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`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 1 of 25
`
`
`Sarah J. Guske (CA Bar No. 232467)
`Email: sarah.guske@bakerbotts.com
`BAKER BOTTS L.L.P
`101 California Street, Suite 3600
`San Francisco, CA 94111
`Telephone: (415) 291-6200
`Fax: (415) 291-6300
`Jon V. Swenson (CA Bar No. 233054)
`Email: jon.swenson@bakerbotts.com
`BAKER BOTTS L.L.P
`1001 Page Mill Road Bldg One, Suite 200
`Palo Alto, CA 94304
`Telephone: (650) 739-7514
`Fax: (650) 739-7614
`[additional counsel on signature page]
`Attorneys for Plaintiffs AT&T Corp.,
`AT&T Services, Inc., and AT&T Mobility
`LLC
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`AT&T CORP., AT&T SERVICES, INC., AND
`Case No. 5:21-cv-5078
`AT&T MOBILITY LLC,
`
`
`
`COMPLAINT FOR DECLARATORY
`Plaintiffs,
`JUDGMENT OF NONINFRINGEMENT
`
`AND INVALIDITY
`v.
`
`
`DEMAND FOR JURY TRIAL
`VOIP-PAL.COM, INC.,
`
`
`Defendant.
`
`
`
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`
`
`
`
`CASE NO. 5:21-cv-5078
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 2 of 25
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`Plaintiffs AT&T Corp., AT&T Services, Inc., and AT&T Mobility LLC (“the AT&T
`plaintiffs”) seek a declaratory judgment that they do not infringe any claim of U.S. Patent Nos.
`8,630,234 (the “’234 patent”), and 10,880,721 (the “’721 patent”), and that the ’234 and ’721 patents
`are invalid. There is a live and existing controversy between the parties to this lawsuit. On April
`24, 2020, defendant VoIP-Pal filed a patent infringement suit asserting U.S. Patent No. 10,218,606
`(the “’606 patent”) in the Western District of Texas against two of the three plaintiffs (AT&T Corp.
`and AT&T Services, Inc.). That case was dismissed without prejudice on March 25, 2021. (Case
`No. 20-cv-325, Dkt. 53.) However, AT&T’s declaratory judgment complaint of noninfringement
`and invalidity of the ’606 patent is pending in this District. Nevertheless, on June 25, 2021,
`defendant VoIP-Pal.com, Inc. (“VoIP-Pal”) filed a patent infringement suit attempting to assert
`the ’234 and ’721 patents in the Western District of Texas against the AT&T plaintiffs. The
`Honorable Judge Lucy H. Koh of the Northern District of California has extensive experience with
`VoIP-Pal’s patents, the technology claimed in its patents, and its litigation campaign against AT&T,
`making it logical and judicially efficient for the parties’ dispute to be heard in this Court.
`INTRODUCTION
`1.
`This is an action for a declaratory judgment arising under the patent laws of the
`United States, Title 35 of the United States Code. The AT&T plaintiffs seek a declaratory judgment
`that they do not infringe any claim of the ’234 and ’721 patents and that the ’234 and ’721 patents
`are invalid. The action arises from a real and immediate controversy between the AT&T plaintiffs
`and VoIP-Pal as to whether the AT&T plaintiffs infringe any claims of the ’234 and ’721 patents.
`The ’234 patent is attached as Exhibit 1A, and the ’721 patent is attached as Exhibit 1B, both of
`which are entitled “Mobile Gateway.”
`2.
`This is not the first lawsuit between VoIP-Pal and an AT&T entity in this District.
`As this Court has previously recognized, the parties have a long history. In 2016, VoIP-Pal filed six
`lawsuits—one against plaintiff AT&T Corp., two against Apple, and three others against Amazon,
`Verizon, and Twitter—collectively alleging infringement of six patents (“the 2016 cases”). After its
`case against Twitter was transferred to this District, VoIP-Pal voluntarily consented to transfer of
`the remaining cases to this District. (Exhibit 2.) This Court subsequently found that all six patents
`1
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 3 of 25
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`were invalid under 35 U.S.C. § 101 for claiming ineligible subject matter. (Exhibits 3-4.) Both of
`this Court’s two decisions have already been affirmed by the Federal Circuit pursuant to Fed. R.
`App. P. 36. (Exhibits 5A-5B.)
`3.
`Dissatisfied with this Court’s decisions, and in an apparent effort to avoid a similar
`judgment, VoIP-Pal filed a cluster of lawsuits against Google, Facebook, Apple, Amazon, Verizon,
`and various AT&T entities in the Western District of Texas in 2020, alleging infringement of a
`seventh (and related) patent, the ’606 patent, which is part of the same family as, shares a common
`specification with, and contains similar claim language as, the six already-invalidated patents.
`4.
`Within weeks, Apple, Twitter, Verizon, and AT&T filed declaratory judgment
`complaints in the Northern District of California, alleging noninfringement and invalidity of VoIP-
`Pal’s seventh patent, the ’606 patent. VoIP-Pal moved to dismiss those complaints under the first-
`to-file rule, arguing that its Western District of Texas complaints were the first-filed cases. VoIP-
`Pal also sought dismissal for, inter alia, lack of personal jurisdiction and improper venue. The Court
`declined to apply the first-to-file rule in the interests of judicial efficiency. (Exhibit 8.) In particular,
`the Court appreciated that VoIP-Pal’s argument “completely ignores the history of disputes between
`the parties whether Plaintiffs infringe Defendant’s family of patents related to communications over
`internet protocol, including a set of cases filed in 2016 and another set filed in 2018, all of which
`were adjudicated by this Court.” (Id. at 11.) The Court also found that VoIP-Pal had no ties to the
`Western District of Texas and “decline[d] to apply the first-to-file rule to permit [VoIP-Pal] to forum
`shop.” (Id. at 13.) Therefore, the Court denied VoIP-Pal’s motions. The Apple, Twitter, and AT&T
`declaratory-judgment cases are still pending in this District.1
`5.
`Faced again with an unfavorable decision, and desperate to flee this Court’s
`jurisdiction, VoIP-Pal filed yet another set of complaints against the same parties in the Western
`District of Texas on June 25, 2021. (See Exhibit 6.) This time, VoIP-Pal chose a new patent family
`to assert. However, the ’234 and ’721 patents relate to the same subject matter as VoIP-Pal’s
`previous seven patents: call routing functionality based on callee identifiers. A simple comparison
`
`1 The Court dismissed the Verizon case on May 26, 2021 via a stipulation of dismissal. (Case No.
`20-cv-3092, Dkt. 73.) Notwithstanding, VoIP-Pal also filed a new suit against Verizon in the
`Western District of Texas on June 25, 2021. (Case No. 21-cv-672.)
`2
`COMPLAINT FOR DECLARATORY
`
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`

`

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`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 4 of 25
`
`of the patents’ abstracts demonstrates that similarity:
`
`U.S. Patent No. 8,542,815 (2016 case)
`
`U.S. Patent No. 8,630,234 (2021 case)
`
`
`
`6.
`Similarly, VoIP-Pal accuses the same technology of infringement. For example, in
`both the 2016 Northern District of California case and the 2020 Western District of Texas case,
`VoIP-Pal accused AT&T’s “Wi-Fi Calling” of infringement. (Case No. 18-cv-6177, Dkt. 3-16, 3-
`19; Case No. 20-cv-325, Dkt. 1-2.) In the 2021 Western District of Texas, VoIP-Pal accuses
`AT&T’s “Voice over WiFi or VoWiFi” of infringement. (Case No. 21-cv-671, Dkt. 1-3, 1-4.) (See
`Exhibits 9-12.)
`7.
`VoIP-Pal’s forum shopping attempts should be disregarded, and in the interests of
`justice and judicial efficiency, any dispute between VoIP-Pal and the AT&T plaintiffs concerning
`the ’234 and ’721 patents should be adjudicated in this District.
`8.
`The AT&T plaintiffs believe that they do not infringe the ’234 and ’721 patents, and
`that they have not infringed any claims of the ’234 and ’721 patents, and that the claims of the ’234
`and ’721 patents are invalid.
`9.
`VoIP-Pal’s actions have created a real and immediate controversy between VoIP-Pal
`and the AT&T plaintiffs as to whether their products and/or services infringe any claims of the ’234
`and ’721 patents, and whether the claims of the ’234 and ’721 patents are invalid. The facts and
`allegations recited herein show that there is a real, immediate, and justiciable controversy
`concerning these issues.
`
`THE PARTIES
`10.
`AT&T Corp. is a New York corporation with a place of business at One AT&T Way,
`Bedminster, New Jersey 07921.
`11.
`AT&T Services, Inc. is a Delaware corporation with a place of business at 208 S.
`3
`COMPLAINT FOR DECLARATORY
`
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 5 of 25
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`Akard St., Dallas, Texas 75202.
`12.
`AT&T Mobility LLC is a Delaware limited liability company with a place of
`business at 1025 Lenox Park Blvd NE, Atlanta, Georgia 30319.
`13.
`On information and belief, VoIP-Pal is a company incorporated and registered under
`the laws of Nevada with a principal place of business in Bellevue, Washington.
`14.
`On information and belief, including VoIP-Pal’s allegations in litigations filed in
`Texas, VoIP-Pal owns the ’234 and ’721 patents.
`JURISDICTIONAL STATEMENT
`15.
`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq., and
`under the patent laws of the United States, Title 35 of the United States Code.
`16.
`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 AT&T
`and VoIP-Pal are citizens of different states, and the value of the controversy exceeds $75,000.
`17.
`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 this
`Court’s jurisdiction pursuant to 28 U.S.C. § 2201. An actual case and controversy exists as to
`the ’234 and ’721 patents at least because the AT&T plaintiffs do not infringe and have not infringed
`any claims of the ’234 and ’721 patents; VoIP-Pal previously filed a lawsuit against AT&T Corp.
`alleging infringement of three similar patents with similar claim language and implicating the same
`AT&T technology; VoIP-Pal has accused the AT&T plaintiffs of infringing the ’234 and ’721
`patents in litigation in the Western District of Texas; VoIP-Pal’s infringement allegations generally
`implicate products or services provided by the AT&T plaintiffs; and, on the basis of VoIP-Pal’s
`allegations in the Western District of Texas complaint, the AT&T plaintiffs therefore have a
`reasonable apprehension of suit with regard to these allegations.
`18. Moreover, the first two patents previously asserted by VoIP-Pal against AT&T Corp.
`were held invalid under 35 U.S.C. § 101 by this Court, and—based on the substantial similarities
`4
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 6 of 25
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`between those invalid claims and the claims of the ’234 and ’721 patents—the ’234 and ’721 patents
`are invalid for at least the same reasons. And, even though this Court invalidated VoIP-Pal’s first
`two patents, VoIP-Pal continued its litigation spree, bringing suit against AT&T a second time in
`2020 and a third time in 2021. Furthermore, VoIP-Pal’s executives have recently made public
`statements that VoIP-Pal is “not finished” taking action, despite the recent decision of the Federal
`Circuit affirming the judgment from this District that the claims of all of the patents that VoIP-Pal
`has previously asserted against AT&T Corp. are invalid. (Exhibit 7.)
`19.
`As a result, and as this Court has previously held, VoIP-Pal has “engaged in an
`affirmative act sufficient to confer jurisdiction over” this declaratory judgment claim “based on the
`extensive litigation campaign undertaken by [VoIP-Pal] against AT&T on related patents.” (Exhibit
`8 at 25.) This Court has already recognized VoIP-Pal’s public statements that it will continue to
`assert its patent rights until it is successful. (Id. at 26.) As the Court noted, “at a case management
`conference in the 2016 cases [against AT&T and others], Defendant represented to this Court that
`Defendant did not then intend to file additional lawsuits against Plaintiffs,” and “[d]espite these
`representations, Defendant chose to file additional lawsuits.” (Id. at 27 n.5.) VoIP-Pal continues to
`do so, having sued AT&T in the 2016 case, again in the 2020 Western District of Texas case
`asserting the ’606 patent, and now in the 2021 Western District of Texas case asserting the ’234
`and ’721 patents.
`20.
`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has engaged in
`actions in this District that form the basis of the AT&T plaintiffs’ claims against VoIP-Pal—namely,
`the prosecution of the prior patent infringement lawsuit against AT&T Corp. in this District, the
`prosecution of similar patents in this District, voluntarily transferring to this District the lawsuit that
`VoIP-Pal filed against AT&T Corp. and litigating that case without contesting personal jurisdiction,
`continuing to prosecute its prior 2016 case against AT&T in this District after transfer from the
`District of Nevada, and engaging California lawyers for the previous cases involving AT&T and the
`other defendants, including the 2016 case and the 2020 declaratory judgment action. VoIP-Pal’s
`actions have created a real, live, immediate, and justiciable case or controversy between VoIP-Pal
`and the AT&T plaintiffs.
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`5
`
`
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 7 of 25
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`21.
`This Court has already determined that it has personal jurisdiction over VoIP-Pal.
`(Exhibit 8.) It concluded: “In the instant case, the Court concludes that [VoIP-Pal] has purposefully
`directed its enforcement activities towards the forum state by: (1) litigating six lawsuits on claims
`of infringement of patents in the same family in the Northern District of California[;] (2) stipulating
`to transfer five lawsuits, four of them against Plaintiffs in the instant three cases, to this district;
`(3) never contesting personal jurisdiction in the Northern District of California in those six lawsuits;
`(4) engaging multiple California law firms in its infringement lawsuits; and (5) meeting with Apple
`in the Northern District of California in 2016 regarding claims of infringement of patents in the
`same family.” (Id. at 17; see also id. at 17-20.)
`22.
`The Court also concluded that “the claim at issue in the instant cases arises out of or
`relates to these activities because the activities described above relate to patent enforcement.” (Id.
`at 20.) Likewise, the claim at issue here arises out of or relates to the same activities of patent
`enforcement. The prior two cases involving VoIP-Pal and AT&T in this District—the 2016 case and
`the 2020 declaratory judgment case—are significantly intertwined with this case: the asserted three
`patents in those cases are related to the same technology as the ’234 and ’721 patents: call routing
`technology using callee identifiers. The Court already found that the 2016 case and the 2020
`declaratory judgment case “share substantially similar technology and accused products.” (Id.) As
`demonstrated by VoIP-Pal’s allegations in the Western District of Texas complaint asserting
`the ’234 and ’721 patents, that case and VoIP-Pal’s prior two cases against AT&T in this District
`all involve overlapping theories of infringement. In each of these cases, VoIP-Pal accuses AT&T’s
`telecommunications technology using WiFi (See Exhibits 9-12.)
`23.
`As a result of VoIP-Pal’s conduct described above, VoIP-Pal has consciously and
`purposefully directed allegations of infringement of the ’234 and’721 patents at the AT&T plaintiffs.
`24.
`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 this action.
`Further, the exercise of personal jurisdiction based on these repeated and pertinent contacts does not
`offend traditional notions of fairness and substantial justice. This Court has already determined the
`assertion of personal jurisdiction against VoIP-Pal is reasonable and fair. (Exhibit 8 at 21-23.)
`6
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 8 of 25
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`25.
`Venue is proper in 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
`and invalidity of patents is determined under the general venue statute, 28 U.S.C. § 1391.
`Additionally, VoIP-Pal consented to transfer to this District the 2016 lawsuit that VoIP-Pal filed
`against AT&T Corp. (Exhibit 2.)
`26.
`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). This
`Court has already determined that venue is proper. (Exhibit 8 at 23.)
`27.
`As discussed above, VoIP-Pal is subject to personal jurisdiction with respect to this
`action in the Northern District of California, and thus, at least 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.
`FACTUAL BACKGROUND
`28.
`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against AT&T Corp.,
`Apple, Verizon, and Twitter, alleging infringement of two patents—U.S. Patent Nos. 8,542,815 (the
`“’815 patent”) and 9,179,005 (the “’005 patent”). VoIP-Pal voluntarily consented to transfer of its
`case against AT&T Corp. to this District, and between August and November 2018, each of the four
`cases was transferred to this District and consolidated for pretrial purposes: Apple (Case No. 5:18-
`cv-06217-LHK), AT&T Corp. (Case No. 5:18-cv-06177-LHK), Verizon (Case No. 5:18-cv-06054-
`LHK), and Twitter (Case No. 5:18-cv-04523-LHK).
`29.
`AT&T Corp. and the other defendants filed a motion to dismiss, pursuant to Fed. R.
`Civ. P. 12(b)(6), because the asserted claims of the ’815 and ’005 patents were unpatentable under
`35 U.S.C. § 101. On March 25, 2019, Judge Koh 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. (Exhibit 5A.)
`30.
`In 2018, VoIP-Pal filed additional lawsuits against Apple and Amazon, alleging
`infringement of four patents—U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.
`7
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`
`
`

`

`Case 3:21-cv-05078-JD Document 1 Filed 06/30/21 Page 9 of 25
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`(Case Nos. 5:18-cv-6216-LHK and 5:18-cv-7020-LHK.) Those four patents were part of the same
`family as, and shared a common specification with, the ’815 and ’005 patents that VoIP-Pal asserted
`in its earlier litigation. 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 were invalid under 35 U.S.C. § 101. On
`November 19, 2019, Judge Koh granted the motion to dismiss and found all asserted claims of the
`four patents to be invalid. On November 3, 2020, the Federal Circuit affirmed this Court’s judgment
`of invalidity. (Exhibit 5B.)
`31.
`In early April 2020, VoIP-Pal filed new lawsuits in the Western District of Texas
`(Waco Division) against Apple, Amazon, Facebook, and Google, alleging infringement of a seventh
`patent, the ’606 patent. (Case Nos. 20-cv-275, 20-cv-272, 20-cv-267, 20-cv-269.) Each of the seven
`previously asserted patents are in the same patent family. The ’606 patent, which on its face issued
`on February 26, 2019 (during the pendency of VoIP-Pal’s lawsuit against AT&T Corp. in the
`Northern District of California), is in the same family as and shares a common specification with
`the six patents that VoIP-Pal asserted in earlier litigations and which were found to be invalid by
`this Court, including the ’815 and ’005 patents asserted against AT&T Corp.
`32.
`In late April 2020, VoIP-Pal filed new lawsuits in the Western District of Texas
`(Waco Division)—one against AT&T Inc., AT&T Corp., AT&T Communications of Texas LLC,
`and AT&T Services, Inc. and another against Verizon—alleging infringement of the ’606 patent.
`(Case Nos. 20-cv-325, 20-cv-327.)
`33.
`On notice of VoIP-Pal’s newly minted enforcement campaign in the Western District
`of Texas, the AT&T plaintiffs, as well as Twitter, Apple, and Verizon, filed declaratory judgment
`complaints in this District in April and May 2020, alleging noninfringement and, for some, invalidity
`of the ’606 patent. (Case Nos. 20-cv-2397, 20-cv-2460, 20-cv-2995, 20-cv-3092.) In each of those
`cases, VoIP-Pal filed a motion to dismiss under the first-to-file rule, alleging that its Western District
`of Texas cases constituted the first-filed cases. VoIP-Pal also moved to dismiss for, inter alia, lack
`of personal jurisdiction and improper venue.
`34.
`On December 11, 2020, this Court denied VoIP-Pal’s motions to dismiss. VoIP-Pal
`petitioned the Federal Circuit for a writ of mandamus, which was denied on March 8, 2021. (Exhibit
`8
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
`
`
`CASE NO. 5:21-cv-5078
`
`
`
`

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`13.) In doing so, the Federal Circuit held that “the conclusion that it would be far less efficient for
`the Western District of Texas to resolve these cases based on the Northern District of California’s
`familiarity with the overlapping issues is particularly well supported.” (Id. at 3-4.)
`35.
`Between March 25, 2021 and April 1, 2021, the lawsuits in the Western District of
`Texas were dismissed without prejudice “under the first-filed rule.” (Case Nos. 20-cv-325 (Dkt.
`No. 53), 20-cv-327 (Dkt. No. 49).)
`36.
`On June 25, 2021, VoIP-Pal again filed new lawsuits in the Western District of Texas
`(Waco Division)—one attempting to sue AT&T Inc., AT&T Mobility LLC, and AT&T Services,
`Inc., two attempting to sue against Apple, and another five against Facebook, Google, Amazon,
`Verizon, and T-Mobile—alleging infringement of the ’234 and ’721 patents. (Case Nos. 21-cv-665,
`21-cv-667, 21-cv-668, 21-cv-669, 21-cv-670, 21-cv-671, 21-cv-672, 21-cv-674.)
`37.
`On June 28, 2021, VoIP-Pal filed an unopposed motion to file a substitute Original
`Complaint and Civil Cover Sheet, requesting to replace AT&T Inc. with AT&T Corp. and to correct
`an “unintentional clerical error” in filing the Original Complaint and Civil Cover Sheet in Case No.
`21-cv-670 incorrectly in its case against AT&T (Case No. 21-cv-671). (Case No. 21-cv-671, Dkt.
`6.)
`
`38.
`The ’234 and ’721 patents are in the same family and share a common title,
`specification, and inventors with each other. The ’234 patent, on its face, issued on January 14,
`2014—two years before VoIP-Pal’s first ever suit against AT&T in the District of Nevada. On its
`face, the ’721 patent claims priority to the ’234 patent and issued on December 29, 2020—during
`the pendency of VoIP-Pal’s 2020 case against AT&T Inc., AT&T Corp., AT&T Communications
`of Texas LLC, and AT&T Services, Inc. in the Western District of Texas and AT&T Corp., AT&T
`Mobility LLC, and AT&T Services, Inc.’s 2020 declaratory judgment suit against VoIP-Pal in this
`District.
`39.
`VoIP-Pal’s 2021 complaint against the named AT&T entities in the Western District
`of Texas identifies claim 20 of the ’234 patent and claim 38 of the ’721 patent as exemplary claims
`that are allegedly infringed by those AT&T entities. (See Exhibits 11-12.) These exemplary claims
`of the ’234 and ’721 patents are similar to the claims of the seven patents that VoIP-Pal asserted
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
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`against AT&T Corp. and the other defendants in litigations in this District, six of which this Court
`has held invalid, and the seventh of which is involved in pending cases in this District.
`40.
`VoIP-Pal’s infringement allegations against the named AT&T entities in the Western
`District of Texas cases, as reflected in its complaints in those actions, track its infringement
`allegations against AT&T Corp. in the earlier actions in this District. For example, VoIP-Pal again
`directs its allegations towards telecommunications services that are the same as or similar to its
`allegations in the earlier actions in this District, in particular, to AT&T’s Wi-Fi Calling and/or
`VoWiFi technology. (See Exhibits 9-12.)
`41.
`The AT&T plaintiffs believe that they do not infringe and have not infringed any
`claims of the ’234 and ’721 patents, and that the claims of the ’234 and ’721 patents are invalid at
`least for the same or similar reasons that the claims of the six previously asserted patents were held
`invalid.
`42.
`VoIP-Pal’s tactics appear to reflect an attempt to avoid the adverse judgments of this
`Court by bringing serial lawsuits based on similar patent claims in a different district. In the interests
`of justice and judicial efficiency (among other reasons), any dispute between VoIP-Pal and the
`AT&T plaintiffs concerning the ’234 and ’721 patents should be adjudicated in this District.
`INTRADISTRICT ASSIGNMENT
`43.
`For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and 3-5(b),
`this Intellectual Property Action will be assigned on a district-wide basis. The AT&T plaintiffs
`believe that the case should be assigned to the Honorable Lucy H. Koh, who presided over VoIP-
`Pal’s prior lawsuits against AT&T Corp. and other companies (see, e.g., Case No. 5:18-cv-6277-
`LHK), and who is currently presiding over pending cases involving AT&T Corp. and VoIP-Pal and
`other companies (see, e.g., Case No. 5:20-cv-02995-LHK).
`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment That The AT&T Plaintiffs Do Not Infringe The ’234 Patent)
`44.
`The AT&T plaintiffs repeat and reallege each and every allegation contained in
`paragraphs 1 through 43 of this Complaint as if fully set forth herein.
`45.
`In view of the facts and allegations set forth above, there is an actual, justiciable,
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`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
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`substantial, and immediate controversy between the AT&T plaintiffs, on the one hand, and VoIP-
`Pal, on the other, regarding whether the AT&T plaintiffs infringe any claim of the ’234 patent.
`VoIP-Pal has accused the AT&T plaintiffs of infringing the ’234 patent in litigation in the Western
`District of Texas, presenting an actual, justiciable, substantial, and immediate controversy between
`the AT&T plaintiffs and VoIP-Pal regarding whether the AT&T plaintiffs infringe any claim of
`the ’234 patent.
`46.
`The AT&T plaintiffs do not infringe, and have not infringed, any claim of the ’234
`patent. For example, VoIP-Pal alleges that the named AT&T entities in the Western District of Texas
`infringe claim 20 of the ’234 patent. Claim 20, an independent claim, recites the limitations (1)
`“cause an access code request message to be transmitted [from a mobile telephone apparatus] to an
`access server to seek an access code from a pool of access codes wherein each access code in said
`pool of access codes identifies a respective telephone number or Internet Protocol (IP) network
`address that enables a local call to be made to call the callee identified by the callee identifier, said
`access code request message including said callee identifier and a location identifier separate and
`distinctive from said callee identifier, said location identifier identifying a location of the mobile
`telephone;” (2) “receive an access code reply message [at the mobile telephone apparatus] from the
`access server in response to said access code request message, said access code reply message
`including an access code different from said callee identifier and associated with said location
`identifier and/or associated with a location pre-associated with the mobile telephone and wherein
`said access code expires after a period of time;” and (3) “initiate [by the mobile telephone apparatus]
`a call using said access code to identify the callee.” The AT&T plaintiffs do not infringe claim 20
`of the ’234 patent at least because no AT&T product or service meets or embodies at least the
`following limitations as used in the claimed inventions: (1) “cause an access code request message
`to be transmitted [from a mobile telephone apparatus] to an access server to seek an access code
`from a pool of access codes wherein each access code in said pool of access codes identifies a
`respective telephone number or Internet Protocol (IP) network address that enables a local call to be
`made to call the callee identified by the callee identifier, said access code request message including
`said callee identifier and a location identifier separate and distinctive from said callee identifier, said
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NONINFRINGEMENT AND
`INVALIDITY
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`location identifier identifying a location of the mobile telephone;” (2) “receive an access code reply
`message [at the mobile telephone apparatus] from the access server in response to said access code
`request message, said access code reply message including an access code different from said callee
`identifier and associated with said location identifier and/or associated with a location pre-associated
`with the mobile telephone and wherein said access code expires after a period of time;” and (3)
`“initiate [by the mobile telephone apparatus] a call using said access code to identify the callee.”
`For at least these same reasons, AT&T also does not induce others to infringe or contributorily
`infringe. Furthermore, AT&T’s products and services are capable of substantial non-infringing
`uses, rendering contributory infringement unavailable.
`47.
`Likewise, the AT&T plaintiffs do not infringe the remaining seven independent
`claims of the ’234 patent, claims 1, 11, 29, 30, 46, 62, and 78. The AT&T plaintiffs do not infringe
`claim 1 of the ’234 patent at least because no AT&T product or service meets or embodies at least
`the following limitations as used in the claimed inventions: (1) “transmitting an