Case 6:20-cv-00272-ADA Document 79 Filed 01/19/23 Page 1 of 4
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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-272-ADA
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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.COM WEB SERVICES, INC.;
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`Defendants.
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`OPPOSED MOTION TO LIFT STAY AND RESET MARKMAN HEARING DATE
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`VoIP-Pal respectfully requests that the Court lift the stay entered in this case on June 1,
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`2022 and reset the Markman Hearing date. The Court stayed this case and two related cases—
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`VoIP-Pal.com, Inc. v. Meta Platforms, Inc. et al., Case No. 6:20-cv-00267-ADA (W.D. Tex.)
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`(“the Meta case”) and VoIP-Pal.com, Inc. v. Google LLC, Case No. 6:20-cv-00269-ADA (W.D.
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`Tex.) (“the Google case”)—pending resolution of motions to transfer in all three cases. All of
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`these cases concern VoIP-Pal’s U.S. Patent No. 10,218,606 (“the ’606 patent”). The Court
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`granted the motion to transfer the Meta case to the Northern District of California (“NDCAL”)
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`on July 22, 2022. See Case No. 6:20-cv-267-ADA, Dkt. No. 97. The Court granted the motion
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`to transfer the Google case to the NDCAL on September 21, 2022. See Case No. 6:20-cv-269-
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`ADA, Dkt. No. 99. The Court denied the motion to transfer the instant case to the NDCAL on
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`October 19, 2022. See Dkt. No. 78. Thus, the Court has resolved all of the transfer motions in
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`the related cases and the conditions for lifting the stay have been satisfied since October 19,
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`2022.
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`At the time the Court stayed the instant case, the Court had set this case for a Markman
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`Case 6:20-cv-00272-ADA Document 79 Filed 01/19/23 Page 2 of 4
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`Hearing on June 2, 2022. See Dkt. No. 76. Accordingly, the Court should lift the stay, reset this
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`case for a Markman Hearing, and require the parties to meet and confer regarding the remaining
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`pretrial dates and to submit to the Court a proposed amended scheduling order based on the new
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`Markman Hearing date.
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`Despite the conditions for lifting the stay being fully satisfied, Amazon opposes this Motion
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`because it believes that the case should remain stayed until after a status conference set in the Meta
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`and Google NDCAL cases for January 26, 2023. See VoIP-Pal.Com, Inc. v. Meta Platforms, Inc. et
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`al., Case No. 3:22-cv-4279-JD, Dkt. No. 86 (N.D. Cal.). Although this Court transferred those cases
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`to the NDCAL several months ago, other than administrative activity, no activity has taken place in
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`those cases except that Meta filed a motion for judgment on the pleadings under 35 U.S.C. § 101 on
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`November 11, 2022 and Google filed a similar motion on November 15, 2022. See VoIP-Pal.com,
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`Inc. v. Meta Platforms, Inc. et al., Case No. 3:22-cv-4279-JD, Dkt. No. 122 (N.D. Cal.); VoIP-
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`Pal.com, Inc. v. Google LLC, Case No. 3:22-cv-5419-JD, Dkt. No. 124 (N.D. Cal.). Both motions
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`attempt to piggyback off of previous NDCAL decisions invalidating certain claims of patents in the
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`same family as the ’606 patent under § 101. The NDCAL terminated Meta’s and Google’s motions
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`without prejudice to renewal after the status conference. See Case No. 3:22-cv-4279-JD, Dkt. No.
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`87; Case No. 3:22-cv-5419-JD, Dkt. No. 126. Presumably, the real reason that Amazon opposes this
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`Motion is because Amazon believes that the Meta and Google motions are potentially dispositive of
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`the issues in the instant case. But whatever Amazon’s reasons are, they do not support maintaining
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`the stay in this case.
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`First, the present stay is not conditioned on any activity in the Meta and Google NDCAL
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`cases. Those cases have no bearing on whether the Court should lift the stay as there is nothing that
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`will occur at the January 26 status conference that will prevent this Court from proceeding with the
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`instant case. Second, it is uncertain if and when Meta and Google will refile their motions for
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`Case 6:20-cv-00272-ADA Document 79 Filed 01/19/23 Page 3 of 4
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`judgement on the pleadings. Third, even if Meta and Google refile their motions, the NDCAL will
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`not conduct a hearing on those motions for at least five weeks and likely will not rule on those
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`motions for several months after the hearing. In that time, this Court could conduct a Markman
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`hearing and issue a claim construction order in this case. Additionally, the parties in this case could
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`make significant progress in discovery. Finally, there is no guarantee that the NDCAL will grant
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`Meta’s and Google’s motions. Thus, maintaining the stay in this case pending the uncertain outcome
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`of yet-to-be filed motions, which is apparently what Amazon wants to do, could all be for nothing.
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`In addition, maintaining the stay will only further delay resolving this case, which the Court
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`previously stayed for over a year. See Dkt. Nos. 47 and 61. Accordingly, Amazon’s rationale for
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`maintaining the stay in this case should be rejected.
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`In conclusion, because all of the conditions for lifting the stay have been satisfied, the Court
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`should lift the stay and reset this case for a Markman Hearing.
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`Dated: January 19, 2023
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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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`Sean Franklin Parmenter
`sean@parmenterip.com
`Parmenter Intellectual Property Law, PLLC
`8980 N Pine Hollow Drive
`Cedar Hills, Utah 84062
`T: 925.482.6515
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`ATTORNEYS FOR PLAINTIFF
`VOIP-PAL.COM, INC.
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`Case 6:20-cv-00272-ADA Document 79 Filed 01/19/23 Page 4 of 4
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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
`electronic service are being served with a copy of the forgoing OPPOSED MOTION TO LIFT
`STAY AND RESET MARKMAN HEARING DATE via the Court’s CM/ECF system pursuant to
`the Federal Rules of Civil Procedure and Local Rule CV-5(b)(1) this 19th day of January, 2023.
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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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