Case 3:21-cv-09773-JD Document 43 Filed 09/30/22 Page 1 of 11
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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
`Email: SFowler@perkinscoie.com
`Email: MTakagi@perkinscoie.com
`
`PERKINS COIE LLP
`Gene W. Lee (admitted pro hac vice)
`Thomas Matthew (admitted pro hac vice)
`1155 Avenue of the Americas, 22nd floor
`New York, NY 10112-0015
`Phone: 212.262.6900
`Email: GLee@perkinscoie.com
`Email: TMatthew@perkinscoie.com
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`Attorneys for Plaintiff Twitter, Inc.
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`TWITTER, INC.,
`
`Plaintiff,
`
`v.
`VOIP-PAL.COM, INC.,
`Defendant.
`
`Case No. 21-cv-09773-JD
`PLAINTIFF TWITTER, INC.’S REPLY
`IN SUPPORT OF MOTION FOR LEAVE
`TO FILE A FIRST AMENDED
`COMPLAINT
`Date: Thursday, October 20, 2022
`Time: 10:00am PDT
`Location: Courtroom 11, 19th Floor
`Judge: James Donato
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`Case No. 21-CV-09773-JD
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`INTRODUCTION .............................................................................................................. 1 
`STATEMENT OF RELEVANT FACTS IN RESPONSE TO OPPOSITION .................. 1 
`ARGUMENT ...................................................................................................................... 2 
`VoIP-Pal’s Statements That It Does Not Intend To Enforce The
`A. 
`Mobile Gateway Patents And That It Is Willing To Stipulate To
`Noninfringement Do Not Eliminate An Actual Controversy ................................. 2 
`Twitter Should Be Allowed To File Its Proposed First Amended
`Complaint Under Rule 15(a) Or 15(d) .................................................................... 4 
`VoIP-Pal Would Not Suffer Undue Prejudice ........................................................ 5 
`Twitter Did Not Unduly Delay Seeking To File The Proposed First
`Amended Complaint ............................................................................................... 6 
`VoIP-Pal’s Accusation That Twitter Violated The ADR Rules Is
`False ........................................................................................................................ 6 
`CONCLUSION ................................................................................................................... 8 
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`B. 
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`C. 
`D. 
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`E. 
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`TABLE OF CONTENTS
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`Page
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`I. 
`II. 
`III. 
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`IV. 
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`Case 3:21-cv-09773-JD Document 43 Filed 09/30/22 Page 3 of 11
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`
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Big Bear Lodging Ass'n v. Snow Summit, Inc.,
`182 F.3d 1096 (9th Cir. 1999) .....................................................................................................6
`
`Fortinet, Inc. v. Trend Micro Inc.,
`No. C-08-5371 MMC, 2009 WL 1139589 (N.D. Cal. Apr. 28, 2009) .......................................3
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`Muhmoud v. City of San Jose,
`No. 5:20-cv-08808-EJD, 2022 WL 1539783 (N.D. Cal. May 16, 2022)....................................6
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`Paralyzed Veterans of Am. v. McPherson,
`No. C 06-4670, 2008 WL 4183981, at *25 (N.D. Cal. Sept. 9, 2008) ........................................4
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`Prasco, LLC v. Medicis Pharmaceutical Corp.,
`537 F.3d 1329 (Fed. Cir. 2008) ...................................................................................................5
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`Super Sack Mfg. Corp. v. Chase Packaging Corp.,
`57 F.3d 1054 (Fed. Cir. 1995) .....................................................................................................3
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`Twitter, Inc. v. VoIP-Pal.com, Inc.,
`Case No. 3:21-cv-02769-LHK ........................................................................................2, 3, 6, 7
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`Twitter, Inc. v. VoIP-Pal.com, Inc.,
`Case No. 5:20-cv-2397-LHK (N.D. Cal.) ......................................................................... passim
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`Ziptronix, Inc. v. Omnivision Techs., Inc.,
`No. C 10-05525, 2012 WL 315554, at *3 (N.D. Cal. Aug. 2, 2012) ......................................4, 5
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`RULES
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`ADR L.R. 7-4(a) .......................................................................................................................2, 6, 7
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`Fed. R. Civ. P. 15(a) ......................................................................................................................1, 4
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`Fed. R. Civ. P. 15(a)(1) .....................................................................................................................5
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`Fed. R.Civ. P. 15(a)(2) ......................................................................................................................5
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`Fed. R. Civ. P. 15(d) .................................................................................................................1, 4, 5
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`INTRODUCTION
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`
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`I.
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`The court “should freely give leave when justice so requires” (Fed. R. Civ. P. 15(a)) or
`“on just terms” (Fed. R. Civ. P. 15(d)). Twitter seeks leave to amend in good faith and in the
`early stages of this case. There is no undue delay, and the First Amended Complaint would not
`prejudice Defendant. Accordingly, Twitter respectfully requests this Court grant Twitter leave to
`file its proposed First Amended Complaint.
`VoIP-Pal’s Opposition presents no reasons to deny Twitter’s Motion. VoIP-Pal’s
`statements that it does not intend to enforce the ’234 and ’721 patents and that it is willing to
`stipulate to noninfringement do not eliminate an actual controversy between the parties. VoIP-
`Pal’s argument that Twitter’s proposed First Amended Complaint is a supplemental complaint
`that should be evaluated under Federal Rule of Civil Procedure 15(d) instead of Rule 15(a) is of
`no moment because the legal standards for those two provisions are the same. VoIP-Pal would
`not suffer undue prejudice because an actual controversy still exists between the parties, and
`VoIP-Pal will have to litigate the validity of the ’234 and ’721 patents anyway in VoIP-Pal’s
`lawsuits against Meta and Google. Twitter has not unduly delayed in seeking to amend its
`Complaint, as the present Motion was filed at an early stage in the case. Finally, in view of the
`lack of merit in VoIP-Pal’s substantive positions, VoIP-Pal resorts to making a false and meritless
`accusation that Twitter violated this District’s ADR Rules in a prior action.
`VoIP-Pal’s Answer and Opposition reveal that an actual controversy continues to exist
`between Twitter and VoIP-Pal concerning the ’234 and ’721 patents. VoIP-Pal’s real goal is to
`extricate itself from the present action in this District while leaving open the possibility of
`asserting its patents against Twitter in a different forum and/or at a different time. Under these
`circumstances, it is especially important to allow Twitter to file its proposed First Amended
`Complaint to present claims for declaratory judgment of invalidity.
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`II.
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`STATEMENT OF RELEVANT FACTS IN RESPONSE TO OPPOSITION
`The first declaratory judgment action that Twitter filed against VoIP-Pal involved VoIP-
`Pal’s U.S. Patent 10,218,606 (the “’606 patent”). Twitter, Inc. v. VoIP-Pal.com, Inc., Case
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`No. 5:20-cv-2397-LHK (N.D. Cal.) (“Twitter I”).1 In that action, Twitter and VoIP-Pal
`participated in two settlement conferences pursuant to this District’s ADR Local Rules. Those
`settlement conferences did not result in settlement.
`The first settlement conference in Twitter I occurred in April 2021. Dkt. No. 1 at ¶ 61.
`The day after the first settlement conference, Twitter filed a declaratory judgment action against
`VoIP-Pal concerning U.S. Patent 9,935,872 (the “’872 patent”). Twitter, Inc. v. VoIP-Pal.com,
`Inc., Case No. 3:21-cv-02769-LHK (“Twitter II”). Id. at ¶ 65. Twitter’s complaint in the
`Twitter II action disclosed some aspects of the settlement discussions between the parties, which
`VoIP-Pal incorrectly asserted were confidential. Twitter I, Dkt. Nos. 72, 73.
`VoIP-Pal filed a motion accusing Twitter of violating the protective order in Twitter I
`based on that assertion. Id., Dkt No. 72. The court denied the motion and ruled that Twitter did
`not violate the protective order. Id., Dkt. No. 73. The court found that the relevant settlement
`discussions were not confidential and were not subject to the protective order. Id.
`Similarly, one party in Twitter I filed an ADR complaint against the other party accusing
`the other party of violating the confidentiality provisions of ADR L.R. 7-4(a) and engaging in a
`settlement conference in bad faith. Id., Dkt. No. 74. The court found that the other party did not
`violate ADR L.R. 7-4(a) or engage in the settlement conference in bad faith. Id.
`The second settlement conference in Twitter I occurred on November 17, 2021. Dkt. 1 at
`¶ 20. Twitter filed the original Complaint in the present action on December 17, one month after
`the second settlement conference. Dkt. 1.
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`III. ARGUMENT
`A.
`VoIP-Pal’s Statements That It Does Not Intend To Enforce The Mobile
`Gateway Patents And That It Is Willing To Stipulate To Noninfringement Do
`Not Eliminate An Actual Controversy
`This action is the third declaratory judgment action that Twitter has filed against VoIP-
`Pal. In each declaratory judgment action, VoIP-Pal has filed a motion to dismiss asserting a lack
`
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`1 VoIP-Pal is currently asserting the ’606 patent in litigation against other companies, including
`against Meta and Google in this District. VoIP-Pal.com, Inc. v. Meta Platforms, Inc., Case
`No. 3:22-cv-04279, and VoIP-Pal.com, Inc. v. Google, Inc., Case No. 3:22-cv-05419.
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`of subject matter jurisdiction and personal jurisdiction and improper venue. In each case, the
`court denied VoIP-Pal’s motion to dismiss and found an actual controversy to exist between
`Twitter and VoIP-Pal concerning VoIP-Pal’s patents. Dkt. No. 38; Twitter I, Dkt. No. 50;
`Twitter II, Dkt. No. 38.
`In the Twitter I and II actions, VoIP-Pal responded to the denial of its motions to dismiss
`by granting Twitter covenants not to sue Twitter for infringement of the ’606 and ’872 patents,
`which led to the dismissal of those actions. Twitter I, Dkt. No. 89; Twitter II, Dkt. No. 70.
`In the present action, however, VoIP-Pal has not granted Twitter a covenant not to sue for
`infringement of the ’234 and ’721 patents. Instead, VoIP-Pal states that it “has no intent to
`enforce the Mobile Gateway patents against Twitter” and “is willing to stipulate that Twitter does
`not infringe the Mobile Gateway patents.” Opposition at 5. This change is obviously strategic,
`reflecting VoIP-Pal’s desire to have a clearer path for asserting the ’234 and ’721 patents against
`Twitter in the future than it would face if it granted Twitter a covenant not to sue. VoIP-Pal’s
`covenants not to sue Twitter for infringement of the ’606 and ’872 patents eliminated an actual
`controversy between the parties because they were unconditional, irrevocable, broad in scope, and
`covered Twitter’s past, present, and future acts.2 Super Sack Mfg. Corp. v. Chase Packaging
`Corp., 57 F.3d 1054, 1056, 1058 (Fed. Cir. 1995). In contrast, VoIP-Pal’s statements here fall far
`short of eliminating an actual controversy.
`VoIP-Pal’s statement that it does not intend to enforce the ’234 and ’721 patents does not
`eliminate the existence of an actual controversy between the parties concerning the validity of
`those patents. Fortinet, Inc. v. Trend Micro Inc., No. C-08-5371 MMC, 2009 WL 1139589, *1–2
`(N.D. Cal. Apr. 28, 2009). In Fortinet, the patentee/defendant moved to dismiss the plaintiff’s
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`2 For example, VoIP-Pal’s covenant not to sue for the ’606 patent was as follows (Twitter I, Dkt.
`No. 68 at 2):
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`VoIP-Pal.com, Inc. unconditionally and irrevocably covenants not to sue Twitter, Inc.,
`now or in the future, for infringement of any claim of U.S. Patent No. 10,218,606 based
`on any products and services that Twitter is currently making, using, selling, offering for
`sale, or importing as of the date of this covenant or any products and services that Twitter,
`Inc. made, used, sold, offered for sale, or imported at any time before the date of this
`covenant.
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`claims for declaratory judgment of invalidity and unenforceability of two patents in view of the
`defendant’s statement that it did not “presently intend” to terminate a patent license between the
`parties. The court denied the plaintiff’s motion, finding the plaintiff’s statement to be insufficient
`to eliminate an actual controversy concerning the invalidity and unenforceability of the relevant
`patents. Id.
`Similarly, VoIP-Pal’s statement that it is willing to stipulate that Twitter does not infringe
`the Mobile Gateway patents is of no consequence. VoIP-Pal’s prior covenants not to sue Twitter
`were operative when VoIP-Pal granted them. In contrast, VoIP-Pal’s stated willingness to
`stipulate to noninfringement is not a legally operative event. VoIP-Pal has not filed such a
`stipulation or specified what the scope and terms of such a potential stipulation would be. VoIP-
`Pal’s stated willingness to provide a potential stipulation of noninfringement is not the same as
`VoIP-Pal actually filing such a stipulation. And without knowing the specific scope and terms of
`such a potential stipulation, there is no way of knowing whether it would eliminate an actual
`controversy, even if filed. VoIP-Pal’s past behavior provides reason to be dubious about VoIP-
`Pal’s unspecified, potential stipulation—in Twitter I, VoIP-Pal initially granted Twitter a deficient
`covenant not to sue for the ’606 patent that did not eliminate an actual controversy and then later
`granted a broader covenant not to sue. Twitter I, Dkt. Nos. 66, 68. VoIP-Pal might similarly
`offer an insufficient stipulation here.
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`B.
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`Twitter Should Be Allowed To File Its Proposed First Amended Complaint
`Under Rule 15(a) Or 15(d)
`VoIP-Pal asserts that Twitter’s proposed First Amended Complaint is actually a
`supplemental complaint that should be evaluated under Federal Rule of Civil Procedure 15(d)
`instead of Rule 15(a). VoIP-Pal’s argument is of no moment because “[t]he legal standard for
`granting or denying a motion to supplement under Rule 15(d) is the same as the standard for
`granting or denying a motion under Rule 15(a).” Ziptronix, Inc. v. Omnivision Techs., Inc., No. C
`10-05525 SBA, 2012 WL 3155554, at *3 (N.D. Cal. Aug. 2, 2012) (allowing Plaintiff to file a
`second amended complaint to add infringement claims for three patents where two of the patents
`issued after the filing of the original complaint) (citing Paralyzed Veterans of Am. v. McPherson,
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`No. C 06-4670 SBA, 2008 WL 4183981, at *25 (N.D. Cal. Sept. 9, 2008)); 6A Wright & Miller,
`Fed. Prac. & Proc. § 1504 (3d ed.) (“Inasmuch as the discretion exercised by the court in
`deciding whether to grant leave to amend is similar to that exercised on a motion for leave to file
`a supplemental pleading, the court's inattention to the formal distinction between amendment and
`supplementation is of no consequence.”).
`VoIP-Pal cites Prasco, LLC v. Medicis Pharmaceutical Corp., 537 F.3d 1329, 1336 n.5
`(Fed. Cir. 2008), in arguing that the standards under Rule 15(a) and (d) are different. Opposition
`at 4 n.27. But the Prasco decision merely noted that an amended complaint is allowed “as a
`matter of course” under Rule 15(a)(1), whereas Rule 15(d) does not provide for an amended
`complaint as a matter of course. In the present case, Twitter does not seek to amend its complaint
`as a matter of course under Rule 15(a)(1); rather Twitter seeks to amend by leave of court under
`Rule 15(a)(2). Prasco did not speak to whether discretionary amendment under Rule 15(a)(2) is
`evaluated according to different standard than discretionary amendment under Rule 15(d).
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`C.
`VoIP-Pal Would Not Suffer Undue Prejudice
`VoIP-Pal argues that it would be unduly prejudiced because it “will be forced to expend
`unnecessary time and resources to defend this suit.” In this regard, VoIP-Pal asserts that
`Twitter’s proposed invalidity claims are “unnecessary” because it “has no intent to enforce the
`Mobile Gateway patents against Twitter,” and that it “is willing to stipulate that Twitter does not
`infringe the Mobile Gateway patents.” Opposition at 5. As discussed above, those statements do
`not eliminate an actual controversy between the parties, so VoIP-Pal cannot legitimately argue
`that litigating the validity of the ’234 and ’721 patents is unnecessary and would cause undue
`prejudice.
`Furthermore, VoIP-Pal acknowledges that it will have to litigate the validity of the ’234
`and ’721 patents in its cases against Meta and Google. Opposition at 5-6. VoIP-Pal makes no
`showing or even assertion that litigating the validity of the ’234 and ’721 patents against Twitter
`would require any additional work or impose additional burden beyond what VoIP-Pal will have
`to bear for in the Meta and Google cases. For this additional reason, VoIP-Pal has not shown that
`Twitter’s proposed First Amended Complaint would cause undue prejudice.
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`D.
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`Twitter Did Not Unduly Delay Seeking To File The Proposed First Amended
`Complaint
`VoIP-Pal points to the passage of time in arguing that Twitter unduly delayed seeking to
`file the proposed First Amended Complaint, but that argument is meritless. This case is at a very
`early stage. The Court has not held an initial case management conference. The parties have
`proposed a schedule (Dkt. No. 39), but a schedule has not been entered.3 No discovery has
`occurred. Other than VoIP-Pal’s motion to dismiss, no substantive litigation has occurred in this
`case. This early stage of litigation is an opportune time for an amended complaint. See
`Muhmoud v. City of San Jose, No. 5:20-cv-08808-EJD, 2022 WL 1539783, at *2 (N.D. Cal.
`May 16, 2022) (finding no undue delay because “the early stage of the litigation weighs in favor
`of amendment,” where no case schedule had been set, no written discovery had been taken, no
`documents had been exchanged, and no initial disclosures had been served); see also Big Bear
`Lodging Ass'n v. Snow Summit, Inc., 182 F.3d 1096, 1105 (9th Cir. 1999) (“Because this litigation
`is still in its early stages, leave should be liberally granted unless amendment would be futile.”).
`
`E.
`VoIP-Pal’s Accusation That Twitter Violated The ADR Rules Is False
`VoIP-Pal’s remaining arguments comprise a false ad hominem accusation that Twitter
`engaged in this District’s ADR process in bad faith in the Twitter I action.
`In Twitter I, VoIP-Pal filed a motion accusing Twitter of violating the protective order by
`disclosing settlement discussions in the complaint for the Twitter II action based on the incorrect
`assertion that those settlement discussions were confidential. Twitter I, Dkt No. 72. The court
`denied VoIP-Pal’s motion, ruling that Twitter did not violate the protective order. Id., Dkt.
`No. 73. The court found that the relevant settlement discussions were not confidential and were
`not subject to the protective order. Id.
`Similarly, one party in Twitter I filed an ADR complaint against the other party accusing
`the other party of violating the confidentiality provisions of ADR L.R. 7-4(a) and engaging in a
`settlement conference in bad faith. Id., Dkt. No. 74. The court found that the other party did not
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`3 Twitter submits that the schedule in the present action should be coordinated with the schedules
`of at least the Meta and Google cases, and the schedule of the Amazon case if it is transferred to
`this District. Motion at 3.
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`violate ADR L.R. 7-4(a) or engage in the settlement conference in bad faith. Id.
`The second settlement conference in Twitter I occurred November 17, 2021. Dkt. 1 at
`¶ 20. Twitter filed the original Complaint in the present action on December 17, one month after
`the second settlement conference in Twitter I. Dkt. No. 1. VoIP-Pal argues, “This action
`demonstrates that Twitter again did not negotiate at the settlement conference in good faith and
`that it is using its serial-declaratory-judgment strategy to force VoIP-Pal to grant Twitter a
`covenant not to sue, just as Twitter did by filing Twitter II.” This accusation is false and meritless
`for multiple reasons.
`First, Twitter’s filing of the original Complaint in this action one month after the second
`settlement conference in Twitter I says nothing about the nature of Twitter’s participation in that
`settlement conference. The substance of the parties’ participation in that settlement conference is
`confidential, and VoIP-Pal has made no showing that Twitter participated in bad faith.
`Second, as the Twitter I docket shows, both parties are aware that the means for raising an
`accusation that a party participated in bad faith in a settlement conference pursuant to this
`District’s ADR Rules is to file an ADR complaint. After the first settlement conference in
`Twitter I, one party filed an ADR complaint against the other party accusing the other party of
`participating in the first settlement conference in bad faith. The court expressly found no
`violation of the ADR Rules or bad faith:
`Remark: Judge DeMarchi, as referral magistrate judge for settlement conference
`purposes, has considered a complaint brought by one party asserting the other
`party violated ADR L.R. 7-4(A) and acted in bad faith in the settlement
`conference held on April 15, 2021. Judge DeMarchi finds that no such violations
`occurred.
`Twitter I, Dkt. No. 74. If VoIP-Pal genuinely believed that Twitter participated in the second
`settlement conference in bad faith, it could have and should have filed an ADR complaint to that
`effect, but the docket shows no sign of such an ADR complaint.
`Finally, VoIP-Pal suggests some impropriety in Twitter’s declaratory judgment actions
`against VoIP-Pal. As noted above, VoIP-Pal moved to dismiss all three of Twitter’s declaratory
`judgment actions, and on all three occasions, the court found subject matter and personal
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
`FOR LEAVE TO FILE A FIRST AMEND. COMPL.
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`Case 3:21-cv-09773-JD Document 43 Filed 09/30/22 Page 11 of 11
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`jurisdiction to exist and venue to be proper. VoIP-Pal complains of being “forced” to give
`Twitter covenants not to sue in the past (Opposition at 7), but VoIP-Pal has not given up anything
`in granting those covenants unless VoIP-Pal intends to assert those patents against Twitter in the
`future.
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`Of course, that is VoIP-Pal’s real goal: to extricate itself from the present action in this
`District and later assert its patents against Twitter in a different forum of VoIP-Pal’s choosing. In
`the present case, it is telling that VoIP-Pal has not given Twitter a covenant not to sue for the ’234
`and ’721 patents, as is the fact that VoIP-Pal has not filed a stipulation of noninfringement or
`even specified what the scope and terms of such a stipulation would be. Notwithstanding VoIP-
`Pal’s protestations, VoIP-Pal appears now to be refraining from giving Twitter a covenant not to
`sue in the hope of having a clearer path to assert the ’234 and ’721 patents against Twitter in the
`future. Twitter asks the Court not to abide such gamesmanship.
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`IV. CONCLUSION
`As shown by Twitter’s Motion and the discussion above, all factors strongly favor
`permitting Twitter to file its proposed First Amended Complaint to add declaratory judgment
`claims that the ’234 and ’721 patents are invalid. Accordingly, Twitter respectfully requests that
`the Court grant its Motion for Leave to File a First Amended Complaint.
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`Dated: September 30, 2022
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`PERKINS COIE LLP
`/s/ Gene Lee
`Sarah Fowler (Bar No. 264838)
`Moeka Takagi (Bar No. 333226)
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Telephone: 650-838-4300
`Email: SFowler@perkinscoie.com
`Email: MTakagi@perkinscoie.com
`Gene W. Lee (pro hac vice)
`Thomas Matthew (pro hac vice)
`1155 Avenue of the Americas, 22nd floor
`New York, NY 10112-0015
`Telephone: 212-262-6900
`Email: GLee@perkinscoie.com
`Email: TMatthew@perkinscoie.com
`Attorneys for Plaintiff
`TWITTER, INC.
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`PLAINTIFF’S REPLY IN SUPPORT OF MOTION
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