`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 1 of 363
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`EXHIBIT A
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`EXHIBIT A
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`
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 2 of 363
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`PERKINS COIE LLP
`Sarah Fowler (Bar No. 264838)
`Moeka Takagi (Bar No. 333226)
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Phone: 650.838.4300
`SFowler@perkinscoie.com
`MTakagi@perkinscoie.com
`
`PERKINS COIE LLP
`Gene W. Lee (pro hac vice)
`Thomas Matthew (pro hac vice)
`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 FRANCISCO DIVISION
`
`TWITTER, INC., a Delaware corporation,
`
`No. 5:21-cv-9773
`
`Plaintiff,
`
`v.
`
`VOIP-PAL.COM, INC., a Nevada
`corporation,
`
`Defendant.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 3 of 363
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`I.
`
`INTRODUCTION
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`1.
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`This First Amended Complaint for declaratory judgment of noninfringement and
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`invalidity arises from a real and immediate controversy between plaintiff Twitter, Inc.
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`(“Twitter”), and defendant VoIP-Pal.com Inc. (“VoIP-Pal”), as to whether Twitter infringes any
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`claims of U.S. Patents 8,630,234 and 10,880,721,1 both entitled, “Mobile Gateway.”
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`2.
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`Since 2016, Twitter and VoIP-Pal have been embroiled in a series of lawsuits
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`involving VoIP-Pal’s patents in the field of routing communications in a packet-switched network
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`such as an Internet Protocol network. Those lawsuits have been part of a large litigation
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`campaign in which VoIP-Pal has asserted patents against Twitter and other major technology
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`companies such as Apple, AT&T, Verizon, Amazon, Facebook, WhatsApp, Google, T-Mobile,
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`Samsung Electronics, and Huawei.
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`3.
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`VoIP-Pal’s litigation campaign began in 2016, when it filed lawsuits against
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`Twitter, Apple, AT&T, and Verizon alleging infringement of two patents that are part of a patent
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`family that VoIP-Pal refers to as the “Routing, Billing, Rating” or “RBR” patents (the “2016
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`Cases”; e.g., Exhibit 3). All patents in the RBR family share a common specification. In 2018,
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`VoIP-Pal filed additional lawsuits against Apple and Amazon to assert four other RBR patents
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`(the “2018 Cases”). The 2016 and 2018 Cases were originally filed in the District of Nevada but
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`were transferred to this Court in 2018.
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`4.
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`This Court found all six RBR patents asserted in the 2016 and 2018 Cases to be
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`invalid under 35 U.S.C. § 101 for claiming ineligible subject matter. E.g., VoIP-Pal.com, Inc. v.
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`Twitter, Inc., Case No. 18-cv-04523-LHK, ECF No. 82 (Exhibit 4). On March 16, 2020, the
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`Court of Appeals for the Federal Circuit affirmed those judgments of invalidity.
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`5.
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`Dissatisfied with the outcome of the 2016 and 2018 Cases in this Court, VoIP-Pal
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`went forum shopping. In April 2020, VoIP-Pal filed lawsuits in the Western District of Texas
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`against Facebook, WhatsApp, Google, Amazon, Apple, AT&T, and Verizon to assert a seventh
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`patent in the RBR family, U.S. Patent 10,218,606 (the “’606 patent”) (the “2020 Texas Cases”).
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`1 U.S. Patent 8,630,234 and 10,880,721 are referred to herein as the “Mobile Gateway” patents.
`U.S. Patent 8,630,234 is referred to as the “’234 patent” (Exhibit 1), and U.S. Patent 10,880,721
`is referred to as the “’721 patent” (Exhibit 2).
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`The claims of the ’606 patent asserted in those new lawsuits are very similar to the claims of the
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`six RBR patents that VoIP-Pal previously asserted in the 2016 and 2018 Cases and were found to
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`be invalid by this Court.
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`6.
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`On April 8, 2020, VoIP-Pal issued a press release stating that VoIP-Pal is
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`considering taking further action and is not finished taking action in the wake of the recent
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`Federal Circuit decision affirming this Court’s judgment in the 2016 Cases that two of VoIP-Pal’s
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`previously-asserted patents are invalid under 35 U.S.C. § 101 (Exhibit 5).
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`7.
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`On April 8, 2020, after seeing VoIP-Pal’s lawsuits in Texas against Facebook,
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`WhatsApp, Google, Amazon, and Apple and VoIP-Pal’s press release, Twitter filed an action for
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`declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court (Case
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`No. 20-cv-02397; see Exhibit 7). Soon thereafter, Apple, AT&T, and Verizon filed similar
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`declaratory judgment actions in this Court against VoIP-Pal based on the ’606 patent (collectively
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`with Twitter the “2020 DJ Actions”). On April 14, 2020, Apple filed a first amended complaint
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`that added claims for declaratory judgment of noninfringement and invalidity of an eighth patent
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`in the RBR family, U.S. Patent 9,935,872 (the “’872 patent”).
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`8.
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`In July 2020, VoIP-Pal filed motions to dismiss the 2020 DJ Actions for lack of
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`subject matter jurisdiction, lack of personal jurisdiction, and improper venue. In December 2020,
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`the Court denied VoIP-Pal’s motions to dismiss. E.g., Twitter, Inc. v. VoIP-Pal.com, Inc., Case
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`No. 20-cv-02397, ECF No. 50 (Exhibit 8); Apple Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-
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`02460, ECF No. 60.
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`9.
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`Between December 2020 and April 2021, VoIP-Pal and Twitter communicated
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`many times about potential settlement with respect to the ’606 patent and VoIP-Pal’s other
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`patents. Since December 2020, Twitter’s position has been that Twitter is unwilling to enter into
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`a piecemeal settlement with VoIP-Pal that addresses only one or some of VoIP-Pal’s patents, and
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`that any settlement must be global in the sense of encompassing VoIP-Pal’s entire patent
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`portfolio. Twitter has communicated that position to VoIP-Pal multiple times, and VoIP-Pal has
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`refused to offer Twitter a license or covenant not to sue for VoIP-Pal’s entire patent portfolio.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 5 of 363
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`10.
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`For example, on January 11, 2021, VoIP-Pal proposed that VoIP-Pal and Twitter
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`enter into a settlement for the ’606 patent and all other RBR patents. Twitter observed that such a
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`settlement would not cover VoIP-Pal’s entire patent portfolio and expressly noted that VoIP-Pal
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`had recently touted receiving a U.S. patent and a European patent in the Mobile Gateway family.
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`Twitter later rejected VoIP-Pal’s proposed settlement for all RBR patents in part because it would
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`not have covered all of VoIP-Pal’s patents, including the Mobile Gateway patents.
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`11.
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`On March 24, 2021, VoIP-Pal filed another motion to dismiss the 2020 DJ
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`Actions—this time based on a limited covenant not to sue for the ’606 patent. E.g., Case No. 20-
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`cv-02397, ECF No. 62. That limited covenant not to sue was insufficient to eliminate subject
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`matter jurisdiction for Twitter’s declaratory judgment claims for the reasons explained in
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`Twitter’s opposition to that motion. Id., ECF No. 66.
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`12.
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`In response to Twitter’s opposition, on April 9, 2021, VoIP-Pal offered a broader
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`covenant not to sue for the ’606 patent and asked Twitter to stipulate to dismissal of Twitter’s
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`declaratory judgment action. Twitter responded in part that, at a minimum, any covenant not to
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`sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
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`the ’872 patent. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future and that
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`only a covenant not to sue that covers VoIP-Pal’s entire patent portfolio would resolve the
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`broader dispute between Twitter and VoIP-Pal concerning VoIP-Pal’s patent portfolio. VoIP-Pal
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`declined to extend the covenant to include VoIP-Pal’s patents other than the ’606 patent.
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`13.
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`On April 14, 2021, VoIP-Pal filed a reply brief in support of its motion to dismiss,
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`which granted Twitter the broader covenant not to sue for the ’606 patent that VoIP-Pal had
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`offered on April 9. Id., ECF No. 68. VoIP-Pal also granted similar broader covenants not to sue
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`to Apple, AT&T, and Verizon. On August 30, 2021, this Court granted VoIP-Pal’s motion to
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`dismiss Twitter’s 2020 DJ Action in view of VoIP-Pal’s broader covenant not to sue for the ’606
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`patent (but denied VoIP-Pal’s motion to dismiss the other 2020 DJ Actions). However, the Court
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`retained jurisdiction over Twitter’s 2020 DJ Action to consider Twitter’s motion for attorney fees,
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`which is fully briefed and under submission to the Court.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`14.
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`On April 15, 2021, Twitter and VoIP-Pal participated in a court-supervised
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`settlement conference in Twitter’s 2020 DJ Action, which did not result in settlement.
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`15.
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`Following that unsuccessful settlement conference, on April 16, 2021, Twitter
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`filed an action for declaratory judgment of noninfringement of the ’872 patent. Twitter, Inc. v.
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`VoIP-Pal.com, Inc., Case No. 5:21-cv-02769-LHK, ECF No. 1 (the “2021 DJ Action”;
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`Exhibit 10). In response, VoIP-Pal filed a motion to dismiss for lack of subject matter
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`jurisdiction, lack of personal jurisdiction, and for improper venue. Id. at ECF No. 25. On
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`November 2, 2021, the Court denied VoIP-Pal’s motion to dismiss Twitter’s 2021 DJ Action. Id.
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`at ECF No. 38 (Exhibit 11).
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`16.
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`On June 25, 2021, VoIP-Pal filed lawsuits in the Western District of Texas against
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`Apple, AT&T, Verizon, Amazon, Facebook, WhatsApp, Google, and T-Mobile alleging
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`infringement of the two Mobile Gateway patents (the “Texas Mobile Gateway Cases”). The
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`complaints in those lawsuits identify claim 20 of the ’234 patent and claim 38 of the ’721 patent
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`as exemplary asserted claims, but VoIP-Pal asserts many other claims.
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`17.
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`The Mobile Gateway patents are not members of the RBR family, but they are
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`very similar to the eight RBR patents that were or are at issue in the 2016 and 2018 Cases, the
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`2020 Texas Cases, and the 2020 DJ Actions. The Mobile Gateway patents concern the same
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`technology as the previously-asserted RBR patents—namely, routing of communications in a
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`packet-switched network. The claims of the Mobile Gateway patents are very similar to the
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`claims of the RBR patents previously asserted by VoIP-Pal (Exhibit 12).
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`18.
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`VoIP-Pal’s infringement allegations in the Texas Mobile Gateway Cases are very
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`similar to VoIP-Pal’s infringement allegations in the 2016 and 2018 Cases and/or 2020 Texas
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`Cases against Twitter, Apple, AT&T, Verizon, and/or Amazon. For example, VoIP-Pal’s
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`infringement allegations for the Mobile Gateway patents are directed to some of the same accused
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`instrumentalities that VoIP-Pal accused of infringement in VoIP-Pal’s prior lawsuits, such as
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`messaging involving text, images, and videos.
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`19.
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`VoIP-Pal has sued every defendant from the 2016 and 2018 Cases for
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`infringement of the Mobile Gateway patents other than Twitter. On information and belief, the
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 7 of 363
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`reason that VoIP-Pal has not sued Twitter for infringement of the Mobile Gateway patents to date
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`is strategic— for example, concern that, if VoIP-Pal filed a lawsuit to assert the Mobile Gateway
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`patents against Twitter while Twitter’s 2020 and/or 2021 DJ Actions were pending, they might be
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`deemed to be first-filed cases such that VoIP-Pal would end up litigating the Mobile Gateway
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`patents in this Court.
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`20.
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`On November 17, 2021, the parties participated in a second court-supervised
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`settlement conference in Twitter’s 2020 DJ Action, which did not result in settlement.
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`21.
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`On November 30, 2021, VoIP-Pal filed lawsuits in the Western District of Texas
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`against Samsung Electronics and Huawei Technologies alleging infringement of the two Mobile
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`Gateway patents.
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`22.
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`Following this Court’s denial of VoIP-Pal’s motion to dismiss Twitter’s 2021 DJ
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`Action (Exhibit 10), on December 9, 2021, VoIP-Pal filed a motion to dismiss based on a
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`covenant not to sue for the ’872 patent. On information and belief, VoIP-Pal plans to file a
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`lawsuit against Twitter for infringement of the Mobile Gateway patents after Twitter’s 2021 DJ
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`Action is dismissed.
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`23.
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`Twitter believes that it does not infringe and has not infringed any claims of the
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`Mobile Gateway patents, including claim 20 of the ’234 patent and claim 38 of the ’721 patent,
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`which were exemplary claims identified in the complaints in VoIP-Pal’s Texas Mobile Gateway
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`Cases. Since December 2020, Twitter has repeatedly informed VoIP-Pal that any resolution of
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`the disputes concerning VoIP-Pal’s patents must cover VoIP-Pal’s entire patent portfolio, but
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`VoIP-Pal has refused to offer a license or covenant not to sue to Twitter for VoIP-Pal’s entire
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`patent portfolio.
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`24.
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`VoIP-Pal’s actions have created a real, substantial, and immediate controversy
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`between VoIP-Pal and Twitter as to whether Twitter’s products and/or services infringe any
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`claims of the Mobile Gateway patents. The facts and allegations recited herein show that there is
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`a real, substantial, immediate, and justiciable controversy concerning this issue.
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`6
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`II.
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`PARTIES
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`25.
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`Plaintiff Twitter is a company incorporated under the laws of Delaware, with
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`headquarters at 1355 Market Street, Suite 900, San Francisco, California.
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`26.
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`Twitter operates a global Internet platform for public self-expression and
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`conversation in real time. People with a Twitter account can post “Tweets”—messages of 280
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`characters or less, sometimes with pictures or video, and those messages can be read by other
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`people using the Twitter platform. They may, in turn, “Retweet” those messages to their own
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`followers. Users can include “hashtagged” keywords (indicated by a “#”) in their Tweets to
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`facilitate searching for messages on the same topic. People who use Twitter can also send direct
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`messages to other users that can contain images and video. Each day, people post hundreds of
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`millions of Tweets, engaging in public conversation on virtually every conceivable topic.
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`Twitter’s products and services are provided through the Twitter platform.
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`27.
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`Based on information and belief, defendant VoIP-Pal is a company incorporated
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`under the laws of Nevada and recently relocated its principal place of business from Bellevue,
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`Washington, to 7215 Bosque Blvd, Suite 102, Waco, Texas 76710. See https://www.voip-
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`pal.com/contact-us.
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`28.
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`Based on information and belief, VoIP-Pal is the owner of the Mobile Gateway
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`patents.
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`III.
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`JURISDICTION AND VENUE
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`29.
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`This First Amended Declaratory Judgment Complaint includes counts for
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`declaratory relief under the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
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`30.
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`31.
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`Twitter seeks declaratory relief under 28 U.S.C. §§ 2201 and 2202.
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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 Twitter 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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`7
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 9 of 363
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`32.
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`This Court can provide the declaratory relief sought in this First Amended
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`Declaratory Judgment Complaint because an actual case and controversy exists between the
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`parties within the scope of this Court’s jurisdiction pursuant to 28 U.S.C. § 2201. An actual case
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`and controversy exists at least for the reasons set forth in Sections I, II, and IV of this Complaint
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`(¶¶ 1-28, 38-76).
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`33.
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`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has
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`purposefully directed activities in this District that form the basis of Twitter’s claim against VoIP-
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`Pal—namely, prosecuting the 2016 Case involving two RBR patents against Twitter in this
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`District, and voluntarily transferring from Nevada to this District the 2016 Cases against Apple,
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`AT&T, and Verizon and the 2018 Cases against Apple and Amazon. VoIP-Pal also has retained
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`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 2020 Texas Action; the 2020 DJ Actions filed by Twitter, Apple,
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`AT&T, and Verizon in this Court; the 2021 DJ Action filed by Twitter; and the Texas Mobile
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`Gateway cases, including Lewis Hudnell of the Hudnell Law Group in Mountain View,
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`California. In addition, on information and belief, on or about April 20, 2016, VoIP-Pal
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`representative Ray Leon met with representatives of Apple in the Northern District of California
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`in connection with VoIP-Pal’s patent enforcement campaign.
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`34.
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`This Court found the foregoing activities to be a sufficient basis for personal
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`jurisdiction in the context of the 2020 DJ Actions for the ’606 patent (and ’872 patent for Apple)
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`and Twitter’s 2021 DJ Action for the ’872 patent, and those activities also support personal
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`jurisdiction for the present action for the Mobile Gateway patents. As a result of VoIP-Pal’s
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`actions described in this First Amended Complaint, there is a real, substantial, live, immediate,
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`and justiciable case or controversy concerning the Mobile Gateway patents between VoIP-Pal and
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`Twitter, a company that resides and operates in this District. As a result of VoIP-Pal’s actions
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`described above, VoIP-Pal has established sufficient minimum contacts with the Northern District
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`of California such that VoIP-Pal is subject to specific personal jurisdiction in the Northern
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`District of California for this action. Further, the exercise of personal jurisdiction based on those
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`8
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 5:21-cv-9773
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`repeated and highly-pertinent contacts does not offend traditional notions of fair play and
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`substantial justice.
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`35.
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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 of patents is determined under the general venue statute, 28 U.S.C. § 1391.
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`36.
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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 to
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`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).
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`37.
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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, for the purposes of this action, VoIP-
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`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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`VoIP-Pal’s 2016 and 2018 Cases And The RBR Patents
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`IV.
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`FACTUAL BACKGROUND
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`38.
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`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Twitter, Apple,
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`AT&T, and Verizon, alleging infringement of two RBR patents, U.S. Patents 8,542,815 (“the
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`’815 patent”) and 9,179,005 (“the ’005 patent”; Exhibit 3). Twitter filed a motion to transfer for
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`improper venue, which sought transfer to this Court. Twitter’s motion was granted, after which
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`VoIP-Pal agreed to transfer its actions against Apple, AT&T, and Verizon to this Court. Between
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`August and November of 2018, all four of those actions were transferred to this Court and
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`consolidated for pretrial purposes: Twitter (Case No. 18-cv-04523-LHK), Verizon (Case No. 18-
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`cv-06054-LHK), AT&T (Case No. 18-cv-06177-LHK), and Apple (Case No. 18-cv-06217-LHK)
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`(i.e., the 2016 Cases).
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`39.
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`In the 2016 Cases, Twitter, Apple, AT&T, and Verizon filed a motion to dismiss
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`under Fed. R. Civ. P. 12(b)(6) because the asserted claims of the ’815 and ’005 patents are invalid
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`under 35 U.S.C. § 101. On March 25, 2019, this Court granted the motion to dismiss and found
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`all asserted claims of the ’815 and ’005 patents to be invalid (Exhibit 4). VoIP-Pal appealed. On
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`March 16, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 11 of 363
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`40.
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`In May and June 2018, VoIP-Pal filed two additional lawsuits against Apple and
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`Amazon in the District of Nevada, alleging infringement of four other RBR patents, U.S. Patents
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`9,537,762; 9,813,330; 9,826,002; and 9,948,549. The asserted claims of those four RBR patents
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`are very similar to the asserted claims of the two RBR patents in the 2016 Cases.
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`41.
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`In October and November 2018, VoIP-Pal voluntarily agreed to transfer to this
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`Court the 2018 Cases against Apple (Case No. 5:18-cv-06216-LHK) and Amazon (Case
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`No. 5:18-cv-07020-LHK) (i.e., the 2018 Cases).
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`42.
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`In the 2018 Cases, Apple and Amazon filed a motion to dismiss under Fed. R. Civ.
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`P. 12(b)(6) that the asserted claims of the four asserted patents are invalid under 35 U.S.C. § 101.
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`On November 1, 2019, this Court granted Apple’s and Amazon’s motion to dismiss and found all
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`asserted claims of the patents in the 2018 Cases to be invalid. VoIP-Pal appealed. On
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`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 2020 Texas Cases And Press Release, And
`Twitter’s, Apple’s, AT&T’s, And Verizon’s 2020 DJ Actions
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`43.
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`During April 2-7, 2020, VoIP-Pal filed four new lawsuits in the Western District
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`of Texas, Waco Division, asserting a seventh RBR patent, the ’606 patent, against defendants
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`Facebook and WhatsApp (Case No. 20-cv-267), Google (Case No. 20-cv-269), and previous
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`defendants Amazon (Case No. 20-cv-272) and Apple (Case No. 20-cv-275). On April 24, 2020,
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`VoIP-Pal filed new lawsuits in the same court asserting the ’606 patent against previous
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`defendants AT&T (Case No. 20-cv-325) and Verizon Wireless (Case No. 20-cv-327).
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`44.
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`The claims of the ’606 patent that VoIP-Pal asserts in the 2020 Texas Cases are
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`very similar to claims of the six patents that VoIP-Pal asserted against Twitter, Apple, AT&T,
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`and Verizon in the 2016 and 2018 Cases and were held to be invalid (for example, claim 74 of the
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`’005 patent; Exhibit 3).
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`45.
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`VoIP-Pal’s infringement allegations in the 2020 Texas Cases are similar to VoIP-
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`Pal’s infringement allegations in the 2016 and 2018 Cases (including against all of the same prior
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`defendants except for Twitter) and are directed to accused instrumentalities that are similar to
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 12 of 363
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`Twitter’s products and services (for example, communications involving text, images, and
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`videos).
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`46.
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`On April 8, 2020, VoIP-Pal issued a press release that announced the filing of the
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`2020 Texas Cases against Facebook, WhatsApp, Google, Amazon, and Apple (Exhibit 5 and
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`https://www.voip-pal.com/voip-pal-new-patent-lawsuits-april-). The press release also mentioned
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`the Federal Circuit’s affirmance of this Court’s judgment of invalidity in the 2016 Cases against
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`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.”
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`VoIP-Pal’s CEO is quoted as saying, “Our legal team is assessing our next moves regarding this
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`Alice decision and we expect to announce our intentions soon. I can tell you; we are not
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`finished,” and “We remain firm in our resolve to achieve monetization for our shareholders and
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`will continue to see this fight through until a successful resolution is reached. Patience is a
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`virtue.” (Exhibit 5 (emphasis added).)
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`47.
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`On April 8, 2020, after seeing VoIP-Pal’s lawsuits in Texas against Facebook,
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`WhatsApp, Google, Amazon, and Apple and VoIP-Pal’s press release, Twitter filed an action for
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`declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court (Case
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`No. 20-cv-02397).
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`48.
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`On April 10, 2020, Apple filed an action for declaratory judgment of
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`noninfringement and invalidity of the ’606 patent against VoIP-Pal in this Court (Case No. 20-cv-
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`02460). On April 14, 2020, Apple filed a first amended complaint that added claims for
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`declaratory judgment of noninfringement and invalidity of the ’872 patent.
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`49.
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`On April 24, 2020, VoIP-Pal filed lawsuits in the Western District of Texas
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`asserting the ’606 patent against AT&T and Verizon. Soon thereafter, AT&T and Verizon filed
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`declaratory judgment actions against VoIP-Pal for the ’606 patent in this Court. AT&T Corp. et
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`al. v. VoIP-Pal.com, Inc., Case No. 20-cv-02995; Cellco Partnership d/b/a Verizon Wireless v.
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`VoIP-Pal.com, Inc., Case No. 20-cv-03092.
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`50.
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`On June 4, 2020, counsel for Twitter asked counsel for VoIP-Pal whether VoIP-
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`Pal would be willing to grant Twitter a covenant not to sue based on the ’606 patent. On June 11,
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`2020, counsel for VoIP-Pal declined to discuss a covenant not to sue.
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`51.
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`On June 26, 2020, Twitter filed a first amended complaint that added a claim for a
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`declaratory judgment of invalidity of the ’606 patent (Exhibit 7).
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`52.
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`On July 10, 2020, VoIP-Pal filed motions to dismiss Twitter’s, Apple’s AT&T’s,
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`and Verizon’s 2020 DJ Actions 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
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`dismiss, finding that subject matter jurisdiction and personal jurisdiction exist and that venue is
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`proper. E.g., Case No. 20-cv-02397, ECF No. 50 (Twitter) (Exhibit 8); Case No. 20-cv-02460,
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`ECF No. 60 (Apple).
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`53.
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`On December 2, 2020, counsel for Twitter and VoIP-Pal had a telephone call in
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`which VoIP-Pal offered to pay Twitter $250,000 for Twitter to dismiss its declaratory judgment
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`action against the ’606 patent. Twitter informed VoIP-Pal that Twitter is not interested in a
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`piecemeal settlement in view of VoIP-Pal’s other patents, including the ’872 patent (which was
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`the subject of declaratory judgment claims advanced by Apple), and the likelihood that VoIP-Pal
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`would sue Twitter again in the future. Twitter’s counsel asked if VoIP-Pal would be willing to
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`discuss a global settlement by which VoIP-Pal would agree not to sue Twitter on any of its
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`patents. VoIP-Pal’s counsel declined to discuss such a global settlement. VoIP-Pal did not deny
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`the likelihood that VoIP-Pal would sue Twitter again in the future.
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`54.
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`On January 4, 2021, counsel for Twitter corresponded with counsel for VoIP-Pal
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`to state that, in view of VoIP-Pal’s litigation history and patent portfolio, Twitter is not interested
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`in pursuing a piecemeal resolution that would resolve only the current action and to note that
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`VoIP-Pal declined to discuss a broader resolution that would include the ’872 patent.
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`55.
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`On January 11, 2021, counsel for Twitter and VoIP-Pal had a telephone call in
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`which VoIP-Pal proposed to enter into a settlement for the ’606 patent and “all family members”
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`(i.e., all RBR patents), for a payment by Twitter of $1 million. Twitter observed that VoIP-Pal’s
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`proposal would not cover VoIP-Pal’s entire patent portfolio and expressly noted that VoIP-Pal
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`had recently touted receiving a U.S. patent and a European patent in the Mobile Gateway family.
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`That recently-issued U.S. Mobile Gateway patent was the ’721 patent, which issued on
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`December 29, 2020. Twitter asked if VoIP-Pal would agree to a settlement that would include
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`patents other than those in the RBR family. VoIP-Pal’s counsel said he would check with VoIP-
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`Pal, but VoIP-Pal did not respond to that inquiry.
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`56.
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`On January 15, 2021, Twitter declined VoIP-Pal’s proposed settlement for the
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`RBR patent family. Twitter’s reasons for declining VoIP-Pal’s offer included that it would not
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`have covered all of VoIP-Pal’s patents (including the recently-touted Mobile Gateway patent),
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`Twitter’s belief that VoIP-Pal’s RBR patents are invalid under 35 U.S.C. § 101, and VoIP-Pal’s
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`demand for a $1 million payment was unreasonable.
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`57.
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`On March 24, 2021, VoIP-Pal filed additional motions to dismiss Twitter’s,
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`Apple’s, AT&T’s, and Verizon’s 2020 DJ Actions—this time based on covenants not to sue that
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`VoIP-Pal granted in the motions. E.g., Twitter, Case No. 20-cv-02397, ECF No. 62 (Mar. 21,
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`2021). That covenant was insufficient to eliminate subject matter jurisdiction for reasons
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`explained in Twitter’s opposition. Id., ECF No. 66 (Apr. 7, 2021). In response, on April 9, 2021,
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`VoIP-Pal offered a broader covenant not to sue based on the ’606 patent and asked Twitter to
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`stipulate to dismissal of Twitter’s declaratory judgment action.
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`58.
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`On April 12, 2021, Twitter responded in part that, at a minimum, a covenant not to
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`sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
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`the ’872 patent. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future for
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`infringement of other patents and that even a broader covenant that includes the ’606 and ’872
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`patents would not be sufficient to resolve the broader dispute between Twitter and VoIP-Pal
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`based on VoIP-Pal’s patent portfolio. Twitter stated, in view of the broader dispute between
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`VoIP-Pal and Twitter concerning VoIP-Pal's patent portfolio, VoIP-Pal can eliminate that broader
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`dispute only by offering a covenant not to sue that covers VoIP-Pal’s entire patent portfolio and
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`future related patents and applications.
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`No. 5:21-cv-9773
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`Case 3:21-cv-09773-JD Document 41-2 Filed 09/09/22 Page 15 of 363
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`59.
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`On April 13, 2021, VoIP-Pal respo