Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 1 of 6
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`VOIP-PAL.COM, INC.,
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`Plaintiff
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`v.
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`CASE NO. 6:20-cv-00272-ADA
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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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`AMAZON’S OPPOSITION TO VOIP-PAL’S MOTION TO LIFT
`STAY AND RESET MARKMAN HEARING DATE
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`Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 2 of 6
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`The sole patent asserted in this lawsuit, U.S. Patent No. 10,218,606 (“the ’606 patent”), is
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`the seventh patent that VoIP-Pal has asserted from the same patent family. The Northern District
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`of California held,1 and the Federal Circuit summarily affirmed,2 that all asserted claims of those
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`other six patents are invalid for failure to recite patent-eligible subject matter.
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`Undeterred by those consistent adverse rulings, VoIP-Pal asserted the ’606 patent in this
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`district against Amazon, Google, and Meta3 in hopes that a different venue might lead to a different
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`result. This Court, however, transferred the Google and Meta cases to the Northern District of
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`California, where Google and Meta filed motions for judgment on the pleadings. As detailed in
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`those motions, like the other six patents in the same family, the ’606 patent claims patent-ineligible
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`subject matter. (See Exs. A (Google’s motion for judgment on the pleadings) and B (Meta’s mo-
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`tion for judgment on the pleadings).) In their motions, Google and Meta demonstrated the over-
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`whelming similarity between the asserted claims of the ’606 patent and the previously invalidated
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`claims of the related patents. (See, e.g., Ex. A at 18-19 (comparing claim 1 of the ’606 patent and
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`claim 1 of U.S. Patent No. 9,826,002); see also id. at 4-5 (discussing the comparison).)
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`Earlier today, Judge Donato held a status conference in the transferred Google and Meta
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`cases, as well as in the related cases. At that conference, Judge Donato held that VoIP-Pal had
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`two weeks to file an answer to a related declaratory judgment complaint and that the parties seek-
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`ing to invalidate the ’606 patent under 35 U.S.C. section 101 would then have up to four weeks to
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`file a consolidated motion for judgment on the pleadings. (Shvodian Decl. ¶ 5.) Google and Meta
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`1 VoIP-Pal.com, Inc. v. Apple Inc., 375 F. Supp. 3d 1110 (N.D. Cal. 2019); VoIP-Pal.com,
`Inc. v. Apple Inc., 411 F. Supp. 3d 926 (N.D. Cal. 2019).
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`2 VoIP-Pal.com, Inc. v. Twitter, Inc., 798 Fed. Appx. 644 (Fed. Cir. 2020); VoIP-Pal.com,
`Inc. v. Apple, Inc., 828 Fed. Appx. 717 (Fed. Cir. 2020).
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`3 VoIP-Pal sued both Meta Platforms, Inc. and WhatsApp LLC, collectively referred to
`herein as “Meta.”
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`1
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`Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 3 of 6
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`have stated that they intend to file such a motion. (Shvodian Dec. ¶ 6.) After the parties complete
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`the briefing, Judge Donato will rule on that motion. (Shvodian Decl. ¶ 5.) The cases in the North-
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`ern District of California will otherwise be stayed. (Id.)
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`That consolidated motion for judgment on the pleadings will address every claim asserted
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`here against Amazon because VoIP-Pal asserted the same claims against Google. (Shvodian Decl.
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`at ¶ 4.) If the Northern District of California court grants the motion for judgment on the plead-
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`ings—as seems likely given the past results with numerous nearly identical patents from the same
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`family—VoIP-Pal will be collaterally estopped from asserting those claims against Amazon, pend-
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`ing any potential reversal of the decision by the Federal Circuit. See, e.g., DietGoal Innovations
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`LLC v. Chipolte Mexican Grill, Inc., 70 F. Supp. 3d 808, 816 (E.D. Tex. 2014) (Bryson, J., sitting
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`by designation) (holding that invalidity decision by another district court collaterally estopped
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`from the plaintiff from further litigating the same claims). Any judicial time and resources, as well
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`as the time and resources of the parties, expended on this case in the meantime will have been
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`wasted.
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`Amazon requests that this Court maintain the stay in this matter until after Judge Donato
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`rules on the consolidated motion for judgment on the pleadings. In deciding whether to lift the
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`stay, this Court need not rule on whether the claims of the ’606 patent are invalid. This Court need
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`only recognize the similarity between the claims of the ’606 patent and the claims in the related
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`VoIP-Pal patents that were previously invalidated, as well as the benefit of awaiting the ruling of
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`the Northern District of California before further resources are expended on this case.
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`In arguing that the Court should lift the stay now, VoIP-Pal asserts that “it is uncertain if
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`and when Meta and Google will refile their motions for judgment on the pleadings.” (Mot. at 2-
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`3.) That is precisely why, when VoIP-Pal contacted Amazon on January 13 about lifting the stay
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`Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 4 of 6
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`in this case, Amazon suggested that the parties wait until after the Northern District of California’s
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`status conference when the parties would know more about the schedule for resolving those mo-
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`tions. VoIP-Pal, however, refused to wait despite having already waited almost three months since
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`the Court ruled on Amazon’s transfer motion before even raising the issue of lifting the stay. We
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`now know the schedule for the motion in the Northern District of California, and VoIP-Pal has not
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`and cannot show that it will be harmed by a stay awaiting resolution of that motion. To the con-
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`trary, if the ’606 patent is invalidated, VoIP-Pal will have saved litigation expense. And if the
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`’606 patent is not invalidated, this case can then go forward with VoIP-Pal having suffered no loss.
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`Moreover, the parties are currently fully engaged in the second litigation that VoIP-Pal filed
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`against Amazon in this Court (Case No. 6:21-cv-668-ADA), with that case scheduled for trial
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`starting on July 17, 2023. There is no reason to require the parties to simultaneously litigate this
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`case while the Northern District of California decides a motion that is likely to resolve this matter.
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`Amazon respectfully requests that this Court maintain the stay in this case until the North-
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`ern District of California rules on the motion for judgment on the pleadings that would be dispos-
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`itive here.
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`Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 5 of 6
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`Dated: January 26, 2023
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`Respectfully submitted,
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`/s/ Daniel T. Shvodian
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`M. Craig Tyler, Bar No. 00794762
`Perkins Coie LLP
`500 W 2nd St, Suite 1900
`Austin, TX 78701-4687
`Tel. No. 737.256.6113
`Fax No. 737.256.6300
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`Daniel T. Shvodian, Admitted Pro Hac Vice
`Christopher Kelley, 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
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`ATTORNEYS FOR DEFENDANTS
`Amazon.com, Inc.; Amazon.com, Services
`LLC; and Amazon Web Services, Inc.
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`Case 6:20-cv-00272-ADA Document 80 Filed 01/26/23 Page 6 of 6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and correct copy of the above and foregoing
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`document has been served January 26, 2023 to all counsel of record, via the Court’s CM/ECF
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`system.
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`/s/ Daniel T. Shvodian
`Daniel T. Shvodian
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