Case 5:21-cv-05110-SVK Document 1 Filed 07/01/21 Page 1 of 22
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`DESMARAIS LLP
`Ameet A. Modi (Bar No. 331660)
`101 California Street, Suite 3070
`San Francisco, CA 94111
`Telephone: (415) 573-1900
`Facsimile: (415) 573-1901
`amodi@desmaraisllp.com
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`Attorney for Plaintiff Apple Inc.
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`UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`APPLE INC., a California corporation,
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`Plaintiff,
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`v.
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`VOIP-PAL.COM, INC., a Nevada corporation,
`Defendant.
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` Case No. 21-cv-05110
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`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-
`INFRINGEMENT AND INVALIDITY
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`DEMAND FOR JURY TRIAL
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`CASE NO. 21-CV-05110
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`Plaintiff Apple Inc. (“Apple”) seeks a declaratory judgment that it does not infringe U.S.
`Patent No. 8,630,234 (the “’234 patent”) (Ex. 1), that the ’234 patent is invalid, that Apple does
`not infringe U.S. Patent No. 10,880,721 (the “’721 patent”) (Ex. 2), and that the ’721 patent is
`invalid.
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`INTRODUCTION
`1.
`Defendant VoIP-Pal.com, Inc. (“VoIP-Pal”) is a serial (albeit unsuccessful)
`litigator. Its four prior cases against Apple have resulted in (1) final judgment in favor of Apple
`based on the invalidity of the two patents-in-suit; (2) final judgment again in favor of Apple based
`on the invalidity of four patents-in-suit; (3) voluntary dismissal of a complaint filed in the Western
`District of Texas; and (4) delivering a covenant not-to-sue to Apple in an attempt to escape
`invalidation of two more patents. This case arises out of VoIP-Pal’s latest assertion of invalid
`patents against Apple.
`2.
`In 2016, VoIP-Pal filed suit against Apple and three other companies (“the 2016
`Cases”) for alleged infringement of two patents. At a case management conference, VoIP-Pal
`assured this Court that it had “no intention to assert any [] other patents against any of the []
`defendants.” (See Case. No. 5:20-cv-02460-LHK, ECF No. 60 at 27, n.5.) This Court found all
`asserted claims of the two patents invalid under 35 U.S.C. § 101. The Federal Circuit affirmed
`that decision.
`3.
`In 2018, VoIP-Pal filed suit against Apple, as well as Amazon (“the 2018 Cases”).
`This Court found all asserted claims of the four patents-in-suit invalid under 35 U.S.C. § 101. The
`Federal Circuit affirmed that decision, too.
`4.
`In 2020, unhappy with those results, VoIP-Pal filed a fresh set of lawsuits in the
`Western District of Texas (“WDTX”), including against Apple (the “2020 Apple WDTX action”).
`Apple filed a declaratory judgment action in this Court (the “2020 Apple DJ action”). The Western
`District of Texas court stayed VoIP-Pal’s action. Meanwhile, this Court denied VoIP-Pal’s motion
`to dismiss, explaining (among other things) that the circumstances of VoIP-Pal’s lawsuits “suggest
`that [VoIP-Pal] may be forum shopping, attempting to avoid this Court’s unfavorable decisions by
`filing in another district.” (Case. No. 5:20-cv-02460-LHK, ECF No. 60 at 13.) VoIP-Pal filed a
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`NON-INFRINGEMENT AND INVALIDITY
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`petition for a writ of mandamus to the Federal Circuit, which was likewise denied. VoIP-Pal then
`dismissed its own 2020 Apple WDTX action and issued Apple a (limited) covenant not-to-sue in
`the 2020 Apple DJ action in an effort to strip this Court of jurisdiction.
`5.
`In June 2021, despite its assurance to this Court that it had “no intention to assert
`any [] other patents,” VoIP-Pal filed yet another lawsuit against Apple, once again in the Western
`District of Texas. As detailed below, VoIP-Pal is once again attempting to forum shop, and it is
`once again asserting patents that are invalid.
`6.
`This is an action for a declaratory judgment arising under the patent laws of the
`United States, Title 35 of the United States Code. Apple seeks declaratory judgments that it does
`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 plaintiff Apple and defendant
`VoIP-Pal as to whether Apple infringes any valid claims of the ’234 or ’721 patents, each entitled
`“Mobile Gateway” and attached as Exhibits 1 and 2.
`7.
`As summarized above and detailed further below, VoIP-Pal previously filed twelve
`lawsuits—three against Apple—collectively alleging infringement of seven patents that share an
`inventor and similar subject matter with the ’234 and ’721 patents. One of those cases was
`transferred to this District, and VoIP-Pal consented to transfer of five more of those cases to this
`District, stipulating that “the convenience of the parties and witnesses favors transfer to the
`Northern District of California.” (Exs. 3–4.) In those six cases, two of which were against Apple,
`this Court found that all six patents at issue were invalid under 35 U.S.C. § 101 for claiming
`ineligible subject matter. (Ex. 5 at 44; Ex. 6 at 1–2, 68.) The Federal Circuit has affirmed both of
`those decisions. (Exs. 7–8.)
`8.
`Seeking to avoid this Court’s jurisdiction, VoIP-Pal filed its third case against
`Apple, and five cases against other companies, in WDTX, alleging infringement of a seventh
`patent. (The “2020 Apple WDTX action.”)
`9.
`Given VoIP-Pal’s piecemeal litigation campaign and forum-shopping tactics, as
`well as concerns for judicial efficiency and convenience, Apple filed a declaratory judgment action
`in this District regarding the patent at issue in the 2020 Apple WDTX action plus another, related
`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`patent. (The “2020 Apple DJ action.”) As detailed below, the 2020 Apple WDTX action has been
`dismissed and the 2020 Apple DJ action remains pending in this District.
`10.
`In every one of the prior litigations between VoIP-Pal and Apple, involving a total
`of eight patents, the Apple technology at issue has included at least Apple’s FaceTime and
`Messages applications.
`11.
`On June 25, 2021, VoIP-Pal filed yet another complaint against Apple, alleging
`infringement of the ’234 and ’721 patents, again by virtue of Apple’s FaceTime and Messages
`applications. Despite this District’s familiarity with the parties, VoIP-Pal’s patents, the
`technology, the accused instrumentalities, and the currently pending litigation between the parties
`in this District, VoIP-Pal filed that new lawsuit in WDTX. (Ex. 9.) (The “2021 Apple WDTX
`action.”)
`12.
`VoIP-Pal also filed a cluster of lawsuits against AT&T, Verizon, Amazon,
`Facebook/WhatsApp, Google, and T-Mobile in WTDX, also alleging infringement of the ’234 and
`’721 patents.
`13.
`VoIP-Pal’s bad-faith forum shopping attempts should be disregarded, and in the
`interests of justice and judicial efficiency, any dispute between VoIP-Pal and Apple concerning
`the ’234 and ’721 patents should be adjudicated in this District.
`14.
`Apple does not infringe and has not infringed the claims of the ’234 and ’721
`patents, and believes that the claims of the ’234 and ’721 patents are invalid.
`15.
`VoIP-Pal’s actions have created a real and immediate controversy between VoIP-
`Pal and Apple as to whether Apple’s products and/or services infringe the 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
`16.
`Apple is a California corporation with its principal place of business at One Apple
`Park Way, Cupertino, California 95014. Apple designs, manufactures, and markets mobile
`communication and media devices and personal computers, and offers a variety of related
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`software, services, accessories, networking solutions, and third-party digital content and
`applications.
`17.
`On information and belief, VoIP-Pal is a company incorporated under the laws of
`Nevada. According to VoIP-Pal’s Form 10-Q filed with the United States Securities and Exchange
`Commission for the quarterly period ending December 31, 2020, the address of VoIP-Pal’s
`principal executive offices was in Bellevue, Washington. On information and belief, and
`according to public information, VoIP-Pal’s current “principal place of business” at 7215 Bosque
`Blvd. in Waco, Texas is a “virtual office” available to anyone for $99/month. (See Ex. 10 at 2).
`18.
`On information and belief, including statements VoIP-Pal made on its website and
`VoIP-Pal’s allegations in litigations it filed in Texas, VoIP-Pal owns the ’234 and ’721 patents.
`JURISDICTIONAL STATEMENT
`19.
`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.
`20.
`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
`Apple and VoIP-Pal are citizens of different states, and the value of the controversy exceeds
`$75,000.
`21.
`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. As detailed further below, an actual case
`and controversy exists at least because Apple does not infringe and has not infringed the claims of
`the ’234 and ’721 patents; the claims of the ’234 and ’721 patents are invalid; VoIP-Pal previously
`filed lawsuits against Apple alleging infringement of seven patents sharing an inventor and similar
`subject matter with the ’234 and ’721 patents; and VoIP-Pal has accused Apple of infringing the
`’234 and ’721 patents in litigation in WDTX.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`22.
`The ’234 patent issued in January 2014, well before any of VoIP-Pal’s earlier
`lawsuits against Apple and the Apple 2020 DJ action. Similarly, the ’721 patent issued in
`December 2020, during the pendency of 2020 Apple WDTX action and the 2020 Apple DJ action.
`VoIP-Pal’s apparent decision to delay filing suit on the ’234 and ’721 patents, and its failure to file
`suit in this District where litigation between the parties involving the same Apple FaceTime and
`Messages applications is ongoing, demonstrates VoIP-Pal’s intent to: (1) litigate its portfolio in
`piecemeal fashion against Apple and (2) to forum shop in an attempt to avoid unfavorable
`decisions.
`23.
`Further demonstrating these intents, on April 8, 2020 (after filing the 2020 Apple
`WDTX action), VoIP-Pal’s CEO publicly stated that despite this District’s invalidation of six of
`VoIP-Pal’s patents as a result of the prior litigations against Apple, VoIP-Pal is “undeterred in [its]
`fight to assert [its] intellectual property rights”; that VoIP-Pal is “not finished”; and that VoIP-Pal
`“remain[s] firm in [its] resolve to achieve monetization for [its] shareholders and will continue to
`see this fight through until a successful resolution is reached.” (Exhibit 11.) In December 2020,
`VoIP-Pal’s CEO proclaimed that he has a “duty” “to develop the company’s IP and to monetize
`[VoIP-Pal’s] patents.” (Ex. 12 at 6.) And in February 2021, after the Federal Circuit denied VoIP-
`Pal’s mandamus Petition, VoIP-Pal’s CEO proclaimed that the company “will never stop
`fighting.” (Id. at 2.)
`24.
`The facts of this dispute establish that this Court has personal jurisdiction over
`VoIP-Pal.
`25.
`First, VoIP-Pal has engaged in actions in this District that form the basis of Apple’s
`claims against VoIP-Pal—namely, the prosecution of at least two prior patent infringement
`lawsuits against Apple in this District involving patents that share an inventor and similar subject
`matter with the ’234 and ’721 patents, and in which VoIP-Pal accused the same FaceTime and
`Messages applications that it now accuses as infringing the ’234 and ’721 patents.
`26.
`Second, VoIP-Pal stipulated to the transfer of five prior lawsuits to this District,
`including both of VoIP-Pal’s then-existing lawsuits against Apple.
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`27.
`Third, VoIP-Pal never contested personal jurisdiction in the Northern District of
`California in its first two lawsuits against Apple.
`28.
`Fourth, VoIP-Pal has engaged multiple California lawyers or law firms in its
`infringement lawsuits against Apple.
`29.
`Fifth, VoIP-Pal has made efforts to enforce its patents in this District, including
`through a meeting between VoIP-Pal’s representatives and representatives for Apple in Sunnyvale,
`California in April 2016 regarding Apple’s potential infringement of VoIP-Pal’s patents and VoIP-
`Pal’s efforts to secure a license to its entire patent portfolio from Apple.
`30.
`Sixth, on information and belief, VoIP-Pal has likely investigated infringement
`claims against Apple and Twitter, which reside in this District.
`31.
`The claims at issue in this case arise out of or relate to VoIP-Pal’s activities in this
`District because the activities described above relate to patent enforcement. For example, the ’234
`and ’721 patents-in-suit share an inventor and similar subject matter as the patents at issue in VoIP-
`Pal’s prior patent infringement lawsuits against Apple in this District (i.e., the 2016, 2018, and
`2020 Apple DJ cases). Moreover, the ’234 patent had already issued when representatives of
`VoIP-Pal met with representatives of Apple in Sunnyvale, California in April 2016 regarding
`Apple’s potential infringement of VoIP-Pal’s patents.
`32.
`As a result of VoIP-Pal’s conduct described above, VoIP-Pal has consciously and
`purposefully directed allegations of infringement of VoIP-Pal’s patents, including the ’234 and
`’721 patents, at Apple, a company that resides, operates, and designs the accused FaceTime and
`Messages applications in this District.
`33.
`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.
`34.
`On information and belief, VoIP-Pal’s CEO, Emil Malak, is based in Vancouver,
`Canada.
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`35.
`On information and belief, in 2021 Emil Malak served as VoIP-Pal’s corporate
`representative with decision making authority in three separate settlement conferences with
`Northern District of California Magistrate Judge DeMarchi.
`36.
`On further information and belief, most of VoIP-Pal’s executives are located near
`the West Coast. For example, on information and belief, VoIP-Pal’s Founder, CEO, and Director
`(Emil Malak) lives in or near Vancouver, British Columbia. On further information and belief,
`VoIP-Pal Director Dennis Chang lives in San Francisco, California or Utah. On further
`information and belief, only one VoIP-Pal employee or executive lives in the state of Texas.
`37.
`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 non-
`infringement of patents is determined under the general venue statute, 28 U.S.C. § 1391.
`Additionally, VoIP-Pal consented to transfer to this District two lawsuits that VoIP-Pal filed
`against Apple.
`38.
`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).
`39.
`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.
`VOIP-PAL’S SERIAL, UNSUCCESSFUL LAWSUITS AGAINST APPLE AND OTHERS
`40.
`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Apple, AT&T,
`Verizon Wireless, 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 asserted that the ’815 and ’005
`patents “represent[ed]
`fundamental advancements
`to
`Internet Protocol
`(‘IP’) based
`communication, including improved functioning, call classification, call routing and reliability for
`VoIP, messaging, and IP-based transmission of video, photographs and mixed media
`communications.” (Case No. 5:18-cv-06217-LHK, ECF No. 11 at 2.)
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`41.
`VoIP-Pal consented to transfer of its case against Apple 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 (Case No. 5:18-
`cv-06177-LHK), Verizon Wireless (Case No. 5:18-cv-06054-LHK), and Twitter (Case No. 5:18-
`cv-04523-LHK) (collectively, the “2016 cases”). (See Exs. 3–4.)
`42.
`Apple and the other defendants filed a motion to dismiss, pursuant to Fed. R. Civ.
`P. 12(b)(6), arguing that the asserted claims of the ’815 and ’005 patents were invalid under 35
`U.S.C. § 101. On March 25, 2019, the Court granted the motion to dismiss and found all asserted
`claims of the ’815 and ’005 patents to be invalid in an opinion spanning 45 pages. (Ex. 5.)
`43.
`On March 16, 2020, the Federal Circuit affirmed the Court’s judgment of invalidity.
`(Ex. 7.)
`44.
`In 2018, VoIP-Pal filed additional lawsuits against Apple and Amazon, alleging
`infringement of four more patents—U.S. Patents 9,537,762; 9,813,330; 9,826,002; and 9,948,549.
`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 litigations.
`45.
`Similar to its characterization of the ’815 and ’005 patents, VoIP-Pal alleged that
`these four patents “originated from breakthrough work and development in the internet protocol
`communications field” and reflected “significant improvements to communications technology by
`the invention of novel methods, processes and apparatuses that facilitate communication between
`internet protocol based systems and networks, such as internally controlled systems and external
`networks (e.g., between private networks and public networks), including the classification and
`routing thereof.” (Case No. 5:18-cv-06216-LHK, ECF No. 65 at 4.)
`46.
`VoIP-Pal consented to transfer of its case against Apple to this District: Apple
`(Case No. 5:18-cv-6216-LHK) and Amazon (Case No. 5:18-cv-7020-LHK) (collectively, the
`“2018 cases”). (See Ex. 3.)
`47.
`Apple and Amazon filed a motion to dismiss, pursuant to Fed. R. Civ. P. 12(b)(6),
`arguing that the asserted claims of the four asserted patents were invalid under 35 U.S.C. § 101.
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`On November 19, 2019, this Court granted the motion to dismiss and found all asserted claims of
`the four patents to be invalid in an opinion spanning 68 pages. (Ex. 6.)
`48.
`On November 3, 2020, the Federal Circuit affirmed the Court’s judgment of
`invalidity. (Ex. 8.)
`49. While the 2016 and 2018 cases were pending, VoIP-Pal’s U.S. Patents 9,935,872
`(the “’872 patent”) and 10,218,606 (the “’606 patent”) issued. The ’872 and ’606 patents are in
`the same family as VoIP-Pal’s previously asserted patents. Despite the pending lawsuits in this
`District, VoIP-Pal apparently chose to delay assertion.
`50.
`In April and May 2020, after six of its patents were held invalid in the 2016 and
`2018 Cases in this District, VoIP-Pal filed six additional lawsuits, alleging infringement of the
`’606 patent against Apple (Civil Action No. 20-cv-275), AT&T, Verizon, Amazon, Google, and
`Facebook/Whatsapp—this time in WDTX. Again, VoIP-Pal asserted that the ’606 patent
`“originated from breakthrough work and development in the internet protocol communications
`field” and reflected “significant improvements to communications technology by the invention of
`novel methods, processes and apparatuses that facilitate communications across and between
`internet protocol based communication systems and networks, such as internally controlled
`systems and external networks (e.g., across private networks and between private networks and
`public networks), including the classification and routing thereof.” (Case No. 6:20-cv-00275-
`ADA, ECF No. 26 at 3–4.)
`51.
`Given this District’s familiarity with the parties and VoIP-Pal’s patents, and VoIP-
`Pal’s piecemeal litigations, Apple filed the 2020 Apple DJ action in this District on April 10, 2020
`seeking declaratory judgement of non-infringement and invalidity of the ’606 patent. On April
`14, 2020, Apple amended its complaint to seek declaratory judgement of non-infringement and
`invalidity of the ’872 patent. (Case No. 20-cv-02460, ECF Nos. 1, 10.) AT&T, Verizon, and
`Twitter filed similar complaints regarding the ’606 patent.1 In its answer to Apple’s amended
`complaint, VoIP-Pal asserted that the ’872 patent, like its other patents, “originated from
`
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`1 Twitter later filed an additional declaratory judgment complaint regarding the ’872 patent.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`CASE NO. 21-CV-05110
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`Case 5:21-cv-05110-SVK Document 1 Filed 07/01/21 Page 11 of 22
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`breakthrough work and development in the internet protocol communications field” and reflected
`“significant improvements to communications technology by the invention of novel methods,
`processes and apparatuses that facilitate communications across and between internet protocol
`based communication systems and networks, such as internally controlled systems and external
`networks (e.g., across private networks and between private networks and public networks),
`including the classification and routing thereof.” (Case No. 5:20-cv-02460-LHK, ECF No. 62 at
`8.)
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`52.
`On July 10, 2020, VoIP-Pal filed a motion to dismiss the 2020 Apple DJ action and
`the other pending declaratory judgement actions based, in part, on first-to-file grounds.
`53.
`On September 29, 2020, the Western District of Texas court (Judge Alan Albright)
`stayed VoIP-Pal’s actions against Apple, AT&T, Verizon, Amazon, Google, and
`Facebook/Whatsapp pending this Court’s decisions on VoIP-Pal’s July 10, 2020 motion
`concerning the first-to-file rule and other jurisdictional arguments. (Ex. 13.)
`54.
`In this District, the Court denied VoIP-Pal’s motion on December 11, 2020. (Case
`No. 20-cv-02460, ECF No. 60). The Court explained that the cases should proceed in the Northern
`District of California (“NDCA”) because: (1) it would be more efficient given the Court’s
`familiarity with the patent family and the parties; (2) NDCA offers easier access to sources of
`proof; (3) it would prevent conflicting decisions concerning the patent family; (4) the WDTX cases
`were filed just days before the DJ cases; and (5) “circumstances suggest[ed] that [VoIP-Pal] may
`be forum shopping, attempting to avoid this Court’s unfavorable decisions.” (Id. at 9–14.)
`55.
`On January 13, 2021, VoIP-Pal petitioned the Federal Circuit for a writ of
`mandamus, seeking to reverse the Court’s denial of its motion to dismiss on first-to-file grounds
`(the “Petition”).
`56.
`The Federal Circuit denied VoIP-Pal’s Petition, holding that the District Court’s
`“conclusion that it would be far less efficient for the Western District of Texas to resolve these
`cases . . . [wa]s particularly well supported.” (Case No. 20-cv-02460, ECF No. 72 at 3–5.) The
`Federal Circuit further held that the District Court’s concern regarding forum shopping was
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`-10-
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`CASE NO. 21-CV-05110
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`Case 5:21-cv-05110-SVK Document 1 Filed 07/01/21 Page 12 of 22
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`reasonable, and discredited inappropriate allegations of bias and prejudgment proffered by VoIP-
`Pal. (Id. at 4.)
`57.
`After the Federal Circuit denied VoIP-Pal’s Petition, VoIP-Pal realized that the
`WDTX Court would likely transfer its cases to this District. (See In re: VoIP-Pal, Case No. 21-
`112, Fed. Cir., ECF No. 2-1 at 44–45.) On March 24, 2021, again seeking to avoid litigating this
`District, VoIP-Pal filed another motion to dismiss, this time under Fed. R. Civ. P. 12(b)(1), based
`on a limited, concurrently-granted covenant not to sue (“CNS”) regarding the ’872 and ’606
`patents. (Case No. 20-cv-02460, ECF No. 75.) VoIP-Pal did the same for each of the remaining
`NDCA plaintiffs.
`58.
`Additionally on March 24, 2021, VoIP-Pal dismissed the 2020 Apple WDTX
`action regarding the ’606 patent. (Ex. 14.) VoIP-Pal also dismissed or consented to dismiss the
`WDTX actions pending against AT&T and Verizon.
`59.
`On April 21, 2021, Apple filed an opposition to VoIP-Pal’s motion to dismiss the
`2020 Apple DJ action. Among other reasons, VoIP-Pal’s CNS was insufficient to divest the Court
`of subject matter jurisdiction because VoIP-Pal failed to covenant regarding future products,
`despite Apple’s practice of regularly releasing new products and software updates and VoIP-Pal’s
`proven practice of filing serial litigations against Apple. The Court has not yet decided the motion.
`60.
`VoIP-Pal’s actions in response to the Federal Circuit’s denial of its mandamus
`Petition further evidence VoIP-Pal’s forum shopping tactics described above. In particular, VoIP-
`Pal’s actions demonstrate its intent to avoid this District’s jurisdiction.
`61.
`As of the filing of this Complaint, Apple’s 2020 DJ action—as well as AT&T’s and
`Twitter’s actions—remain pending in this District before the Honorable Lucy H. Koh. Apple has
`continued to pursue its declaratory judgment claims, including by serving invalidity contentions
`regarding the ’872 and ’606 patents on May 26, 2021.
`62.
`On June 25, 2021, VoIP-Pal filed yet another lawsuit against Apple, in WDTX,
`alleging infringement of the ’234 and ’721 patents. (Civil Action No. 20-cv-275, the “2021 Apple
`WDTX action”). (Ex. 9.) On the same day, VoIP-Pal also filed suits alleging infringement of the
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`CASE NO. 21-CV-05110
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`Case 5:21-cv-05110-SVK Document 1 Filed 07/01/21 Page 13 of 22
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`’234 and ’721 patents against AT&T, Verizon, Amazon, Facebook/WhatsApp, Google, and T-
`Mobile.
`63.
`The ’234 and ’721 patents share an inventor (Johan Emil Viktor Björsell) with all
`of VoIP-Pal’s previously asserted patents and, according to VoIP-Pal, again “originated from
`breakthrough work and development in the internet protocol communications field” and reflect
`“significant improvements to communications technology by the invention of novel methods,
`processes and apparatuses that facilitate communications across and between internet protocol
`based communication systems and other networks, such as internally controlled systems and
`external networks (e.g., across private networks and between private networks and public
`networks), including providing access to and routing through internet protocol based
`communication systems.” (Ex. 9 at 4.)
`64.
`In addition to the overlapping subject matter of VoIP-Pal’s many asserted patents,
`each of the litigations between VoIP-Pal and Apple—including the 2016 action, the 2018 action,
`and the 2020 Apple DJ action that have all proceeded in this District—concern or concerned,
`among other issues, whether Apple infringes VoIP-Pal’s patents by virtue of its FaceTime and
`Messages applications.
`65.
`Apple researched, designed, developed, and tested the accused FaceTime and
`Messages applications in or near its corporate headquarters in this District. For example, nearly
`all of Apple’s engineers who participated in or are knowledgeable about the research, design, and
`development of FaceTime and Messages have a primary place of work in this District.
`66.
`Additionally, Apple maintains its business records related to the research, design,
`and development of FaceTime and Messages in this District.
`67.
`The Western District of Texas has not previously adjudicated the parties’ disputes
`regarding VoIP-Pal’s patents.
`68.
`VoIP-Pal’s complaint in the 2021 Apple WDTX action identifies claim 20 of the
`’234 patent and claim 38 of the ’721 patent as “exemplary” claims that are allegedly infringed by
`Apple. Apple believes that it does not infringe and has not infringed the “exemplary” claims or
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`-12-
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`CASE NO. 21-CV-05110
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`Case 5:21-cv-05110-SVK Document 1 Filed 07/01/21 Page 14 of 22
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`the other claims of the ’234 and ’721 patents, and that the claims of the ’234 and ’721 patents are
`invalid.
`69.
`A real and immediate controversy exists between Apple and VoIP-Pal as to the
`non-infringement and invalidity of the ’234 and ’721 patents.
`70.
`Furthermore, in the interests of justice and judicial efficiency (among other
`reasons), any dispute between VoIP-Pal and Apple concerning the ’234 and ’721 patents should
`be adjudicated in this District.
`INTRADISTRICT ASSIGNMENT
`71.
`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. Apple believes that the
`case should be assigned to the Hono