one VoIP-Pal.com Inc. (VPLM) patent (5:21-cv-02769), VPLM offered to pay Twitter to dismiss its earlier declaratory judgment action against another VPLM patent—Twitter explicitly naming in its new complaint the price that VPLM was willing to pay to make the other one go away.

The filing of new litigation in the sole campaign of VoIP-Pal.com Inc. within competing venues continued last week, the publicly traded NPE adding suits against AT&T (6:20-cv-00325) and Verizon (Cellco Partnership d/b/a Verizon Wireless) (6:20-cv-00327) in the Western District of Texas, followed several days later by a declaratory judgment action filed in the Northern District of California by AT&T (5:20-cv-02995). The motivation of declaratory judgment plaintiffs Apple, Twitter, and now AT&T appears to be to put the dispute, over the latest patent in a family with multiple members already invalidated under Alice, back in front of the judge that issued those orders, District Judge Lucy H. Koh. Its earlier 2020 cases against Alphabet (Google), Amazon, Apple, and Facebook (WhatsApp) already assigned to District Judge Alan D. Albright, VoIP-Pal appears interested in giving West Texas a try.

March 2019 saw District Judge Lucy H. Koh of the Northern District of California invalidate under Alice the asserted claims of two patents asserted by publicly traded NPE VoIP-Pal.com Inc. in cases against Apple, AT&T, Twitter, and Verizon. VoIP-Pal rejected a takeover bid the next month, and then, last November, Judge Koh invalidated the asserted claims of four more patents from the same family, also under Alice. That order ended a suit against Amazon, as well as a second case against Apple. The decision has been appealed to the Federal Circuit, which just last month affirmed Judge Koh’s first Alice order. Undeterred, the NPE has filed four new suits, asserting the most recent patent to issue in the same family in a telling venue—the Western District of Texas—against both new and previous defendants; however, two of those previous defendants have taken steps that may put litigation over the new patent back in front of Judge Koh.

Publicly traded NPE VoIP-Pal.com Inc. announced on April 16 that its board of directors had rejected a formal offer led by Gil Amelio and “his associates” to take over management of the company. Part of that offer, according to VoIP-Pal, “provided options to purchase only the stock owned by VoIP-Pal’s CEO, Emil Malak”. While the company reportedly rejected the bid, it says it is “actively pursuing the sale of all of Voip-Pal’s shares, on behalf of the more than 4500 shareholders, not just the shares owned by Mr. Malak". Monday’s announcement follows an Alice ruling last month that ended VoIP-Pal's cases against AT&T, Twitter, and Verizon, and one of the NPE's cases against Apple.

The sole litigation campaign of VoIP-Pal.com, Inc. has hit another snag. District Judge Lucy H. Koh has ended the Northern District of California cases that the publicly traded NPE filed against Apple, AT&T, Twitter, and Verizon with a March 25, 2019 order invalidating the asserted claims of both patents-in-suit under Alice. Judge Koh characterized the patents as generally related 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”, adopting the parties’ division of the asserted claims into “multi-network claims” and “single network claims” before choosing a representative claim for each category. Her order culminates in the invalidation of both the “multi-network” and “single network” claims as patent-ineligibly drawn to the abstract idea of “routing a call based on characteristics of the caller and callee”.

Apple has filed—with a third panel assigned to the proceeding—a request for rehearing of its inter partes review (IPR) of two patents held and asserted by publicly traded VoIP-Pal.com, Inc. The original panel was replaced midstream after Dr. Thomas E. Sawyer, VoIP-Pal’s former CEO and chairman, sent the first of a series of letters to the Patent Trial and Appeal Board (PTAB) (also copying various other government officials), letters that the Board now agrees were improper ex parte communications. The replacement panel issued final written decisions sustaining all of the claims that Apple had challenged. Apple then learned about all six, improperly sent letters and asked for permission to file a motion seeking sanctions against VoIP-Pal. That permission was granted. Apple sought entry of judgment in its favor or, in the alternative, vacatur of those final written decisions. Just before Christmas, the third panel—comprising the Board’s Acting Chief Administrative Patent Judge (APJ), its Acting Deputy Chief APJ, and its Vice Chief APJ—agreed that VoIP-Pal’s communications violated Board rules but stopped short in its sanctions, leaving Apple to file with that third panel its current request for rehearing of the replacement panel’s final written decisions.

Publicly traded VoIP-Pal.com, Inc. has followed its recently filed, second case against Apple with a first case filed against Amazon (2:18-cv-01076), both in the District of Nevada. Each complaint asserts the same four patents, all issued within the last year or so and all generally related to routing messages between private and public networks based on stored caller profiles. At issue in the Amazon complaint are Alexa’s calling and messaging features, together with various other devices either provided by Amazon (e.g., Amazon Echo, Amazon Tap) or equipped with the Alexa app (e.g., certain Android mobile phones, Apple iOS mobile phones). This recent activity seems to have been triggered by final written decisions in two inter partes reviews (IPRs) of patents previously asserted against Apple (and others), sustaining all of the claims challenged. However, those proceedings have yet to conclude, with Apple seeking to reverse those judgments as a sanction against VoIP-Pal for allegedly improper communications with the Patent Trial and Appeal Board (PTAB).

Publicly traded VoIP-Pal.com, Inc. has filed a second District of Nevada case against Apple (2:18-cv-00953), asserting four, more recent patents in the same family as those at issue in the NPE’s previous, February 2016 suit. The patents generally relate to routing messages between private and public networks based on stored caller profiles, with Apple once more accused of infringement through its devices’ iMessage and WiFi calling features. The new complaint follows by six months final written decisions in two inter partes reviews (IPRs) of the previously asserted patents, sustaining all of the claims challenged by Apple. In both of those proceedings, Apple has since asked the Patent Trial and Appeal Board (PTAB) to enter judgment against VoIP-Pal (or, alternatively, vacate those decisions and restart “a constitutionally correct process going forward”) in light of allegedly improper ex parte communications with the Board (also copied to various other government officials), Apple beginning its brief by noting that “[e]xtraordinary circumstances call for extraordinary measures”.

The Patent Trial and Appeal Board (PTAB) saw the number of petitions for AIA review in November hold fairly steady at 111 (compared to October’s 128) as the US Supreme Court continued its review of the constitutionality of inter partes review (IPR) in Oil States v. Greene’s Energy Services, for which oral arguments were held on November 27. Among the NPEs targeted by petitions brought in November were publicly traded Quarterhill Inc. and Xperi Corporation, prolific litigant Brian Yates, and several privately held NPEs waging networking campaigns, including Alacritech, Inc.; Iridescent Networks, Inc.; Monument Patent Holdings, LLC; MyMail Ltd.; and Oyster Optics LLC. The PTAB also instituted trial in November for other IPRs against Alacritech and Quarterhill and for an IPR against Plectrum LLC. Final decisions issued by the Board in November include one in the automotive campaign waged by Paice LLC and in IPRs against InfoGation Corporation and VoIP-Pal.com, Inc., both of which saw their patents survive review.

The Patent Trial and Appeal Board (PTAB) saw 54 petitions for AIA review brought against NPEs in May, up from 20 such petitions filed in April. May PTAB filings included a resurgence in petitions against publicly traded NPEs, including Acacia Research Corporation; Pendrell Corporation; Quest Patent Research Corporation; VoIP-Pal.com, Inc.; Xperi Corporation (f/k/a Tessera Holding Corporation); and Wi-LAN Inc. (WiLAN) (which was renamed to Quarterhill Inc. on June 1). A variety of private litigants were also hit by PTAB petitions in May, including Blackbird Tech LLC, Global Equity Management (SA) Pty. Ltd., General Patent Corporation, Realtime Data LLC, and Uniloc Corporation Pty. Limited.

Publicly traded NPE VoIP-Pal.com, Inc. has added Twitter (2:16-cv-02338) to its sole litigation campaign, alleging that the company’s direct message, reply, and re-tweet features infringe two related patents (8,542,815; 9,179,005) generally relevant to routing messages between private and public networks based on stored caller profiles. VoIP-Pal began its campaign in February, accusing Apple (2:16-cv-00260) of infringing the same two patents through its messaging features, including iMessage, and AT&T and Verizon (2:16-cv-00271) through their respective landline and wireless VoIP and messaging services. The NPE has not provided a rationale for joining the two carriers in a single action.