EXHIBIT 1

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ADMINISTRATIVE MOTION TO CONSIDER

WHETHER CASES SHOULD BE RELATED

 CASE NO. 5:18-cv-06217-LHK 

DESMARAIS LLP 

Peter C. Magic (Bar No. 278917) 

101 California Street, Suite 3070 

San Francisco, CA 94111 

Telephone: (415) 573-1900 

jdesmarais@desmaraisllp.com 

pmagic@desmaraisllp.com 

DESMARAIS LLP 

John M. Desmarais (admitted pro hac vice) 

Ameet A. Modi (admitted pro hac vice pending) 

230 Park Avenue 

New York, NY 10169 

Telephone: (212) 351-3400 

jdesmarais@desmaraisllp.com 

amodi@desmaraisllp.com 

Attorneys for Defendant Apple Inc. 

UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

 Case No. 5:18-cv-06217-LHK

ADMINISTRATIVE MOTION TO 

CONSIDER WHETHER CASES 

SHOULD BE RELATED 

Case 6:20-cv-00269-ADA Document 25-2 Filed 07/31/20 Page 2 of 33 Case 5:18-cv-06217-LHK Document 103 Filed 04/24/20 Page 1 of 6
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ADMINISTRATIVE MOTION TO CONSIDER

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-2- CASE NO. 5:18-cv-06217-LHK 

I. INTRODUCTION 

Pursuant to the Northern District of California’s Civil Local Rules 3-12(b) and 7-11, 

Defendant Apple Inc. (“Apple”) files this motion to request that the above-captioned case be 

related to a recently-filed action that is captioned Apple Inc. v. VoIP-Pal.com, Inc., Case No. 3:20-

cv-02460-JSC (“Apple declaratory judgment action”), which has been assigned to Magistrate 

Judge Corley. This Court has already granted a similar motion filed by Twitter. (See Doc. 92 in 

VoIP-Pal.com, Inc. v. Twitter Inc., Case No. 5:18-cv-04523-LHK, deeming that case related to 

Twitter Inc. v. VoIP-Pal.com, Inc., now captioned as Case No. 5:20-cv-02397-LHK.) 

This Court is already familiar with VoIP-Pal.com, Inc. (“VoIP-Pal”) and its patents. In 

2018 and 2019, this Court presided over six lawsuits filed by VoIP-Pal that were consolidated into 

two sets for pretrial purposes: 

The “first wave” cases, which the Court deemed related to each other, were filed against the 

following defendants and involved the assertion of two patents:

 Apple (Case No. 5:18-cv-06217-LHK) (this case); 

 Twitter (Case No. 5:18-cv-04523-LHK); 

 Verizon Wireless (Case No. 5:18-cv-06054-LHK); and 

 AT&T (Case No. 5:18-cv-06177-LHK). 

The “second wave cases,” which the Court deemed related to each other, were filed against 

the following defendants and involved the assertion of four additional patents from the same 

family: 

 Apple (Case No. 5:18-cv-06216-LHK); and 

 Amazon (Case No. 5:18-cv-07020-LHK). 

In a clear effort to avoid this District’s prior judgments—to a venue (the Western District 

of Texas) with which VoIP-Pal has no connection, but that it apparently views as more friendly—

VoIP-Pal has recently filed a slew of new lawsuits concerning yet another patent from the same 

family. As described herein, both Apple and Twitter have filed declaratory judgment actions 

against VoIP-Pal in this District. By this motion, Apple seeks to have its declaratory judgment 

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action deemed related to the earlier actions involving Apple and VoIP-Pal—i.e., the same finding 

that the Court has already entered in the Twitter cases. 

II. APPLICABLE LEGAL STANDARD 

“Whenever a party knows or learns that an action, filed in or removed to this district is (or 

the party believes that the action may be) related to an action which is or was pending in this 

District as defined in Civil L.R. 3-12(a), the party much promptly file in the lowest-numbered case 

an Administrative Motion to Consider Whether Cases Should be Related, pursuant to Civil L.R. 

7-11.” Civil L.R. 3-12(b). Under Civil Local Rule 3-12(a), “[a]n action is related to another when: 

(1) The actions concern substantially the same parties, property, transaction or event; and (2) [i]t 

appears likely that there will be an unduly burdensome duplication of labor and expense or 

conflicting results if the cases are conducted before different Judges.” Civil L.R. 3-12(a). 

III. DISCUSSION 

A. Factual Background 

In 2018 and 2019, this Court presided over six lawsuits filed by VoIP-Pal—two against 

Apple. In the “first wave” actions filed against Apple, Twitter, AT&T, and Verizon Wireless, 

VoIP-Pal asserted U.S. Patent Nos. 8,542,815 and 9,179,005 (the “’815 and ’005 patents,” 

respectively), both entitled “Producing Routing Messages For Voice Over IP Communications.” 

The two patents share a common specification. Defendants filed a Consolidated Motion To 

Dismiss that the asserted patents are invalid under 35 U.S.C. § 101 for claiming patent ineligible 

subject matter. On March 25, 2019, this Court granted Defendants’ Motion, found all asserted 

claims of the ’815 and ’005 patents invalid, and issued rendered judgment in favor of defendants. 

(E.g., Case No. 5:18-cv-04523-LHK, Docs. 82 and 84.) On March 16, 2020, the Court of Appeals 

for the Federal Circuit affirmed this Court’s judgment. (Id., Doc. 89.) 

 In the “second wave” actions filed against Apple and Amazon, VoIP-Pal asserted U.S. 

Patents 9,537,762; 9,813,330; 9,826,002; and 9,948,549. These four asserted patents are related 

to and share a common specification with the ’815 and ’005 patents. Apple and Amazon filed a 

Consolidated Motion To Dismiss that the four asserted patents in the second wave cases are invalid 

under 35 U.S.C. § 101. On November 1, 2019, this Court granted Defendants’ Motion, found all 

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asserted claims of the four asserted patents invalid, and issued rendered judgment in favor of 

defendants Apple and Amazon. (E.g., Case No. 5:18-cv-06216-LHK, Docs. 114 and 115.) VoIPPal has appealed the judgment of invalidity under Section 101, and the appeal is pending. 

VoIP-Pal recently began another patent litigation campaign. Between April 2-7, 2020, 

VoIP-Pal filed four new lawsuits against defendants Facebook, WhatsApp, Google, Amazon, and 

Apple in the Western District of Texas (the “Texas lawsuits”). In the Texas lawsuits, VoIP-Pal 

asserts U.S. Patent 10,218,606 (“the ’606 patent”), which is also entitled “Producing Routing 

Messages For Voice Over IP Communications.” The ’606 patent is in the same family as the six 

patents asserted in the first and second wave cases. 

Apple believes that VoIP-Pal’s Texas lawsuits amount to improper forum shopping—a 

clear attempt to have another Federal Court duplicate, or potentially contradict, this Court’s prior 

decisions. On April 10, 2020, Apple filed a complaint for declaratory judgment of noninfringement and invalidity of the ’606 patent. On April 13, 2020, Apple amended its complaint 

to add counts of declaratory judgment of non-infringement and invalidity of U.S. Patent No. 

9.935,872 (“the ’872 patent”). The claims of the ’606 and ’872 patents that are the subject of the 

new Apple declaratory judgment action are very similar to the claims of the six patents that VoIPPal previously asserted against Apple and other defendants in the first and second wave cases. 

(Apple declaratory judgment action, Doc. 10.) For example, claim 1 of the ’606 patent and claim 

30 of the ’872 patent are very similar to claim 74 of the ’005 patent, which was asserted against 

Apple in the above-captioned action (one of the first wave cases). All three claims set forth 

methods of routing communications between two participants based on “attributes” or “identifiers” 

of the participants, matching or comparing the identifiers, and producing a “routing message” that 

identifies an address associated with first or second network element or a first or second portion 

of the network. Furthermore, the Apple products or services for which Apple has sought a 

declaratory judgment of non-infringement and invalidity in the Apple declaratory judgment action 

are the same as the Apple products and services that Apple accused of infringement in the original 

“first wave” and “second wave” actions. 

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ADMINISTRATIVE MOTION TO CONSIDER

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Apple filed its new declaratory judgment action in this District (Case No. 3:20-cv-02460-

JSC) against VoIP-Pal because of the foregoing similarities, VoIP-Pal’s recent filing of the Texas 

lawsuits, and recent public statements by VoIP-Pal that threatened further legal action in the wake 

of the Federal Circuit’s affirmance of this Court’s judgment of invalidity of the ’815 and ’005 

patents. (Apple declaratory judgment action, Doc. 10.) 

B. Analysis 

The Apple declaratory judgment action and the above-captioned action are related cases 

under Civil L.R. 3-12(a) for at least the same reasons that the Court has deemed related the actions 

involving Twitter and VoIP-Pal. (See Doc. 92 in VoIP-Pal.com, Inc. v. Twitter Inc., Case No. 

5:18-cv-04523-LHK, deeming that case related to Twitter Inc. v. VoIP-Pal.com, Inc., now 

captioned as Case No. 5:20-cv-02397-LHK.) 

First, the two actions concern the same parties (VoIP-Pal and Apple), substantially the 

same property (the ’606 and ’872 patents, which share an overlapping specification with and recite 

claims very similar to the ’815 and ’005 patents at issue in the above-captioned case), and 

substantially the same transaction or event (the question of whether the patents-in-suit, which are 

in the same family as the patents at issue in the above-captioned case and recite very similar claims, 

are invalid and/or infringed). 

Second, given the facts set forth above, it would be an unduly burdensome duplication of 

labor and expense or conflicting results if the Apple declaratory judgment action were conducted 

before Magistrate Judge Corley instead of in this Court. This Court has invested substantial time 

in analyzing and issuing substantive, dispositive rulings on the six patents that VoIP-Pal asserted 

in the first and second wave cases, including the ’815 and ’005 patents involved in the abovecaptioned action against Apple. The ’606 and ’872 patents are in the same family as, and have 

overlapping specifications as, the ’815 and ’005 patents asserted in the above-captioned action 

(and the four other VoIP-Pal patents involved in the first and second wave cases); the claims of 

the patents are similar as well. There would be substantial duplication of effort and expense and 

risk of conflicting results of the Apple declaratory judgment action were to proceed before 

Magistrate Judge Corley, who has no prior familiarity with VoIP-Pal and VoIP-Pal’s patents. 

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For the foregoing reasons, having this Court preside over the Apple declaratory judgment 

action would conserve judicial resources and promote the efficient resolution of the action. 

IV. CONCLUSION 

Apple respectfully requests a determination that the Apple declaratory judgment action 

(Case No. 20-cv-02460-JSC) is related to the above-captioned action, and an assignment of the 

Apple declaratory judgment action to the judge in the above-captioned action. 

DATED: April 24, 2020 By: /s/ Ameet A. Modi 

 DESMARAIS LLP 

Peter C. Magic (Bar No. 278917) 

101 California Street, Suite 3070 

San Francisco, CA 94111 

Telephone: (415) 573-1900 

pmagic@desmaraisllp.com 

DESMARAIS LLP 

John M. Desmarais (admitted pro hac vice) 

Ameet A. Modi (admitted pro hac vice) 

230 Park Avenue 

New York, NY 10169 

Telephone: (212) 351-3400 

jdesmarais@desmaraisllp.com 

amodi@desmaraisllp.com 

 Attorneys for Defendant Apple Inc.

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28 DECLARATION OF AMEET A. MODI IN SUPPORT OF 

ADMINISTRATIVE MOTION TO CONSIDER WHETHER 

CASES SHOULD BE RELATED 

 CASE NO. 5:18-cv-06217-LHK 

DESMARAIS LLP 

Peter C. Magic (Bar No. 278917) 

101 California Street, Suite 3070 

San Francisco, CA 94111 

Telephone: (415) 573-1900 

pmagic@desmaraisllp.com 

DESMARAIS LLP 

John M. Desmarais (admitted pro hac vice) 

Ameet A. Modi (admitted pro hac vice) 

230 Park Avenue 

New York, NY 10169 

Telephone: (212) 351-3400 

jdesmarais@desmaraisllp.com 

amodi@desmaraisllp.com 

Attorneys for Defendant Apple Inc. 

UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

 Case No. 5:18-cv-06217-LHK

DECLARATION OF AMEET A. MODI 

IN SUPPORT OF ADMINISTRATIVE 

MOTION TO CONSIDER WHETHER 

CASES SHOULD BE RELATED 

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28 DECLARATION OF AMEET A. MODI IN SUPPORT OF 

ADMINISTRATIVE MOTION TO CONSIDER WHETHER 

CASES SHOULD BE RELATED 

-2- CASE NO. 5:18-cv-06217-LHK 

I, Ameet A. Modi, declare as follows: 

1. I am an attorney with the law firm of Desmarais LLP, counsel of record in this 

action for Defendant Apple Inc. (“Apple”). I am a member in good standing of the Bar of the 

State of New York and am admitted to this Court pro hac vice. 

2. I submit this declaration in support of Apple’s administrative motion under Civil 

Local Rules 3-12 and 7-11 to consider whether this action should be related to Apple Inc. v. VoIPPal.com, Inc., Case No. 3:20-cv-02460-JSC, which is pending before Magistrate Judge Jacqueline 

Scott Corley of this Court. I have personal knowledge of the matters stated in this declaration and 

would testify truthfully to them if called upon to do so. 

3. On April 22, 2020, I contacted Lewis E. Hudnell III, counsel of record for VoIPPal. I asked if VoIP-Pal would stipulate to the motion seeking to have this case related to Apple 

Inc. v. VoIP-Pal.com, Inc., Case No. 3:-20-cv-02460-JSC. Mr. Hudnell responded that VoIP-Pal 

would oppose such a motion. 

4. Accordingly, Apple was unable to obtain a stipulation. 

I declare under penalty of perjury under the laws of the United States that the foregoing is 

true and correct to the best of my knowledge. 

Executed at Irvine, California this 24th day of April, 2020. 

 By: /s/ Ameet A. Modi 

 Ameet A. Modi 

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28 [PROPOSED] ORDER GRANTING APPLE’S ADMIN. 

MOTION TO CONSIDER WHETHER CASES SHOULD BE 

RELATED 

 CASE NO. 5:18-cv-06217-LHK 

DESMARAIS LLP 

Peter C. Magic (Bar No. 278917) 

101 California Street, Suite 3070 

San Francisco, CA 94111 

Telephone: (415) 573-1900 

pmagic@desmaraisllp.com 

DESMARAIS LLP 

John M. Desmarais (admitted pro hac vice) 

Ameet A. Modi (admitted pro hac vice) 

230 Park Avenue 

New York, NY 10169 

Telephone: (212) 351-3400 

jdesmarais@desmaraisllp.com 

amodi@desmaraisllp.com 

Attorneys for Defendant Apple Inc. 

UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

APPLE INC., 

Defendant. 

 Case No. 5:18-cv-06217-LHK

[PROPOSED] ORDER GRANTING 

APPLE INC.’S ADMINISTRATIVE 

MOTION TO CONSIDER WHETHER 

CASES SHOULD BE RELATED 

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MOTION TO CONSIDER WHETHER CASES SHOULD BE 

RELATED 

-2- CASE NO. 5:18-cv-06217-LHK 

Having considered the Defendant Apple Inc.’s Administrative Motion to consider whether 

the present action should be related to the action captioned Apple Inc. v. VoIP-Pal.com, Inc., Case 

No. 3:20-cv-02460-JSC (“Apple Declaratory Judgment action”), under Civil Rules 3-12 and 7-11, 

and good cause appearing, the Court GRANTS Apple’s Administrative Motion. 

The Court finds that the present action is related to the Apple Declaratory Judgment action 

under Civil Local Rule 3-12(a). The Court further finds that the Apple Declaratory Judgment 

action should be reassigned to the Honorable Lucy Koh pursuant to Civil Local Rule 3-12(f). 

IT IS SO ORDERED. 

____________, 2020 __________________________________ 

 The Honorable Lucy Koh 

UNITED STATES DISTRICT JUDGE 

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ADMINISTRATIVE MOTION TO CONSIDER 

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CASE NO. 5:18-cv-06177-LHK 

Samir A. Bhavsar (Pro hac vice) 

Morgan Grissum Mayne (Pro hac vice) 

BAKER BOTTS L.L.P 

2001 Ross Avenue, Suite 900 

Dallas, Texas 75201 

Telephone: (214) 953-6500 

Email: samir.bhavsar@bakerbotts.com 

Email: morgan.grissum@bakerbotts.com 

Wayne O. Stacy 

BAKER BOTTS L.L.P 

101 California Street, Suite 3600 

San Francisco, CA 94111 

Telephone: (415) 291-6200 

Email: wayne.stacy@bakerbotts.com 

Lauren J. Dreyer (Pro hac vice)

BAKER BOTTS L.L.P 

700 K Street, N.W. 

Washington, DC 20001 

Telephone: (202) 639-7700 

Email: lauren.dreyer@bakerbotts.com 

Attorneys for Defendant AT&T Corp.

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

AT&T CORP., 

Defendant. 

Case No. 5:18-cv-06177-LHK 

ADMINISTRATIVE MOTION TO 

CONSIDER WHETHER CASES SHOULD 

BE RELATED 

 

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I. INTRODUCTION 

Pursuant to the Northern District of California’s Civil Local Rules 3-12(b) and 7-11, 

Defendant AT&T Corp. (“AT&T”) files this motion to request that the above-captioned case be 

related to a recently-filed action that is captioned AT&T Corp. v. VoIP-Pal.com, Inc., Case No. 5:20-

cv-02995 (“AT&T declaratory judgment action”), which has been assigned to the Honorable 

Nathanael M. Cousins. This Court has already granted similar motions filed by each of Twitter and 

Apple. (See Dkt. No. 92 in VoIP-Pal.com, Inc. v. Twitter Inc., Case No. 5:18-cv-04523-LHK, 

deeming that case related to Twitter Inc. v. VoIP-Pal.com, Inc., now captioned as Case No. 5:20-cv02397-LHK; Dkt. No. 104 in VoIP-Pal.com, Inc. v. Apple Inc., Case No. 5:18-cv-06217-LHK, 

deeming that case related to Apple Inc. v. VoIP-Pal.com, Inc., now captioned as Case No. 5:20-cv02460-LHK.) 

This Court is already familiar with VoIP-Pal.com, Inc. (“VoIP-Pal”), its patents, and VoIPPal’s allegations against AT&T. In 2018 and 2019, this Court presided over six lawsuits filed by 

VoIP-Pal that were consolidated into two waves for pretrial purposes: 

The “first wave” cases, which the Court deemed related to each other, were filed against the 

following defendants and involved the assertion of two patents: 

 AT&T (Case No. 5:18-cv-06177-LHK) (this case); 

 Apple (Case No. 5:18-cv-06217-LHK); 

 Twitter (Case No. 5:18-cv-04523-LHK); and 

 Verizon Wireless (Case No. 5:18-cv-06054-LHK). 

The “second wave cases,” which the Court deemed related to each other, were filed against 

the following defendants and involved the assertion of four additional patents from the same family: 

 Apple (Case No. 5:18-cv-06216-LHK); and 

 Amazon (Case No. 5:18-cv-07020-LHK). 

VoIP-Pal recently filed a batch of new lawsuits concerning yet another patent from the same 

family in a different district — the Western District of Texas. VoIP-Pal — a Nevada corporation 

with a principal place of business in Bellevue, Washington — has no connection to that district. 

VoIP-Pal’s new choice in forum is thus a clear attempt to avoid this District’s prior analysis and 

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judgments on closely related patents. As described herein, AT&T, Apple, and Twitter have each 

filed declaratory judgment actions against VoIP-Pal in this District, all of which involve the same 

patent—US Patent No. 10,218,606. By this motion, AT&T seeks to have its declaratory judgment 

action deemed related to the earlier action involving AT&T and VoIP-Pal — i.e., the same finding 

that the Court has already entered in the Twitter and Apple cases. 

II. APPLICABLE LEGAL STANDARD 

“Whenever a party knows or learns that an action, filed in or removed to this district is (or 

the party believes that the action may be) related to an action which is or was pending in this District 

as defined in Civil L.R. 3-12(a), the party must promptly file in the lowest-numbered case an 

Administrative Motion to Consider Whether Cases Should be Related, pursuant to Civil L.R. 7-11.” 

Civil L.R. 3-12(b). Under Civil Local Rule 3-12(a), “[a]n action is related to another when: (1) [t]he 

actions concern substantially the same parties, property, transaction or event; and (2) [i]t appears 

likely that there will be an unduly burdensome duplication of labor and expense or conflicting results 

if the cases are conducted before different Judges.” Civil L.R. 3-12(a). 

III. DISCUSSION 

A. Factual Background 

In 2018 and 2019, this Court presided over six lawsuits filed by VoIP-Pal—one against 

AT&T. In the “first wave” actions filed against Apple, Twitter, AT&T, and Verizon Wireless, 

VoIP-Pal asserted U.S. Patent Nos. 8,542,815 and 9,179,005 (the “’815 and ’005 patents,” 

respectively), both entitled “Producing Routing Messages For Voice Over IP Communications.” 

The two patents share a common specification. Defendants filed a Consolidated Motion To Dismiss 

on the ground that the asserted patents are invalid under 35 U.S.C. § 101 for claiming patent 

ineligible subject matter. On March 25, 2019, this Court granted defendants’ Motion, found all 

asserted claims of the ’815 and ’005 patents invalid, and issued judgment in favor of defendants. 

(E.g., Case No. 5:18-cv-04523-LHK, Dkt. Nos. 82 and 84.) On March 16, 2020, the Federal Circuit 

affirmed this Court’s judgment. (Id., Dkt. No. 89.) 

In the “second wave” actions filed against Apple and Amazon, VoIP-Pal asserted U.S. Patent 

Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549. These four asserted patents are related to and 

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share a common specification with the ’815 and ’005 patents. Apple and Amazon filed a 

Consolidated Motion To Dismiss on the ground that the four asserted patents in the second wave 

cases are invalid under 35 U.S.C. § 101. On November 1, 2019, this Court granted that Motion, 

found all asserted claims of the four asserted patents invalid, and issued judgment in favor of 

defendants Apple and Amazon. (E.g., Case No. 5:18-cv-06216-LHK, Dkt. Nos. 114 and 115.) 

VoIP-Pal has appealed the judgment of invalidity under Section 101, and the appeal is pending. 

VoIP-Pal recently began another patent litigation campaign. Between April 2-24, 2020, 

VoIP-Pal filed six new lawsuits against defendants Facebook, WhatsApp, Google, Amazon, Apple, 

AT&T, and Verizon in the Western District of Texas (the “Texas lawsuits”). In the Texas lawsuits, 

VoIP-Pal asserts U.S. Patent No. 10,218,606 (“the ’606 patent”), which is also entitled “Producing 

Routing Messages For Voice Over IP Communications.” The ’606 patent is in the same family as, 

and shares the same specification with, the six patents asserted in the first and second wave cases. 

AT&T believes that VoIP-Pal’s Texas lawsuits amount to improper forum shopping — a 

clear attempt to have another federal court duplicate, or potentially contradict, this Court’s prior 

decisions. On April 30, 2020, AT&T filed a complaint for declaratory judgment of noninfringement 

and invalidity of the ’606 patent. The claims of the ’606 patent that are the subject of the new AT&T 

declaratory judgment action are very similar to the claims of the six patents that VoIP-Pal previously 

asserted against AT&T and other defendants in the first and second wave cases. (AT&T declaratory 

judgment action, Case No. 5:20-cv-02995, Dkt. No. 1.) For example, claim 1 of the ’606 patent is 

very similar to claim 74 of the ’005 patent, which was asserted against AT&T in the above-captioned 

action (one of the first wave cases). Both claims set forth methods of routing communications 

between two participants based on “attributes” or “identifiers” of the participants, matching or 

comparing the identifiers, and producing a “routing message” that identifies an address associated 

with a first or second network element or a first or second portion of the network. Furthermore, the 

AT&T products or services for which AT&T has sought a declaratory judgment of noninfringement 

and invalidity in the AT&T declaratory judgment action are the same as or similar to the AT&T 

products and services that VoIP-Pal accused AT&T of infringement in the original “first wave” 

actions. 

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AT&T filed its new declaratory judgment action in this District (Case No. 5:20-cv-02995) 

against VoIP-Pal because of the foregoing similarities, VoIP-Pal’s recent filing of the Texas 

lawsuits, and recent public statements by VoIP-Pal that threatened further legal action in the wake 

of the Federal Circuit’s affirmance of this Court’s judgment of invalidity of the ’815 and ’005 

patents. (AT&T declaratory judgment action, Case No. 5:20-cv-02995, Dkt. No. 1., Ex. 7) 

B. Analysis 

The AT&T declaratory judgment action and the above-captioned action are related cases 

under Civil L.R. 3-12(a) for at least the same reasons that the Court has deemed related the actions 

involving Twitter, Apple, and VoIP-Pal. (See Dkt. No. 92 in VoIP-Pal.com, Inc. v. Twitter Inc., 

Case No. 5:18-cv-04523-LHK, deeming that case related to Twitter Inc. v. VoIP-Pal.com, Inc., now 

captioned as Case No. 5:20-cv-02397-LHK and involving the ’606 patent; Dkt. No. 104 in VoIPPal.com, Inc. v. Apple Inc., Case No. 5:18-cv-06217-LHK, deeming that case related to Apple Inc. 

v. VoIP-Pal.com, Inc., now captioned as Case No. 5:20-cv-02460-LHK and also involving the ’606 

patent.) First, the two actions concern overlapping parties (VoIP-Pal and AT&T),1

 substantially the 

same property (the ’606 patent, which shares an overlapping specification with and recites claims 

very similar to the ’815 and ’005 patents at issue in the above-captioned case), and substantially the 

same transaction or event (the question of whether the patent-in-suit, which is in the same family as 

the patents-at-issue in the above-captioned case and recites very similar claims, is invalid and/or 

infringed). 

Second, given the facts set forth above, it would be an unduly burdensome duplication of 

labor and expense if the AT&T declaratory judgment action were conducted before the Honorable 

Nathanael M. Cousins instead of before the Honorable Lucy J. Koh in this Court. It also would risk 

conflicting results. Judge Koh has invested substantial time in analyzing and issuing substantive, 

dispositive rulings on the six patents that VoIP-Pal asserted in the first and second wave cases, 

including the ’815 and ’005 patents involved in the above-captioned action against AT&T. The 

’606 patent is in the same family as, and has an overlapping specification with, the ’815 and ’005 

 

1

 The AT&T declaratory judgment action includes two additional AT&T entities—AT&T 

Services, Inc. and AT&T Mobility LLC. 

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patents asserted in the above-captioned action (and the four other VoIP-Pal patents involved in the 

first and second wave cases); the claims of the patents are similar as well. There would be 

substantial duplication of effort and expense and risk of conflicting decisions (e.g., regarding patent 

eligibility) if the AT&T declaratory judgment action were to proceed before Judge Cousins, who 

has no prior familiarity with VoIP-Pal and VoIP-Pal’s patents. 

For the foregoing reasons, having Judge Koh preside over the AT&T declaratory judgment 

action would conserve judicial resources and promote the efficient resolution of the action. 

IV. CONCLUSION 

AT&T respectfully requests a determination that the AT&T declaratory judgment action 

(Case No. 5:20-cv-02995) is related to the above-captioned action, and an assignment of the AT&T 

declaratory judgment action to the judge in the above-captioned action. 

Dated: May 5, 2020 BAKER BOTTS L.L.P. 

/s/ Samir A. Bhavsar 

Samir A. Bhavsar (Pro hac vice) 

samir.bhavsar@bakerbotts.com

Morgan Grissum Mayne (Pro hac vice) 

morgan.grissum@bakerbotts.com

2001 Ross Avenue, Suite 900 

Dallas, Texas 75201 

(214) 953-6500 

Wayne O. Stacy 

wayne.stacy@bakerbotts.com 

101 California Street, Suite 3600 

San Francisco, CA 94111 

(415) 291-6200 

Lauren J. Dreyer (Pro hac vice)

lauren.dreyer@bakerbotts.com 

700 K Street, N.W. 

Washington, DC 20001 

(202) 639-7700 

Attorneys for Defendant AT&T Corp. 

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CERTIFICATE OF SERVICE

I hereby certify that on May 5, 2020, I served the forgoing ADMINISTRATIVE MOTION 

TO CONSIDER WHETHER CASES SHOULD BE RELATED via U.S. Mail and electronic 

mail pursuant to Civil Local Rule 5-1(h)(2) on: 

Lewis E. Hudnell, III 

Hudnell Law Group 

800 W. El Camino Real, Suite 180 

Mountain View, CA 94040 

Email: Lewis@hudnelllaw.com 

 /s/ Samir A. Bhavsar

 Samir A. Bhavsar 

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DECLARATION OF MORGAN G. MAYNE CASE NO. 5:18-cv-06177-LHK 

Samir A. Bhavsar (Pro hac vice) 

Morgan Grissum Mayne (Pro hac vice) 

BAKER BOTTS L.L.P 

2001 Ross Avenue, Suite 900 

Dallas, Texas 75201 

Telephone: (214) 953-6500 

Email: samir.bhavsar@bakerbotts.com 

Email: morgan.mayne@bakerbotts.com 

Wayne O. Stacy 

BAKER BOTTS L.L.P 

101 California Street, Suite 3600 

San Francisco, CA 94111 

Telephone: (415) 291-6200 

Email: wayne.stacy@bakerbotts.com 

Lauren J. Dreyer (Pro hac vice)

BAKER BOTTS L.L.P 

700 K Street, N.W. 

Washington, DC 20001 

Telephone: (202) 639-7700 

Email: lauren.dreyer@bakerbotts.com 

Attorneys for Defendant AT&T Corp.

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

AT&T CORP., 

Defendant. 

Case No. 5:18-cv-06177-LHK 

DECLARATION OF MORGAN G. 

MAYNE IN SUPPORT OF 

ADMINISTRATIVE MOTION TO 

CONSIDER WHETHER CASES SHOULD 

BE RELATED 

 

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DECLARATION OF MORGAN G. MAYNE 2 CASE NO. 5:18-cv-06177-LHK 

I, Morgan Grissum Mayne, declare as follows: 

1. I am an attorney with the law firm of Baker Botts LLP, counsel of record in this 

action for Defendant AT&T Corp. (“AT&T”). I am a member in good standing of the Bar of the 

State of Texas and am admitted to this Court pro hac vice.

2. I submit this declaration in support of AT&T’s administrative motion under Civil 

Local Rules 3-12 and 7-11 to consider whether this action should be related to AT&T Corp., et al. 

v. VoIP-Pal.com, Inc., Case No. 5:20-cv-02995-NC, which is pending before Magistrate Judge 

Nathaniel M. Cousins of this Court. I have personal knowledge of the matters stated in this 

declaration and would testify truthfully to them if called upon to do so. 

3. On May 4, 2020, I contacted Lewis E. Hudnell III, counsel of record for VoIP-Pal. 

I asked if VoIP-Pal would stipulate to the motion seeking to have this case related to AT&T Corp., 

et al. v. VoIP-Pal.com, Inc., Case No. 5:20-cv-02995-NC. Mr. Hudnell responded that VoIP-Pal 

would oppose such a motion. 

4. Accordingly, AT&T was unable to obtain a stipulation. 

I declare under penalty of perjury under the laws of the United States that the foregoing is 

true and correct to the best of my knowledge. 

Executed at Dallas, Texas this 5th day of May, 2020. 

By: /s/ Morgan Grissum Mayne 

Morgan Grissum Mayne 

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[PROPOSED] ORDER CASE NO. 5:18-cv-06177-LHK 

Samir A. Bhavsar (Pro hac vice) 

Morgan Grissum Mayne (Pro hac vice) 

BAKER BOTTS L.L.P 

2001 Ross Avenue, Suite 900 

Dallas, Texas 75201 

Telephone: (214) 953-6500 

Email: samir.bhavsar@bakerbotts.com 

Email: morgan.grissum@bakerbotts.com 

Wayne O. Stacy 

BAKER BOTTS L.L.P 

101 California Street, Suite 3600 

San Francisco, CA 94111 

Telephone: (415) 291-6200 

Email: wayne.stacy@bakerbotts.com 

Lauren J. Dreyer (Pro hac vice)

BAKER BOTTS L.L.P 

700 K Street, N.W. 

Washington, DC 20001 

Telephone: (202) 639-7700 

Email: lauren.dreyer@bakerbotts.com 

Attorneys for Defendant AT&T Corp.

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

SAN JOSE DIVISION 

VOIP-PAL.COM, INC., 

Plaintiff, 

v. 

AT&T CORP., 

Defendant. 

Case No. 5:18-cv-06177-LHK 

[PROPOSED] ORDER GRANTING AT&T 

CORP.’S ADMINISTRATIVE MOTION 

TO CONSIDER WHETHER CASES 

SHOULD BE RELATED 

 

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[PROPOSED] ORDER 2 CASE NO. 5:18-cv-06177-LHK 

Having heard the Defendant AT&T Corp.’s (“AT&T”) Administrative Motion to consider 

whether the present action should be related to the action captioned AT&T Corp., AT&T Services, 

Inc., and AT&T Mobility LLC v. VoIP-Pal.com, Inc., Case No. 5:20-cv-02995 (“AT&T Declaratory 

Judgment Action”), under Civil Local Rules 3-12 and 7-11, and good cause appearing, the Court 

GRANTS AT&T’s Administrative Motion. 

The Court finds that the present action is related to the AT&T Declaratory Judgment Action 

under Civil Local Rule 3-12(a). The Court further finds that the AT&T Declaratory Judgment 

Action should be reassigned to the Honorable Lucy Koh pursuant to Civil Local Rule 3-12(f). 

IT IS SO ORDERED. 

____________, 2020 ____________________________________ 

The Honorable Lucy Koh 

UNITED STATES DISTRICT JUDGE 

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ADMINISTRATIVE MOTION TO CONSIDER CASE NO. 5:18-cv-06054-LHK

WHETHER CASES SHOULD BE RELATED

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

VENABLE LLP

Frank C. Cimino, Jr. (pro hac vice)

fccimino@venable.com

Megan S. Woodworth (pro hac vice)

mswoodworth@venable.com

600 Massachusetts Ave., NW

Washington, D.C. 20001

Telephone: (202) 344-4000

Facsimile: (202) 344-8300

William A. Hector (SBN 298490)

wahector@venable.com

101 California Street, Suite 3800

San Francisco, CA 94111

Telephone: (415) 653-3750

Facsimile: (415) 653-3755

Attorneys for Defendant

CELLCO PARTNERSHIP d/b/a Verizon Wireless

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

VOIP-PAL.COM, INC.,

Plaintiff,

v.

CELLCO PARTNERSHIP d/b/a Verizon 

Wireless,

Defendant.

CASE NO. 5:18-cv-06054-LHK

ADMINISTRATIVE MOTION TO 

CONSIDER WHETHER CASES 

SHOULD BE RELATED

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

I. INTRODUCTION

Pursuant to the Northern District of California’s Civil Local Rules 3-12(b) and 7-11, 

Defendant Cellco Partnership d/b/a Verizon Wireless (“Verizon”) requests that the abovecaptioned case be related to a recently-filed action captioned Cellco Partnership d/b/a Verizon 

Wireless v. VoIP-Pal.com, Inc., Case No. 3:20-cv-03092-JCS (the “Verizon declaratory judgment 

action”), which is assigned to Magistrate Judge Joseph C. Spero. This Court has granted similar 

motions filed by Twitter and Apple. See Dkt. No. 92 in VoIP-Pal.com, Inc. v. Twitter Inc., Case 

No. 5:18-cv-04523-LHK, deeming that case related to Twitter Inc. v. VoIP-Pal.com, Inc., now 

captioned Case No. 5:20-cv-02397-LHK; Dkt. No. 104 in VoIP-Pal.com, Inc. v Apple Inc., Case 

No. 5:18-cv-06217-LHK deeming that case related to Apple Inc. v. VoIP-Pal.com, Inc. now 

captioned Case No. 5:20-cv-02460-LHK. AT&T also filed a similar motion on May 5, 2020. Dkt. 

No. 83 in VoIP-Pal.com, Inc. v. AT&T Corp., Case No. 5:18-cv-06177-LHK, to consider whether 

that case should be related to AT&T Corp. et al v. Voip-Pal.com, Inc., Case No. 5:20-cv-02995-

NC.

This Court is already familiar with VoIP-Pal.com, Inc. (“VoIP-Pal”) and its patents. In 

2018 and 2019, this Court presided over six lawsuits filed by VoIP-Pal that were consolidated into 

two sets for pretrial purposes: 

A “first wave” of cases, which the Court deemed related to each other, were filed by VoIPPal against the following defendants and involved the assertion of two patents:

• Verizon (Case No. 5:18-cv-06054-LHK) (this case);

• Twitter (Case No. 5:18-cv-04523-LHK);

• AT&T (Case No. 5:18-cv-06177-LHK); and

• Apple (Case No. 5:18-cv-06217-LHK).

A “second wave” of cases, which the Court deemed related to each other, were filed against 

the following defendants and involved the assertion of four additional patents from the same 

family:

• Apple (Case No. 5:18-cv-06216-LHK); and

• Amazon (Case No. 5:18-cv-07020-LHK).

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

VoIP-Pal recently filed new lawsuits in the United States District Court for the Western 

District of Texas concerning a seventh patent from the same family—U.S. Patent No. 10,218,606 

(the “’606 patent”). VoIP-Pal is a Nevada corporation with a principal place of business in 

Bellevue, Washington and has no connection to that district. VoIP-Pal filed the Western District 

of Texas cases in an effort to avoid this District’s prior judgments. Verizon, AT&T, Apple, and 

Twitter have now filed declaratory judgment actions against VoIP-Pal in this District, all of which 

involve the ’606 patent. Verizon seeks to have its declaratory judgment action deemed related to

the earlier action involving Verizon and VoIP-Pal and assigned to Judge Koh—the same order the 

Court entered in the Twitter and Apple cases.

II. APPLICABLE LEGAL STANDARD

“Whenever a party knows or learns that an action, filed in or removed to this district is (or

the party believes that the action may be) related to an action which is or was pending in this

District as defined in Civil L.R. 3-12(a), the party much promptly file in the lowest-numbered case

an Administrative Motion to Consider Whether Cases Should be Related, pursuant to Civil L.R.

7-11.” Civil L.R. 3-12(b). Under Civil Local Rule 3-12(a), “[a]n action is related to another when:

(1) The actions concern substantially the same parties, property, transaction or event; and (2) [i]t

appears likely that there will be an unduly burdensome duplication of labor and expense or

conflicting results if the cases are conducted before different Judges.”

III. DISCUSSION

A. Factual Background

In 2018 and 2019, this Court presided over six lawsuits filed by VoIP-Pal—one against 

Verizon. In the “first wave” actions filed against Verizon, Twitter, AT&T, and Apple, VoIP-Pal 

asserted U.S. Patent Nos. 8,542,815 and 9,179,005 (the “’815 and ’005 patents,” respectively), 

both entitled “Producing Routing Messages For Voice Over IP Communications.” The two patents 

share a common specification. Defendants filed a Consolidated Motion To Dismiss that the 

asserted patents as invalid under 35 U.S.C. § 101. Case No. 5:18-cv-06054-LHK, Dkt. No. 123. 

On March 25, 2019, this Court granted the defendants’ Motion, found all asserted claims of the 

’815 and ’005 patents invalid, and rendered judgment in favor of the defendants. Case No. 5:18-

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101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

cv-06054-LHK, Dkt. Nos. 134, 135. On March 16, 2020, the Court of Appeals for the Federal 

Circuit affirmed this Court’s judgment. Case No. 5:18-cv-04523-LHK, Dkt. No. 89.

In the “second wave” actions filed against Apple and Amazon, VoIP-Pal asserted U.S. 

Patents 9,537,762; 9,813,330; 9,826,002; and 9,948,549. These four asserted patents are related 

to and share a common specification with the ’815 and ’005 patents. Apple and Amazon filed a 

Consolidated Motion To Dismiss the four asserted patents in the second wave cases as invalid 

under 35 U.S.C. § 101. On November 1, 2019, this Court granted Defendants’ Motion, found all 

asserted claims of the four asserted patents invalid, and rendered judgment in favor of defendants 

Apple and Amazon. E.g., Case No. 5:18-cv-06216-LHK, Dkt. Nos. 114 and 115. VoIP-Pal 

appealed the judgment of invalidity under Section 101, and the appeal is pending.

VoIP-Pal recently began another patent litigation campaign. Between April 2-24, 2020,

VoIP-Pal filed six new lawsuits against defendants Facebook, WhatsApp, Google, Amazon, 

Apple, AT&T, and Verizon in the Western District of Texas (the “Texas lawsuits”). In the Texas 

lawsuits, VoIP-Pal asserts the ’606 patent, which is also entitled “Producing Routing Messages 

For Voice Over IP Communications.” The ’606 patent is in the same family as the six patents 

asserted in the first and second wave cases.

Verizon believes that VoIP-Pal’s Texas lawsuits amount to improper forum shopping—

a clear attempt to have another Federal Court contradict this Court’s prior decisions. On May 5, 

2020, Verizon filed a complaint for declaratory judgment of non-infringement and invalidity of 

the ’606 patent. The claims of the ’606 patent that are the subject of the Verizon declaratory 

judgment action are very similar to the claims of the six patents that VoIP-Pal previously asserted 

against Verizon and other defendants in the first and second wave cases. Verizon declaratory 

judgment action, Dkt. No. 1. For example, claim 1 of the ’606 patent is very similar to claim 74 

of the ’005 patent, which was asserted against Verizon in the above-captioned action. Both

claims recite methods of routing communications between two participants based on “attributes” 

or “identifiers” of the participants, matching or comparing the identifiers, and producing a 

“routing message” that identifies an address associated with first or second network element or 

a first or second portion of the network. Furthermore, the Verizon products or services for which 

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

Verizon seeks a declaratory judgment of non-infringement and invalidity in the Verizon

declaratory judgment action are the same as or similar to the Verizon products and services that 

VoIP-Pal accused this action. Verizon declaratory judgment action, Dkt. No. 1 at ¶ 33.

Verizon filed the declaratory judgment action against VoIP-Pal in this District because of 

the foregoing similarities, VoIP-Pal’s filing of the Texas lawsuits, and recent public statements 

by VoIP-Pal that threaten further legal action in the wake of the Federal Circuit’s affirmance of 

this Court’s judgment of invalidity of the ’815 and ’005 patents. Verizon Wireless declaratory 

judgment action, Dkt. No. 1-8.

B. Analysis

The Verizon declaratory judgment action and the above-captioned action are related cases

under Civil L.R. 3-12(a) for at least the same reasons that the Court has deemed related the actions

involving Twitter, Apple, and VoIP-Pal. See VoIP-Pal.com, Inc. v. Twitter Inc., Case No. 5:18-

cv-04523-LHK, Dkt. No. 92 (deeming that case related to Twitter Inc. v. VoIP-Pal.com, Inc., 

now captioned as Case No. 5:20-cv-02397-LHK); VoIP-Pal.com, Inc. v. Apple Inc., Case No. 

5:18-cv-06217-LHK, Dkt. No. 104 (deeming that case related to Apple Inc. v. VoIP-Pal.com, 

Inc., now captioned as Case No. 5:20-cv-02460-LHK).

First, the two actions concern the same parties (VoIP-Pal and Verizon), substantially the

same property (the ’606 patent which shares an overlapping specification with and recites claims 

very similar to the ’815 and ’005 patents at issue in the above-captioned case), and substantially 

the same transaction or event (the question of whether the patents-in-suit, which are in the same 

family as the patents at issue in the above-captioned case and recite very similar claims, are 

invalid and/or infringed).

Second, Judge Koh has invested substantial time in analyzing and issuing detailed,

dispositive rulings on the six patents that VoIP-Pal asserted in the first and second wave cases, 

including the ’815 and ’005 patents involved in the above-captioned action against Verizon. 

There would be substantial duplication of effort and expense and risk of conflicting results if the 

Verizon declaratory judgment action were to proceed before Magistrate Judge Spero, who has 

no prior familiarity with VoIP-Pal and VoIP-Pal’s patents. For the foregoing reasons, having 

Case 6:20-cv-00269-ADA Document 25-2 Filed 07/31/20 Page 27 of 33 Case 5:18-cv-06054-LHK Document 140 Filed 05/08/20 Page 5 of 6
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ADMINISTRATIVE MOTION TO CONSIDER CASE NO. 5:18-cv-06054-LHK

WHETHER CASES SHOULD BE RELATED

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

this Court preside over the Verizon declaratory judgment action would conserve judicial 

resources and promote the efficient resolution of the action.

IV. CONCLUSION

Verizon respectfully requests a determination that the Verizon declaratory judgment action 

(Case No. 3:20-cv-03092-JCS) is related to the above-captioned action, and an assignment of the 

Verizon declaratory judgment action to Judge Koh in the above-captioned action.

Dated: May 8, 2020 VENABLE LLP

By: /s/ William A. Hector

Frank C. Cimino, Jr. (pro hac vice)

fccimino@venable.com

Megan S. Woodworth (pro hac vice)

mswoodworth@venable.com

600 Massachusetts Ave., NW

Washington, D.C. 20001

Telephone: (202) 344-4000

Facsimile: (202) 344-8300

William A. Hector (SBN 298490)

wahector@venable.com

101 California Street, Suite 3800

San Francisco, CA 94111

Telephone: (415) 653-3750

Facsimile: (415) 653-3755

Attorneys for Defendant

CELLCO PARTNERSHIP d/b/a Verizon 

Wireless

Case 6:20-cv-00269-ADA Document 25-2 Filed 07/31/20 Page 28 of 33 Case 5:18-cv-06054-LHK Document 140 Filed 05/08/20 Page 6 of 6
W. HECTOR DECLARATION ISO ADMINISTRATIVE MOTION CASE NO. 5:18-cv-06054-LHK

TO CONSIDER WHETHER CASES SHOULD BE RELATED

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

VENABLE LLP

Frank C. Cimino, Jr. (pro hac vice)

fccimino@venable.com

Megan S. Woodworth (pro hac vice)

mswoodworth@venable.com

600 Massachusetts Ave., NW

Washington, D.C. 20001

Telephone: (202) 344-4000

Facsimile: (202) 344-8300

William A. Hector (SBN 298490)

wahector@venable.com

101 California Street, Suite 3800

San Francisco, CA 94111

Telephone: (415) 653-3750

Facsimile: (415) 653-3755

Attorneys for Defendant

CELLCO PARTNERSHIP d/b/a Verizon Wireless

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

VOIP-PAL.COM, INC.,

Plaintiff,

v.

CELLCO PARTNERSHIP d/b/a Verizon 

Wireless,

Defendant.

CASE NO. 5:18-cv-06054-LHK

W. HECTOR DECLARATION ISO 

ADMINISTRATIVE MOTION TO 

CONSIDER WHETHER CASES 

SHOULD BE RELATED

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W. HECTOR DECLARATION ISO ADMINISTRATIVE MOTION CASE NO. 5:18-cv-06054-LHK

TO CONSIDER WHETHER CASES SHOULD BE RELATED

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V E N A B L E LLP

101 CALIFORNIA STREET, SUITE 3800

SAN FRANCISCO, CA 94111

415-653-3750

I, William Hector, declare as follows: 

1. I am an attorney at the law firm of Venable LLP, counsel of record in this action 

for Defendant Cellco Partnership d/b/a Verizon Wireless (“Verizon”). I am a member in good 

standing of the Bar of the State of California. 

2. I submit this declaration in support of Verizon’s administrative motion under Civil 

Local Rules 3-12(b) and 7-11 to consider whether this action should be related to Cellco 

Partnership d/b/a Verizon Wireless v. VoIP-Pal.com, Inc., Case No. 3:20-cv-03092-JCS, which is 

pending before Magistrate Judge Joseph C. Spero (“Administrative Motion”). I have personal

knowledge of the matters stated in this declaration and would testify truthfully to them if called 

upon to do so.

3. On May 8, 2020, I contacted Lewis E. Hudnell III, counsel of record for VoIPPal.com, Inc. I asked if VoIP-Pal would stipulate to the motion seeking to have this case related 

to Cellco Partnership d/b/a Verizon Wireless v. VoIP-Pal.com, Inc., Case No. 3:20-cv-03092-JCS. 

Mr. Hudnell responded that VoIP-Pal would oppose such a motion.

4. Accordingly, Verizon was unable to obtain a stipulation.

I declare under penalty of perjury under the laws of the United States that the foregoing is 

true and correct to the best of my knowledge. 

Executed at San Francisco, California, this 8th day of May 2020.

By: /s/ William A. Hector

 William A. Hector

Case 6:20-cv-00269-ADA Document 25-2 Filed 07/31/20 Page 30 of 33 Case 5:18-cv-06054-LHK Document 140-1 Filed 05/08/20 Page 2 of 2
[PROPOSED] ORDER GRANTING VERIZON’S CASE NO. 5:18-cv-06054-LHK

ADMINISTRATIVE MOTION

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UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

VOIP-PAL.COM, INC.,

Plaintiff,

v.

CELLCO PARTNERSHIP d/b/a Verizon 

Wireless,

Defendant.

CASE NO. 5:18-cv-06054-LHK

[PROPOSED] ORDER GRANTING 

VERIZON’S ADMINISTRATIVE 

MOTION TO CONSIDER WHETHER 

CASES SHOULD BE RELATED

Case 6:20-cv-00269-ADA Document 25-2 Filed 07/31/20 Page 31 of 33 Case 5:18-cv-06054-LHK Document 140-2 Filed 05/08/20 Page 1 of 2
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[PROPOSED] ORDER GRANTING VERIZON’S CASE NO. 5:18-cv-06054-LHK

ADMINISTRATIVE MOTION

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Having considered the Defendant Cellco Partnership d/b/a Verizon Wireless (“Verizon”)'s

Administrative Motion to consider whether the present action should be related to the action 

captioned, Cellco Partnership d/b/a Verizon Wireless v. VoIP-Pal.com, Inc., Case No. 3:20-cv03092-JCS (“Verizon Declaratory Judgment action”), under Civil Local Rules 3- 12 and 7-11, and 

good cause appearing, the Court GRANTS Verizon’s Administrative Motion. 

The Court finds that the present action is related to the Verizon Declaratory Judgment 

action under Civil Local Rule 3-12(a). The Court further finds that the Verizon Declaratory 

Judgment action should be reassigned to the Honorable Lucy Koh pursuant to Civil Local Rule 3-

12(f). 

IT IS SO ORDERED.

May __, 2020

The Honorable Lucy H. Koh

UNITED STATES DISTRICT JUDGE

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Case No. 18-CV-04523-LHK 

JUDGMENT

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United States District Court

Northern District of California

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN JOSE DIVISION

VOIP-PAL.COM, INC.,

Plaintiff,

v.

TWITTER INC.,

Defendant.

Case No. 18-CV-04523-LHK 

JUDGMENT

On March 25, 2019, the Court granted Defendant’s omnibus motion to dismiss. ECF No. 

82. The Court ruled that the asserted claims of U.S. Patent Nos. 8,542,815 and 9,179,005 are 

invalid under 35 U.S.C. § 101. Accordingly, the Clerk shall enter judgment in favor of Defendant. 

The Clerk shall close the file.

IT IS SO ORDERED.

Dated: March 25, 2019

______________________________________

LUCY H. KOH

United States District Judge

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