Case 3:21-cv-09773-JD Document 38 Filed 07/22/22 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`TWITTER, INC.,
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`Plaintiff,
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`v.
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`VOIP-PAL.COM, INC., et al.,
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`Defendants.
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`Case No. 3:21-cv-09773-JD
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`ORDER RE MOTION TO DISMISS
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`In this patent declaratory judgment suit, plaintiff Twitter seeks a declaration of non-
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`infringement of U.S. Patent No. 10,880,721 (the ’721 patent) and U.S. Patent No. 8,630,234 (the
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`’234 patent) (collectively the mobile gateway patents) against patent owner and defendant VoIP-
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`Pal.com (VoIP). Dkt. No. 1. VoIP asks to dismiss for lack of subject matter jurisdiction, lack of
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`personal jurisdiction, and improper venue under Federal Rules of Civil Procedure 12(b)(1),
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`12(b)(2), and 12(b)(3). Dkt. No. 25. The parties’ familiarity with record and applicable legal
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`standards is assumed. Dismissal is denied on all grounds. The parties are directed to file a joint
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`proposed schedule by August 5, 2022.
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`I.
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`PERSONAL JURISDICTION
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`For the personal jurisdiction objection under Federal Rule of Civil Procedure 12(b)(2), the
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`question is governed by Federal Circuit law. Juniper Networks, Inc. v. Swarm Tech. LLC, No. 20-
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`cv-3137-JD, 2021 WL 6049924, at *1 (N.D. Cal. Dec. 21, 2021) (citing Trimble Inc. v.
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`PerDiemCo LLC 997 F.3d 1147, 1152 (Fed. Cir. 2021)). Because California’s long-arm statute is
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`coextensive with the limits of due process, the only inquiry is “whether jurisdiction comports with
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`due process.” Id. at *2 (quoting Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001)).
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`To determine if jurisdiction comports with due process, the Court considers three factors: “(1)
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`Case 3:21-cv-09773-JD Document 38 Filed 07/22/22 Page 2 of 5
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`whether the defendant ‘purposefully directed’ its activities at residents of the forum; (2) whether
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`the claim ‘arises out of or relates to’ the defendant's activities with the forum; and (3) whether
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`assertion of personal jurisdiction is ‘reasonable and fair.’” Xilinx, Inc. v. Papst Licensing GmbH
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`& Co. KG, 848 F.3d 1346, 1352 (Fed. Cir. 2017) (citing Inamed, 249 F.3d at 1360).
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`Patent enforcement proceedings “involving the same patent in the same court against other
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`alleged infringers” can be a significant contact with a forum for the purposes of personal
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`jurisdiction. Avocent Huntsville Corp. v. Aten Int’l Co., Ltd., 552 F.3d 1324, 1338-39 (Fed. Cir.
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`2008). Several district courts have also found that enforcement of the same or related patents can
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`give rise to personal jurisdiction. See, e.g., Twitter, Inc. v. VoIP-Pal, Inc., No. 20-cv-2397-LHK,
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`2020 WL 7342733, at *10 (N.D. Cal. Dec. 14, 2020) (collecting cases). The Federal Circuit has
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`nevertheless held that contracts concerning patents other than the patent-in-suit are not relevant to
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`the minimum contacts analysis. Xilinx, 848 F.3d at 1353.
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`Twitter points to VoIP’s attempts to transfer its patent portfolio, which included the ’234
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`patent, to Apple before ultimately suing Apple for patent infringement in the Western District of
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`Texas as establishing minimum contacts with this district. Dkt. No. 1 ¶ 33; Dkt. No. 30 at 12-13.
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`VoIP says that these interactions with Apple are irrelevant because they did not relate to Twitter,
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`they did not involve the ’721 patent, and were not specifically related to the mobile gateway
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`patents. Dkt. No. 25 at 13. But Twitter’s allegations establish that VoIP was seeking to transfer
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`its entire patent portfolio, including the ’234 patent, to Apple as part of VoIP’s patent enforcement
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`efforts. Dkt. No. 1 ¶ 33. That VoIP discussed the patent portfolio with Apple instead of Twitter is
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`of no consequence because analysis of minimum contacts looks to the full scope of VoIP’s
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`activities related to the mobile gateway patents in California. Juniper Networks, 2021 WL
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`6049924, at *2.
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`Twitter goes to some length to describe VoIP’s long history of litigation in this district.
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`VoIP’s initial lawsuit against Twitter and several other defendants was filed in the District of
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`Nevada, but transferred to this district. Dkt. No. 1 ¶ 3. VoIP subsequently stipulated to litigate
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`five other cases in this district. Id. ¶ 41. Those cases involved routing, billing, rating (RBR)
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`patents, which are not part of the same family as the mobile gateway patents. Twitter alleges that
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`Case 3:21-cv-09773-JD Document 38 Filed 07/22/22 Page 3 of 5
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`the RBR patents are similar to the mobile gateway patents, have similar claims, and concern the
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`same technology. Id. ¶ 17. Another judge in this district has noted the similarity between the
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`RBR and mobile gateway patents. Id. ¶ 63; Dkt. No. 1-9 at 16. During these previous suits, VoIP
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`sought to execute a covenant not to sue for the RBR patents. Twitter requested that VoIP provide
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`a covenant not to sue for VoIP’s entire patent portfolio, which VoIP refused to do. Overall, this
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`conduct evidences VoIP’s intent to continue to enforce other patents in its portfolio, even as it
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`covenanted not to sue Twitter for the RBR patents. See Juniper Networks, 2021, WL 6049924 at
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`*2.
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`It is also fair and reasonable to exercise jurisdiction over VoIP. As a non-practicing entity,
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`litigation is not unduly burdensome for VoIP in this district. See Trimble, 997 F.3d at 1158. As a
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`California resident, Twitter has a significant interest in litigating this dispute in California, and
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`California has a corresponding interest in the dispute’s adjudication. Id. at 1158-59. There is also
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`no “conflict between the interests of California and any other state, because the same body of
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`federal patent law would govern the patent noninfringement claim” regardless of the forum. Id. at
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`1159 (citing Xilinx, 848 F.3d at 1356). Consequently, VoIP’s motion to dismiss for lack of
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`personal jurisdiction is denied.
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`II.
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`VENUE
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`Venue is appropriate in “a judicial district where any defendant resides,” and for purposes
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`of venue, a defendant is resident in “any judicial district in which such defendant is subject to the
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`court's personal jurisdiction with respect to the civil action in question.” 28 U.S.C. § 1391.
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`Because the Court has personal jurisdiction over VoIP, venue is proper in the Northern District of
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`California.
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`III.
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`SUBJECT MATTER JURISDICTION
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`For VoIP’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(1), “[w]hether
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`an actual case or controversy exists so that a district court may entertain an action for a declaratory
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`judgment of non-infringement and/or invalidity is governed by Federal Circuit law.” Ass’n for
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`Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303 (Fed. Cir. 2012), rev’d on
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`other grounds, Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013). To
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`Case 3:21-cv-09773-JD Document 38 Filed 07/22/22 Page 4 of 5
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`satisfy the case or controversy requirement in the declaratory judgment context, the parties’
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`dispute must be ‘real and substantial and admit of specific relief through a decree of a conclusive
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`character, as distinguished from an opinion advising what the law would be upon a hypothetical
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`state of facts.’” Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372-73
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`(Fed. Cir. 2019) (quoting MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007)) (cleaned
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`up). The Court considers the totality of the circumstances in assessing whether there is an actual
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`controversy. Vanguard Research, Inc. v. PEAT, Inc., 304 F.3d 1249, 1254 (Fed. Cir. 2002).
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`VoIP says that there is no actual controversy because none of VoIP and Twitter’s dealings
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`to this point have been about the mobile gateway patents, and that VoIP has not made substantive
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`threats to Twitter about the mobile gateway patents. Dkt. No. 25 at 9-10. The litigation history
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`between VoIP and Twitter tells a different story.
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`As discussed, VoIP has sued Twitter for infringement of VoIP’s RBR patents, and those
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`patents have also been the subject of other declaratory judgment actions in this district. The
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`Federal Circuit has held that accusations of infringement for closely related patents covering the
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`same technology can be sufficient to create an actual controversy. See Arkema Inc. v. Honeywell
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`Int’l, Inc., 706 F.3d 1351, 1357-58. This case involves similar technology to the RBR patents that
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`VoIP has previously asserted against Twitter. Dkt. No. 1-9 at 16. Additionally, during the course
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`of VoIP’s other litigations with Twitter, Twitter has requested a covenant not to sue for VoIP’s
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`entire patent portfolio, including the mobile gateway patents at issue in this case, which VoIP has
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`refused to grant. Dkt. No. 1 ¶ 9. A refusal to covenant not to sue can also suggest “that there is an
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`active and substantial controversy between the parties regarding their legal rights with respect to
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`those patents.” Arkema, 706 F.3d at 1358.
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`Twitter points to VoIP’s other lawsuits in the Western District of Texas asserting the
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`mobile gateway patents. Dkt. No. 30 at 9. VoIP sued Apple, AT&T, Verizon, Amazon,
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`Facebook, WhatsApp, Google, and T-Mobile alleging infringement of the ’234 and ’721 patent.
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`Dkt. No. 1 ¶ 16. While VoIP did not sue Twitter in Texas, Twitter alleges that those law suits
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`accuse the same products of infringing the mobile gateway patents as were accused in VoIP’s
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`previous suits concerning the RBR patents. Id. ¶ 18.
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`Case 3:21-cv-09773-JD Document 38 Filed 07/22/22 Page 5 of 5
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`These circumstances demonstrate VoIP’s intent to enforce its mobile gateway patents,
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`including against Twitter. Consequently, Twitter has demonstrated an active controversy, and
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`VoIP’s motion to dismiss is denied.
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`IT IS SO ORDERED.
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`Dated: July 22, 2022
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`JAMES DONATO
`United States District Judge
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