Case 3:21-cv-09773-JD Document 48 Filed 11/21/22 Page 1 of 22
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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
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`TWITTER, INC., a Delaware corporation,
`Plaintiff,
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`v.
`VOIP-PAL.COM, INC., a Nevada
`corporation,
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`Defendant.
`
`No. 3:21-cv-09773-JD
`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
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`FIRST AMENDED COMPLAINT FOR
`DECLARATORY JUDGMENT
`No. 3:21-cv-09773-JD
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`I.
`INTRODUCTION
`1.
`This First Amended Complaint for declaratory judgment of noninfringement and
`invalidity arises from a real and immediate controversy between plaintiff Twitter, Inc.
`(“Twitter”), and defendant VoIP-Pal.com Inc. (“VoIP-Pal”), as to whether Twitter infringes any
`claims of U.S. Patents 8,630,234 and 10,880,721,1 both entitled, “Mobile Gateway.”
`2.
`Since 2016, Twitter and VoIP-Pal have been embroiled in a series of lawsuits
`involving VoIP-Pal’s patents in the field of routing communications in a packet-switched network
`such as an Internet Protocol network. Those lawsuits have been part of a large litigation
`campaign in which VoIP-Pal has asserted patents against Twitter and other major technology
`companies such as Apple, AT&T, Verizon, Amazon, Facebook, WhatsApp, Google, T-Mobile,
`Samsung Electronics, and Huawei.
`3.
`VoIP-Pal’s litigation campaign began in 2016, when it filed lawsuits against
`Twitter, Apple, AT&T, and Verizon alleging infringement of two patents that are part of a patent
`family that VoIP-Pal refers to as the “Routing, Billing, Rating” or “RBR” patents (the “2016
`Cases”; e.g., Exhibit 3). All patents in the RBR family share a common specification. In 2018,
`VoIP-Pal filed additional lawsuits against Apple and Amazon to assert four other RBR patents
`(the “2018 Cases”). The 2016 and 2018 Cases were originally filed in the District of Nevada but
`were transferred to this Court in 2018.
`4.
`This Court found all six RBR patents asserted in the 2016 and 2018 Cases to be
`invalid under 35 U.S.C. § 101 for claiming ineligible subject matter. E.g., VoIP-Pal.com, Inc. v.
`Twitter, Inc., Case No. 18-cv-04523-LHK, ECF No. 82 (Exhibit 4). On March 16, 2020, the
`Court of Appeals for the Federal Circuit affirmed those judgments of invalidity.
`5.
`Dissatisfied with the outcome of the 2016 and 2018 Cases in this Court, VoIP-Pal
`went forum shopping. In April 2020, VoIP-Pal filed lawsuits in the Western District of Texas
`against Facebook, WhatsApp, Google, Amazon, Apple, AT&T, and Verizon to assert a seventh
`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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`The claims of the ’606 patent asserted in those new lawsuits are very similar to the claims of the
`six RBR patents that VoIP-Pal previously asserted in the 2016 and 2018 Cases and were found to
`be invalid by this Court.
`6.
`On April 8, 2020, VoIP-Pal issued a press release stating that VoIP-Pal is
`considering taking further action and is not finished taking action in the wake of the recent
`Federal Circuit decision affirming this Court’s judgment in the 2016 Cases that two of VoIP-Pal’s
`previously-asserted patents are invalid under 35 U.S.C. § 101 (Exhibit 5).
`7.
`On April 8, 2020, after seeing VoIP-Pal’s lawsuits in Texas against Facebook,
`WhatsApp, Google, Amazon, and Apple and VoIP-Pal’s press release, Twitter filed an action for
`declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court (Case
`No. 20-cv-02397; see Exhibit 7). Soon thereafter, Apple, AT&T, and Verizon filed similar
`declaratory judgment actions in this Court against VoIP-Pal based on the ’606 patent (collectively
`with Twitter the “2020 DJ Actions”). On April 14, 2020, Apple filed a first amended complaint
`that added claims for declaratory judgment of noninfringement and invalidity of an eighth patent
`in the RBR family, U.S. Patent 9,935,872 (the “’872 patent”).
`8.
`In July 2020, VoIP-Pal filed motions to dismiss the 2020 DJ Actions for lack of
`subject matter jurisdiction, lack of personal jurisdiction, and improper venue. In December 2020,
`the Court denied VoIP-Pal’s motions to dismiss. E.g., Twitter, Inc. v. VoIP-Pal.com, Inc., Case
`No. 20-cv-02397, ECF No. 50 (Exhibit 8); Apple Inc. v. VoIP-Pal.com, Inc., Case No. 20-cv-
`02460, ECF No. 60.
`9.
`Between December 2020 and April 2021, VoIP-Pal and Twitter communicated
`many times about potential settlement with respect to the ’606 patent and VoIP-Pal’s other
`patents. Since December 2020, Twitter’s position has been that Twitter is unwilling to enter into
`a piecemeal settlement with VoIP-Pal that addresses only one or some of VoIP-Pal’s patents, and
`that any settlement must be global in the sense of encompassing VoIP-Pal’s entire patent
`portfolio. Twitter has communicated that position to VoIP-Pal multiple times, and VoIP-Pal has
`refused to offer Twitter a license or covenant not to sue for VoIP-Pal’s entire patent portfolio.
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`10.
`For example, on January 11, 2021, VoIP-Pal proposed that VoIP-Pal and Twitter
`enter into a settlement for the ’606 patent and all other RBR patents. Twitter observed that such a
`settlement would not cover VoIP-Pal’s entire patent portfolio and expressly noted that VoIP-Pal
`had recently touted receiving a U.S. patent and a European patent in the Mobile Gateway family.
`Twitter later rejected VoIP-Pal’s proposed settlement for all RBR patents in part because it would
`not have covered all of VoIP-Pal’s patents, including the Mobile Gateway patents.
`11.
`On March 24, 2021, VoIP-Pal filed another motion to dismiss the 2020 DJ
`Actions—this time based on a limited covenant not to sue for the ’606 patent. E.g., Case No. 20-
`cv-02397, ECF No. 62. That limited covenant not to sue was insufficient to eliminate subject
`matter jurisdiction for Twitter’s declaratory judgment claims for the reasons explained in
`Twitter’s opposition to that motion. Id., ECF No. 66.
`12.
`In response to Twitter’s opposition, on April 9, 2021, VoIP-Pal offered a broader
`covenant not to sue for the ’606 patent and asked Twitter to stipulate to dismissal of Twitter’s
`declaratory judgment action. Twitter responded in part that, at a minimum, any covenant not to
`sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
`the ’872 patent. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future and that
`only a covenant not to sue that covers VoIP-Pal’s entire patent portfolio would resolve the
`broader dispute between Twitter and VoIP-Pal concerning VoIP-Pal’s patent portfolio. VoIP-Pal
`declined to extend the covenant to include VoIP-Pal’s patents other than the ’606 patent.
`13.
`On April 14, 2021, VoIP-Pal filed a reply brief in support of its motion to dismiss,
`which granted Twitter the broader covenant not to sue for the ’606 patent that VoIP-Pal had
`offered on April 9. Id., ECF No. 68. VoIP-Pal also granted similar broader covenants not to sue
`to Apple, AT&T, and Verizon. On August 30, 2021, this Court granted VoIP-Pal’s motion to
`dismiss Twitter’s 2020 DJ Action in view of VoIP-Pal’s broader covenant not to sue for the ’606
`patent (but denied VoIP-Pal’s motion to dismiss the other 2020 DJ Actions). However, the Court
`retained jurisdiction over Twitter’s 2020 DJ Action to consider Twitter’s motion for attorney fees,
`which is fully briefed and under submission to the Court.
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`14.
`On April 15, 2021, Twitter and VoIP-Pal participated in a court-supervised
`settlement conference in Twitter’s 2020 DJ Action, which did not result in settlement.
`15.
`Following that unsuccessful settlement conference, on April 16, 2021, Twitter
`filed an action for declaratory judgment of noninfringement of the ’872 patent. Twitter, Inc. v.
`VoIP-Pal.com, Inc., Case No. 5:21-cv-02769-LHK, ECF No. 1 (the “2021 DJ Action”;
`Exhibit 10). In response, VoIP-Pal filed a motion to dismiss for lack of subject matter
`jurisdiction, lack of personal jurisdiction, and for improper venue. Id. at ECF No. 25. On
`November 2, 2021, the Court denied VoIP-Pal’s motion to dismiss Twitter’s 2021 DJ Action. Id.
`at ECF No. 38 (Exhibit 11).
`16.
`On June 25, 2021, VoIP-Pal filed lawsuits in the Western District of Texas against
`Apple, AT&T, Verizon, Amazon, Facebook, WhatsApp, Google, and T-Mobile alleging
`infringement of the two Mobile Gateway patents (the “Texas Mobile Gateway Cases”). The
`complaints in those lawsuits identify claim 20 of the ’234 patent and claim 38 of the ’721 patent
`as exemplary asserted claims, but VoIP-Pal asserts many other claims.
`17.
`The Mobile Gateway patents are not members of the RBR family, but they are
`very similar to the eight RBR patents that were or are at issue in the 2016 and 2018 Cases, the
`2020 Texas Cases, and the 2020 DJ Actions. The Mobile Gateway patents concern the same
`technology as the previously-asserted RBR patents—namely, routing of communications in a
`packet-switched network. The claims of the Mobile Gateway patents are very similar to the
`claims of the RBR patents previously asserted by VoIP-Pal (Exhibit 12).
`18.
`VoIP-Pal’s infringement allegations in the Texas Mobile Gateway Cases are very
`similar to VoIP-Pal’s infringement allegations in the 2016 and 2018 Cases and/or 2020 Texas
`Cases against Twitter, Apple, AT&T, Verizon, and/or Amazon. For example, VoIP-Pal’s
`infringement allegations for the Mobile Gateway patents are directed to some of the same accused
`instrumentalities that VoIP-Pal accused of infringement in VoIP-Pal’s prior lawsuits, such as
`messaging involving text, images, and videos.
`19.
`VoIP-Pal has sued every defendant from the 2016 and 2018 Cases for
`infringement of the Mobile Gateway patents other than Twitter. On information and belief, the
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`reason that VoIP-Pal has not sued Twitter for infringement of the Mobile Gateway patents to date
`is strategic— for example, concern that, if VoIP-Pal filed a lawsuit to assert the Mobile Gateway
`patents against Twitter while Twitter’s 2020 and/or 2021 DJ Actions were pending, they might be
`deemed to be first-filed cases such that VoIP-Pal would end up litigating the Mobile Gateway
`patents in this Court.
`20.
`On November 17, 2021, the parties participated in a second court-supervised
`settlement conference in Twitter’s 2020 DJ Action, which did not result in settlement.
`21.
`On November 30, 2021, VoIP-Pal filed lawsuits in the Western District of Texas
`against Samsung Electronics and Huawei Technologies alleging infringement of the two Mobile
`Gateway patents.
`22.
`Following this Court’s denial of VoIP-Pal’s motion to dismiss Twitter’s 2021 DJ
`Action (Exhibit 10), on December 9, 2021, VoIP-Pal filed a motion to dismiss based on a
`covenant not to sue for the ’872 patent. On information and belief, VoIP-Pal plans to file a
`lawsuit against Twitter for infringement of the Mobile Gateway patents after Twitter’s 2021 DJ
`Action is dismissed.
`23.
`Twitter believes that it does not infringe and has not infringed any claims of the
`Mobile Gateway patents, including claim 20 of the ’234 patent and claim 38 of the ’721 patent,
`which were exemplary claims identified in the complaints in VoIP-Pal’s Texas Mobile Gateway
`Cases. Since December 2020, Twitter has repeatedly informed VoIP-Pal that any resolution of
`the disputes concerning VoIP-Pal’s patents must cover VoIP-Pal’s entire patent portfolio, but
`VoIP-Pal has refused to offer a license or covenant not to sue to Twitter for VoIP-Pal’s entire
`patent portfolio.
`24.
`VoIP-Pal’s actions have created a real, substantial, and immediate controversy
`between VoIP-Pal and Twitter as to whether Twitter’s products and/or services infringe any
`claims of the Mobile Gateway patents. The facts and allegations recited herein show that there is
`a real, substantial, immediate, and justiciable controversy concerning this issue.
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`II.
`PARTIES
`25.
`Plaintiff Twitter is a company incorporated under the laws of Delaware, with
`headquarters at 1355 Market Street, Suite 900, San Francisco, California.
`26.
`Twitter operates a global Internet platform for public self-expression and
`conversation in real time. People with a Twitter account can post “Tweets”—messages of 280
`characters or less, sometimes with pictures or video, and those messages can be read by other
`people using the Twitter platform. They may, in turn, “Retweet” those messages to their own
`followers. Users can include “hashtagged” keywords (indicated by a “#”) in their Tweets to
`facilitate searching for messages on the same topic. People who use Twitter can also send direct
`messages to other users that can contain images and video. Each day, people post hundreds of
`millions of Tweets, engaging in public conversation on virtually every conceivable topic.
`Twitter’s products and services are provided through the Twitter platform.
`27.
`Based on information and belief, defendant VoIP-Pal is a company incorporated
`under the laws of Nevada and recently relocated its principal place of business from Bellevue,
`Washington, to 7215 Bosque Blvd, Suite 102, Waco, Texas 76710. See https://www.voip-
`pal.com/contact-us.
`28.
`Based on information and belief, VoIP-Pal is the owner of the Mobile Gateway
`patents.
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`III.
`JURISDICTION AND VENUE
`29.
`This First Amended Declaratory Judgment Complaint includes counts for
`declaratory relief under the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
`30.
`Twitter seeks declaratory relief under 28 U.S.C. §§ 2201 and 2202.
`31.
`This Court has subject matter jurisdiction over the claims alleged in this action
`under 28 U.S.C. §§ 1331, 1332, 1338, 2201, and 2202 because this Court has exclusive
`jurisdiction over declaratory judgment claims arising under the patent laws of the United States
`pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202. Jurisdiction is also proper under 28 U.S.C.
`§ 1332 because Twitter and VoIP-Pal are citizens of different states, and the value of the
`controversy exceeds $75,000.
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`32.
`This Court can provide the declaratory relief sought in this First Amended
`Declaratory Judgment Complaint because an actual case and controversy exists between the
`parties within the scope of this Court’s jurisdiction pursuant to 28 U.S.C. § 2201. An actual case
`and controversy exists at least for the reasons set forth in Sections I, II, and IV of this Complaint
`(¶¶ 1-28, 38-76).
`33.
`This Court has personal jurisdiction over VoIP-Pal because VoIP-Pal has
`purposefully directed activities in this District that form the basis of Twitter’s claim against VoIP-
`Pal—namely, prosecuting the 2016 Case involving two RBR patents against Twitter in this
`District, and voluntarily transferring from Nevada to this District the 2016 Cases against Apple,
`AT&T, and Verizon and the 2018 Cases against Apple and Amazon. VoIP-Pal also has retained
`counsel located in California to prosecute its patent portfolio and to represent VoIP-Pal in the
`2016 and 2018 Cases; the 2020 Texas Action; the 2020 DJ Actions filed by Twitter, Apple,
`AT&T, and Verizon in this Court; the 2021 DJ Action filed by Twitter; and the Texas Mobile
`Gateway cases, including Lewis Hudnell of the Hudnell Law Group in Mountain View,
`California. In addition, on information and belief, on or about April 20, 2016, VoIP-Pal
`representative Ray Leon met with representatives of Apple in the Northern District of California
`in connection with VoIP-Pal’s patent enforcement campaign.
`34.
`This Court found the foregoing activities to be a sufficient basis for personal
`jurisdiction in the context of the 2020 DJ Actions for the ’606 patent (and ’872 patent for Apple)
`and Twitter’s 2021 DJ Action for the ’872 patent, and those activities also support personal
`jurisdiction for the present action for the Mobile Gateway patents. As a result of VoIP-Pal’s
`actions described in this First Amended Complaint, there is a real, substantial, live, immediate,
`and justiciable case or controversy concerning the Mobile Gateway patents between VoIP-Pal and
`Twitter, a company that resides and operates in this District. As a result of VoIP-Pal’s actions
`described above, VoIP-Pal has established sufficient minimum contacts with the Northern District
`of California such that VoIP-Pal is subject to specific personal jurisdiction in the Northern
`District of California for this action. Further, the exercise of personal jurisdiction based on those
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`repeated and highly-pertinent contacts does not offend traditional notions of fair play and
`substantial justice.
`35.
`Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400, including
`because, under Ninth and Federal Circuit law, venue in declaratory judgment actions for
`noninfringement of patents is determined under the general venue statute, 28 U.S.C. § 1391.
`36.
`Under 28 U.S.C. § 1391(b)(1), venue is proper in any judicial district where a
`defendant resides. An entity with the capacity to sue and be sued, such as VoIP-Pal, is deemed to
`reside, if a defendant, in any judicial district in which such defendant is subject to the court’s
`personal jurisdiction with respect to the civil action in question under 28 U.S.C. § 1391(c).
`37.
`As discussed above, VoIP-Pal is subject to personal jurisdiction with respect to
`this action in the Northern District of California, and thus, for the purposes of this action, VoIP-
`Pal resides in the Northern District of California and venue is proper under 28 U.S.C. § 1391.
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`A.
`
`IV.
`FACTUAL BACKGROUND
`VoIP-Pal’s 2016 and 2018 Cases And The RBR Patents
`38.
`In 2016, VoIP-Pal filed lawsuits in the District of Nevada against Twitter, Apple,
`AT&T, and Verizon, alleging infringement of two RBR patents, U.S. Patents 8,542,815 (“the
`’815 patent”) and 9,179,005 (“the ’005 patent”; Exhibit 3). Twitter filed a motion to transfer for
`improper venue, which sought transfer to this Court. Twitter’s motion was granted, after which
`VoIP-Pal agreed to transfer its actions against Apple, AT&T, and Verizon to this Court. Between
`August and November of 2018, all four of those actions were transferred to this Court and
`consolidated for pretrial purposes: Twitter (Case No. 18-cv-04523-LHK), Verizon (Case No. 18-
`cv-06054-LHK), AT&T (Case No. 18-cv-06177-LHK), and Apple (Case No. 18-cv-06217-LHK)
`(i.e., the 2016 Cases).
`39.
`In the 2016 Cases, Twitter, Apple, AT&T, and Verizon filed a motion to dismiss
`under Fed. R. Civ. P. 12(b)(6) because the asserted claims of the ’815 and ’005 patents are invalid
`under 35 U.S.C. § 101. On March 25, 2019, this Court granted the motion to dismiss and found
`all asserted claims of the ’815 and ’005 patents to be invalid (Exhibit 4). VoIP-Pal appealed. On
`March 16, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
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`40.
`In May and June 2018, VoIP-Pal filed two additional lawsuits against Apple and
`Amazon in the District of Nevada, alleging infringement of four other RBR patents, U.S. Patents
`9,537,762; 9,813,330; 9,826,002; and 9,948,549. The asserted claims of those four RBR patents
`are very similar to the asserted claims of the two RBR patents in the 2016 Cases.
`41.
`In October and November 2018, VoIP-Pal voluntarily agreed to transfer to this
`Court the 2018 Cases against Apple (Case No. 5:18-cv-06216-LHK) and Amazon (Case
`No. 5:18-cv-07020-LHK) (i.e., the 2018 Cases).
`42.
`In the 2018 Cases, Apple and Amazon filed a motion to dismiss under Fed. R. Civ.
`P. 12(b)(6) that the asserted claims of the four asserted patents are invalid under 35 U.S.C. § 101.
`On November 1, 2019, this Court granted Apple’s and Amazon’s motion to dismiss and found all
`asserted claims of the patents in the 2018 Cases to be invalid. VoIP-Pal appealed. On
`November 3, 2020, the Federal Circuit affirmed this Court’s judgment of invalidity.
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`B.
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`VoIP-Pal’s 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.
`During April 2-7, 2020, VoIP-Pal filed four new lawsuits in the Western District
`of Texas, Waco Division, asserting a seventh RBR patent, the ’606 patent, against defendants
`Facebook and WhatsApp (Case No. 20-cv-267), Google (Case No. 20-cv-269), and previous
`defendants Amazon (Case No. 20-cv-272) and Apple (Case No. 20-cv-275). On April 24, 2020,
`VoIP-Pal filed new lawsuits in the same court asserting the ’606 patent against previous
`defendants AT&T (Case No. 20-cv-325) and Verizon Wireless (Case No. 20-cv-327).
`44.
`The claims of the ’606 patent that VoIP-Pal asserts in the 2020 Texas Cases are
`very similar to claims of the six patents that VoIP-Pal asserted against Twitter, Apple, AT&T,
`and Verizon in the 2016 and 2018 Cases and were held to be invalid (for example, claim 74 of the
`’005 patent; Exhibit 3).
`45.
`VoIP-Pal’s infringement allegations in the 2020 Texas Cases are similar to VoIP-
`Pal’s infringement allegations in the 2016 and 2018 Cases (including against all of the same prior
`defendants except for Twitter) and are directed to accused instrumentalities that are similar to
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`Twitter’s products and services (for example, communications involving text, images, and
`videos).
`46.
`On April 8, 2020, VoIP-Pal issued a press release that announced the filing of the
`2020 Texas Cases against Facebook, WhatsApp, Google, Amazon, and Apple (Exhibit 5 and
`https://www.voip-pal.com/voip-pal-new-patent-lawsuits-april-). The press release also mentioned
`the Federal Circuit’s affirmance of this Court’s judgment of invalidity in the 2016 Cases against
`Twitter, Apple, AT&T, and Verizon. The press release states that, in the wake of the Federal
`Circuit decision, VoIP-Pal is considering taking further action and “planning their next moves.”
`VoIP-Pal’s CEO is quoted as saying, “Our legal team is assessing our next moves regarding this
`Alice decision and we expect to announce our intentions soon. I can tell you; we are not
`finished,” and “We remain firm in our resolve to achieve monetization for our shareholders and
`will continue to see this fight through until a successful resolution is reached. Patience is a
`virtue.” (Exhibit 5 (emphasis added).)
`47.
`On April 8, 2020, after seeing VoIP-Pal’s lawsuits in Texas against Facebook,
`WhatsApp, Google, Amazon, and Apple and VoIP-Pal’s press release, Twitter filed an action for
`declaratory judgment of noninfringement of the ’606 patent against VoIP-Pal in this Court (Case
`No. 20-cv-02397).
`48.
`On April 10, 2020, Apple filed an action for declaratory judgment of
`noninfringement and invalidity of the ’606 patent against VoIP-Pal in this Court (Case No. 20-cv-
`02460). On April 14, 2020, Apple filed a first amended complaint that added claims for
`declaratory judgment of noninfringement and invalidity of the ’872 patent.
`49.
`On April 24, 2020, VoIP-Pal filed lawsuits in the Western District of Texas
`asserting the ’606 patent against AT&T and Verizon. Soon thereafter, AT&T and Verizon filed
`declaratory judgment actions against VoIP-Pal for the ’606 patent in this Court. AT&T Corp. et
`al. v. VoIP-Pal.com, Inc., Case No. 20-cv-02995; Cellco Partnership d/b/a Verizon Wireless v.
`VoIP-Pal.com, Inc., Case No. 20-cv-03092.
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`50.
`On June 4, 2020, counsel for Twitter asked counsel for VoIP-Pal whether VoIP-
`Pal would be willing to grant Twitter a covenant not to sue based on the ’606 patent. On June 11,
`2020, counsel for VoIP-Pal declined to discuss a covenant not to sue.
`51.
`On June 26, 2020, Twitter filed a first amended complaint that added a claim for a
`declaratory judgment of invalidity of the ’606 patent (Exhibit 7).
`52.
`On July 10, 2020, VoIP-Pal filed motions to dismiss Twitter’s, Apple’s AT&T’s,
`and Verizon’s 2020 DJ Actions for lack of subject matter jurisdiction, lack of personal
`jurisdiction, and improper venue. In December 2020, this Court denied VoIP-Pal’s motions to
`dismiss, finding that subject matter jurisdiction and personal jurisdiction exist and that venue is
`proper. E.g., Case No. 20-cv-02397, ECF No. 50 (Twitter) (Exhibit 8); Case No. 20-cv-02460,
`ECF No. 60 (Apple).
`53.
`On December 2, 2020, counsel for Twitter and VoIP-Pal had a telephone call in
`which VoIP-Pal offered to pay Twitter $250,000 for Twitter to dismiss its declaratory judgment
`action against the ’606 patent. Twitter informed VoIP-Pal that Twitter is not interested in a
`piecemeal settlement in view of VoIP-Pal’s other patents, including the ’872 patent (which was
`the subject of declaratory judgment claims advanced by Apple), and the likelihood that VoIP-Pal
`would sue Twitter again in the future. Twitter’s counsel asked if VoIP-Pal would be willing to
`discuss a global settlement by which VoIP-Pal would agree not to sue Twitter on any of its
`patents. VoIP-Pal’s counsel declined to discuss such a global settlement. VoIP-Pal did not deny
`the likelihood that VoIP-Pal would sue Twitter again in the future.
`54.
`On January 4, 2021, counsel for Twitter corresponded with counsel for VoIP-Pal
`to state that, in view of VoIP-Pal’s litigation history and patent portfolio, Twitter is not interested
`in pursuing a piecemeal resolution that would resolve only the current action and to note that
`VoIP-Pal declined to discuss a broader resolution that would include the ’872 patent.
`55.
`On January 11, 2021, counsel for Twitter and VoIP-Pal had a telephone call in
`which VoIP-Pal proposed to enter into a settlement for the ’606 patent and “all family members”
`(i.e., all RBR patents), for a payment by Twitter of $1 million. Twitter observed that VoIP-Pal’s
`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.
`That recently-issued U.S. Mobile Gateway patent was the ’721 patent, which issued on
`December 29, 2020. Twitter asked if VoIP-Pal would agree to a settlement that would include
`patents other than those in the RBR family. VoIP-Pal’s counsel said he would check with VoIP-
`Pal, but VoIP-Pal did not respond to that inquiry.
`56.
`On January 15, 2021, Twitter declined VoIP-Pal’s proposed settlement for the
`RBR patent family. Twitter’s reasons for declining VoIP-Pal’s offer included that it would not
`have covered all of VoIP-Pal’s patents (including the recently-touted Mobile Gateway patent),
`Twitter’s belief that VoIP-Pal’s RBR patents are invalid under 35 U.S.C. § 101, and VoIP-Pal’s
`demand for a $1 million payment was unreasonable.
`57.
`On March 24, 2021, VoIP-Pal filed additional motions to dismiss Twitter’s,
`Apple’s, AT&T’s, and Verizon’s 2020 DJ Actions—this time based on covenants not to sue that
`VoIP-Pal granted in the motions. E.g., Twitter, Case No. 20-cv-02397, ECF No. 62 (Mar. 21,
`2021). That covenant was insufficient to eliminate subject matter jurisdiction for reasons
`explained in Twitter’s opposition. Id., ECF No. 66 (Apr. 7, 2021). In response, on April 9, 2021,
`VoIP-Pal offered a broader covenant not to sue based on the ’606 patent and asked Twitter to
`stipulate to dismissal of Twitter’s declaratory judgment action.
`58.
`On April 12, 2021, Twitter responded in part that, at a minimum, a covenant not to
`sue to resolve Twitter’s declaratory judgment action against the ’606 patent should also include
`the ’872 patent. Twitter also stated that it expects VoIP-Pal to sue Twitter in the future for
`infringement of other patents and that even a broader covenant that includes the ’606 and ’872
`patents would not be sufficient to resolve the broader dispute between Twitter and VoIP-Pal
`based on VoIP-Pal’s patent portfolio. Twitter stated, in view of the broader dispute between
`VoIP-Pal and Twitter concerning VoIP-Pal's patent portfolio, VoIP-Pal can eliminate that broader
`dispute only by offering a covenant not to sue that covers VoIP-Pal’s entire patent portfolio and
`future related patents and applications.
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`59.
`On April 13, 2021, VoIP-Pal responded by declining to discuss at that time a
`covenant not to sue for more than the ’606 patent. VoIP-Pal did not deny Twitter’s stated
`expectation that VoIP-Pal plans to sue Twitter in the future.
`60.
`On April 14, 2021, VoIP-Pal filed its reply brief in support of its motion to
`dismiss, which granted Twitter the broader covenant not to sue for the ’606 patent that VoIP-Pal
`had offered on April 9. Case No. 20-cv-02397, ECF No. 68. In view of the circumstances and
`the broad dispute between Twitter and VoIP-Pal concerning VoIP-Pal’s patents, Twitter believed
`that the broader