IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

VOIP-PAL.COM, INC., Plaintiff,

v.

GOOGLE LLC, Defendant.

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Civil Action 6:20-cv-00269-ADA and

Civil Action 6:21-cv-00667-ADA

DISCOVERY DISPUTE ORDER

The parties raised the following discovery dispute with the Court by email submission. 

Google’s Statement

VoIP-Pal’s Preliminary Infringement Contentions (“PICs”) fail to “set[] forth where in the 

accused product(s) each element of the asserted claim(s) are found.” OGP at 1. 

First, VoIP-Pal’s PICs obfuscate any infringement theory. While totaling 2,700 pages 

across two cases, the PICs only superficially refer to each accused product and instead rely on 

long, non-limiting boilerplate passages that do not disclose where in the different accused products 

the claim elements allegedly are found. The contentions are near-exact copies across the accused 

Google products; VoIP-Pal merely swaps one product name for another without explaining how 

any of them allegedly meets each asserted claim element, even though these products significantly 

differ from one another. 

Regardless of the accused product or defendant, the PICs mirror one another. The 2020 

case PICs use “for example” 728 times for each of two accused products and 727 times for the 

third, even though the products are unrelated. This is not coincidental—it illustrates how 

genericized VoIP-Pal’s PICs are. Similarly, in the 2021 case PICs, the two charts use “for 

example” the same number of times. VoIP-Pal’s charts also are nearly identical to those for other 

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defendants, like T-Mobile, notwithstanding that VoIP-Pal accuses entirely dissimilar products and 

systems. In short, VoIP-Pal simply recycles vague, generic PICs with excessive, non-limiting “for 

example” language, instead of disclosing product-specific infringement theories so that Google 

can understand where VoIP-Pal believes each element of the asserted claims is found in Google’s 

accused products. 

Second, VoIP-Pal’s contentions in the 2020 case accuse the “Google-Nest Messaging 

System,” but fail to specify what hardware or software that allegedly includes. “Google-Nest 

Messaging System” is neither a product nor a messaging service. It instead is a Plaintiff-coined 

term that sheds no light on what product or functionality is accused. Indeed, “Nest” could refer to 

several types of products, including cameras, doorbells, smart speakers, and displays. Unlike the 

separately accused “Google-Duo Messaging System” and “Google-Hangouts Messaging System,” 

which Google recognizes as accusing particular messaging-related products, Google cannot divine 

what is meant by VoIP-Pal’s fictitious “Google-Nest Messaging System.” VoIP-Pal ambiguously 

asserts that it means “one or more messaging and communication services,” pointing to things like 

“networks connecting distributed nodes or clusters of nodes,” “one or more Google-Nest client 

software applications,” “a Google-Nest server infrastructure,” and “Google Nest service.” See

2020 Case PICs, Ex. C at 1–3. This provides no insight into what Nest-related product or 

functionality allegedly infringes the asserted claims and how. Particularly where VoIP-Pal 

purports to accuse an otherwise non-existent product, it must adequately explain the scope of that 

accused product.

Relief Requested: Google respectfully requests that the Court (1) order VoIP-Pal to serve 

amended, OGP-compliant PICs, both as a whole and specifically against the “Google-Nest 

Messaging System” within 14 days after the Court’s decision; and (2) order the parties to submit 

Case 6:20-cv-00269-ADA Document 68 Filed 03/18/22 Page 2 of 5
a joint proposed scheduling order based on the amended PICs within 14 days after service of the 

amended PICs. See Intellectual Tech LLC v. Zebra Techs. Corp., No. 6:19-CV-00628-ADA, ECF 

No. 31 (W.D. Tex. Apr. 29, 2020).

Google proposes the following exact language to be issued in a court order: “The Court 

orders VoIP-Pal to serve amended Preliminary Infringement Contentions in each case within 14 

days. The Court further orders the parties to submit a joint proposed scheduling order in each case 

within 14 days after VoIP-Pal serves its amended Preliminary Infringement Contentions.”

VoIP-Pal’s Statement

Google’s claim that VoIP-Pal’s PICs are deficient lacks merit. Tellingly, Google fails to 

identify any limitation of the asserted claims where the PICs fail to “set[] forth where in the 

accused product(s) each element of the asserted claim(s) are found” as required by the OGP. 

Instead, Google complains about the similarity of the contentions across its accused products and 

those of the defendants in the related cases. But these similarities are due to the fact that the 

accused products and services operate in a similar manner, at least insofar as the claim language 

is concerned. Moreover, Google neglects to mention that the PICs include product specific

information contained each chart of VoIP-Pal’s 2020 case PICs and in Appendix A of each chart 

of VoIP-Pal’s 2021 case PICs. See, e.g., 2020 Case PICs, Ex. C at 4-6; Attachment A (Exhibit 1 

2021 PICs, Appendix A).

Google quibbles with VoIP-Pal’s use of the phrase “for example.” But Google provides 

no authority that providing examples of infringement constitutes a deficiency. Rather, VoIP-Pal 

uses the phrase “for example” to provide Google numerous detailed examples of how its products 

and services infringe.

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Finally, Google complains that “Google-Nest Messaging System” is not a term used by 

Google for any product or service, but acknowledges that at least “Google-Duo Messaging 

System” and the “Google-Hangouts Messaging System” refer to commercial product/services. It 

is, however, indisputable that “Nest” is a brand that is used by Google for commercial 

products/services, and that Google’s products including calling and messaging features. Moreover, 

Google keeps renaming and rebranding its products, even retrospectively, therefore it is difficult 

to find a simple term that would encompass all products and services that may infringe VoIP-Pal’s 

patents. In any event, Google did announce its intention to rebrand its smart products such as 

Google Home under the “Google Nest” moniker. See “Google Nest: Why Google Finally 

Embraced Nest as its Smart Home Brand,” The Verge, May 7, 2019, 

https://www.theverge.com/2019/5/7/18530609/google-nest-smart-home-brand-merging-hubmax-rebrand-io-2019 (last visited Mar. 4, 2022). The PICs themselves cite urls describing 

Google’s Nest products and services and explain in detail how those products and services perform 

the calling and routing functions recited in the asserted claims. See, e.g., 2020 Case PICs, Ex. C 

at 1-8. Therefore, Google’s claim it cannot understand what “Google-Nest” refers to or how 

“Google Nest” infringes is both disingenuous and a problem of Google’s own making.

Relief Requested: “The Court orders that Google's request for VoIP-Pal to serve amended 

Preliminary Infringement Contentions in each case is DENIED. The Court further orders that 

Google's remaining requested relief is DENIED as moot.”

ORDER

The parties actually dispute four issues. The Court GRANTS-IN-PART and DENIESIN-PART Google’s requested relief as follows.

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First, on the issue of whether VoIP-Pal obfuscated its infringement theory, the Court 

DENIES the relief requested by Google because the requested relief is too vague to be meaningful. 

Google asks the Court to order “VoIP-Pal to serve amended Preliminary Infringement 

Contentions” without setting any minimum standard for how VoIP-Pal must amend its contentions.

Second, on the issue of whether the infringement contentions may use “for example,” the 

issue is not yet ripe for resolution. The preliminary infringement contentions must give fair notice 

of Plaintiff’s infringement theories. If the Plaintiff later surprises the Defendant by asserting 

infringement theories not fairly noticed, the Court will be inclined to grant Defendant relief at that 

later time, especially if the Plaintiff presently has knowledge of theories not explicitly set forth in 

its preliminary infringement contentions. Plaintiff would serve its interest best by amending its 

contentions to plainly set forth all its infringement theories, but the Court declines to compel 

Plaintiff to do so. 

Third, on the use of “Google-Nest Messaging System,” the Court finds that this coined 

phrase does not give fair notice of which products are accused. The Court hereby ORDERS 

Plaintiff to serve amended infringement contentions within 14 days that unambiguously identify

the names of at least the public products/services included in the “Google-Nest Messaging 

System.” Plaintiff may use names from any time period, past or present. 

Fourth, on the issue of resetting the schedule, Google’s request for relief is DENIED. The 

Court’s schedule already builds in room for amended contentions.

SIGNED this 18th day of March, 2022.

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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