Case 6:20-cv-00272-ADA Document 94 Filed 04/03/23 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-672-ADA
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`VOIP-PAL.COM, INC.
`Plaintiff,
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`v.
`AMAZON.COM, INC.;
`AMAZON.COM SERVICES LLC; and
`AMAZON WEB SERVICES, INC.,
`Defendants.
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`PLAINTIFF VOIP-PAL.COM’S REPLY IN SUPPORT OF OPPOSED MOTION
`FOR ENTRY OF FIRST AMENDED SCHEDULING ORDER
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`Amazon’s arguments for delaying entry of a case schedule until the Court rules on VoIP-Pal’s
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`motion for reconsideration lack merit. Contrary to what Amazon claims, VoIP-Pal has not elected to
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`prolong the claim construction process in this case. See Dkt. No. 92 at 1. Claim construction can
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`occur at any time through the end of trial. See Yeti Coolers, LLC v. RTIC Coolers, LLC, No. A-15-
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`CV-597-RP, 2017 U.S. Dist. LEXIS 11163, at *9 (W.D. Tex. Jan. 27, 2017) (quoting Mediatek Inc.
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`v. Freescale Semiconductor, Inc., No. 11-cv- 5341 YGR, 2014 U.S. Dist. LEXIS 31461, at *9 (N.D.
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`Cal. Mar. 5, 2014) (“Accordingly, the final determination of the construction of any claim occurs at
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`the close of trial and manifests itself in the form of jury instructions.”)). The Court’s original
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`Scheduling Order, however, provides that discovery begins the day after the claim construction
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`hearing—May 18, 2022. See Dkt. No. 61 at 4. VoIP-Pal served written discovery on that day. See
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`Exs. 4-5. Because the Court stayed this case two weeks later, Amazon still has not responded to
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`VoIP-Pal’s discovery and refuses to do so until the Court enters an amended scheduling order.
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`Because the Court has since lifted the stay (Dkt. No. 81), Amazon has no legitimate basis to oppose
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`Case 6:20-cv-00272-ADA Document 94 Filed 04/03/23 Page 2 of 5
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`entry of a scheduling order or to refuse to provide discovery. The fact that VoIP-Pal has filed a
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`motion for reconsideration of the Court’s Final Claim Construction Order has nothing to do with
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`whether discovery should proceed and whether a schedule should be entered.
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`Amazon’s claim that VoIP-Pal’s infringement contentions make no assertion that any routing
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`messages in the accused system have a time-to-live field is misleading. Dkt. No. 92 at 1. VoIP-Pal
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`served Preliminary Infringement Contentions (PICs) on November 16, 2021—fifteen months before
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`the Court issued its Final Claim Construction Order. So of course, VoIP-Pal’s PICs do not account
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`for the Court’s claim construction. In the original Scheduling Order, the time period between the
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`start of discovery and the deadline to serve Final Infringement Contentions (FICs) (May 18, 2022-
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`July 12, 2022) was intended, at least in part, to give VoIP-Pal an opportunity to conduct discovery
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`and modify its PICs as needed in light of the Court’s claim construction. See Dkt. No. 61 at 4.
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`Because the Court stayed the case and has not entered a subsequent scheduling order, VoIP-Pal has
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`not had that opportunity and Amazon’s refusal to provide discovery until the Court enters a new
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`scheduling order unfairly denies VoIP-Pal that opportunity.
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`Contrary to what Amazon suggests, Amazon did not produce any documents in response to
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`VoIP-Pal’s discovery requests. See Dkt. No. 92 at 2. Rather, Amazon merely designated documents
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`produced in another case between the parties for use in this case. See Dkt. No. 90-2. Those
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`documents, however, concern a different case involving different patents, a different set of discovery
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`requests, and a different claim construction order. Thus, it is unreasonable to assume that Amazon’s
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`designated production addresses the issues specific to this case, such as the Court’s construction of
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`“routing message.”
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`Amazon’s suggestion that VoIP-Pal does not have a Rule 11 basis for its infringement
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`contentions is a red herring. Amazon has not sent VoIP-Pal a Rule 11 letter or otherwise invoked the
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`Case 6:20-cv-00272-ADA Document 94 Filed 04/03/23 Page 3 of 5
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`strict requirements of Rule 11. Additionally, VoIP-Pal does not seek a scheduling order for the
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`purpose of conducting a fishing expedition. Amazon asserts that “Amazon’s system does not have
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`any routing message that contains such a [time to live] field.” Dkt. No. 90-2 at 4. VoIP-Pal should
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`be allowed to assess that assertion and to assess the soundness of its infringement position through
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`discovery. VoIP-Pal’s Request for Production Nos. 10 (documents supporting answer), 11
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`(documents supporting interrogatory responses), and 14 (documents to be relied on at trial) and
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`Interrogatory No. 3 (factual basis for noninfringement affirmative defense) relate directly to this
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`issue. See Ex. 4 at 8, Ex. 5 at 8.
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`Waiting to enter a scheduling order until after the Court resolves VoIP-Pal’s motion for
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`reconsideration will only inject further delay into this case. Amazon’s reasons for waiting improperly
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`assume that the Court will deny VoIP-Pal’s motion for reconsideration. Regardless of how the Court
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`decides VoIP-Pal’s motion, VoIP-Pal should be given a period between the restart of discovery and
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`the deadline for serving FICs to reassess its infringement position. There is no reason why that
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`period should not commence now, particularly if Amazon intends to bring a dispositive motion if the
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`Court denies VoIP-Pal’s motion for reconsideration. If the Court does so, then adopting Amazon’s
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`approach would deny VoIP-Pal a period to conduct discovery and assess its infringement position.
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`For all of these reasons, the Court should grant this Motion and enter a scheduling order.
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`VoIP-Pal notes, however, that under its proposed scheduling order, the deadlines are calculated based
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`on the February 15 Claim Construction Hearing. Accordingly, should the Court grant this Motion,
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`VoIP-Pal respectfully requests that the Court order the parties to recalculate the dates based on the
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`date of the Court’s order granting this Motion.
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`Case 6:20-cv-00272-ADA Document 94 Filed 04/03/23 Page 4 of 5
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`Dated: April 3, 2023
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`Respectfully submitted,
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`Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`lewis@hudnelllaw.com
`Nicolas S. Gikkas
`nick@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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`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 94 Filed 04/03/23 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
`electronic service are being served with a copy of the forgoing PLAINTIFF VOIP-PAL.COM’S
`REPLY IN SUPPORT OF OPPOSED MOTION FOR ENTRY OF FIRST AMENDED
`SCHEDULING ORDER via the Court’s CM/ECF system pursuant to the Federal Rules of Civil
`Procedure and Local Rule CV-5(b)(1) this 3rd day of April 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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