Case 3:21-cv-09773-JD Document 33-5 Filed 03/28/22 Page 1 of 7
`Case 3:21-cv-09773-JD Document 33-5 Filed 03/28/22 Page 1 of 7
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`EXHIBIT 16
`EXHIBIT 16
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
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`Case No. 5:20-CV-02769-LHK
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`DECLARATION OF LEWIS E.
`HUDNELL, III IN SUPPORT OF
`DEFENDANT VOIP-PAL.COM, INC.’S
`MOTION TO DISMISS UNDER FED. R.
`CIV. P. 12(b)(1), 12(b)(2), AND 12(b)(3)
`
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`TWITTER, INC.,
` Plaintiff,
`v.
`VOIP-PAL.COM, INC.,
` Defendant.
`
` 
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`I, Lewis E. Hudnell, III, declare as follows:
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`1.
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`I am the founding principal of Hudnell Law Group P.C., counsel for VoIP-Pal and I
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`am admitted to the Bar of this Court. I have personal knowledge of the facts in this declaration, and
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`if called as a witness, I could and would testify competently regarding those facts.
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`2.
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`Attached as Exhibit 1 to my declaration is a true and correct copy of Order Referring
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`Parties To Settlement Conference in Twitter I dated March 9, 2021.
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`3.
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`Attached as Exhibit 2 to my declaration is a true and correct copy of email
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`correspondence between counsel for Twitter and me dated December 8, 2020 - January 4, 2021.
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`4.
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`Attached as Exhibit 3 to my declaration is a true and correct copy of email
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`correspondence between counsel for Twitter and me dated January 15-27, 2021.
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`5.
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`Attached as Exhibit 4 to my declaration is a true and correct copy of email
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`correspondence between counsel for Twitter and me dated April 9-13, 2021.
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`6.
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`Attached as Exhibit 5 to my declaration is a true and correct copy of email
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`correspondence between counsel for Twitter and me dated April 21-28, 2021.
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`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
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`7.
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`Attached as Exhibit 6 to my declaration is a true and correct copy of a letter from
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`counsel for Twitter to me dated April 22, 2021.
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`8.
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`Attached as Exhibit 7 to my declaration is a true and correct copy of a letter from me
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`to counsel for Twitter dated April 23, 2021.
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`9.
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`Attached as Exhibit 8 to my declaration is a true and correct copy of a letter from
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`counsel for Twitter to me dated April 28, 2021.
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`10.
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`Attached as Exhibit 9 to my declaration is a true and correct copy of email
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`correspondence between counsel for Twitter and me dated May 4, 2021.
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`11.
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`Attached as Exhibit 10 to my declaration is a true and correct copy of pages from the
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`government website operated by the State of Nevada regarding VoIP-Pal’s incorporation located at
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`https://esos.nv.gov/EntitySearch/BusinessInformation, visited on August 10, 2020.
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`12.
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`Attached as Exhibit 11 to my declaration is a true and correct copy of pages taken
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`from the Application for Registration of a Foreign For-Profit Corporation filed with the Texas
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`Secretary of State by VoIP-Pal.com, Inc.
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`13.
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`Attached as Exhibit 12 to declaration is a true and correct copy of the Order filed in
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`VoIP-Pal.com v. Twitter, Inc. et al., U.S. District Court of Nevada, Case No. 2:18-cv-02338 (Dkt.
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`No. 41).
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`14.
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`Attached as Exhibit 13 to my declaration is a true and correct copy of Defendant
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`Twitter, Inc.’s Motion to Transfer Based on Improper Venue [Fed.R.Civ.P. 12(b)(3), 28 U.S.C. §§
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`1400(b) and 1406] filed in VoIP-Pal.com v. Twitter, Inc., U.S. District Court of Nevada, Case No.
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`2:18-cv-02338 (Dkt. No. 27).
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`15.
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`On or about December 2, 2020 in a telephone conference with lead counsel for
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`Twitter, Gene W. Lee, I communicated a settlement offer to Twitter whereby VoIP-Pal would grant
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`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
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`Twitter a covenant not to sue on the ’606 patent in exchange for a $250,000 settlement payment from
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`Twitter. I intended that this settlement offer be kept confidential. I only communicated this offer to
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`Twitter and VoIP-Pal had no expectation that Twitter would disclose this offer to any other party. I
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`did not communicate any contrary expectation to Twitter. Any alleged failure to designate this
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`communication as confidential under the Stipulated Protective Order was inadvertent and
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`unintentional.
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`16.
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`On or about December 8, 2020, I had a telephone conference with Mr. Lee. Twitter
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`declined VoIP-Pal’s settlement offer indicating that it was not interested in a piecemeal settlement
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`that did not encompass VoIP-Pal’s other patents. I have no recollection of Twitter seeking a
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`covenant not to sue specifically for the ’872 patent at that time.
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`17.
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`On or about December 18, 2020, I had teleconference with Mr. Lee. I communicated
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`to Mr. Lee that VoIP-Pal was willing to stipulate to non-infringement so it could take a direct appeal
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`of the order denying VoIP-Pal’s Motion to Dismiss. I intended that this communication remain
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`confidential. I only communicated this offer to Twitter and VoIP-Pal had no expectation that Twitter
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`would disclose this offer to any other party. VoIP-Pal did not communicate any contrary expectation
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`to Twitter. Any alleged failure to designate this communication as confidential under the Stipulated
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`Protective Order was inadvertent and unintentional.
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`18.
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`On January 4, 2021, I received an email from Mr. Lee regarding our December 18
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`conversation. Twitter declined to enter into a stipulation to resolve the matter indicating that it was
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`interested in a broader settlement. See Ex. 2.
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`19.
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`On or about January 11, 2021, I had a teleconference with Mr. Lee. I communicated
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`to Mr. Lee that VoIP-Pal was willing to settle with Twitter as to the ’606 patent family in exchange
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`for a $1,000,000 settlement payment from Twitter. I intended that this communication remain
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`3
`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
`
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`Case 5:21-cv-02769-LHK Document 25-1 Filed 06/21/21 Page 4 of 6Case 3:21-cv-09773-JD Document 33-5 Filed 03/28/22 Page 5 of 7
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`confidential. I only communicated this offer to Twitter. VoIP-Pal had no expectation that Twitter
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`would disclose this offer to any other party. I did not communicate any contrary expectation to Mr.
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`Lee. Any alleged failure to designate this communication as confidential under the Stipulated
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`Protective Order was inadvertent and unintentional.
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`20.
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`On or about January 15, 2021 I received an email from Mr. Lee regarding our January
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`11 conversation. Twitter declined VoIP-Pal’s settlement offer. Twitter also subsequently declined to
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`make a counteroffer. See Ex. 3.
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`21.
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`On April 9, 2021, in order to resolve VoIP-Pal’s pending Motion to Dismiss, VoIP-Pal
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`inquired whether Twitter would stipulate to a covenant not to sue regarding the ’606 patent. See Ex.
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`4 at pp. 2-3.
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`22.
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`On April 12, 2021, Twitter responded in part that, at a minimum, a covenant not to sue
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`to resolve Twitter’s declaratory judgment action against the ’606 patent should also include the ’872
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`patent. Id. at pp. 1-2. This email marked the first time that Twitter claimed that an actual
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`controversary existed as to ’872 patent or that VoIP-Pal proposed covenant as to the ’606 patent must
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`extend to the ’872 patent in order to divest the court of jurisdiction over the ’606 patent. Still, Twitter
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`did not request a covenant not to sue as to the ’872 patent. Id.
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`23.
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`On April 13, 2021, recognizing that Twitter was trying to manufacture jurisdiction as
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`to the ’872 patent, VoIP-Pal responded that it would discuss issues unrelated to VoIP-Pal’s Motion to
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`Dismiss only under FRE 408 and/or at the settlement conference. Id. at p.1.
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`24.
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`On April 16, 2021, Twitter filed a second declaratory-judgment action against VoIP-
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`Pal.
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`4
`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
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`25.
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`The Twitter II complaint also incorrectly alleges that VoIP-Pal offered to pay Twitter
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`$250,000 to accept a license to the ’606 patent. Id. at ¶44. I never communicated to Mr. Lee an offer
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`by VoIP-Pal to pay Twitter $250,000 to accept a covenant not to sue to the ’606 patent.
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`26.
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`On April 21, 2021, VoIP-Pal requested that Twitter amend its Twitter II complaint to
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`address the misstatements and confidential settlement communications. See Ex. 5 at pp. 2-3.
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`27.
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`On April 22, 2021, Twitter refused, claiming that it had not misstated the parties’ prior
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`settlement communications and that those communications were not confidential. See Ex. 6.
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`28.
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`On April 23, 2021, VoIP-Pal demanded that Twitter makes itself available to meet and
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`confer regarding the misstatements and confidential communications contained in the Twitter II
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`complaint as intended to raise a protective order dispute regarding the confidential settlement
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`communications improperly disclosed in the Twitter II complaint. See Ex. 7.
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`29.
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`30.
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`On April 28, 2021, Twitter responded and maintained its position. See Ex. 8.
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`On April 29 and 30, 2021, I met and conferred with Mr. Lee according to Judge
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`DeMarchi’s discovery dispute procedures. Mr. Lee proposed filing a substitute complaint in Twitter
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`II with the disputed information redacted and a confidential version of the complaint under seal.
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`VoIP-Pal agreed that this proposal would be acceptable to resolve the dispute as to the confidential
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`communications contained in the Twitter II complaint. Mr. Lee and I also discussed a proposal
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`whereby Twitter would file an amended complaint to modify the statement in paragraph 44 in
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`exchange for VoIP-Pal’s agreement not to oppose a subsequent amendment to the complaint. Twitter
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`agreed to the latter proposal. Twitter, however, retracted its proposal regarding the confidential
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`information because Twitter contended that it could not make the required declaration under Civil
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`L.R. 79-5 in order to file the confidential complaint under seal.
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`5
`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
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`31.
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`On May 4, 2021, I advised Mr. Lee that VoIP-Pal would move forward with seeking
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`relief from the court under Judge DeMarchi’s discovery dispute procedures. See Ex. 9.
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`I declare under penalty of perjury under the laws of the State of California and United States
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`of America that the foregoing statements are true and correct.
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`Dated this 21st day of June, 2021.
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`
`
`s/Lewis E. Hudnell, III___
`Lewis E. Hudnell, III
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`6
`DECLARATION OF LEWIS E. HUDNELL, III ISO MOTION TO DISMISS UNDER FED. R. CIV. P. 12(b)(1),
`12(b)(2), AND 12(b)(3)
`Case No.: 5:20-CV-02769-LHK
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