Court Denies VoIP-Pal’s Motion to Dismiss Twitter’s Declaratory Non-infringement Suit

On Monday, Judge Lucy H. Koh of the Northern District of California issued an order denying defendant VoIP-Pal’s motion to dismiss Twitter’s complaint seeking a declaration of non-infringement and the invalidity of the defendant’s patent-in-suit, U.S. Patent No. 10,218,606 (the ’606 patent), which relates to a system for routing internet-protocol communications. The motion’s claims of lack of jurisdiction were rejected by the court.

VoIP-Pal also previously sued Apple, AT&T and Verizon in 2016, Apple and Amazon in 2018, as well as AT&T, Verizon, Apple, Amazon, Google, and Facebook, in 2020. Furthermore, Apple challenged a Patent Trial and Appeal Board decision relating to VoIP-Pal’s patents.

According to the order, this is the latest action in a long litigation between the parties. As previously reported, Twitter preemptively sued VoIP-Pal in April,asserting that it did not infringe the ’606 patent. In the complaint, Twitter argued that the claims made in these new suits were similar to a previous suit that VoIP-Pal lost. Moreover, Twitter contended that the ’606 patent belongs to a family of patents, six of which were previously asserted and found to be invalid; therefore, Twitter averred that the ’606 patent would also likely be considered invalid. .

VoIP-Pal argued that the court lacks subject matter jurisdiction over Twitter’s suit because the defendant has not sued Twitter for infringing the ’606 patent. However, the court noted that this “is a procedural question not unique to patent law,” therefore, regional circuit law applies. The court looked to Twitter’s amended complaint to determine subject matter jurisdiction, noting that under the Declaratory Judgment Act, Twitter’s suit is permissible because of the existing controversies and by “(a)nalyzing ‘all the circumstances,’ the Court concludes that Defendant engaged in an affirmative act sufficient to confer jurisdiction over Plaintiff’s declaratory judgment claims,” which is “primarily based on Defendant’s prior litigation against Plaintiff; Defendant’s current ’606 patent litigation against all the other defendants in the 2016 cases; and Defendant’s statements about its intentions with respect to asserting its patent rights.” Thus, the court found that VoIP-Pal’s conduct is sufficient for affirmative conduct relating to its patents to find subject matter jurisdiction.

VoIP-Pal also proffered that this suit should be dismissed because the court lacks personal jurisdiction over the defendant. The court first noted that the defendant made this argument for the other declaration of non-infringement suits and the court has found that personal jurisdiction existed in all of them.

The court added that Twitter does not state that VoIP-Pal is subject to general jurisdiction, as a result, the court considered “(1) whether the defendant ‘purposefully directed’ its activities at residents of the forum; (2) whether the claim ‘arises out of or relates to’ the defendant’s activities with the forum; and (3) whether assertion of personal jurisdiction is ‘reasonable and fair.’” Using these considerations, the court determined the defendant “has purposefully directed its enforcement activities towards the forum state, including Plaintiff, which is headquartered in this district…” through its pursuit of multiple rounds of litigation against Twitter in the district without contesting personal jurisdiction.

While the defendant also claimed that venue is improper, the court disagreed, pointing to other suits involving the defendant against Apple, AT&T, and Verizon for declaration of non-infringement, where the court found the venue to be proper.

Twitter is represented by Perkins Coie. VoIP-Pal is represented by Hudnell Law Group.