Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 1 of 8
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`CIVIL ACTION NO. 6:20-cv-267-ADA
`
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`FACEBOOK, INC., and
`WHATSAPP, INC.,
`
`Defendants.
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`GOOGLE, LLC,
`
`Defendant.
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON.COM WEB SERVICES, INC.;
`
`Defendants.
`
`
`
`CIVIL ACTION NO. 6:20-cv-269-ADA
`
`
`
`
`
`
`CIVIL ACTION NO. 6:20-cv-272-ADA
`
`
`
`
`JOINT STATUS REPORT
`
`This report is provided in response to the email to the parties from the Court’s chambers
`
`dated September 15, 2021. The parties jointly provide the following information regarding the
`
`status of the Northern District of California cases that involve U.S. Patent No. 10,218,606 (“the
`
`’606 patent”), the same patent at issue in the above-captioned matters. The parties also provide
`
`
`
`1
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`CIVIL ACTION NO. 6:20-cv-267-ADA
`
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`FACEBOOK, INC., and
`WHATSAPP, INC.,
`
`Defendants.
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`GOOGLE, LLC,
`
`Defendant.
`
`
`VOIP-PAL.COM, INC.
`
`Plaintiff,
`
`v.
`
`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON.COM WEB SERVICES, INC.;
`
`Defendants.
`
`
`
`CIVIL ACTION NO. 6:20-cv-269-ADA
`
`
`
`
`
`
`CIVIL ACTION NO. 6:20-cv-272-ADA
`
`
`
`
`JOINT STATUS REPORT
`
`This report is provided in response to the email to the parties from the Court’s chambers
`
`dated September 15, 2021. The parties jointly provide the following information regarding the
`
`status of the Northern District of California cases that involve U.S. Patent No. 10,218,606 (“the
`
`’606 patent”), the same patent at issue in the above-captioned matters. The parties also provide
`
`
`
`1
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 2 of 8
`
`
`
`their joint agreement regarding how they propose the Court should proceed in these matters.
`
`In 2020, VoIP-Pal asserted the ’606 Patent against Verizon, AT&T, Apple, Google,
`
`Amazon, and Facebook in this Court (the “2020 WDTX cases”). Verizon, Apple, and AT&T (as
`
`well as Twitter) also filed declaratory judgments actions on the ’606 Patent in N.D. Cal., all of
`
`which were assigned to The Hon. Lucy Koh (the “2020 NDCA cases”).
`
`VoIP-Pal then moved to dismiss the 2020 NDCA cases on the basis that, inter alia, the
`
`2020 WDTX cases were filed before the 2020 NDCA cases. See Apple, Inc. v. VoIP-Pal.com,
`
`Inc., No. 5:20-cv-02460-LHK, Dkt. 32 (N.D. Cal. Jul. 10, 2020). On September 29, 2020, this
`
`Court sua sponte stayed the 2020 WDTX cases pending Judge Koh’s ruling on VoIP-Pal’s
`
`motion to dismiss the 2020 NDCA cases. See VoIP-Pal.com, Inc. v. Google LLC, No. 6:20-cv-
`
`00269-ADA, Dkt. 38 (W.D. Tex. Sept. 29, 2020). In December 2020, Judge Koh denied VoIP-
`
`Pal’s motion to dismiss the 2020 NDCA cases. See Apple, Inc. v. VoIP-Pal.com, Inc., 506 F.
`
`Supp. 3d 947 (N.D. Cal. Dec. 11, 2020). VoIP-Pal petitioned the Federal Circuit for a writ of
`
`mandamus regarding Judge Koh’s rulings, but the Federal Circuit denied VoIP-Pal’s petition on
`
`February 19, 2021. See In re VoIP-Pal.com, Inc., 845 Fed. Appx. 940 (Fed. Cir. 2021).
`
`On March 24, 2021, VoIP-Pal again moved to dismiss each of the 2020 NDCA cases, this
`
`time for lack of subject-matter jurisdiction. That second motion to dismiss was resolved as
`
`follows:
`
` VoIP-Pal and Verizon entered into a joint stipulation of dismissal before Judge Koh
`
`ruled on the second motion to dismiss Verizon’s 2020 NDCA case. That case was
`
`therefore dismissed on May 26, 2021 pursuant to the settlement. A copy of the order
`
`dismissing the Verizon 2020 NDCA case is attached as Exhibit A.
`
`
`
`2
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 3 of 8
`
`
`
` Judge Koh granted VoIP-Pal’s motion to dismiss the Twitter 2020 NDCA case.
`
`Copies of the order on VoIP-Pal’s second motion to dismiss and the related judgment
`
`are attached as Exhibits B and C. The deadline for Twitter to file a motion for
`
`attorney’s fees is September 27, 2021.
`
` On August 26, 2021, Judge Koh denied VoIP-Pal’s motion to dismiss the Apple and
`
`AT&T 2020 NDCA cases. Copies of the orders are attached as Exhibits D and E.
`
`The Apple and AT&T 2020 NDCA cases remain pending. Apple and AT&T filed their
`
`opening claim construction brief on September 14, 2021. Pending ruling on a stipulation to
`
`modify the briefing schedule, VoIP-Pal’s brief is due by October 5, 2021.
`
`The parties therefore agree that the stay in the above-captioned 2020 WDTX cases should
`
`largely remain in effect to prevent wasteful duplication of litigation effort and potentially
`
`inconsistent rulings. But before this Court issued a stay in the 2020 WDTX cases, each
`
`defendant had already filed a motion to transfer their respective case to NDCA under 28 U.S.C. §
`
`1404. Now, Facebook/WhatsApp, Google, and Amazon also intend to file transfer motions in
`
`another wave of cases that VoIP-Pal has filed against them in this District, in particular case nos.
`
`6:21-cv-665-ADA (Facebook and WhatsApp), 6:21-cv-667-ADA (Google), and 6:21-cv-668-
`
`ADA (Amazon) (collectively, the “2021 WDTX cases”), based on many of the same facts and
`
`arguments involved in the 2020 WDTX cases. Accordingly, to avoid duplication and for the
`
`Court’s convenience in ruling on transfer in all of these cases,1 the parties believe that the Court
`
`should lift the stay in the 2020 WDTX cases only for the limited purpose of fully resolving
`
`
`VoIP-Pal expressly does not agree that the 2020 WDTX and 2021 WDTX cases are
`1
`related or that the transfer issues in the 2020 WDTX cases are necessarily determinative of the
`transfer issues in the 2021 WDTX cases and vice versa.
`
`
`
`3
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 4 of 8
`
`
`
`transfer, so that the parties can coordinate any remaining transfer briefing2 and venue discovery
`
`between the 2020 WDTX cases and the 2021 WDTX cases and so that the Court can rule on
`
`such motions. The parties all agree that 2020 WDTX cases should otherwise remain stayed until
`
`the Apple and AT&T 2020 NDCA actions are resolved. The parties further agree that, in the
`
`event that the Court denies the transfer motions in the above-identified cases and the Apple and
`
`AT&T actions are still pending, the stay in the above-identified cases should remain in place
`
`until the Apple and AT&T 2020 NDCA actions are resolved.
`
`Dated: September 29, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` 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
`
`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
`
`/s/Robert W. Unikel (with permission)
`Steve McConnico
`Texas State Bar No. 13450300
`smcconnico@scottdoug.com
`Paige Arnette Amstutz
`Texas State Bar No. 00796136
`
`
`The defendants in the 2020 WDTX cases are not situated identically with respect to the
`2
`progress of transfer briefing and venue discovery. Specifically, transfer briefing was completed
`in Amazon’s 2020 WDTX case although VoIP-Pal has a pending Motion To Strike Portions Of
`The Amazon Defendants’ Reply In Support Of Motion To Transfer Venue Or In The
`Alternative, Motion For Leave To Conduct Venue Discovery And To File A Surreply (Case No.
`6:20-cv-272-ADA, Dkt. No. 43), which is fully briefed. Transfer briefing was not completed in
`Facebook’s or Google’s 2020 WDTX cases.
`
`
`
`4
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 5 of 8
`
`pamstutz@scottdoug.com
`SCOTT, DOUGLASS & MCCONNICO, LLP
`303 Colorado Street, Suite 2400
`Austin, TX 78701
`Telephone: (512) 495-6300
`Facsimile: (512) 495-6399
`
`Robert W. Unikel (Admitted Pro Hac Vice)
`robertunikel@paulhastings.com
`John A. Cotiguala (Admitted Pro Hac Vice)
`johncotiguala@paulhastings.com
`PAUL HASTINGS LLP
`71 South Wacker Drive, 45th Floor
`Chicago, IL 60606
`Telephone: (312) 499-6000
`Facsimile: (312) 499-6100
`
`Robert R. Laurenzi (Admitted Pro Hac Vice)
`robertlaurenzi@paulhastings.com
`PAUL HASTINGS LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6000
`Facsimile: (212) 319-4090
`
`James V. Razick (Admitted Pro Hac Vice)
`Jamesrazick@paulhastings.com
`PAUL HASTINGS LLP
`875 15th Street, N.W.
`Washington, DC 20005
`Telephone: (202) 551-1700
`Facsimile: (202) 551-1705
`
`Ariell N. Bratton (Admitted Pro Hac Vice)
`ariellbratton@paulhastings.com
`PAUL HASTINGS LLP
`4747 Executive Drive, 12th Floor
`San Diego, CA 92121
`Telephone: (858) 458-3000
`Facsimile: (858) 458-3005
`
`ATTORNEYS FOR DEFENDANT
`GOOGLE LLC
`
`/s/Ellisen Shelton Turner (with permission)
`
`5
`
`
`
`
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 6 of 8
`
`Michael E. Jones
`State Bar No. 10929400
`mikejones@potterminton.com
`POTTER MINTON
`110 N. College Ave., Suite 500
`Tyler, Texas 75702
`Tel: (903) 597-8311
`Fax: (903) 593-0846 (Facsimile)
`
`Jeanne M. Heffernan (Pro Hac Vice)
`jeannie.heffernan@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`Tel: (212) 446-4800
`Fax: (212) 446-4900
`
`Ellisen Shelton Turner (Pro Hac Vice)
`ellisen.turner@kirkland.com
`Joshua Popik Glucoft (CA Bar No. 301249)
`josh.glucoft@kirkland.com
`KIRKLAND & ELLIS LLP
`2049 Century Park East, Suite 3700
`Los Angeles, CA 90067
`Tel: (310) 552-4220
`Fax: (310) 552-5900
`
`Kristina R. Cary
`Massachusetts BBO No. 688759
`kristina.cary@kirkland.com
`KIRKLAND & ELLIS LLP
`200 Clarendon Street
`Boston, MA 02116
`Tel: (617) 385-7500
`Fax: (617) 385-7501
`
`ATTORNEYS FOR DEFENDANTS
`FACEBOOK, INC. AND WHATSAPP, INC.
`
`
`/s/Daniel T. Shvodian (with permission)
`M. Craig Tyler, Bar No. 00794762
`Perkins Coie LLP
`500 W 2nd St, Suite 1900
`Austin, TX 78701-4687
`Tel. No. 737.256.6113
`
`6
`
`
`
`
`
`
`
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 7 of 8
`
`Fax No. 737.256.6300
`
`Daniel T. Shvodian, Admitted Pro Hac Vice
`James F. Valentine, Admitted Pro Hac Vice
`Wing H. Liang, Admitted Pro Hac Vice
`Perkins Coie LLP
`3150 Porter Drive
`Palo Alto, CA 94304-1212
`Tel. No. 650.838.4300
`Fax No. 650.838.4350
`
`ATTORNEYS FOR DEFENDANTS
`AMAZON.COM, INC.; AMAZON.COM,
`SERVICES LLC; AND AMAZON WEB
`SERVICES, INC.
`
`7
`
`
`
`
`
`
`
`
`
`Case 6:20-cv-00272-ADA Document 58 Filed 09/29/21 Page 8 of 8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served with a copy of the forgoing STATUS REPORT via the
`Court’s CM/ECF system pursuant to the Federal Rules of Civil Procedure and Local Rule CV-
`5(b)(1) this 29th day of September, 2021.
`
`
`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
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
