Case 6:21-cv-00667-ADA Document 38 Filed 03/18/22 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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`VOIP-PAL.COM, INC.,
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`Plaintiff,
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`v.
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`GOOGLE LLC,
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`Defendant.
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`Civil Action 6:20-cv-00269-ADA and
`Civil Action 6:21-cv-00667-ADA
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`DISCOVERY DISPUTE ORDER
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`The parties raised the following discovery dispute with the Court by email submission.
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`Google’s Statement
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` VoIP-Pal’s Preliminary Infringement Contentions (“PICs”) fail to “set[] forth where in the
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`accused product(s) each element of the asserted claim(s) are found.” OGP at 1.
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`First, VoIP-Pal’s PICs obfuscate any infringement theory. While totaling 2,700 pages
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`across two cases, the PICs only superficially refer to each accused product and instead rely on
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`long, non-limiting boilerplate passages that do not disclose where in the different accused products
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`the claim elements allegedly are found. The contentions are near-exact copies across the accused
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`Google products; VoIP-Pal merely swaps one product name for another without explaining how
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`any of them allegedly meets each asserted claim element, even though these products significantly
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`differ from one another.
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`Regardless of the accused product or defendant, the PICs mirror one another. The 2020
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`case PICs use “for example” 728 times for each of two accused products and 727 times for the
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`third, even though the products are unrelated. This is not coincidental—it illustrates how
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`genericized VoIP-Pal’s PICs are. Similarly, in the 2021 case PICs, the two charts use “for
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`example” the same number of times. VoIP-Pal’s charts also are nearly identical to those for other
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`Case 6:21-cv-00667-ADA Document 38 Filed 03/18/22 Page 2 of 5
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`defendants, like T-Mobile, notwithstanding that VoIP-Pal accuses entirely dissimilar products and
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`systems. In short, VoIP-Pal simply recycles vague, generic PICs with excessive, non-limiting “for
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`example” language, instead of disclosing product-specific infringement theories so that Google
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`can understand where VoIP-Pal believes each element of the asserted claims is found in Google’s
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`accused products.
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`Second, VoIP-Pal’s contentions in the 2020 case accuse the “Google-Nest Messaging
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`System,” but fail to specify what hardware or software that allegedly includes. “Google-Nest
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`Messaging System” is neither a product nor a messaging service. It instead is a Plaintiff-coined
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`term that sheds no light on what product or functionality is accused. Indeed, “Nest” could refer to
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`several types of products, including cameras, doorbells, smart speakers, and displays. Unlike the
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`separately accused “Google-Duo Messaging System” and “Google-Hangouts Messaging System,”
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`which Google recognizes as accusing particular messaging-related products, Google cannot divine
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`what is meant by VoIP-Pal’s fictitious “Google-Nest Messaging System.” VoIP-Pal ambiguously
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`asserts that it means “one or more messaging and communication services,” pointing to things like
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`“networks connecting distributed nodes or clusters of nodes,” “one or more Google-Nest client
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`software applications,” “a Google-Nest server infrastructure,” and “Google Nest service.” See
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`2020 Case PICs, Ex. C at 1–3. This provides no insight into what Nest-related product or
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`functionality allegedly infringes the asserted claims and how. Particularly where VoIP-Pal
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`purports to accuse an otherwise non-existent product, it must adequately explain the scope of that
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`accused product.
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`Relief Requested: Google respectfully requests that the Court (1) order VoIP-Pal to serve
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`amended, OGP-compliant PICs, both as a whole and specifically against the “Google-Nest
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`Messaging System” within 14 days after the Court’s decision; and (2) order the parties to submit
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`Case 6:21-cv-00667-ADA Document 38 Filed 03/18/22 Page 3 of 5
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`a joint proposed scheduling order based on the amended PICs within 14 days after service of the
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`amended PICs. See Intellectual Tech LLC v. Zebra Techs. Corp., No. 6:19-CV-00628-ADA, ECF
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`No. 31 (W.D. Tex. Apr. 29, 2020).
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`Google proposes the following exact language to be issued in a court order: “The Court
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`orders VoIP-Pal to serve amended Preliminary Infringement Contentions in each case within 14
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`days. The Court further orders the parties to submit a joint proposed scheduling order in each case
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`within 14 days after VoIP-Pal serves its amended Preliminary Infringement Contentions.”
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`VoIP-Pal’s Statement
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`Google’s claim that VoIP-Pal’s PICs are deficient lacks merit. Tellingly, Google fails to
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`identify any limitation of the asserted claims where the PICs fail to “set[] forth where in the
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`accused product(s) each element of the asserted claim(s) are found” as required by the OGP.
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`Instead, Google complains about the similarity of the contentions across its accused products and
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`those of the defendants in the related cases. But these similarities are due to the fact that the
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`accused products and services operate in a similar manner, at least insofar as the claim language
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`is concerned. Moreover, Google neglects to mention that the PICs include product specific
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`information contained each chart of VoIP-Pal’s 2020 case PICs and in Appendix A of each chart
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`of VoIP-Pal’s 2021 case PICs. See, e.g., 2020 Case PICs, Ex. C at 4-6; Attachment A (Exhibit 1
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`2021 PICs, Appendix A).
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`Google quibbles with VoIP-Pal’s use of the phrase “for example.” But Google provides
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`no authority that providing examples of infringement constitutes a deficiency. Rather, VoIP-Pal
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`uses the phrase “for example” to provide Google numerous detailed examples of how its products
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`and services infringe.
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`Case 6:21-cv-00667-ADA Document 38 Filed 03/18/22 Page 4 of 5
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`Finally, Google complains that “Google-Nest Messaging System” is not a term used by
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`Google for any product or service, but acknowledges that at least “Google-Duo Messaging
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`System” and the “Google-Hangouts Messaging System” refer to commercial product/services. It
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`is, however, indisputable that “Nest” is a brand that is used by Google for commercial
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`products/services, and that Google’s products including calling and messaging features. Moreover,
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`Google keeps renaming and rebranding its products, even retrospectively, therefore it is difficult
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`to find a simple term that would encompass all products and services that may infringe VoIP-Pal’s
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`patents. In any event, Google did announce its intention to rebrand its smart products such as
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`Google Home under the “Google Nest” moniker. See “Google Nest: Why Google Finally
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`Embraced Nest
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`as
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`its Smart Home Brand,” The Verge, May
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`7,
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`2019,
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`https://www.theverge.com/2019/5/7/18530609/google-nest-smart-home-brand-merging-hub-
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`max-rebrand-io-2019 (last visited Mar. 4, 2022). The PICs themselves cite urls describing
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`Google’s Nest products and services and explain in detail how those products and services perform
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`the calling and routing functions recited in the asserted claims. See, e.g., 2020 Case PICs, Ex. C
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`at 1-8. Therefore, Google’s claim it cannot understand what “Google-Nest” refers to or how
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`“Google Nest” infringes is both disingenuous and a problem of Google’s own making.
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`Relief Requested: “The Court orders that Google's request for VoIP-Pal to serve amended
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`Preliminary Infringement Contentions in each case is DENIED. The Court further orders that
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`Google's remaining requested relief is DENIED as moot.”
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`ORDER
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`The parties actually dispute four issues. The Court GRANTS-IN-PART and DENIES-
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`IN-PART Google’s requested relief as follows.
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`Case 6:21-cv-00667-ADA Document 38 Filed 03/18/22 Page 5 of 5
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`First, on the issue of whether VoIP-Pal obfuscated its infringement theory, the Court
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`DENIES the relief requested by Google because the requested relief is too vague to be meaningful.
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`Google asks the Court to order “VoIP-Pal to serve amended Preliminary Infringement
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`Contentions” without setting any minimum standard for how VoIP-Pal must amend its contentions.
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`Second, on the issue of whether the infringement contentions may use “for example,” the
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`issue is not yet ripe for resolution. The preliminary infringement contentions must give fair notice
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`of Plaintiff’s infringement theories. If the Plaintiff later surprises the Defendant by asserting
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`infringement theories not fairly noticed, the Court will be inclined to grant Defendant relief at that
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`later time, especially if the Plaintiff presently has knowledge of theories not explicitly set forth in
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`its preliminary infringement contentions. Plaintiff would serve its interest best by amending its
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`contentions to plainly set forth all its infringement theories, but the Court declines to compel
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`Plaintiff to do so.
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`Third, on the use of “Google-Nest Messaging System,” the Court finds that this coined
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`phrase does not give fair notice of which products are accused. The Court hereby ORDERS
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`Plaintiff to serve amended infringement contentions within 14 days that unambiguously identify
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`the names of at least the public products/services included in the “Google-Nest Messaging
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`System.” Plaintiff may use names from any time period, past or present.
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`Fourth, on the issue of resetting the schedule, Google’s request for relief is DENIED. The
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`Court’s schedule already builds in room for amended contentions.
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`SIGNED this 18th day of March, 2022.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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