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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 1 of 18
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`EXHIBIT 18
`EXHIBIT 18
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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 2 of 18
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`PERKINS COIE LLP
`Sarah Fowler (Bar No. 264838)
`Amisha Manek (Bar No. 305163)
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Phone: 650.838.4300
`SFowler@perkinscoie.com
`AManek@perkinscoie.com
`
`PERKINS COIE LLP
`Gene W. Lee (pro hac vice to be filed)
`Thomas Matthew (pro hac vice to be filed)
`1155 Avenue of the Americas, 22nd floor
`New York, NY 10112-0015
`212.262.6900
`GLee@perkinscoie.com
`TMatthew@perkinscoie.com
`
`Attorneys for Plaintiff Twitter, Inc.
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN JOSE DIVISION
`
`TWITTER, INC., a Delaware corporation,
`Plaintiff,
`
`v.
`VOIP-PAL.COM, INC., a Nevada
`corporation,
`
`Defendant.
`
`No. 21-cv-2769
`COMPLAINT FOR
`DECLARATORY JUDGMENT
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`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 21-CV-2769
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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 3 of 18
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`I. INTRODUCTION
`1.
`This Complaint for declaratory judgment of noninfringement (“Declaratory
`Judgment Complaint”) arises from a real, substantial, immediate, and justiciable controversy
`between plaintiff Twitter, Inc. (“Twitter”), and defendant VoIP-Pal.com Inc. (“VoIP-Pal”), as to
`whether Twitter infringes any claims of U.S. Patent 9,935,872 (“the ’872 patent”; Exhibit 1),
`which is entitled, “Producing Routing Messages For Voice Over IP Communications.” This
`action is related to prior litigations between VoIP-Pal and Twitter that began in 2016.
`2.
`The ’872 patent is a continuation patent from a patent family that includes six
`other patents that VoIP-Pal asserted in prior lawsuits against Twitter, Apple, AT&T, Verizon, and
`Amazon that VoIP-Pal filed in 2016 and 2018 in the District of Nevada. Those actions were later
`transferred to this Court (“the 2016 and 2018 Cases”). The ’872 patent shares a common
`specification with the six previously-asserted patents. All six of the previously-asserted patents
`were found to be invalid under 35 U.S.C. § 101 for claiming ineligible subject matter, including
`U.S. Patent 9,179,005 (“the ’005 patent”; Exhibit 2) and U.S. Patent 8,542,815 (“the ’815
`patent”), which VoIP-Pal asserted in the 2016 Case against Twitter. E.g., VoIP-Pal.com, Inc. v.
`Twitter, Inc., Case No. 18-cv-04523-LHK, ECF No. 82 (Mar. 25, 2019).
`3.
`In April 2020, VoIP-Pal filed lawsuits in the Western District of Texas asserting
`U.S. Patent 10,218,606 (“the ’606 patent”; Exhibit 3) against Facebook, WhatsApp, Google,
`Amazon, Apple, AT&T, and Verizon (“the Texas lawsuits”). The ’606 patent is a continuation of
`the ’872 patent and is a member of the same family of patents asserted in the 2016 and 2018
`Cases, and shares a common specification with the six patents asserted in the 2016 and 2018
`Cases and the ’872 patent. The claims of the ’606 patent asserted in those new lawsuits are very
`similar to the claims of the patents that VoIP-Pal previously asserted in the 2016 and 2018 Cases
`and were found to be invalid by this Court.
`4.
`On April 8, 2020, VoIP-Pal issued a press release stating that VoIP-Pal is
`considering taking further action and is not finished taking action in the wake of a recent decision
`by the Court of Appeals for the Federal Circuit in favor of Twitter, Apple, AT&T, and Verizon
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`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 21-CV-2769
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`that affirmed this Court’s judgment in the 2016 Cases that two of VoIP-Pal’s previously-asserted
`patents are invalid under 35 U.S.C. § 101 (Exhibit 4).
`5.
`On April 8, 2020, after seeing VoIP-Pal’s lawsuits in Texas against Facebook,
`WhatsApp, Google, Amazon, and Apple and VoIP-Pal’s press release, Twitter filed an action for
`declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court (Case
`No. 20-cv-02397). Soon thereafter, Apple, AT&T, and Verizon filed similar declaratory
`judgment actions against VoIP-Pal based on the ’606 patent. On April 14, 2020, Apple filed a
`first amended complaint that added claims for declaratory judgment of noninfringement and
`invalidity for the ’872 patent.
`6.
`In June 2020, counsel for Twitter asked counsel for VoIP-Pal whether VoIP-Pal
`would be willing to grant Twitter a covenant not to sue for the ’606 patent, but VoIP-Pal declined
`to discuss a covenant not to sue. On June 26, 2020, Twitter filed a first amended complaint that
`added a claim for a declaratory judgment of invalidity of the ’606 patent.
`7.
`In July 2020, VoIP-Pal filed motions to dismiss Twitter’s, Apple’s, AT&T’s and
`Verizon’s declaratory judgment complaints in this Court for lack of subject matter jurisdiction,
`lack of personal jurisdiction, and improper venue. In December 2020, the Court denied VoIP-
`Pal’s motions to dismiss. E.g., Twitter, Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-02397, ECF
`No. 50 (Dec. 14, 2020) (Exhibit 5); Apple Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-02460, ECF
`No. 60 (Dec. 11, 2020) (Exhibit 6).
`8.
`Between December 2020 and April 2021, VoIP-Pal and Twitter had multiple
`communications about possible resolution of Twitter’s declaratory judgment action against the
`’606 patent and a possible broader resolution that includes VoIP-Pal’s other patents, including the
`’872 patent. Those communications have not resulted in a resolution of the dispute between
`VoIP-Pal and Twitter concerning VoIP-Pal’s patents.
`9.
`On March 24, 2021, VoIP-Pal filed another motion to dismiss the declaratory
`judgment actions filed by Twitter, Apple, AT&T, and Verizon—this time based on a limited
`covenant not to sue for infringement of the ’606 patent. E.g., Twitter, Case No. 20-cv-02397,
`ECF No. 62 (Mar. 21, 2021). That limited covenant not to sue was insufficient to eliminate
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`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 21-CV-2769
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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 5 of 18
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`subject matter jurisdiction for Twitter’s declaratory judgment claims for the reasons explained in
`Twitter’s opposition to that motion. Id., ECF No. 66 (Apr. 7, 2021). In response to Twitter’s
`opposition, on April 9, 2021, VoIP-Pal offered a broader covenant not to sue based on the ’606
`patent and asked Twitter to stipulate to dismissal of Twitter’s declaratory judgment action.
`10.
`On April 12, 2021, Twitter responded in part that, at a minimum, any covenant not
`to sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
`the ’872 patent. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future and that
`even a broader covenant that includes the ’606 and ’872 patents would not be sufficient to resolve
`the broader dispute between Twitter and VoIP-Pal concerning VoIP-Pal’s patent portfolio. On
`April 13, 2021, VoIP-Pal responded that its broader covenant not to sue was intended to address
`only the issues raised by Twitter in opposition to VoIP-Pal’s motion to dismiss and declined to
`extend the covenant to include the ’872 patent or other VoIP-Pal patents.
`11.
`Twitter’s and VoIP-Pal’s dispute concerning the ’872 patent is related to VoIP-
`Pal’s 2016 Case against Twitter and Twitter’s declaratory judgment action involving the ’606
`patent. The claims of the ’872 patent are very similar to the claims of the six patents that VoIP-
`Pal previously asserted in the 2016 and 2018 Cases and were found to be invalid by this Court,
`including the ’005 patent, which was asserted against Twitter (Exhibits 1 and 2). The Federal
`Circuit affirmed this Court’s judgment of invalidity for those six patents, including the ’005
`patent, which was asserted against Twitter. The claims of the ’872 patent are also very similar to
`the claims of the ’606 patent (Exhibits 1 and 3), which is the subject of the pending Texas
`lawsuits and the declaratory judgment actions filed by Twitter, Apple, AT&T, and Verizon in this
`Court. Apple has filed a claim for declaratory judgment of noninfringement and invalidity for the
`’872 patent, and this Court has found that subject matter jurisdiction exists for that claim.
`12.
`Twitter believes that it does not infringe and has not infringed any claims of the
`’872 patent. VoIP-Pal has offered to Twitter a license for its patents in the family that includes
`the ’606 and ’872 patents but on terms that are unreasonable and unacceptable to Twitter.
`13.
`VoIP-Pal’s actions have created a real, substantial, and immediate controversy
`between VoIP-Pal and Twitter as to whether Twitter’s products and/or services infringe any
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`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 21-CV-2769
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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 6 of 18
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`claims of the ’872 patent. The facts and allegations recited herein show that there is a real,
`substantial, immediate, and justiciable controversy concerning these issues.
`
`II. PARTIES
`14.
`Plaintiff Twitter is a company incorporated under the laws of Delaware, with
`headquarters at 1355 Market Street, Suite 900, San Francisco, California.
`15.
`Twitter operates a global Internet platform for public self-expression and
`conversation in real time. People with a Twitter account can post “Tweets”—messages of 280
`characters or less, sometimes with pictures or video, and those messages can be read by other
`people using the Twitter platform. They may, in turn, “Retweet” those messages to their own
`followers. Users can include “hashtagged” keywords (indicated by a “#”) in their Tweets to
`facilitate searching for messages on the same topic. People who use Twitter can also send direct
`messages to other users that can contain images and video. Each day, people post hundreds of
`millions of Tweets, engaging in public conversation on virtually every conceivable topic.
`Twitter’s products and services are provided through the Twitter platform.
`16.
`Based on information and belief, defendant VoIP-Pal is a company incorporated
`under the laws of Nevada and recently relocated its principal place of business from Bellevue,
`Washington, to 7215 Bosque Blvd, Suite 102, Waco, Texas 76710. See https://www.voip-
`pal.com/contact-us; Exhibit 7.
`17.
`Based on information and belief, VoIP-Pal is the owner of the ’872 patent.
`III. JURISDICTION AND VENUE
`18.
`This Declaratory Judgment Complaint includes a count for declaratory relief under
`the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
`19.
`Twitter seeks declaratory relief under 28 U.S.C. §§ 2201 and 2202.
`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.
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`COMPLAINT FOR DECLARATORY JUDGMENT
`NO. 21-CV-2769
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`Case 3:21-cv-09773-JD Document 33-7 Filed 03/28/22 Page 7 of 18
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`§ 1332 because Twitter 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. An actual case and controversy exists at
`least because:
` VoIP-Pal previously filed lawsuits against Twitter and other defendants in the 2016
`and 2018 Cases alleging infringement of six patents in the same family as the ’606 and
`’872 patents;
` VoIP-Pal is asserting the ’606 patent in the Texas lawsuits against Facebook, Google,
`Amazon, Apple, AT&T, and Verizon;
` Twitter, AT&T, and Verizon have filed actions in this Court seeking declaratory
`judgment of noninfringement and invalidity of the ’606 patent, and Apple has filed an
`action in this Court seeking declaratory judgment of noninfringement and invalidity of
`the ’606 and ’872 patents;
`the ’872 patent shares a common specification with VoIP-Pal’s six patents asserted in
`the 2016 and 2018 Cases and the ’606 patent;
`this Court denied VoIP-Pal’s motions to dismiss Twitter’s, Apple’s, AT&T’s, and
`Verizon’s declaratory judgment lawsuits against the ’606 patent for lack of subject
`matter jurisdiction, personal jurisdiction, and improper venue and also denied VoIP-
`Pal’s motion to dismiss Apple’s declaratory judgment claims against the ’872 patent
`for lack of subject matter jurisdiction;
`the claims of the ’872 patent are very similar to the claims of the six patents that VoIP-
`Pal previously asserted in the 2016 and 2018 Cases (including the ’005 patent that
`VoIP-Pal asserted against Twitter), and the claims of the ’606 patent;
` all six patents previously asserted by VoIP-Pal in the 2016 and 2018 Cases were held
`invalid under 35 U.S.C. § 101 by this Court, and—based on the substantial similarities
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`
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`between those invalid claims and the claims of the ’606 and ’872 patents—the ’606
`and ’872 patents are invalid for at least the same reasons;
`In April 2020, VoIP-Pal filed lawsuits in Texas against prior defendants Amazon,
`Apple, AT&T, and Verizon for infringement of the ’606 patent;
` On April 8, 2020, VoIP-Pal made public statements to the effect that it is considering
`taking further action and is not finished taking action in the wake of the Federal
`Circuit’s decision in April 2020 affirming the judgment that the claims of the two
`patents that VoIP-Pal asserted in the 2016 Cases against Twitter and others are invalid;
` VoIP-Pal’s infringement allegations in the Texas lawsuits are similar to VoIP-Pal’s
`infringement allegations in the 2016 and 2018 Cases (including against many of the
`same prior defendants) and are directed to accused instrumentalities that are similar to
`Twitter’s products and services—for example, communications involving text,
`images, and videos;
` Twitter has told VoIP-Pal that Twitter expects to be sued in the future by VoIP-Pal for
`patent infringement, and VoIP-Pal has not denied Twitter’s stated expectation;
` Twitter has requested a covenant not to sue or a license that includes the ’872 patent,
`but, to date, VoIP-Pal and Twitter have not been able to agree on the terms of a
`covenant not to sue or a license for the ’872 patent;
` VoIP-Pal has offered to Twitter a license for its patents in the family that includes the
`’606 and ’872 patents but on terms that are unreasonable and unacceptable to Twitter;
`and
` Twitter does not infringe and has not infringed any claims of the ’872 patent.
`22.
`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has engaged
`in actions in this District that form the basis of Twitter’s claim against VoIP-Pal—namely,
`prosecuting a prior patent infringement lawsuit involving the ’005 patent against Twitter in this
`District, voluntarily transferring from Nevada to this District the 2016 Cases against Apple,
`AT&T, and Verizon and the 2018 Cases against Apple and Amazon. VoIP-Pal also has retained
`counsel located in California to prosecute its patent portfolio and to represent VoIP-Pal in the
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`2016 and 2018 Cases, the Texas lawsuits, and the declaratory judgment actions filed by Twitter,
`Apple, AT&T, and Verizon in this Court, including Lewis Hudnell of the Hudnell Law Group in
`Mountain View, California. On information and belief, on or about April 20, 2016, VoIP-Pal
`representative Ray Leon met with representatives of Apple in the Northern District of California
`in connection with VoIP-Pal’s patent enforcement campaign. VoIP-Pal moved to dismiss
`Twitter’s, Apple’s, AT&T’s, and Verizon’s declaratory judgment actions in this Court against the
`’606 patent and Apple’s declaratory judgment claims against the ’872 patent for lack of personal
`jurisdiction, but the Court denied VoIP-Pal’s motions and found personal jurisdiction over VoIP-
`Pal to exist.
`23.
`As a result of VoIP-Pal’s actions described above, there is a real, substantial, live,
`immediate, and justiciable case or controversy concerning the ’872 patent between VoIP-Pal and
`Twitter, a company that resides and operates in this District. As a result of VoIP-Pal’s actions
`described above, VoIP-Pal has established sufficient minimum contacts with the Northern District
`of California such that VoIP-Pal is subject to specific personal jurisdiction in the Northern
`District of California for this action. Further, the exercise of personal jurisdiction based on those
`repeated and highly-pertinent contacts does not offend traditional notions of fair play and
`substantial justice.
`24.
`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400, including
`because, under Ninth and Federal Circuit law, venue in declaratory judgment actions for
`noninfringement of patents is determined under the general venue statute, 28 U.S.C. § 1391.
`25.
`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).
`26.
`As discussed above, VoIP-Pal is subject to personal jurisdiction with respect to
`this action in the Northern District of California, and thus, 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.
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`A.
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`IV. FACTUAL BACKGROUND
`VoIP-Pal’s Prior Lawsuits (2016 and 2018 Cases)
`27.
`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Twitter, Apple,
`AT&T, and Verizon, alleging infringement of the ’815 and ’005 patents. Between August and
`November of 2018, all four of those actions were transferred to this Court and consolidated for
`pretrial purposes: Twitter (Case No. 5:18-cv-04523-LHK), Verizon (Case No. 18-cv-06054-
`LHK), AT&T (Case No. 3:18-cv-06177-LHK), and Apple (Case No. 3:18-cv-06217-LHK)
`(collectively, the 2016 Cases).
`28.
`In the 2016 Cases, Twitter, Apple, AT&T, and Verizon filed a motion to dismiss
`under Fed. R. Civ. P. 12(b)(6) that the asserted claims of the ’815 and ’005 patents are invalid
`under 35 U.S.C. § 101. On March 25, 2019, this Court granted the motion to dismiss and found
`all asserted claims of the ’815 and ’005 patents to be invalid (Exhibit 8). VoIP-Pal appealed. On
`March 16, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
`29.
`In May and June 2018, VoIP-Pal filed two additional lawsuits against Apple and
`Amazon in the District of Nevada (collectively, “the 2018 Cases”), alleging infringement of four
`patents, U.S. Patents 9,537,762; 9,813,330; 9,826,002; and 9,948,549. Those four patents are in
`the same family as, and share a common specification with, the ’815 and ’005 patents that were
`asserted in the 2016 Cases. The asserted claims of the four patents in the 2018 Cases are very
`similar to the asserted claims of the two patents in the 2016 Cases.
`30.
`In October and November 2018, VoIP-Pal voluntarily agreed to transfer to this
`Court the 2018 Cases against Apple (Case No. 5:18-cv-06216-LHK) and Amazon (Case
`No. 5:18-cv-07020-LHK).
`31.
`In the 2018 Cases, Apple and Amazon filed a motion to dismiss under Fed. R. Civ.
`P. 12(b)(6) that the asserted claims of the four asserted patents are invalid under 35 U.S.C. § 101.
`On November 1, 2019, this Court granted Apple’s and Amazon’s motion to dismiss and found all
`asserted claims of the patents in the 2018 Cases to be invalid (Exhibit 9). VoIP-Pal appealed. On
`November 3, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
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`B.
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`VoIP-Pal’s Texas Lawsuits And Press Release, And Twitter’s, Apple’s,
`AT&T’s, And Verizon’s Declaratory Judgment Actions In This Court
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`32.
`During April 2-7, 2020, VoIP-Pal filed four new lawsuits in the Western District
`of Texas, Waco Division, asserting the ’606 patent against defendants Facebook and WhatsApp
`(Case No. 20-cv-267), Google (Case No. 20-cv-269), and previously-sued defendants Amazon
`(Case No. 20-cv-272) and Apple (Case No. 20-cv-275). On April 24, 2020, VoIP-Pal filed new
`lawsuits in the Western District of Texas asserting the ’606 patent against AT&T (Case No. 20-
`cv-325) and Verizon Wireless (Case No. 20-cv-327).
`33.
`The ’606 patent is entitled, “Producing Routing Messages For Voice Over IP
`Communications,” and, on its face, issued on February 26, 2019 (Exhibit 3). The ’606 patent is
`in the same family as and shares a common specification with the six patents that VoIP-Pal
`asserted in the 2016 and 2018 Cases and were found to be invalid by this Court and also is a
`continuation of the ’872 patent. During prosecution of the ’606 and ’872 patents, the named
`inventors terminally disclaimed the terms of those patents in view of one or more of VoIP-Pal’s
`patents asserted in the 2018 Cases.
`34.
`The claims of the ’606 patent that VoIP-Pal asserts in the Texas lawsuits are very
`similar to claims of the six patents that VoIP-Pal asserted against Twitter, Apple, AT&T, and
`Verizon in the 2016 and 2018 Cases (for example, claim 74 of the ’005 patent) and were held to
`be invalid.
`35.
`VoIP-Pal’s infringement allegations in the Texas lawsuits are similar to VoIP-
`Pal’s infringement allegations in the 2016 and 2018 Cases (including against many of the same
`prior defendants) and are directed to accused instrumentalities that are similar to Twitter’s
`products and services (for example, communications involving text, images, and videos).
`36.
`On April 8, 2020, VoIP-Pal issued a press release that announced the filing of the
`Texas lawsuits against Facebook, WhatsApp, Google, Amazon, and Apple (Exhibit 4 and
`https://www.voip-pal.com/voip-pal-new-patent-lawsuits-april-). The press release also mentioned
`the Federal Circuit’s affirmance of this Court’s judgment of invalidity in the 2016 Cases against
`Twitter, Apple, AT&T, and Verizon. The press release states that, in the wake of the Federal
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`Circuit decision, VoIP-Pal is considering taking further action and “planning their next moves.”
`VoIP-Pal’s CEO is quoted as saying, “Our legal team is assessing our next moves regarding this
`Alice decision and we expect to announce our intentions soon. I can tell you; we are not
`finished,” and “We remain firm in our resolve to achieve monetization for our shareholders and
`will continue to see this fight through until a successful resolution is reached. Patience is a
`virtue.” (Exhibit 4 (emphasis added).)
`37.
`As a result of the events described above, on April 8, 2020, Twitter filed an action
`for declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court
`(Case No. 20-cv-02397). On June 26, 2020, Twitter filed a first amended complaint that added a
`claim for a declaratory judgment of invalidity of the ’606 patent.
`38.
`On April 10, 2020, Apple filed an action for declaratory judgment of
`noninfringement and invalidity of the ’606 patent against VoIP-Pal in this Court (Case No. 20-cv-
`02460). On April 14, 2020, Apple filed a first amended complaint that added claims for
`declaratory judgment of noninfringement and invalidity of the ’872 patent.
`39.
`On April 24, 2020, VoIP-Pal filed lawsuits in the Western District of Texas
`asserting the ’606 patent against AT&T and Verizon.
`40.
`On April 30, 2020, AT&T filed an action for declaratory judgment of
`noninfringement and invalidity of the ’606 patent against VoIP-Pal in this Court (Case No. 20-cv-
`02995).
`41.
`On May 5, 2020, Verizon filed an action for declaratory judgment of
`noninfringement and invalidity of the ’606 patent against VoIP-Pal in this Court (Case No. 20-cv-
`03092).
`42.
`On June 4, 2020, counsel for Twitter asked counsel for VoIP-Pal whether VoIP-
`Pal would be willing to grant Twitter a covenant not to sue based on the ’606 patent. On June 11,
`2020, counsel for VoIP-Pal declined to discuss a covenant not to sue.
`43.
`On July 10, 2020, VoIP-Pal filed motions to dismiss Twitter’s, AT&T’s, and
`Verizon’s declaratory judgment actions against the ’606 patent and Apple’s declaratory judgment
`action against the ’606 and ’872 patents for lack of subject matter jurisdiction, lack of personal
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`jurisdiction, and improper venue. In December 2020, this Court denied VoIP-Pal’s motions to
`dismiss, finding that subject matter jurisdiction and personal jurisdiction exist and that venue is
`proper. E.g., Twitter, Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-02397, ECF No. 50 (Dec. 14,
`2020) (Exhibit 5); Apple Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-02460, ECF No. 60 (Dec. 11,
`2020) (Exhibit 6).
`44.
`On December 2, 2020, counsel for Twitter and VoIP-Pal had a telephone call in
`which VoIP-Pal offered to pay Twitter $250,000 for Twitter to dismiss its declaratory judgment
`action against the ’606 patent. Twitter informed VoIP-Pal that Twitter is not interested in a
`piecemeal settlement in view of VoIP-Pal’s other patents, including the ’872 patent, which was
`the subject of declaratory judgment claims advanced by Apple, and the likelihood that VoIP-Pal
`would sue Twitter again in the future. Twitter’s counsel asked if VoIP-Pal would be willing to
`discuss a global settlement by which VoIP-Pal would agree not to sue Twitter on any of its
`patents. VoIP-Pal’s counsel declined to discuss such a global settlement.
`45.
`On January 4, 2021, counsel for Twitter corresponded with counsel for VoIP-Pal
`to state that, in view of VoIP-Pal’s litigation history and patent portfolio, Twitter is not interested
`in pursuing a piecemeal resolution that would resolve only the current action and to note that
`VoIP-Pal declined to discuss a broader resolution that would include the ’872 patent.
`46.
`On January 11, 2021, counsel for Twitter and VoIP-Pal had a telephone call in
`which VoIP-Pal proposed to enter into a settlement for the ’606 patent and “all family members”
`(which includes the ’872 patent), for a payment by Twitter of $1 million. On January 15, 2021,
`Twitter declined VoIP-Pal’s offer based in part on the belief that the ’606 and ’872 patents and
`other patents in the same family are invalid under 35 U.S.C. § 101.
`47.
`On March 24, 2021, VoIP-Pal filed additional motions to dismiss Twitter’s,
`AT&T’s, and Verizon’s declaratory judgment actions against the ’606 patent and Apple’s
`declaratory judgment action against the ’606 and ’872 patents—this time based on covenants not
`to sue that VoIP-Pal granted in the motions. E.g., Twitter, Case No. 20-cv-02397, ECF No. 62
`(Mar. 21, 2021). That covenant was insufficient to eliminate subject matter jurisdiction for
`reasons explained in Twitter’s opposition. Id., ECF No. 66 (Apr. 7, 2021). In response, on
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`April 9, 2021, VoIP-Pal offered a broader covenant not to sue based on the ’606 patent and asked
`Twitter to stipulate to dismissal of Twitter’s declaratory judgment action.
`48.
`On April 12, 2021, Twitter responded in part that, at a minimum, a covenant not to
`sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
`the ’872 patent in view of Twitter’s and Voip-Pal’s prior discussions about the ’872 patent, VoIP-
`Pal’s initial refusal to discuss a global resolution that includes the ’872 patent, Apple’s existing
`declaratory judgment claims against the ’872 patent and the fact that Twitter can file the same
`declaratory judgment claims against the 872 patent, and VoIP-Pal’s unreasonable settlement
`demands. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future and that even a
`broader covenant that includes the ’606 and ’872 patents would not be sufficient to resolve the
`broader dispute between Twitter and VoIP-Pal based on VoIP-Pal’s patent portfolio. VoIP-Pal
`responded by declining to discuss at that time a covenant not to sue for more than the ’606 patent.
`49.
`Twitter’s and VoIP-Pal’s dispute concerning the ’872 patent is related to the prior
`litigations between VoIP-Pal and Twitter that began in 2016. The claims of the ’872 patent are
`very similar to the claims of the six patents that VoIP-Pal previously asserted in the 2016 and
`2018 Cases and were found to be invalid by this Court. For example, claim 1 of the ’872 patent is
`very similar to claim 74 of the ’005 patent, which was previously asserted against Twitter, Apple,
`AT&T, and Verizon in the 2016 Cases. Both claims define methods of routing communications
`between devices of first and second participants in an Internet-connected network (’872 patent) or
`a packet switched network (’005 patent), using “identifiers” of the participants. The participants
`are associated with first and second “network elements” (’872 patent) or “portions” of the
`network that are controlled or not controlled by an “entity” (’005 patent). The first participant
`identifier is used to locate a first participant “profile” that includes a plurality of “attributes”
`associated with the first participant. At least one of the attributes are (1) processed to determine
`whether the communication to the second participant is allowed to proceed, and, if so, to produce
`a routing message that identifies an Internet address associated with a first or second network
`element to establish communication with the second participant device (’872 patent), or
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`(2) compared to a “criterion” to produce a routing message that identifies an address in a first or
`second portion of the packet switched network.
`50.
`The ’606 patent is a continuation of the ’872 patent. During prosecution of the
`’606 and ’872 patents