IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

VOIP-PAL.COM, INC.

Plaintiff,

v.

FACEBOOK, INC. and WHATSAPP, INC.,

Defendants.

CIVIL ACTION NO. 20-cv-267

JURY TRIAL DEMANDED

ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT

Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”), for its Complaint against Defendants Facebook, 

Inc. (“Facebook”) and WhatsApp, Inc. (“WhatsApp”) alleges as follows:

THE PARTIES

1. Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) is a Nevada corporation with its 

principal place of business located at 10900 NE 4th Street, Suite 2300, Bellevue, Washington 

98004.

2. On information and belief, Defendant Facebook, Inc. (“Facebook”) is a Delaware 

corporation with physical addresses in this District at 607 West 3rd Street, Austin, Texas 78701 

and 300 West Sixth Street, Austin, Texas 78701. Facebook may be served with process through 

its registered agent, the Corporation Service Company, at 211 East 7th Street, Suite 620, Austin, 

Texas 78701. Facebook is registered to do business in the State of Texas and has been since at 

least April 8, 2009.

3. On information and belief, Defendant WhatsApp, Inc. (“WhatsApp”) is a 

Delaware corporation with a principal place of business 1601 Willow Avenue, Menlo Park, 

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California 94025. WhatsApp has physical addresses in this District at 607 West 3rd Street, 

Austin, Texas 78701 and 300 West Sixth Street, Austin, Texas 78701. WhatsApp may be served 

with process through its registered agent, the Corporation Service Company, at 211 East 7th 

Street, Suite 620, Austin, Texas 78701. On information and belief, WhatsApp is a whollyowned subsidiary of Facebook.

4. On information and belief, Facebook and WhatsApp regularly conduct and 

transact business in the State of Texas, throughout the United States, and within this District, and 

as set forth below, have committed and continue to commit, tortious acts of infringement within 

and outside the State of Texas and within this District.

JURISDICTION AND VENUE

5. This action is a civil action for patent infringement arising under the patent laws 

of the United States, Title 35, United States Code (“U.S.C.”) §1 et seq., including 35 U.S.C. §§ 

271 and 281-285. This Court has exclusive subject matter jurisdiction over this case for patent 

infringement under 28 U.S.C. §§ 1331 and 1338.

6. This Court has personal jurisdiction over Facebook and WhatsApp by virtue of 

their systematic and continuous contacts with this jurisdiction, as alleged herein, as well as 

because the injury to VoIP-Pal occurred in the State of Texas and the claim for relief possessed 

by VoIP-Pal against Facebook and WhatsApp for that injury arose in the State of Texas. On 

information and belief, Facebook and WhatsApp have purposely availed themselves of the 

privileges of conducting business within the State of Texas, such business including but not 

limited to: (i) at least a portion of the infringements alleged herein; (ii) purposefully and 

voluntarily placing one or more infringing products into the stream of commerce with the 

expectation that they will be purchased by consumers in this forum; or (iii) regularly transacting 

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or soliciting business, engaging in other persistent courses of conduct, or deriving or attempting 

to derive substantial revenue and financial benefits from goods and services provided to 

individuals residing in the State of Texas and in this District. Thus, Facebook and WhatsApp are 

subject to this Court’s specific and general personal jurisdiction under due process and the Texas 

Long Arm Statute. 

7. Personal jurisdiction also exists specifically over Facebook and WhatsApp 

because Facebook and WhatsApp, directly or through subsidiaries or intermediaries (including 

customers, distributors, retailers, and others), subsidiaries, alter egos, and/or agents – ships, 

distributes, offers for sale, sells, imports, advertises, or markets in the State of Texas and in this 

District, one or more products that infringe the Patent-in-Suit, as described particularly below. 

Facebook and WhatsApp have purposefully and voluntarily placed one or more of their 

infringing products, as described below, into the stream of commerce with the awareness and/or 

intent that these products will be purchased by consumers in this District. Facebook and 

WhatsApp have knowingly and purposefully shipped infringing products into and within this 

District through an established distribution channel. These infringing products have been and 

continue to be purchased by consumers in this District.

8. VoIP-Pal’s claim for relief for patent infringement arises directly from the 

activities of Facebook and WhatsApp in this District.

9. Upon information and belief, Facebook and WhatsApp maintain offices in Austin, 

Texas, which they collectively staff with roughly 1,200 employees. See

https://www.bizjournals.com/austin/news/2019/09/04/first-look-facebook-headcount-swells-associal.html . The Facebook/WhatsApp office at 607 W. Third St in Austin occupies 11 floors—

accounting for 256,500 square feet of office space—and has room for 1,550 employees. Id. 

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Facebook and WhatsApp also occupy four floors at 300 W. 6th St., Austin. Id. Facebook has 

additional offices within this District. Id. Facebook has maintained an office in Austin since at 

least 2010. Id. Facebook’s and WhatApp’s offices in this District collectively house employees 

from at least sixteen different teams, including: (1) software engineering; (2) product 

management (3) enterprise engineering; (4) infrastructure; (5) data & analytics; (6) legal, 

finance, facilities & admin.; (6) sales & marketing; (7) research; and (8) WhatsApp. See

https://www.facebook.com/careers/locations/austin/?locations[0]=Austin%2C%20TX&divisions

[0]=WhatsApp (last visited Mar. 20, 2020). As of March 20, 2020, open Facebook positions in 

Austin included: engineering manager, global operations engineering; data engineer; hardware 

systems engineer; systems project manager, solutions; technology program manager; VP of 

partner operations; SMB marketing manager, global business marketing; and vertical marketing 

manager, e-commerce. As of March 20, 2020, Facebook had 168 open position in Austin, 

including four WhatsApp positions: risk analyst, trust, and safety; payment risk operations 

manager, WhatsApp; vendor program manager, customer operations; and anti-abuse specialists, 

WhatsApp Business – Trust & Safety. See

https://www.facebook.com/careers/locations/austin/?locations[0]=Austin%2C%20TX (last 

visited March 20, 2020); 

https://www.facebook.com/careers/locations/austin/?locations[0]=Austin%2C%20TX&divisions

[0]=WhatsApp (last visited March 20, 2020).

10. On information and belief, Facebook and WhatsApp, directly and/or through their 

customers have transacted business in this District and has committed acts of patent 

infringement in this District. Facebook and WhatsApp have a regular and established place of 

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business in this District. Thus, venue is proper in this District under 28 U.S.C. §§ 1391 and 

1400(b).

BACKGROUND OF THE TECHNOLOGY AND THE PATENT-IN-SUIT

11. United States Patent No. 10,218,606 (the “’606 patent”) entitled “Producing 

Routing Messages For Voice Over IP Communications” was duly and legally issued by the 

United States Patent and Trademark Office on February 26, 2019. A copy of the ’606 patent is 

attached hereto as Exhibit 1.

12. The ’606 patent is referred to in this Complaint as the “Patent-in-Suit”.

13. The inventions of the Patent-in-Suit originated from breakthrough work and 

development in the internet protocol communications field.

14. VoIP-Pal has provided significant improvements to communications technology 

by the invention of novel methods, processes and apparatuses that facilitate communications 

across and between internet protocol based communication systems and networks, such as 

internally controlled systems and external networks (e.g., across private networks and between 

private networks and public networks), including the classification and routing thereof.

15. The earliest telephone systems to receive public use within the United States 

involved a telephone directly connected to a human operator. A portion of the phone rested on a 

mechanical hook such that the operator was signaled when the portion was lifted from the hook. 

A caller would then say the name of the person they wished to call to the operator. If the callee 

was connected to the same telephone switch board the operator would physically pull out a cable 

associated with the caller’s phone and plug the cable into a socket associated with the callee’s 

telephone. If the callee was associated with a different switchboard, and thus out of reach of the 

operator, a second operator would be involved to bridge the gap to the appropriate switchboard. 

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While initially very effective compared to no telephone service, this structure quickly proved 

error prone (operators would connect the wrong party), and limiting the number of possible 

telephones because of the physical limits of switchboards and cable to be pulled. This basic 

system corresponds to the introduction of a Plain Old Telephone Service (“POTS”) connection to 

the operator. In these configurations, there was a dedicated, point-to-point electrical connection 

between the caller and the callee.

16. Rotary dialing eventually was introduced, beginning at around the turn of the 20th 

century, where a rotary disk was marked with numbers from zero to nine. A caller would spin the 

wheel and a mechanical device in the telephone would cause a sequence of electrical pulses to be 

sent to the network corresponding to the digit dialed, for example, four pulses would be sent for 

the number four. Rather than speaking to a human operator, an electric device would count the 

pulses and begin to route a call once an appropriate and valid sequence of digits was dialed by 

the caller. This advancement improved reliability of call routing and reduced the time required to 

initiate a call. But, even so, there was a dedicated, point-to-point electrical connection between 

the caller and the callee. As multiple companies entered the market of telephone service and the 

number of customers increased, an issue emerged where a caller would be a customer of one 

telephone company and the callee would be a customer of another. The solution that emerged to 

this problem was to introduce trunk lines, which connect one company to another.

17. Eventually, as the number of companies continued to increase and telephone 

services spread over much larger geographic areas, the notion of a Public Switched Telephone 

Service (“PSTN”) emerged. The term derives from the notion, at least in part, that the dedicated 

wires used to connect the caller and callee were “circuit-switched” to connect the two. The PSTN 

developed gradually into the middle of the 20th century, still built around the notion of rotary 

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dialing and POTS connections to the individual telephones. These calls involved analog 

communications over circuit-switched electrical connections. A circuit-switched network 

involves assigning dedicated resources, such as switch settings and specific wires, to establish a 

link from the caller to the callee. While the call is ongoing, these resources cannot be used for 

any other communications.

18. The next important advancement for consumer telephone service, introduced 

broadly during the second half of the 20th century, was the introduction of push-button 

telephones. With such telephones the rotary dial was replaced by a matrix of buttons, each 

labeled with a digit from zero through nine along with the additions of ‘*’ and ‘#’. The 

underlying signaling technology was called dual-tone multiple-frequency (“DTMF”) and 

involves two different audible tones being sent simultaneously from the telephone into the 

telephone network. A receiver within the network decoded these tones and formed them into a 

sequence of digits indicating the number of the callee.

19. Around this same time a scheme for international telephone addressing was 

introduced, with a numeric protocol for identifying one country from another and providing 

country-specific routing within the destination country. The E.164 standard now documents how 

a caller anywhere in the world, for example in Ann Arbor, Michigan, can identify a telephone 

number at any other location, such as Avignon, France. While many of these advances, such as 

DTMF dialing and automated international routing, may have been originally introduced via ad 

hoc methods, eventually they required multiple parties (companies and governments) to agree on 

protocols to enable wide-spread reliable use and inter-operability among different telephone 

communications networks. Even with all these advances, the systems still relied on circuitswitched technology that dedicated resources between the caller and the callee for the duration of 

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a call. The move to take human operators out of the loop, with the introduction of rotary dialing, 

combined with the fast increase in demand for telephone services throughout the 20th century, 

resulted in the development of automated telephone switches. These devices comprise a set of 

input ports, each dedicated to, and associated with a specific caller, and output ports, each 

capable of being associated with a callee. A small local telephone system may have had a single 

switch while a larger service would use a large number of switches that were connected to each 

other. A switch from a local service provider would be connected to a trunk line which then 

connected to an input switch of another service provider. These switches originally supported 

analog voice calls initiated via rotary dialing and dedicating input and output ports as well as 

physical wires for each circuit-switched call.

20. Eventually analog voice services were replaced within the network with digital 

voice. Digital voice is communicated using a sequence of chunks (or packets) of data. This 

advancement allowed physical resources to be shared among multiple calls over short bursts of 

time. For example, a physical wire can move a packet for one call at a specific instance in time 

and then move a packet for a totally different call subsequently, only to later return to transfer a 

new packet for the original call. This advance is called packet-switched communications and 

provided an important increase in network reliability and efficiency while driving down the cost. 

However, in most situations throughout the 20th century (and often still today), the connection to 

the end user’s physical telephone is analog. While network switches operate via digital circuitry, 

and often comprise programmable processors executing software, they tend to be dedicated 

special-purpose devices. The conversion between analog and digital encoding is typically done at 

the point where the PSTN network switch connects to the POTS handset, for example, at a 

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device called a Class-5 telephone switch, which connects the customer POTS handset to the 

PSTN network of a service provider’s central office.

21. The Internet became important to consumers, via broad deployment, during the 

late 1980’s and early 1990’s. Eventually available bandwidth and reliability increased to the 

point where pioneers began to experiment with techniques to carry voice communications over 

the Internet. These early efforts began to focus on techniques called Voice Over Internet Protocol 

(VOIP) and session initiation protocol (SIP). VOIP provided a consistent set of protocols and 

mechanisms for moving digital voice packets between two callers using the Internet rather than 

existing PSTN networks. SIP provided a mechanism for establishing and terminating 

communication sessions such as calls between users of a VOIP service. For example, a callee 

could register with a VOIP service so that an identifier (such as their name, email address or a 

nickname) could be associated with the computer to which they are logged in. Eventually VOIP 

services increased to provide interoperability with the existing PSTN services. For example, the 

company Skype began to allow a user to call a PSTN number using a feature marketed as “Skype 

out”. However, the user was required to explicitly classify the call as a PSTN call by specifying a 

real physical telephone number. In this case the VOIP system must include a gateway to bridge 

from the VOIP network to the PSTN network in order to route to the physical telephone. Calls 

that use a proprietary non-PSTN user identifier such as an email or nickname remain within the 

VOIP network and are not routed to the PSTN network and do not connect to a POTS telephone.

22. The advent of VOIP technology allowed customers to physically move their 

telephones from one location to another, even from one continent to another, with no 

fundamental change in its operation from the point of view of a caller once a connection to the 

Internet was established. However, the integration of network gateways to route between 

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different types of networks using VOIP, for example from a VOIP caller in Europe to a PSTN 

callee in the United States, introduced a number of new complications. The VOIP service needed 

to be able to distinguish between callees that were within the VOIP network and those that were 

outside of it and thus required different methods for identifying callees and routing to them 

depending on whether the callees were within or outside the VOIP network. One way to identify 

callees on the VOIP network was to use a predefined proprietary user identifier such as an email 

or nickname. The VOIP service provider also needed to interpret dialed PSTN numbers in order 

to correctly route calls to a PSTN callee. A VOIP caller had to use different types of callee 

identifier depending on whether or not the destination (callee) they were calling was within the 

VOIP network or not. The caller’s choice of the type of callee identifier thus specified the 

network of the destination to be called. However, the asserted patents disclose and claim a 

distinct manner of call routing.

23. Digifonica, a wholly owned subsidiary of patent owner VoIP-Pal, starting in 2004 

eventually came to employ over a dozen top professionals (e.g., software developers, system 

administrators, QA/test analysts) including three Ph.D.’s with engineering backgrounds, to 

develop innovative software solutions for communications. Digifonica spent over $15,000,000 

researching, developing, and testing a communication solution capable of seamlessly integrating 

a private voice-over-IP (“VoIP”) communication network with an external network (i.e., the 

“public switched telephone network” or “PSTN”), by bridging the disparate protocols, 

destination identifiers and addressing schemes used in the two networks. By the mid-2000’s, 

Digifonica had successfully tested intra- and inter-network communications (i.e., 

communications within the private Digifonica system and between the Digifonica system and the 

PSTN) by implementing high-capacity communication nodes across three geographic regions, 

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including actual working communication nodes in Vancouver (Canada) and London (UK). See

’606 patent at Fig. 1 (nodes 11, 21) and 13:57-14:7. Digifonica’s R&D efforts led to a number 

of patent grants, including U.S. Patent No. 8,542,815, to which the Patent-in-Suit claims priority.

24. Prior to the ‘815 patent, private branch exchange (PBX) systems typically enabled 

users to call destinations internal to the PBX by dialing an extension (i.e., “private number”) and 

destinations external to the PBX on the public switched telephone network (PSTN) by dialing a 

“public number.” Such PBX systems relied on a user-specified classification of the dialed 

number to interpret the number and route the call. For example, a user placing a call to the public 

network dialed a predefined prefix such as “9” to indicate that subsequent digits were to be 

interpreted as a public PSTN number. If no prefix was dialed, the dialed digits were to be 

interpreted as a private PBX extension. The number alone, as dialed, dictated how the call was 

routed. Thus, the user made an affirmative decision when placing a call as to whether the call 

would be routed over a public or private network.

25. Digifonica’s system employed an approach fundamentally different from 

traditional PBX’s: it did not rely on a caller-specified classification (e.g., a prefix digit) to 

distinguish private calls from PSTN calls. Digifonica provided flexible, user-specific dialing 

features and could decouple the type of number being called from the manner in which the call 

would be handled. For example, even if a public PSTN number was dialed, Digifonica’s system 

could determine that the call should be routed to an internal destination on its private network, 

thus allowing the advantages of private network calling even if callers were unaware that the call 

recipient (“callee”) was a Digifonica system subscriber. If, on the other hand, the PSTN number 

represented a destination on an external network (e.g., the public network), the Digifonica 

system facilitated the routing of the call to the destination through a gateway.

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26. VoIP-Pal’s/Digifonica’s technology and patents represent fundamental 

advancements to Internet Protocol (“IP”) based communication, including improved functioning, 

classification, routing and reliability of Voice-over-IP (VoIP) and IP-based transmission of 

video, photographs, messages and mixed media, as well as improved interoperability of IP-based 

private communication networks with external networks, such as the public switched telephone 

network (PSTN), interconnected with the private communication networks via one or more 

gateways.

27. The Patent-in-suit provides, inter alia, improvements in routing controllers, 

processes, networks and systems. Several illustrative examples of such improvements are briefly 

described below, although the patented invention is not limited to these specific improvements or 

examples.

28. The public switched telephone network (PSTN) connected callers through nodes 

such as central offices or exchanges. Because these nodes were limited to providing services 

only to subscribers in a “local calling service area,” they required callers to place calls in a 

specific manner, e.g., by requiring the use of certain dialing patterns and conventions associated 

with that local area. See ’606 patent at 1:42-46. For example, it was known to persons of skill in 

the field of the invention that PSTN nodes conventionally required PSTN callers to dial in a 

manner compatible with a local numbering plan (e.g., a plan consistent with the “North 

American Numbering Plan” or “National Numbering Plan,” in use by AT&T as early as about 

the 1940’s and further developed in later years) as well as to dial in a manner compatible with 

international standards such as those of the International Telecommunications Union (ITU) 

Telecommunications Standardization Sector (ITU-T). See ’606 patent at 19:52-66. For example, 

it is known in the field of telephony that early numbering plans assigned an “area code” of 312 

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for calling Illinois, and that this code (312) remains in use even today as an area code for 

Chicago. To take another example, the ITU designates “44” as a “country code” for calling the 

United Kingdom. Id. at Fig. 12 (“County Code” attribute for London user is “44”).

29. Large organizations were able to avoid PSTN dialing constraints, at least for 

internal calls, by using private branch exchanges (PBXs) and private numbering plans for their 

internal private telephone networks, but these PBXs also needed to provide caller access to the 

PSTN. See ’606 patent at 1:35-48. As Andy Valdar has explained in his textbook, “Businesses 

which have more than a few telephones use a private branch exchange system, known as a PBX, 

to provide call connections between each telephone (which become ‘extensions’) and links into 

the PSTN... The PBX is really a small version of the PSTN exchanges, typically ranging in sizes 

from 10 up to 5,000 extensions. A private numbering scheme is required to enable extension to 

extension dialing, also special codes (e.g. ‘dial 9’) are required to enable calls to be made to the 

PSTN. [...] In the case where a company extends over two or more sites (e.g. office or factory 

buildings) the PBXs on each site can be linked by private circuits, thus enabling calling between 

all the extensions. This is known as a ‘private corporate network’ (or just ‘private network’). In 

this case the private numbering scheme extends across all the PBXs and usually each PBX is 

linked to the PSTN.” (See Valdar, Andy, Understanding Telecommunications Networks, The 

Institution of Engineering and Technology, London, UK, 2006, p. 38 (emphasis added)).

30. It was well-understood, routine and conventional for PBXs to require users to dial 

a special code (e.g., a prefix digit of “9”) if they wanted to place a call on the PSTN, as noted by 

Valdar and numerous other sources. For example, one telecom dictionary distinguishes between 

dialing an “internal PBX station number” and an “external number,” wherein in the latter case, 

“the user must dial an access code in order to gain access to an external trunk connected to the 

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public switched telephone network (PSTN)... The conventional access code is nine (9) in the 

United States and Canada, and zero (0) in most other countries”. (See Ray Horak, Webster’s 

New World Telecom Dictionary, Wiley Publishing, Inc., Indianapolis, Indiana, 2008, p.133 

[emphasis added]). To take another example, U.S. Patent No. 3,725,596 to Maxon et al. 

(“Maxon”), filed in 1971, discloses an discloses an early private branch exchange (PBX) having 

equipment for automatically generating and transmitting calling station and trunk number 

information to a central office on outgoing calls. Maxon indicates that “a calling party at station 

ST10... dials a prefix digit, such as the conventional prefix digit 9, to initiate an outgoing call to 

the central office. The digit 9 is... detected by the dial 9 detector 152. Upon the detection of this 

digit, the register control circuit 153 advises common control that the digit 9 has been dialed for 

a central office call.” [emphasis added]. Maxon at 9:66-10:6; see also Fig. 1B (152), 8:58-68, 

9:21, 9:38-40, 13:3-6, 14:6-7 and at 14:59. Webster’s New World Telecom dictionary and 

Maxon both confirm that it was considered “conventional” to use a prefix digit such as “9” to 

place a PSTN call from a PBX. The Patent-in-Suit eschewed such well-understood, routine and 

conventional approaches to integrating these two networks.

31. A person of skill in the art (POSITA), upon review of the Patent-in-Suit, would 

understand that the disclosed embodiments are inherently computer based. The POSITA would 

further appreciate that the asserted claims of the Patent-in-Suit are necessarily rooted in 

computer technology for the operation of communication networks, and provide technical 

improvements to overcome certain technical limitations of prior art routing processes, systems 

and networks, viz., that the asserted claims provide technology solutions for one or more of: (1) 

user-specific communication handling, (2) transparent routing, and (3) network resiliency and (4) 

communication blocking.

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32. User-Specific Communication Handling: Many prior art communication systems 

required users to place a call by using a specific callee identifier format or by following certain 

dialing conventions with no opportunity for defining a user-specific manner of placing calls. For 

example, as discussed above, PSTN nodes were typically limited to supporting only the dialing 

conventions of their local calling service area and processed calls locally (See ’606 patent at 

1:42-46) and did not support user-specific calling. The technology disclosed in the Patent-in-Suit 

and recited in the asserted claims overcomes such technical limitations and supports user-specific 

calling styles, e.g., calling styles from any continent or country based on the application of userspecific attributes and network classification criteria to callee identifiers to route a call. It is 

unnecessary for the user to do anything special to “trigger” such user-specific call processing. 

See, e.g., ’606 patent at 15:48-60 and 19:36-51 (disclosing storing user-specific parameters in 

association with each subscriber/user), 19:18-42 (describing a user-specific “dialing profile” 

capable of supporting numerous global styles of dialing), and Figs. 8A-8D (disclosing steps for 

processing a routing request based in part on user-specific parameters). By evaluating a called 

party identifier based on profile settings or “attributes” associated with the calling party, the 

technology provides an individually customizable manner of initiating a communication to a 

destination party. To be clear, it is not merely a calling party’s identifier (i.e., “caller ID” or 

“caller identifier”) that is used to evaluate the called party’s identifier (e.g., “callee identifier”); 

rather, a caller-specific profile, identifying caller-specific parameters/attributes, is used to 

evaluate the called party’s identifier, to determine the routing destination and to engage the 

appropriate infrastructure for effecting the communication. A skilled person in the field of the 

invention would recognize, in light of the patent specification, that this approach is capable of 

fulfilling various individual service preferences among users for initiating communications (e.g., 

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any desired PSTN dialing style, unconventional dialing styles, and even use of special callee 

identifiers such as usernames). See id. at 19:36-48; 20:33-47; 22:3-23:22. To give just one 

illustrative example, the profiles of two different users may specify different ways of dialing an 

international call (e.g., an “IDD” attribute in the two user profiles may be set to either “011” or 

“00”: see id. “IDD” attributes in the profiles shown in Figs. 11 and 12; compare blocks 257-259 

in Fig. 8B). All of the asserted claims of the Patent-in-Suit enable user-specific handling of 

communications; in particular, every claim recites user-specific attributes that are associated with 

a user-specific profile of the calling party, used for determining and establishing routing to the 

destination. Enabling a communication system, node, or routing controller to provide 

customized, user-specific communication handling to individual users represents a technological 

improvement over conventional prior art communication systems, nodes, routing controllers and 

methods that simply imposed a “one-size-fits-all” methods of communication on all users.

33. Routing Transparency: Some prior art communication systems required a user to 

explicitly signal how a call should be processed or to manually “trigger” special call handling. 

For example, as discussed above, it was well-understood, routine and conventional for PBX 

systems in large organizations to rely on a user-specified classification of the dialed number to 

interpret the number and route the call—e.g., a user placing a call to the PSTN would dial a 

predefined prefix such as “9” to indicate that subsequent digits were to be interpreted as a PSTN 

number. If no prefix was dialed, the dialed digits were interpreted as a private PBX extension. 

The dialed digits alone dictated how the call was routed, and thus the user made an affirmative 

decision when placing a call as to how the call’s routing would take place. Furthermore, when a 

PSTN number was dialed, the PSTN number itself identified which PSTN node within the public 

switched telephone network was connected to the called party. In the foregoing example, the 

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PBX failed not only to provide user-specific call handling, but it also lacked routing 

transparency. In contrast, the asserted claims of the Patent-in-Suit use a caller’s attributes to 

evaluate a callee identifier against network routing criteria to cause a call to automatically be 

routed over a system network/node or another network (e.g., such as the PSTN) interconnected 

to the system network through a gateway, transparently to the user, without the user manually 

specifying which network or node to use for routing by the user’s manner of placing the call 

(e.g., by dialing a prefix of “9” to make a PSTN call) and without requiring that a particular 

callee identifier be routed to a destination on a particular network or node. Instead, in the 

provided solution, the system itself identifies which network and/or node to use for routing. This 

is an improvement over conventional prior approaches because the caller need not know or 

specify the location of a destination (e.g., the network or node of the called party); moreover, a 

particular callee identifier can be flexibly assigned (or reassigned) to different networks or nodes. 

Still further, the assignment of PSTN telephone numbers need not follow PSTN conventions, for 

example, a subscriber’s communication device can be assigned a PSTN number corresponding to 

a different geographical location on the PSTN (e.g., a Calgary user can be assigned a phone 

number (“1-604-867-5309”) with a non-Calgary area code (“604”) and exchange code (“867”): 

see id. at Figs. 11 and 14)—and the system will transparently route calls to the Calgary user’s 

device without the caller even recognizing that the destination device is not located within the 

geographic area associated with the “604” area code or the “867” PSTN exchange (node).

34. To further illustrate these benefits with one embodiment disclosed in the ’606 

patent, if a Vancouver user (user profile in Fig. 10) dialed a PSTN phone number associated with 

the London user (user profile in Fig. 12), the system would evaluate the dialed digits based on 

the caller’s attributes, determine that the London user is a subscriber to the system, and classify 

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the call as a system network call, identifying a subscriber username such as “44011062444” (See

’606 patent at Fig. 8B, Fig. 12, 21:1-10). A routing controller (id. at 16 in Fig. 1) determines that 

the London subscriber is associated with a different system communication node than the 

Vancouver subscriber, and produces a routing message identifying that node (id. at Fig. 16; see 

also id. at 21:10-34; Fig. 8A at 280, 302, 350, 381) for receipt by a call controller (id. at 14 in 

Fig. 1), thereby causing the call controller to establish the call (id. at 27:40-43). The caller in this 

illustrative embodiment need not be aware that the London user is a subscriber and need not 

know whether or not the call is being placed over the PSTN, nor does the caller need to know 

which system node the called party uses. Thus, the identification of the destination network and 

node is transparent to the user: the same manner of initiating a communication can reach 

destinations associated with any node of the system and on either network. For example, the 

caller could call a PSTN number in London, UK representing a non-subscriber phone in London 

in the same manner, and the system would determine in that case that the call should be 

established via the PSTN, in which case the routing message would identify at least one 

appropriate gateway for routing the call (id. at 23:50-25-60 and Fig. 25). All the claims of the

Patent-in-Suit recite features which enable such transparent routing. 

35. In some claimed embodiments of the invention, a node associated with the callee 

identifier is identified (e.g., from a callee profile stored in the communication system) and the 

communication is automatically forwarded to that node for further handling. See ’606 patent at 

Fig. 8A (302, 350, 381). This, too, is transparent to the originator of the communication, who 

does not have to take any special action to “trigger” the identification of, or routing to, a node 

with which the callee is associated. In this manner, the system architecture can distribute the load 

of very large numbers of subscribers from a large geographic area without imposing any 

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requirement on users to know how to route to the node at which the callee is currently registered. 

See ’606 patent at 13:20-44. If the system operator should reassign subscribers or adds nodes to 

the system, as needed, for better performance or to maintain quality of service, the caller need 

not know this—the node can be identified dynamically. In contrast, in the conventional PSTN, 

when a new “area code” was overlaid to handle larger number of customers, callers were 

inconvenienced by having to learn new phone numbers or styles of dialing. Similarly, it was 

known that conventional PSTN exchanges (nodes) required that a particular exchange code be 

used as part of any PSTN telephone numbers assigned to that exchange. Unlike conventional 

PSTN equipment, Digifonica’s routing system removed the requirement to assign particular 

callee identifiers to nodes located in a particular geographic area. Thus, Digifonica’s system 

architecture and operation not only provided improved transparency in routing via multiple 

nodes of the system (as well as via gateways), it also gave rise to improved system resiliency, 

aspects of which are described below in greater detail with reference to the patent specification. 

36. Yet another benefit was that Digifonica’s technology enabled automatic network 

selection based on determination of a callee’s registration status. Because Digifonica’s system 

supported the use of PSTN numbers both for subscribers on its own private network as well as 

for non-subscribers on a public network (e.g., the PSTN), a caller might know the PSTN number 

of a destination without knowing whether the destination was reachable via Digifonica’s IPbased network. Digifonica’s technology automatically determined whether the destination was a 

subscriber and, if so, routed over Digifonica’s network notwithstanding that a PSTN number had 

been dialed. This enabled callers to receive the advantages of IP-based private network calling 

even when callers were unaware that the callee was a Digifonica system subscriber; such calls 

could be transparently placed over Digifonica’s IP-based network at lower cost, with better 

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quality and/or higher reliability than if the call had been sent over the PSTN network. In 

comparison to the prior art examples described above, Digifonica’s approach was 

unconventional in that it decoupled the type of number being dialed from the classification and 

routing of the call. As a further aspect, Digifonica’s network was designed to support multiple 

resellers of its communication services: See, e.g., ’606 patent at 19:22-24, 31:45-32:54; and Figs. 

9-12 (field 273), 41, 43, 45, 47-50, disclosing support for different resellers (e.g., phone 

companies retailing communication services based on Digifonica’s network under their own 

brand). Using the aforesaid technology, calls by callers to callees who were affiliated with a 

different reseller of communication services based on Digifonica’s network, would automatically 

and transparently be routed over Digifonica’s IP-based network even without the caller or callee 

knowing that both parties were Digifonica subscribers. Such network selection was especially 

helpful to overcome the costs and limitations of public networks when the calls were 

international, e.g., from callers using Digifonica’s node in North America (e.g., Vancouver) to 

callees associated with the node in Europe (e.g., London). Id. at Fig. 1.

37. Resiliency: Some prior art provided service to a limited area “[such as] one 

location, or a small number of branch offices” (see ’606 patent at 1:56-59) but was incapable of 

providing reliable service to a large number of subscribers dispersed over a geographically 

dispersed area such as a continent (id. at 1:53-56). For example, PSTN exchanges and nodes 

were limited to serving a “local calling service area” (id. at 1:42-48), whereas the PBX systems 

described above in the Valdar textbook were “really a small version of the PSTN exchanges, 

typically ranging in sizes from 10 up to 5,000 extensions” (see Valdar, supra; cf. ’606 patent at 

1:35-39). Furthermore, at a system-level, such networks did not always have “other nodes... able 

to take up the load” if a particular node failed, e.g., due to a natural disaster (See ’606 patent at 

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1:45-52). In contrast, the patented inventions can provide reliable service to large areas including 

countries and continents. This gave rise to technical challenges regarding how to handle issues 

such as a very large number of subscribers, bursts of excessive demand and/or the risk 

communication node failure, all of which affected system reliability. The patented inventions 

describe technology for flexibly assigning nodes to particular geographical areas, including the 

option of adding redundant nodes with overlapping responsibility for load sharing, wherein the 

various nodes are configured to provide communication services to sets of subscribers that are 

associated with those nodes. See ’606 patent at 13:20-40 (disclosing a network of super nodes 

providing communication services to large geographical regions) and 13:41-44 (disclosing 

special nodes for “call load sharing”). The technology performed call routing by identifying a 

suitable system network node or a gateway (e.g., a gateway to the PSTN) in response to 

evaluation of the caller’s attributes, the callee identifier, and available routing resources. See

Figs. 8A-D. This design made it simple to allocate or add new nodes and gateways to particular 

regions or destinations (see ’606 patent at 13:20-44 , 25:48-60, 27:40-43; 27:60-28:3). The use of 

caller attributes, callee identifier and routing criteria to produce the routing message, as 

described in the Patent-in-Suit, allowed such new nodes and gateways to be identified in the 

routing message, to increase service availability to subscribers as needed without redesigning the 

routing apparatus and process, to create an improved, resilient and reliable global routing system. 

Unlike some prior art systems, the Digifonica technology did not need to use SS7 protocol to 

access PSTN databases (cf. ’606 patent at 1:39-41), eliminating such dependence as a possible 

point of failure. Digifonica’s technology also supported routing through an available gateway 

selected from among many supplier gateways, which also improved overall system resilience. 

See ’606 patent at 27:60-28:19.

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38. Communication Blocking: Digifonica’s inventions, among other important 

advances, enabled various methods of communication blocking. Callers can have caller-specific 

attributes associated with their profile for determining, in a caller-specific manner, whether or 

not they are permitted to initiate a communication. See ’606 patent at 20:12-30. Furthermore, 

the caller-specific attributes associated with the caller’s profile can provide a basis for 

establishing whether an attempted communication is valid, e.g., by checking the validity of the 

called party identifier. See ’606 patent at 20:28-32 and Fig. 8B. Notably, what constitutes a valid 

initiation of a communication was a user-specific determination because it depended on userspecific profile attributes. Digifonica’s approach in this regard was unconventional compared to 

the prior art, which imposed a manner of call placement (e.g., dialing style) on all users that was 

not configurable in a user-specific manner: e.g., conventionally, all PBX users had to dial a 

particular predefined digit to dial PSTN calls; similarly, all PSTN users in a local area could dial 

only according to the local numbering plan. Finally, callee-specific information was supported in 

Digifonica’s technology for identifying how an incoming communication to each particular 

subscriber was to be handled, to enable the communication system to implement selective call 

blocking, selective call forwarding, and/or selectively routing communications to voice mail 

without interrupting the callee or the caller making an explicit choice. See ’606 patent at Fig. 8A 

(e.g., steps 602, 608, 610), Fig. 8B, Figs. 26-32.

39. The ’815 patent and the ’005 patent, to which the Patent-in-Suit claims priority, 

survived eight inter partes reviews (“IPR’s”) by the U.S. Patent Office based on prior art 

disclosing making routing decisions. See IPR2016-01201 and IPR2016-01198, filed by Apple 

(final written decisions upholding validity of all challenged claims), with the remaining IPR’s all 

denied institution: IPR2017-01398 and IPR2017-01399 filed by Apple; IPR2017-01383, 

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IPR2017-01384 and IPR2017-01385, filed by AT&T; and IPR2016-01082, filed by Unified 

Patents. The U.S. Patent and Trademark Office rejected all of the cited communication routing 

art as not rendering the ’815 patent and the ’005 patent invalid. Apple later filed four inter 

partes review petitions against four continuation patents, namely, IPR2019-01003, IPR2019-

01006, IPR2019-01008 and IPR2019-01009, filed against U.S. Patent Nos. 9,537,762 (“the ‘762 

IPR”), 9,813,330 (“the ‘330 IPR”), 9,826,002 (“the ‘002 IPR”) and 9,948,549 (“the ‘549 IPR”), 

respectively. See Apple, Inc. v. VoIP-Pal.com, Inc., IPR2019-01003, -01006, -01008, -01009, 

Paper 2 (P.T.A.B., May 13, 2019). All of these petitions were denied by the PTAB. On 

information and belief, the asserted claims of the Patent-in-Suit are inventive over the art cited 

against the parent patents. On information and belief, there are numerous methods of 

communication routing in the prior art and thus the claims of the Patent-in-Suit do not preempt 

any fundamental longstanding method or system of communication routing. On information and 

belief, the specific solutions recited in the claims of the Patent-in-Suit were not performed by 

telephone operators or otherwise performed in a “brick-and-mortar” context prior to the 

invention thereof by Digifonica personnel.

40. As described above, Digifonica eschewed various conventional approaches to 

routing communications and instead provided user-specific access to transparent routing across a 

distributed network architecture. For example, one inventive concept embodied in the Patent-inSuit—which was not well-understood, routine or conventional for persons of skill in the art at the 

time of the invention—was providing an improved routing process, apparatus and system, in 

which user-specific profile “attributes” are utilized to evaluate a “second participant identifier” to 

identify, in a “routing message,” an appropriate routing “network address” for establishing the 

communication, which causes routing of the communication to the destination.

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41. The Patent-in-Suit represents fundamental advancements to the art of internet 

protocol (IP) based communication, including improved functioning, routing and reliability for 

communications over the internet.

42. VoIP-Pal is the sole owner and assignee of the entire right title and interest in the 

’606 patent and has the right to sue and recover damages for any current or past infringement of 

the ’606 patent.

OVERVIEW OF THE ACCUSED INSTRUMENTALITIES

43. Each of the instrumentalities described in this Complaint made, used, sold and/or 

offered for sale by Facebook and WhatsApp comprise systems and devices relating to and 

supporting communications using devices, computers, servers, systems and methods used by, 

operated by and performed by Facebook and WhatsApp.

44. Facebook and WhatsApp operate a messaging service (“WhatsApp System” or 

“Accused Instrumentality”) that allows users of mobile device to to communicate using text, 

images, video and audio with users of other mobile devices. The WhatsApp System includes 

platform specific mobile device applications that operate in conjunction with a collection of 

servers and gateways connected over a wide area network. Mobile devices running the 

WhatsApp application can initiate a communication between a first participant and a second 

participant. On information and belief, each participant device is associated with one or more 

network elements or nodes. The second participant may be associated with the same node as the 

first participant or may be associated with another node. The use of first participant attributes, 

including a first participant contact list and information stored on WhatsApp servers, is used at 

least for processing a second participant identifier and/or for determining first participant account 

status.

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COUNT 1

INFRINGEMENT OF U.S. PATENT NO. 10,218,606

45. Paragraphs 1 through 44 are incorporated by reference as if fully stated in this 

Count.

46. Facebook and WhatsApp, either alone or in conjunction with others, have 

infringed and continue to infringe, both directly and indirectly, one or more claims of the ’606 

patent, including at least exemplary claim 1, under 35 U.S.C. § 271, either literally and/or under 

the doctrine of equivalents, by using, offering to sell, selling and/or importing into the United 

States at least certain methods, apparatuses, products and services used for communication, 

including, without limitation, the Accused Instrumentality.

47. For example, Facebook and WhatsApp infringe exemplary claim 8 of the ’606 

patent by using, offering to sell, selling and/or importing into the United States at least the 

Accused Instrumentality as detailed in Exhibit 2 to this Complaint.

48. On information and belief, Facebook and WhatsApp have had knowledge of their 

infringement of ’606 patent since at least February 28, 2019 based on correspondence between 

VoIP-Pal and Facebook detailing how WhatsApp practices the ’606 patent. Facebook and 

WhatsApp have also had knowledge of the ’606 patent since at least March 12, 2019 when 

VoIP-Pal issued a press release announcing the issuance of the ’606 patent. See

https://www.globenewswire.com/news-release/2019/03/12/1751617/0/en/Voip-Pal-comAnnounces-the-Deadline-for-Filing-an-Opposition-to-Their-European-RBR-Parent-Patent-hasExpired-with-No-Known-Opposition.html .

49. Despite its knowledge and notice of the ’606 patent and their infringement of that 

patent, Facebook and WhatsApp has continued to make, use, sell and offer to sell the Accused 

Case 6:20-cv-00267-ADA Document 1 Filed 04/02/20 Page 25 of 29
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Instrumentality in the United States. Accordingly, Facebook’s and WhatsApp’s infringement 

has been and continues to be willful.

50. Facebook and WhatsApp have induced infringement, and continue to induce 

infringement, of one or more claims of the ’606 patent under 35 U.S.C. § 271(b). Facebook and 

WhatsApp actively, knowingly, and intentionally induced, and continue to actively, knowingly 

and intentionally induce infringement of the ’606 patent by selling or otherwise making available 

and/or supplying the Accused Instrumentality; with the knowledge and intent that third parties 

will use the Accused Instrumentality supplied by Facebook and WhatsApp to infringe the ’606 

patent; and with the knowledge and intent to encourage and facilitate third party infringement 

through the dissemination of the Accused Instrumentality and/or the creation and dissemination 

of promotional and marketing materials, supporting materials, instructions, product manuals, 

and/or technical information related to the Accused Instrumentality.

51. Facebook and WhatsApp specifically intended and were aware that the ordinary 

and customary use of the Accused Instrumentality would infringe the ’606 patent. For example, 

Facebook and WhatsApp sell, use, make available, and provide the Accused Instrumentality, 

which when used in its ordinary and customary manner intended by Facebook and WhatsApp, 

infringe one or more claims of the ’606 patent, including at least exemplary claim 19. Upon 

information and belief, Facebook and WhatsApp further provide product manuals and other 

technical information that cause Facebook and WhatsApp customers and other third parties to 

use and to operate the Accused Instrumentality for its ordinary and customary use. Facebook 

and WhatsApp customers and other third parties have directly infringed the ’606 patent, 

including at least exemplary claim 8, through the normal and customary use of the Accused 

Instrumentality. By providing instruction and training to customers and other third parties on 

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how to use the Accused Instrumentality in an infringing manner, Facebook and WhatsApp 

specifically intended to induce infringement of the ’606 patent, including at least exemplary 

claim 8. Facebook and WhatsApp accordingly have induced and continue to induce Facebook 

and WhatsApp customers and other users of the Accused Instrumentality in their ordinary and 

customary way to infringe the ’606 patent, knowing, or at least being willful blind to the fact, 

that such use constitutes infringement of the ’606 patent.

52. VoIP-Pal has been and continues to be damaged by Facebook’s and WhatsApp’s 

infringement of the ’606 patent.

53. Facebook’s and WhatsApp’s conduct in infringing the ’606 patent renders this 

case exceptional within the meaning of 35 U.S.C. § 285.

DEMAND FOR JURY TRIAL

54. Pursuant to Rule 38 of the Federal Rules of Civil Procedure and Local Rule 38(a), 

VoIP-Pal demands a trial by jury on all issues so triable.

PRAYER FOR RELIEF

WHEREFORE, VoIP-Pal prays for the following relief:

a) A judgment and order that Facebook and WhatsApp have directly infringed 

(either literally or under the doctrine of equivalents) and/or induced the infringement of the ’606 

patent;

b) A judgment and order permanently enjoining Facebook and WhatsApp, their 

respective officers, directors, agents, servants, employees, attorneys, licensees, successors, and 

assigns and any other person(s) in active concert or participation with Facebook and WhatsApp 

from directly infringing the ’606 patent for the full term of those patents;

Case 6:20-cv-00267-ADA Document 1 Filed 04/02/20 Page 27 of 29
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c) A judgement that the infringement of the ’606 patent by Facebook and WhatsApp 

has been willful;

d) A judgment and order requiring Facebook and WhatsApp to pay VoIP-Pal an 

award of damages under 35 U.S.C. § 284, adequate to compensate VoIP-Pal for Facebook’s and 

WhatsApp’s past infringement, but in no event less than a reasonable royalty, including 

enhanced damages as provided by 35 U.S.C. § 284, and supplemental damages for any 

continuing post-verdict infringement up until entry of the final judgment with an accounting, as 

needed, as well as damages for any continuing or future infringement up to and including the 

date that Facebook and WhatsApp are finally and permanently enjoined from further 

infringement;

e) A judgment and order requiring that in the event a permanent injunction 

preventing future acts of infringement is not granted, that VoIP-Pal be awarded a compulsory 

ongoing licensing fee;

f) A judgment and order that this action be found an exceptional case pursuant to 35 

U.S.C. § 285, entitling VoIP-Pal to an award of all costs of this action, including attorneys’ fees 

and interest;

g) A judgment and order requiring Facebook and WhatsApp to pay VoIP-Pal the 

costs of this action;

h) A judgment and order requiring Facebook and WhatsApp to pay VoIP-Pal prejudgment and post-judgment interest on the damages award; and

i) Such other and further relief as the Court deems just and equitable.

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Dated: April 2, 2020 

Respectfully submitted,

By: /s/Lewis E. Hudnell, III

Lewis E. Hudnell, III

Hudnell Law Group P.C.

800 W. El Camino Real Suite 180

Mountain View, California 94040

ATTORNEYS FOR PLAINTIFF

VOIP-PAL.COM, INC.

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