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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 1 of 20
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`VENABLE LLP
`Frank C. Cimino, Jr. (pro hac vice to be filed)
`fccimino@venable.com
`Megan S. Woodworth (pro hac vice to be filed)
`mswoodworth@venable.com
`600 Massachusetts Ave., NW
`Washington, D.C. 20001
`Telephone: (202) 344-4000
`Facsimile: (202) 344-8300
`
`William A. Hector (SBN 298490)
`wahector@venable.com
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`101 California Street, Suite 3800
`San Francisco, CA 94111
`Telephone:
`(415) 653-3750
`Facsimile:
`(415) 653-3755
`
`Attorneys for Plaintiffs
`Cellco Partnership d/b/a Verizon Wireless;
`Verizon Services Corp.; and
`Verizon Business Network Services LLC
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`
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`CELLCO PARTNERSHIP d/b/a Verizon
`Wireless;
`VERIZON SERVICES CORP.; and
`VERIZON BUSINESS NETWORK SERVICES
`LLC,
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`
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`Plaintiff,
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`v.
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`
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`CASE NO. 5:21-cv-05275
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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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`VOIP-PAL.COM, INC.,
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`Defendant.
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`
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`CASE NO. 5:21-cv-05275
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`VENABLE LLP
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`Plaintiffs Cellco Partnership d/b/a Verizon Wireless (“Verizon Wireless”), Verizon
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`Services Corp., and Verizon Business Network Services LLC (collectively, “Verizon” or
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`“Plaintiffs”), by and through their counsel, file this Complaint against VoIP-Pal.com, Inc. (“VoIP-
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`Pal”) for declaratory judgment that Verizon does not infringe U.S. Patent No. 8,630,234 (the “’234
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`patent”) (Exhibit 1), that the ’234 patent is invalid, that Verizon does not infringe U.S. Patent No.
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`10,880,721 (the “’721 patent”) (Exhibit 2), and that the ’721 patent is invalid. The Honorable
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`Judge Lucy H. Koh of the Northern District of California has extensive experience with VoIP-
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`Pal’s patents, the technology claimed in its patents, and its litigation campaign against Verizon,
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`making it both logical and judicially efficient for the parties’ dispute to be heard in this Court.
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`INTRODUCTION
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`1.
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`This is an action for a declaratory judgment arising under the patent laws of the
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`United States, Title 35 of the United States Code. Verizon seeks a declaratory judgment that it
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`does not infringe any claim of the ’234 and ’721 patents and that the ’234 and ’721 patents are
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`invalid. The action arises from a real and immediate controversy between Verizon and VoIP-Pal
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`as to whether Verizon infringes any claims of the ’234 and ’721 patents. The ’234 patent is
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`attached as Exhibit 1, and the ’721 patent is attached as Exhibit 2, both of which are entitled
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`“Mobile Gateway.”
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`19
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`2.
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`This is not the first lawsuit between VoIP-Pal and a Verizon entity in this District.
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`As this Court has previously recognized, the parties have a long history. In 2016, VoIP-Pal filed
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`six lawsuits—one against Verizon entities, two against Apple, and three others against Amazon,
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`21
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`AT&T, and Twitter—collectively alleging infringement of six patents (“the 2016 cases”). After
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`its case against Twitter was transferred to this District, VoIP-Pal voluntarily consented to transfer
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`of the remaining cases to this District. (Exhibit 3) This Court subsequently found that all six
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`patents were invalid under 35 U.S.C. § 101 for claiming ineligible subject matter in two separate
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`Opinions. (Exhibits 4-5.) Both of this Court’s two decisions have already been affirmed by the
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`Federal Circuit pursuant to Fed. R. App. P. 36. (Exhibits 6-7)
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`3.
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`Dissatisfied with this Court’s decisions, and in an apparent effort to avoid a
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`similar judgment, VoIP-Pal filed a cluster of lawsuits in 2020 against Verizon entities, Google,
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 3 of 20
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`Facebook, Apple, Amazon, and AT&T in the Western District of Texas, alleging infringement
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`of a seventh (and related) patent, the ’606 patent, which is part of the same family as, shares a
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`common specification with, and contains similar claim language as, the six already-invalidated
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`patents.
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`4.
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`Within weeks, Apple, Twitter, AT&T, and Verizon Wireless filed declaratory
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`judgment complaints in the Northern District of California, alleging noninfringement and
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`invalidity of VoIP-Pal’s seventh patent, the ’606 patent. VoIP-Pal moved to dismiss those
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`complaints under the first-to-file rule, arguing that its Western District of Texas complaints were
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`the first-filed cases. VoIP-Pal also sought dismissal for, inter alia, lack of personal jurisdiction
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`and improper venue. The Court declined to apply the first-to-file rule in the interests of judicial
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`efficiency. (Exhibit 8.) In particular, the Court noted that VoIP-Pal’s argument “completely
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`ignores the history of disputes between the parties whether Plaintiffs infringe Defendant’s family
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`of patents related to communications over internet protocol, including a set of cases filed in 2016
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`and another set filed in 2018, all of which were adjudicated by this Court.” (Id. at 11.) The Court
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`also found that VoIP-Pal had no meaningful ties to the Western District of Texas and “decline[d]
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`to apply the first-to-file rule to permit [VoIP-Pal] to forum shop.” (Id. at 13.) Accordingly, the
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`Court denied VoIP-Pal’s motions. The Apple, Twitter, and AT&T declaratory-judgment cases
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`are still pending in this District. VoIP-Pal and Verizon agreed to a stipulation of dismissal on
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`May 26, 2021. (Case No. 20-cv-3092-LHK, Dkt. No. 73.)
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`5.
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`One month later, still desperate to avoid this Court’s jurisdiction, VoIP-Pal filed
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`yet another set of complaints against Verizon, AT&T, Apple, Google, Facebook, Amazon, and
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`T-Mobile in the Western District of Texas on June 25, 2021. (See e.g., Exhibit 9.) VoIP-Pal
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`asserted another patent family. However, the ’234 and ’721 patents relate to the same subject
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`matter as VoIP-Pal’s previous seven patents: call routing functionality based on callee identifiers.
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`The ’234 and ’721 patents share an inventor (Johan Emil Viktor Björsell) with all of VoIP-Pal’s
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`previously asserted patents and, according to VoIP-Pal, again “originated from breakthrough
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`work and development in the internet protocol communications field” and reflect “significant
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`improvements to communications technology by the invention of novel methods, processes and
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 4 of 20
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`apparatuses that facilitate communications across and between internet protocol based
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`communication systems and other networks, such as internally controlled systems and external
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`networks (e.g., across private networks and between private networks and public networks),
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`including providing access to and routing through internet protocol based communication
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`systems.” (Exhibit 9 at 5.)
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`6.
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`Similarly, VoIP-Pal accuses the same technology of infringement. For example,
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`in both the 2016 Northern District of California case and the 2020 Western District of Texas
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`case, VoIP-Pal accused Verizon’s “Wi-Fi Calling” of infringement. (Case No. 18-cv-6054, Dkt.
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`No. 10-9; Case No. 20-cv-327, Dkt. No. 1-2.) In the 2021 Western District of Texas, VoIP-Pal
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`accuses Verizon’s “Voice over WiFi or VoWiFi” of infringement. (Case No. 21-cv-672, Dkt.
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`No. 1-4, 1-5.) (See Exhibits 10-13.)
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`7.
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`VoIP-Pal’s forum shopping attempts should be disregarded, and in the interests
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`of justice and judicial efficiency, any dispute between VoIP-Pal and Verizon concerning the ’234
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`and ’721 patents should be adjudicated in this District.
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`8.
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`Verizon believes that it does not infringe the ’234 and ’721 patents, and it has not
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`infringed any claims of the ’234 and ’721 patents, and that the claims of the ’234 and ’721 patents
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`are invalid.
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`9.
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`VoIP-Pal’s actions have created a real and immediate controversy between VoIP-
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`Pal and Verizon as to whether Verizon’s products and/or services infringe any claims of the ’234
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`and ’721 patents, and whether the claims of the ’234 and ’721 patents are invalid. The facts and
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`allegations recited herein show that there is a real, immediate, and justiciable controversy
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`concerning these issues.
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`THE PARTIES
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`10.
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`Plaintiff Cellco Partnership d/b/a Verizon Wireless is a Delaware general
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`partnership with its principal place of business at One Verizon Way, Basking Ridge, New Jersey
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`07920.
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`11.
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`Plaintiff Verizon Services Corp. is a Delaware corporation with its principal place
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`of business at 22001 Loudoun County Pkwy., Ashburn, Virginia 20147.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`101 CALIFORNIA STREET, SUITE 3800
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 5 of 20
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`12.
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`Verizon Business Network Services Inc. is a Delaware corporation with a
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`principal place of business at One Verizon Way, Basking Ridge, New Jersey 07920.
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`13.
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`On information and belief, VoIP-Pal is a company incorporated under the laws of
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`Nevada. According to VoIP-Pal’s Form 10-Q filed with the United States Securities and
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`Exchange Commission for the quarterly period ending December 31, 2020, the address of VoIP-
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`Pal’s principal executive offices was in Bellevue, Washington. On information and belief, and
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`according to public information, VoIP-Pal’s current “principal place of business” at 7215 Bosque
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`Blvd. in Waco, Texas is a “virtual office” available to anyone for $99/month. (See Exhibit 14 at
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`2).
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`14.
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`On information and belief, including based on VoIP-Pal’s allegations in litigations
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`filed in Texas, VoIP-Pal owns the ’234 and ’721 patents.
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`JURISDICTIONAL STATEMENT
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`15.
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`This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
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`and under the patent laws of the United States, Title 35 of the United States Code.
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`16.
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`This Court has subject matter jurisdiction over the claims alleged in this action
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`under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202 because this Court has exclusive
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`jurisdiction over declaratory judgment claims arising under the patent laws of the United States
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`pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202. Jurisdiction is also proper under 28 U.S.C.
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`§ 1332 because Verizon and VoIP-Pal are citizens of different states, and the value of the
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`controversy exceeds $75,000.
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`17.
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`This Court can provide the declaratory relief sought in this Declaratory Judgment
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`Complaint because an actual case and controversy exists between the parties within the scope of
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`this Court’s jurisdiction pursuant to 28 U.S.C. § 2201. An actual case and controversy exists as
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`to the ’234 and ’721 patents at least because Verizon does not infringe and has not infringed any
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`claims of the ’234 and ’721 patents; VoIP-Pal previously filed lawsuits against Verizon alleging
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`infringement of three similar patents with similar claim language and implicating the same
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`Verizon technology; VoIP-Pal has accused Verizon of infringing the ’234 and ’721 patents in
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`litigation in the Western District of Texas; VoIP-Pal’s infringement allegations generally
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 6 of 20
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`implicate products or services provided by Verizon; and, on the basis of VoIP-Pal’s allegations
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`in the Western District of Texas complaint, Verizon therefore has a reasonable apprehension of
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`suit with regard to these allegations.
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`18. Moreover, the first two patents previously asserted by VoIP-Pal against Verizon
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`were held invalid under 35 U.S.C. § 101 by this Court, and—based on the substantial similarities
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`between those invalid claims and the claims of the ’234 and ’721 patents—the ’234 and ’721
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`patents are invalid for at least the same reasons. And, even though this Court invalidated VoIP-
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`Pal’s first two patents, VoIP-Pal continued its litigation campaign, bringing suit against Verizon
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`a second time in 2020 and a third time in 2021. Furthermore, VoIP-Pal’s executives have recently
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`made public statements that VoIP-Pal is “not finished” taking action, despite the recent decision
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`of the Federal Circuit affirming the judgment from this District that the claims of all of the patents
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`that VoIP-Pal has previously asserted against Verizon are invalid. (Exhibit 15.)
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`19.
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`As a result, and as this Court has previously held, VoIP-Pal has “engaged in an
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`affirmative act sufficient to confer jurisdiction over” this declaratory judgment claim “based on
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`the extensive litigation campaign undertaken by [VoIP-Pal] against Verizon on related patents.”
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`(Exhibit 8 at 25.) This Court has already recognized VoIP-Pal’s public statements that it will
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`continue to assert its patent rights until it is successful. (Id. at 26.) As the Court noted, “at a case
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`management conference in the 2016 cases [against Verizon and others], Defendant represented
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`to this Court that Defendant did not then intend to file additional lawsuits against Plaintiffs,” and
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`“[d]espite these representations, Defendant chose to file additional lawsuits.” (Id. at 27 n.5.)
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`VoIP-Pal continues to do so, having sued Verizon in the 2016 case, again in the 2020 Western
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`District of Texas case asserting the ’606 patent, and now in the 2021 Western District of Texas
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`case asserting the ’234 and ’721 patents.
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`20.
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`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has engaged
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`in actions in this District that form the basis of Verizon’s claims against VoIP-Pal—namely, the
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`prosecution of the prior patent infringement lawsuit against Verizon entities in this District, the
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`prosecution of similar patents in this District, voluntarily transferring to this District the lawsuit
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`that VoIP-Pal filed against Verizon entities and litigating that case without contesting personal
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 7 of 20
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`jurisdiction, continuing to prosecute its prior 2016 case against Verizon entities in this District
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`after transfer from the District of Nevada, and engaging California lawyers for the previous cases
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`involving Verizon entities and the other defendants, including the 2016 case and the 2020
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`declaratory judgment action. VoIP-Pal’s actions have created a real, live, immediate, and
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`justiciable case or controversy between VoIP-Pal and Verizon.
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`21.
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`This Court has already determined that it has personal jurisdiction over VoIP-Pal.
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`(Exhibit 8.) It concluded: “In the instant case, the Court concludes that [VoIP-Pal] has
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`purposefully directed its enforcement activities towards the forum state by: (1) litigating six
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`lawsuits on claims of infringement of patents in the same family in the Northern District of
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`California[;] (2) stipulating to transfer five lawsuits, four of them against Plaintiffs in the instant
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`three cases, to this district; (3) never contesting personal jurisdiction in the Northern District of
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`California in those six lawsuits; (4) engaging multiple California law firms in its infringement
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`lawsuits; and (5) meeting with Apple in the Northern District of California in 2016 regarding
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`claims of infringement of patents in the same family.” (Id. at 17; see also id. at 17-20.)
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`22.
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`The Court also concluded that “the claim at issue in the [2020] cases arises out of
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`or relates to these activities because the activities described above relate to patent enforcement.”
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`(Id. at 20.) Likewise, the claim at issue here arises out of or relates to the same activities of patent
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`enforcement. The prior two cases involving VoIP-Pal and Verizon in this District—the 2016
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`case and the 2020 declaratory judgment case—are significantly intertwined with this case: the
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`asserted three patents in those cases are related to the same technology as the ’234 and ’721
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`patents: call routing technology using callee identifiers. The Court already found that the 2016
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`case and the 2020 declaratory judgment case “share substantially similar technology and accused
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`products.” (Id.) As demonstrated by VoIP-Pal’s allegations in the Western District of Texas
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`complaint asserting the ’234 and ’721 patents, that case and VoIP-Pal’s prior two cases against
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`Verizon entities in this District all involve overlapping theories of infringement. In each of these
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`cases, VoIP-Pal accuses Verizon’s telecommunications technology allowing users to make calls
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`using WiFi (See Exhibits 10-13.)
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`23.
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`As a result of VoIP-Pal’s conduct described above, VoIP-Pal has consciously and
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`purposefully directed allegations of infringement of the ’234 and’721 patents at Verizon.
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`24.
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`In doing so, VoIP-Pal has established sufficient minimum contacts with the
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`Northern District of California such that VoIP-Pal is subject to specific personal jurisdiction in
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`this action. Further, the exercise of personal jurisdiction based on these repeated and pertinent
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`contacts does not offend traditional notions of fairness and substantial justice. This Court has
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`already determined the assertion of personal jurisdiction against VoIP-Pal is reasonable and fair.
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`(Exhibit 8 at 21-23.)
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`25.
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`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400, including
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`because, under Ninth and Federal Circuit law, venue in declaratory judgment actions for
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`noninfringement and invalidity of patents is determined under the general venue statute, 28
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`U.S.C. § 1391. Additionally, VoIP-Pal consented to transfer to this District the 2016 lawsuit that
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`VoIP-Pal filed against Verizon entities (Exhibit 3.)
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`26.
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`Under 28 U.S.C. § 1391(b)(1), venue is proper in any judicial district where a
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`defendant resides. An entity with the capacity to sue and be sued, such as VoIP-Pal, is deemed
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`to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s
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`personal jurisdiction with respect to the civil action in question under 28 U.S.C. § 1391(c). This
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`Court has already determined that venue is proper. (Exhibit 8 at 23.)
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`27.
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`As discussed above, VoIP-Pal is subject to personal jurisdiction with respect to
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`this action in the Northern District of California, and thus, at least for the purposes of this action,
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`VoIP-Pal resides in the Northern District of California and venue is proper under 28 U.S.C. §
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`1391.
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`FACTUAL BACKGROUND
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`28.
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`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Verizon entities,
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`AT&T Corp., Apple, and Twitter, alleging infringement of two patents—U.S. Patent Nos.
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`8,542,815 (the “’815 patent”) and 9,179,005 (the “’005 patent”). VoIP-Pal voluntarily consented
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`to transfer of its case against the Verizon entities to this District, and between August and
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`November 2018, each of the four cases was transferred to this District and consolidated for
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`CASE NO. 5:21-cv-05275
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`101 CALIFORNIA STREET, SUITE 3800
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 9 of 20
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`pretrial purposes: Verizon (Case No. 5:18-cv-06054-LHK), Apple (Case No. 5:18- cv-06217-
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`LHK), AT&T Corp. (Case No. 5:18-cv-06177-LHK), and Twitter (Case No. 5:18-cv-04523-
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`LHK).
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`29.
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`The Verizon entities and the other defendants filed a motion to dismiss, pursuant
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`to Fed. R. Civ. P. 12(b)(6), because the asserted claims of the ’815 and ’005 patents were
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`unpatentable under 35 U.S.C. § 101. On March 25, 2019, Judge Koh granted the motion to
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`dismiss and found all asserted claims of the ’815 and ’005 patents to be invalid. VoIP-Pal
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`appealed. On March 16, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
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`(Exhibit 6.)
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`30.
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`In 2018, VoIP-Pal filed additional lawsuits against Apple and Amazon, alleging
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`infringement of four patents—U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.
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`(Case Nos. 5:18-cv-6216-LHK and 5:18-cv-7020-LHK.) Those four patents were part of the
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`same family as, and shared a common specification with, the ’815 and ’005 patents that VoIP-
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`Pal asserted in its earlier litigations. Similar to its characterization of the ’815 and ’005 patents,
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`VoIP-Pal alleged that these four patents “originated from breakthrough work and development
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`in the internet protocol communications field” and reflected “significant improvements to
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`communications technology by the invention of novel methods, processes and apparatuses that
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`facilitate communication between internet protocol based systems and networks, such as
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`internally controlled systems and external networks (e.g., between private networks and public
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`networks), including the classification and routing thereof.” (Case No. 5:18-cv-06216-LHK, Dkt.
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`No. 65 at 4.)
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`31.
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`Apple and Amazon filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6) that
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`the asserted claims of the four asserted patents were invalid under 35 U.S.C. § 101. On November
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`19, 2019, Judge Koh granted the motion to dismiss and found all asserted claims of the four
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`patents to be invalid. On November 3, 2020, the Federal Circuit affirmed this Court’s judgment
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`of invalidity. (Exhibit 7.)
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`32.
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`In early April 2020, VoIP-Pal filed new lawsuits in the Western District of Texas
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`(Waco Division) against Apple, Amazon, Facebook, and Google, alleging infringement of a
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 10 of 20
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`seventh patent, the ’606 patent. (Case Nos. 20-cv-275, 20-cv-272, 20-cv-267, 20-cv-269.) Each
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`of the seven previously asserted patents are in the same patent family. The ’606 patent, which
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`on its face issued on February 26, 2019 (during the pendency of VoIP-Pal’s lawsuit against
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`Verizon in the Northern District of California), is in the same family as and shares a common
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`specification with the six patents that VoIP-Pal asserted in earlier litigations and which were
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`found to be invalid by this Court, including the ’815 and ’005 patents asserted against Verizon.
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`33.
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`In late April 2020, VoIP-Pal filed new lawsuits in the Western District of Texas
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`(Waco Division)—one against Verizon Communications Inc., Cellco Partnership d/b/a Verizon
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`Wireless, Verizon Services Corp., and Verizon Business Network Services LLC and another
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`against AT&T—alleging infringement of the ’606 patent. (Case Nos. 20-cv-325, 20-cv-327.)
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`34.
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`On notice of VoIP-Pal’s newly minted enforcement campaign in the Western
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`District of Texas, Verizon Wireless as well as Twitter, Apple, and AT&T, filed declaratory
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`judgment complaints in this District in April and May 2020, alleging noninfringement and, for
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`some, invalidity of the ’606 patent. (Case Nos. 20-cv-2397, 20-cv-2460, 20-cv-2995, 20-cv-
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`3092.) In each of those cases, VoIP-Pal filed a motion to dismiss under the first-to-file rule,
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`alleging that its Western District of Texas cases constituted the first-filed cases. VoIP-Pal also
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`moved to dismiss for, inter alia, lack of personal jurisdiction and improper venue.
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`35.
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`On December 11, 2020, this Court denied VoIP-Pal’s motions to dismiss. VoIP-
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`Pal petitioned the Federal Circuit for a writ of mandamus, which was denied on February 19,
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`2021. (Exhibit 16.) In doing so, the Federal Circuit held that “the conclusion that it would be far
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`less efficient for the Western District of Texas to resolve these cases based on the Northern
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`District of California’s familiarity with the overlapping issues is particularly well supported.”
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`(Id. at 3-4.)
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`36.
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`Between March 25, 2021, and April 1, 2021, the lawsuits in the Western District
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`of Texas were dismissed without prejudice “under the first-filed rule.” (Case Nos. 20-cv-325
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`(Dkt. No. 53), 20-cv-327 (Dkt. No. 49).)
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`37.
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`On June 25, 2021, VoIP-Pal again filed new lawsuits in the Western District of
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`Texas (Waco Division)—one attempting to sue Verizon Communications Inc., Cellco
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 11 of 20
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`Partnership d/b/a Verizon Wireless, Verizon Services Corp., and Verizon Business Network
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`Services LLC, and another six against Apple, Facebook, Google, Amazon, AT&T, and T-
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`Mobile—alleging infringement of the ’234 and ’721 patents. (Case Nos. 21-cv-665, 21-cv-667,
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`21-cv-668, 21-cv-670, 21-cv-671, 21-cv-672, 21-cv-674.)
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`38.
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`The ’234 and ’721 patents are in the same family and share a common title,
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`specification, and inventors with each other. The ’234 patent, on its face, issued on January 14,
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`2014—two years before VoIP-Pal’s first ever suit against Verizon in the District of Nevada and
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`four years before VoIP-Pal told this Court it “did not then intend to file additional lawsuits against
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`[the DJ] Plaintiffs.” (Exhibit 8 at 27 n.5). On its face, the ’721 patent claims priority to the ’234
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`patent and issued on December 29, 2020—during the pendency of VoIP-Pal’s 2020 case against
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`Verizon Communications Inc., Cellco Partnership d/b/a Verizon Wireless, Verizon Services
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`Corp., and Verizon Business Network Services LLC in the Western District of Texas and Verizon
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`Wireless’s 2020 declaratory judgment suit against VoIP-Pal in this District.
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`39.
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`VoIP-Pal’s 2021 complaint against Verizon entities in the Western District of
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`Texas identifies claim 20 of the ’234 patent and claim 38 of the ’721 patent as exemplary claims
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`that are allegedly infringed by Verizon. (See Exhibits 12-13.) These exemplary claims of the
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`’234 and ’721 patents are similar to the claims of the seven patents that VoIP-Pal asserted against
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`Verizon and the other defendants in litigations in this District, six of which this Court has held
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`invalid, and the seventh of which is involved in pending cases in this District.
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`40.
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`VoIP-Pal’s infringement allegations against Verizon in the Western District of
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`Texas case track its infringement allegations against Verizon in the earlier actions in this District.
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`For example, VoIP-Pal again directs its allegations towards telecommunications services that are
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`the same as or similar to its allegations in the earlier actions in this District, in particular, to
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`Verizon’s Wi-Fi Calling and/or VoWiFi technology. (See Exhibits 10-13.)
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`41.
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`Verizon believes that it does not infringe and has not infringed any claims of the
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`’234 and ’721 patents, and that the claims of the ’234 and ’721 patents are invalid at least for the
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`same or similar reasons that the claims of the six previously asserted patents were held invalid.
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`101 CALIFORNIA STREET, SUITE 3800
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed 07/08/21 Page 12 of 20
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`42.
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`VoIP-Pal’s tactics appear to reflect an attempt to avoid the adverse judgments of
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`this Court by bringing serial lawsuits based on similar patent claims in a different district. In the
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`interests of justice and judicial efficiency (among other reasons), any dispute between VoIP-Pal
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`and Verizon concerning the ’234 and ’721 patents should be adjudicated in this District.
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`INTRADISTRICT ASSIGNMENT
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`43.
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`For purposes of intradistrict assignment under Civil Local Rules 3-2(c) and 3-
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`5(b), this Intellectual Property Action will be assigned on a district-wide basis. Verizon believes
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`that the case should be assigned to the Honorable Lucy H. Koh, who presided over VoIP-Pal’s
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`prior lawsuits against Verizon and other companies (see, e.g., Case No. 5:18-cv-6054-LHK), and
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`who is currently presiding over pending cases involving Apple, Twitter, AT&T Corp. and VoIP-
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`Pal (see, e.g., Case Nos. 5:20-cv-2397-LHK, 5:20-cv-2460-LHK, 5:20-cv-02995-LHK, 5:21-cv-
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`02769-LHK).
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`FIRST CLAIM FOR RELIEF
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`(Declaratory Judgment That Verizon Does Not Infringe The ’234 Patent)
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`44.
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`Verizon repeats and realleges each and every allegation contained in preceding
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`paragraphs of this Complaint as if fully set forth herein.
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`45.
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`In view of the facts and allegations set forth above, there is an actual, justiciable,
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`substantial, and immediate controversy between Verizon, on the one hand, and VoIP-Pal, on the
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`other, regarding whether Verizon infringes any claim of the ’234 patent. VoIP-Pal has accused
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`Verizon of infringing the ’234 patent in litigation in the Western District of Texas, presenting an
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`actual, justiciable, substantial, and immediate controversy between Verizon and VoIP-Pal
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`regarding whether Verizon infringes any claim of the ’234 patent.
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`46.
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`Verizon does not infringe, and has not infringed, at least “exemplary” claim 20 of
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`the ’234 patent. For example, VoIP-Pal alleges that Verizon in the Western District of Texas
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`infringes “exemplary” claim 20 of the ’234 patent. Claim 20, an independent claim, recites the
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`limitations (1) “cause an access code request message to be transmitted [from a mobile telephone
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`apparatus] to an access server to seek an access code from a pool of access codes wherein each
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`access code in said pool of access codes identifies a respective telephone number or Internet
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`COMPLAINT FOR DECLARATORY JUDGMENT OF
`NON-INFRINGEMENT AND INVALIDITY
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`SAN FRANCISCO, CA 94111
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`101 CALIFORNIA STREET, SUITE 3800
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`VENABLE LLP
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`Case 5:21-cv-05275-JCS Document 1 Filed