Case 6:20-cv-00272-ADA Document 42 Filed 08/21/20 Page 1 of 5
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`CIVIL ACTION NO. 6:20-cv-00272-ADA
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`JURY TRIAL DEMANDED
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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON WEB SERVICES, INC.
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`Defendants.
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`PLAINTIFF VOIP-PAL.COM, INC.’S REPLY IN SUPPORT OF MOTION TO DISMISS OR IN
`THE ALTERNATIVE, MOTION TO STRIKE THE AMAZON DEFENDANTS’
`COUNTERCLAIMS FOR NON-INFRINGEMENT AND INVALIDITY
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`Case 6:20-cv-00272-ADA Document 42 Filed 08/21/20 Page 2 of 5
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`VoIP-Pal
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`Amazon
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`ABBREVIATION
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`TABLE OF ABBREVIATIONS
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`TERM
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`Plaintiff VoIP-Pal.com, Inc.
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`Defendants Amazon.com, Inc., Amazon.com
`Services LLC, and Amazon Web Services
`Inc.
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`ii
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`Case 6:20-cv-00272-ADA Document 42 Filed 08/21/20 Page 3 of 5
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`I.
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`Reply Argument
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`Contrary to what Amazon claims, its counterclaims were not necessarily mooted by VoIP-Pal’s
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`First Amended Complaint. See, e.g., Schutt v. Garland Indep. Sch. Dist., No. 3:17-CV-1708-B, 2019
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`U.S. Dist. LEXIS 114031, at *7 (N.D. Tex. Jul 9. 2019) (determining that counterclaims were not moot
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`due to failure to replead them in response to amended complaint); Freedom Med., Inc. v. Gillespie, No.
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`06-3195, 2013 U.S. Dist. LEXIS 103301, at *12-13 (E.D. Pa. July 23, 2013) (rejecting the argument
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`that pending counterclaims are mooted by the filing of an amended complaint); Ground Zero Museum
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`Workshop v. Wilson, 813 F. Supp. 2d 678, 705-06 (D. Md. Aug. 24, 2011) (“Revisions to a complaint
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`do not require revisions to a counterclaim.”). Courts are divided on whether or not the Federal Rules
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`of Civil Procedure require that a party replead a counterclaim in response to an amended complaint.
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`See Mathews v. Ohio Pub. Emples. Ret. Sys., No. 2:12-cv-1033, 2014 U.S. Dist. LEXIS 133506, at *9
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`(S.D. Ohio Sep. 23, 2014) (collecting cases). Courts in this Circuit have recognized that the Fifth
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`Circuit has not squarely addressed this issue. See Schutt, 2019 U.S. Dist. LEXIS 114031, at *8.
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`The fact that Amazon did not replead its counterclaims in its answer to VoIP-Pal’s First
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`Amended Complaint (Dkt. No. 39) also does not necessarily mean that Amazon’s counterclaims are
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`moot because counterclaims do not need to be pled in an answer—they can be independently pled.
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`See, e.g., AVKO Educ. Research Found. v. Morrow, No. 11-13381, 2013 U.S. Dist. LEXIS 49463, at
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`*30 (E.D. Mich. Apr. 5, 2013) (concluding that counterclaim remained pending even though the
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`defendants had not re-filed it with their answer to the amended complaint); Ground Zero Museum
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`Workshop, 813 F. Supp. 2d at 705-06 (concluding that the defendant, who did not reassert
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`counterclaims in answers to the first and second amended complaints, did not waive his right to pursue
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`the counterclaims where, inter alia, the defendant manifested an intent to pursue such claims); Dunkin’
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`Donuts, Inc. v. Romanias, No. 00-1886, 2002 U.S. Dist. LEXIS 28405, at *5-6 (W.D. Pa. May 29,
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`2002) (“Rule 13, which governs counterclaims, requires only that a counterclaim be set forth in a
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`Case 6:20-cv-00272-ADA Document 42 Filed 08/21/20 Page 4 of 5
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`pleading - it does not mandate that it be contained in an answer. . . . Further, an answer responds to
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`allegations in a complaint, a counterclaim is something independent.”) (internal citations omitted).
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`Because Amazon has not unequivocally withdrawn its counterclaims, the Court should not
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`deem VoIP-Pal’s Motion moot. Rather, because Amazon’s counterclaims fail to satisfy the pleadings
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`standard and are redundant of Amazon’s affirmative defenses, the Court should grant VoIP-Pal’s
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`Motion and dismiss Amazon’s counterclaims; or, due to Amazon’s failure to replead its counterclaims
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`in its Answer to the First Amended Complaint, the Court should deem Amazon’s counterclaims
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`abandoned. See Settlement Capital Corp. v. Pagan, 649 F.Supp.2d 545, 562 (N.D. Tex. 2009) (finding
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`that counterclaims not reasserted in defendant’s amended answer were abandoned).
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`Dated: August 21, 2020
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`Respectfully submitted,
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` By: /s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@gikkaslaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
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`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
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`Case 6:20-cv-00272-ADA Document 42 Filed 08/21/20 Page 5 of 5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
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`electronic service are being served with a copy of the forgoing PLAINTIFF VOIP-PAL.COM, INC.’S
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`REPLY IN SUPPORT OF MOTION TO DISMISS OR IN THE ALTERNATIVE, MOTION TO
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`STRIKE THE AMAZON DEFENDANTS’ COUNTERCLAIMS FOR NON-INFRINGEMENT AND
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`INVALIDITY via the Court’s CM/ECF system pursuant to the Federal Rules of Civil Procedure and
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`Local Rule CV-5(b)(1) this 21st day of August, 2020.
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`By: /s/Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Hudnell Law Group P.C.
`800 W. El Camino Real Suite 180
`Mountain View, California 94040
`T: 650.564.3698
`F: 347.772.3034
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`3
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