Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 1 of 8
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`Lewis E. Hudnell, III (CASBN 218736)
`lewis@hudnelllaw.com
`Nicolas S. Gikkas (CASBN 189452)
`nick@hudnelllaw.com
`HUDNELL LAW GROUP P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`Telephone: 650.564.3698
`Facsimile: 347.772.3034
`
`Attorneys for Defendant
`VOIP-PAL.COM, INC.
`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`Case No. 5:21-cv-2769-LHK
`
`OPPOSITION TO SUA SPONTE
`JUDICIAL REFERRAL TO CONSIDER
`WHETHER CASES SHOULD BE
`RELATED
`(Civil L.R. 3-12 and 7-11)
`
`Case No. 5:21-cv-9773-EJD
`
`TWITTER, INC.,
`Plaintiff,
`v.
`VOIP-PAL.COM, INC.,
`Defendant.
`
`TWITTER, INC.,
`Plaintiff,
`v.
`VOIP-PAL.COM, INC.,
`Defendant.
`
`
`
`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE
`RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 2 of 8
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`I. INTRODUCTION
`This action, Case No. 5:21-cv-9773-EJD (“Twitter III”), should not be related to Twitter’
`
`previous declaratory-judgment action against VoIP-Pal, Case No. 5:21-cv-2769-LHK (“Twitter II”),
`because the cases do not satisfy this Court’s rules for relatedness. See Civil L.R. 3-12(a). Although the
`cases concern the same parties, that is where the similarity ends. Twitter III concerns different patents
`with substantially different inventors from different patent families than the previous cases. The patent
`at issue in Twitter II generally relates to classifying and routing of communications and are part of the
`Routing, Billing, Rating (“RBR”) patent family. The patents at issue in Twitter III, U.S. Patent Nos.
`8,630,234 (“the ’234 patent”) and 10,880,721 (“the ’721 patent”) (collectively “the Mobile Gateway
`patents”) generally relate to methods for channeling communications into distributed voice over internet
`protocol (VoIP) gateways and are part of the Mobile Gateway patent family. Twitter even admits that
`the Mobile Gateway patents are “not members of the RBR family.” See Case No. 5:21-cv-9773-EJD,
`Dkt. No. 1 at ¶17. The Court has never previously considered VoIP-Pal’s Mobile Gateway patents.
`Thus, Twitter III concerns different property, different transactions and events, and different issues of
`fact and law than the previous Twitter cases. In fact, Court has made no rulings on the merits in Twitter
`II. Thus, it is highly unlikely that there will be an unduly burdensome duplication of labor and expense
`or conflicting results if Twitter III is assigned to a different judge than the previous Twitter cases. Thus,
`the referral should be denied.
`
`The referral also should be denied because the Court has already considered whether cases
`involving the Mobile Gateway patents are a related to cases involving the RBR patents and determined
`that they are not related. On July 8, 2021, AT&T filed an administrative motion in the to consider
`whether Case No. 3:21-cv-5078-JD, which involved the Mobile Gateway patents, should be related to
`Case No. 5:20-cv-2995-LHK, which involved a RBR patent. Similarly, on July 12, 2021, Apple filed an
`administrative motion in the to consider whether Case No. 3:21-cv-5110-EMC, which involved the
`Mobile Gateway patents, should be related to Case No. 5:20-cv-2460-LHK, which involved a RBR
`patent. On August 25, 2021, Judge Koh denied AT&T’s and Apple’s motions to relate. See Exs. 1-2.
`
`Similar to this case, on July 27, 2021, Judge Freeman issued a sua sponte judicial referral to the
`Court to determine whether Case No. 5:21-cv-5275-BLF, which involved the Mobile Gateway patents,
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 3 of 8
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`should be related to Case No. 5:20-cv-3092-LHK, which involved a RBR patent. On August 26, 2021,
`the Court issued an order denying that Case No. 5:21-cv-5275-BLF and Case No. 5:20-cv-3092-LHK
`are related. See Ex. 3. Subsequently, Judge Donato related the Apple and Verizon Mobile Gateway
`patent cases to the AT&T Mobile Gateway patent cases. See Ex. 4. The Verizon Mobile Gateway
`patent case, Case No. 3:21-cv-5275-JD, remains pending. Thus, the Court also should not relate Twitter
`III to Twitter II for the same reasons it did not relate the AT&T, Apple, and Verizon Mobile Gateway
`patent cases to the previous RBR cases. If anything, Twitter III should be referred to Judge Donato to
`consider whether it should be related to the pending Verizon Mobile Gateway patent case.
`II. ARGUMENT
`A. Civil L.R. 3-12(a)(1) is not satisfied.
`Twitter III and Twitter II do not satisfy Civil L.R. 3-12(a)(1) because they do not concern the
`
`same property or the same transaction or event. Twitter II involves VoIP-Pal’s RBR patents whereas
`Twitter III involves VoIP-Pal’s ’234 and ’721 patents. The RBR patents are part of a different patent
`family than the ’234 and ’721 patents—the Mobile Gateway family. Though the RBR patents and the
`Mobile Gateway patents have one common inventor—Johan Emil Viktor Bjorsell—the two patent
`families have seven inventors not in common. Compare Ex. 8 with Exs. 5-6. Consequently, the Mobile
`Gateway patents have a different specification, substantially different inventors, and materially different
`claims than the RBR patent at issue in Twitter II. Notably, Twitter makes no serious attempt to allege
`that the RBR patents are similar to the Mobile Gateway patents. Rather, Twitter merely alleges that
`these patents are similar to the Mobile Gateway patents. See Case No. 5:21-cv-9773, Dkt. No. 1 at ¶¶17,
`69. But this unsupported claim is not enough to establish relatedness. See NXP Semiconductors USA,
`Inc. v. LSI Corp., No. C-08-00775-JW, Dkt. No. 195 at p. 3 (N.D. Cal. Jan. 13, 2009) (“Although
`Plaintiff represents that the patents in both cases generally involve the same type of technology, the two
`cases involve entirely different sets of patents.”). Indeed, a careful review of the patents and their claims
`reveals numerous fundamental differences between the RBR patents and the Mobile Gateway patents.
`Specifically, the Mobile Gateway patents generally relate to channeling communications from
`
`mobile communication devices such as smartphones via a system of distributed VoIP gateways based on
`the device’s location, to facilitate roaming in various geographical areas. See Exs. 5-6. A calling device
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 4 of 8
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`receives an access code from an access server, whereby it is enabled to access communication
`infrastructure that has been optimally selected based on the calling device’s location. See, e.g., Ex. 6 at
`9:21-46, 12:63-15:16, 16:18-19:28, 19:37-23:10, 30:55-31:61.
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`Twitter falsely alleges that the claims of the Mobile Gateway patents are similar to the claims of
`the RBR patents previously asserted by VoIP-Pal. See Case No. 5:21-cv-9773-EJD, Dkt. No. 1 at ¶17.
`Indeed, Twitter tries to obscure the salient fact that the claims of the Mobile Gateway patents are
`completely different from the RBR patent claims at issue in the previous Twitter cases. As Exhibit 7
`starkly illustrates, in fourteen detailed claim-to-claim comparisons, the differences are massive and
`pervasive. See Ex. 7. None of the RBR patent claims require, e.g., transmitting an “access code request
`messages” to an “access server”, seeking “access codes” associated with a “location identifier” for a
`mobile device, receiving an “access code reply message” from the “access server” with the “access
`code,” and a mobile device using the “access code” to initiate a call. Conversely, the Mobile Gateway
`claims do not require, e.g., using “attributes” of a “dialing profile” to “determine a match” with a callee
`identifier, “determin[ing] whether [a] second network element is the same as [a] first network element,”
`“classifying the call” as a “public network call” or “private network call,” or “producing a routing
`message” for a “call controller,” inter alia.
`
`Twitter’s allegation that Twitter III concerns the same Twitter technology that VoIP-Pal has
`previously accused is both meaningless and inaccurate. See Case No. 5:21-cv-9773-EJD, Dkt. No. 1 at
`¶18. VoIP-Pal did not assert any claim for infringement in Twitter II. See Case No. 5:21-cv-2769, Dkt.
`No. 42. And due to Twitter’s successful motion to dismiss under 35 U.S.C. § 101, VoIP-Pal’s previous
`infringement case against Twitter in this Court never made it past the pleadings stage. See Case No.
`5:18-cv-4523-LHK, Dkt. Nos. 82, 84. Thus, the Court never considered Twitter’s accused products and
`services or their infringement in that case either. Regardless, because Twitter III concerns completely
`different patent claims, the relevant features of Twitter’s products and services are completely different
`as well. Also, the Court’s ineligibility rulings against the claims of six RBR patents have no bearing on
`whether the claims of the Mobile Gateway patents are ineligible. See Ortho Pharm. Corp. v. Smith, 959
`F.2d 936, 942 (Fed. Cir. 1992) (“grounds of invalidity must be analyzed on a claim-by-claim basis”).
`Thus, the cases do not concern the same transaction or event.
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 5 of 8
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`B. Civil L.R. 3-12(a)(2) is not satisfied.
`Twitter III and Twitter II also do not satisfy Civil L.R. 3-12(a)(2) because having a different
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`judge handle Twitter III will not be unduly burdensome and duplicative or potentially lead to conflicting
`results. The Court has made no merits rulings in Twitter II. In such a circumstance, courts in this
`District have held that “there would be no judicial efficiency gained by relating the cases.” See
`Karamelion LLC v. Nortek Security & Control, LLC, Case No. 4:19-cv-06016-YGR, Dkt. No. 21 at p. 2
`(N.D. Cal. Jan 14, 2020).
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`Additionally, the Court presided over VoIP-Pal’s previous infringement case against Twitter for
`less than eight months, considered one Rule 12 motion, and dismissed the case at the pleadings stage
`almost three years ago. See Case No. 5:18-cv-4523-LHK, Dkt. Nos. 82, 84. Among other things, the
`Court did not issue a claim construction order, consider motions for summary judgment, or conduct a
`trial. Thus, any familiarity the Court already has with the RBR patents is limited and of negligible
`benefit in Twitter III, even if the claims of the respective patent families were at all similar, which they
`are not. See Uniloc USA, Inc. v. Logitech, Inc., Case No. 18-CV-01304-LHK, 2018 U.S. Dist. LEXIS
`208122, at *4 (N.D. Cal. Dec. 5, 2018) (stating in cases with different patents “any benefit of relation
`will be negligible, and relation is not necessary to avoid unduly burdensome duplication of labor and
`expense.”); Ex. 7.
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`Further, the only result to come out of VoIP-Pal’s previous case against Twitter was dismissal of
`the asserted claims as ineligible under § 101. As noted above, that result has no impact on the eligibility
`of the Mobile Gateway patent claims. Thus, there is no risk of inconsistent results. See Uniloc, 2018
`U.S. Dist. LEXIS 208122, at *4 (“[B]ecause the instant case and the [newly-filed] cases do not involve
`the same patents, there is a low risk of inconsistent results.”); Twilio, Inc. v. Telesign Corporation, No.
`16-CV-06925-LHK, Dkt. No. 198 at p. 3 (N.D. Cal. June 27, 2018) (“Because the two cases do not
`involve the same patents or even the same patent families, there is a low risk of inconsistent results.”);
`NXP Semiconductors, No. C-08-00775-JW, Dkt. No. 196 at p. 3.; Hynix Semiconductor Inc. v. Rambus
`Inc., Nos. C-00-20905 RMW, C-05-334 RMW, C-05-2298 RMW, C-06-244 RMW, C08-3343 SI, 2008
`U.S. Dist. LEXIS 68625 (N.D. Cal. Aug. 24, 2008).
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 6 of 8
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`At bottom, Twitter III does not involve issues of facts and law that overlap with the previous
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`Twitter cases that the Court has already considered. Having a new judge educate himself or herself on
`these issues would not be unnecessarily burdensome and duplicative, and would not increase the risk of
`inconsistent judgments. Significantly, Chief Judge Seeborg notified the parties that the Court was
`confirmed to the United States Court of Appeals for the Ninth Circuit. See Case No. 5:21-cv-2769-
`LHK, Dkt. No. 44. In response to the notice, VoIP-Pal filed a request for reassignment of Twitter II to a
`district judge. Id., Dkt. No. 48. Because a new judge will have to educate himself or herself on the
`history of Twitter II anyway, no judicial efficiency gained by relating the cases. Moreover, as noted
`above, the Verizon Mobile Gateway patent case is already pending before Judge Donato. Thus, if
`anything, Twitter III should be referred to Judge Donato to consider whether it should be related to the
`pending Verizon Mobile Gateway patent case.
`III. CONCLUSION
`In conclusion, Twitter III and Twitter II do not satisfy the definition of related cases under Civil
`
`L.R. 3-12(a). The Court has already determined on three previous occasions that cases involving the
`Mobile Gateway patents are not related to cases involving the RBR patents. Thus, VoIP-Pal submits
`that the referral should be denied, that the cases should not be related, and that Twitter III should not be
`reassigned to this Court but rather should be referred to Judge Donato to consider whether it should be
`related to the pending Verizon Mobile Gateway patent case.
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 7 of 8
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`Dated: January 7, 2022
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`Respectfully Submitted,
`HUDNELL LAW GROUP P.C.
`/s/ Lewis E. Hudnell, III
`
`Lewis E. Hudnell, III
`Nicolas S. Gikkas
`
`
`
`Attorneys for Defendant
`VOIP-PAL.COM, INC.
`
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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`Case 5:21-cv-09773-EJD Document 20 Filed 01/07/22 Page 8 of 8
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`CERTIFICATE OF SERVICE
`I certify that I have caused VOIP-PAL.COM’S OPPOSITION TO SUA SPONTE JUDICIAL
`
`REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED and the accompanying
`Proposed Order to be served on all counsel of record via the ECF system.
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`Dated: January 7, 2022
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`/s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
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`OPPOSITION TO SUA SPONTE JUDICIAL REFERRAL TO CONSIDER WHETHER CASES SHOULD BE RELATED
`5:21-cv-2769-LHK; 5:21-cv-9773-EJD
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