UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF TEXAS

WACO DIVISION

VOIP-PAL.COM, INC.,

Plaintiff

v.

APPLE INC.

Defendant.

CASE NO. 6:20-cv-00275-ADA

DEFENDANT APPLE INC.’S PARTIAL MOTION TO DISMISS 

PLAINTIFF VOIP-PAL.COM, INC.’S COMPLAINT

Case 6:20-cv-00275-ADA Document 19 Filed 07/10/20 Page 1 of 17
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TABLE OF CONTENTS

Page

I. INTRODUCTION ...............................................................................................................1

II. BACKGROUND .................................................................................................................1

III. ARGUMENT.......................................................................................................................3

A. Motion To Dismiss Standard ...................................................................................3

B. VoIP-Pal Fails To Adequately Plead Willful Infringement.....................................4

C. VoIP-Pal Fails To Adequately Plead Indirect Infringement....................................8

IV. CONCLUSION..................................................................................................................11

Case 6:20-cv-00275-ADA Document 19 Filed 07/10/20 Page 2 of 17
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TABLE OF AUTHORITIES

Page(s)

Cases

Addiction & Detoxification Inst. L.L.C. v. Carpenter, 

620 Fed. App’x 934 (Fed. Cir. 2015)................................................................................ 10, 11

Affinity Labs of Tex., LLC v. Toyota Motor N. Am., 

No. 13–365, 2014 WL 2892285 (W.D. Tex. May 12, 2014)............................................ 10, 11

Aguirre v. Powerchute Sports LLC, 

No. 10-0702, 2011 WL 2471299 (W.D. Tex. June 17, 2011) .................................................. 9

Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 

876 F.3d 1350 (Fed. Cir. 2017)................................................................................................. 7

Ashcroft v. Iqbal, 

556 U.S. 662 (2009).............................................................................................................. 3, 4

Bell Atl. Corp. v. Twombly, 

550 U.S. 544 (2007).............................................................................................................. 3, 4

Brandywine Commc’ns Techs., LLC v. CenturyTel Broadband Servs., LLC, 

No. 12-286-Orl-36DAB, 2014 WL 12866968 (M.D. Fla. Jan. 15, 2014)................................ 9

DSU Corp. v. JMS Co., 

471 F.3d 1293 (Fed. Cir. 2006)................................................................................................. 8

DSU Med. Corp. v. JMS Co., 

471 F.3d 1293 (Fed. Cir. 2006)................................................................................................. 8

Frac Shack Inc. v. AFD Petroleum (Tex.) Inc.,

No. 19-26, 2019 WL 3818049 (W.D. Tex. June 13, 2019) ...................................................... 5

Genentech, Inc. v. Eli Lilly & Co., 

No. 18-1518, 2019 WL 4345788 (S.D. Cal. Sept. 12, 2019).................................................... 6

Global-Tech Appliances, Inc. v. SEB S.A.,

563 U.S. 754 (2011).................................................................................................................. 9

Halo Elecs., Inc. v. Pulse Elecs., Inc., 

136 S. Ct. 1923 (2016).................................................................................................. 1, 4, 6, 7

Hypermedia Navigation LLC v. Google LLC, 

No. 18-6137, 2019 WL 1455336 N.D. Cal. Apr. 2, 2019) ..................................................... 10

In re Bill of Lading Transmission & Processing Syst. Patent Litig., 

681 F.3d 1323 (Fed. Cir. 2012)............................................................................................... 10

IP, LLC v. Cisco Sys., Inc., 

No. 18-309, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018).................................................. 10

Case 6:20-cv-00275-ADA Document 19 Filed 07/10/20 Page 3 of 17
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M & C Innovations, LLC v. Igloo Prods. Corp., 

No. 17-2372, 2018 WL 4620713 (S.D. Tex. July 31, 2018) ................................................ 6, 7

Meetrix IP, LLC v. Cisco Sys., Inc., 

No. 18-309, 2018 WL 8261315 (W.D. Tex. Nov. 30, 2018).............................................. 6, 10

Mitchell v. Johnson, 

No. 07-40996, 2008 WL 3244283 (5th Cir. Aug. 8, 2008) ...................................................... 3

Parity Networks, LLC v. Cisco Sys., Inc., 

No. 19-207, 2019 WL 3940952 (W.D. Tex. July 26, 2019)......................................... 4, 5, 7, 8

Parus Holdings Inc. v. Apple Inc., 

No. 19-00432 (W.D. Tex. Feb. 20, 2020)................................................................................. 9

VLSI Tech. LLC v. Intel Corp., 

No. 18-966, 2019 WL 1349468 (D. Del. Mar. 26, 2019)......................................................... 5

VLSI Tech. LLC v. Intel Corp., 

No. 19-254, ECF No. 52 (W.D. Tex. Aug. 6, 2019)............................................................. 6, 9

Warsaw Orthopedic, Inc. v. NuVasive, Inc., 

824 F.3d 1344 (Fed. Cir. 2016)................................................................................................. 9

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I. INTRODUCTION

Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) asserts claims against Apple Inc. (“Apple”) for 

willful and indirect infringement but fails to adequately plead the factual content to maintain those 

claims. In attempting to allege Apple’s knowledge of the patent-in-suit, VoIP-Pal asserts only 

bare conclusions without alleging any well-pleaded facts giving rise to a reasonable inference that 

Apple had knowledge of the patent. That alone is fatal to both the willful infringement and indirect 

infringement claims. 

Further, VoIP-Pal fails to allege facts sufficient to support the other elements of those 

claims. The complaint is devoid of any allegations that Apple’s conduct is “willful, wanton, 

malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a 

pirate,” as required for willful infringement. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 

1923, 1932 (2016). And VoIP-Pal does not adequately allege that Apple had the specific intent to 

induce infringement as required for its indirect infringement claim. Rather than alleging wellpleaded facts related to its claims, VoIP-Pal relies on generalized and unsupported conclusions 

and recitations of elements. These types of allegations are inadequate, and VoIP-Pal’s claims of 

willful infringement and indirect infringement should be dismissed under Federal Rule of Civil 

Procedure 12(b)(6). 

II. BACKGROUND

On April 7, 2020, VoIP-Pal filed this lawsuit against Apple for alleged infringement of 

United States Patent No. 10,218,606 (the “’606 Patent”) in connection with Apple’s use or sale of 

the FaceTime and Messages applications (“Accused Instrumentalities”). VoIP-Pal seeks enhanced 

damages1and alleges that Apple’s alleged infringement is willful.2In addition, VoIP-Pal asserts 

 

1 Compl. (R. Doc. 1) at 27.

2

Id. ¶¶ 48-49. 

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that Apple is indirectly infringing the ’606 Patent by inducing infringement.3

The allegations related to willful and indirect infringement are contained in just four 

paragraphs.4 With respect to willful infringement, VoIP-Pal alleges that Apple had knowledge of 

the ’606 Patent since the February 26, 2019 when the patent issued or, alternatively, since March 

12, 2019 when VoIP-Pal issued a press release announcing the issuance of the patent.5 VoIP-Pal

fails to allege any facts articulating how or when Apple allegedly learned of the issuance of either 

the patent or the press release. Nevertheless, VoIP-Pal alleges that despite its knowledge, Apple 

has continued to make, use, or sell the Accused Instrumentalities.6 VoIP-Pal then concludes that 

Apple’s infringement has been and continues to be willful.7

VoIP-Pal’s allegations regarding indirect infringement are similarly limited to non-specific 

recitations of legal standards. VoIP-Pal alleges that Apple knowingly and intentionally induced 

infringement of the ’606 Patent by supplying the Accused Instrumentalities with the knowledge 

and intent that third parties would use the Accused Instrumentalities to infringe the patent and with 

the knowledge and intent to encourage and facilitate third party infringement.8 Further, VoIP-Pal

alleges that Apple specifically intended that the ordinary and customary use of the Accused 

Instrumentalities would infringe the patent.9 According to VoIP-Pal, the ordinary and customary 

uses of the Accused Instrumentalities infringe the ’606 Patent, and Apple provided customers 

instruction and training through “product manuals and other technical information” on how to 

operate the Accused Instrumentalities for those ordinary and customary, and allegedly infringing, 

 

3

Id. ¶¶ 50-51.

4

See id. ¶¶ 48-51. 

5

Id. ¶ 48. 

6

Id. ¶ 49.

7

Id.

8

Id. ¶ 50.

9

Id. ¶ 51.

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uses.10 VoIP-Pal does not identify or describe any manuals or other technical information provided 

by Apple or explain how such unidentified information induced infringement. VoIP-Pal also 

includes a passing reference to willful blindness by alleging that Apple was “at least being willful 

[sic] blind to the fact” that the ordinary and customary uses of the Accused Instrumentalities that 

it induced in customers infringe the patent.11 VoIP-Pal fails to allege any factual support for this 

willful blindness assertion.

III. ARGUMENT

A. Motion To Dismiss Standard

To survive a Rule 12(b)(6) motion to dismiss, “a complaint must contain sufficient factual 

matter, accepted as true, to state a claim to relief that is plausible on its face.” Ashcroft v. Iqbal, 

556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To 

meet this standard, the plaintiff must plead “factual content that allows the court to draw the 

reasonable inference that the defendant is liable for the misconduct alleged.” Id. at 678 (citing 

Twombly, 550 U.S. at 556). Naked assertions devoid of further factual enhancement do not suffice. 

Id. (citing Twombly, 550 U.S. at 557). Instead, the factual allegations must be enough to nudge 

the plaintiff’s claims “across the line from conceivable to plausible;” they must present more than 

“a sheer possibility” that the pleader is entitled to the relief sought. Id. at 678-80; see Mitchell v. 

Johnson, No. 07-40996, 2008 WL 3244283, at *2 (5th Cir. Aug. 8, 2008) (citing Twombly, 550 

U.S. at 570). And while courts must accept a complaint’s allegations as true, this applies only to 

well-pleaded factual allegations, not to legal conclusions. A pleading that offers mere “labels and 

conclusions” is insufficient, and “threadbare recitals of the elements of a cause of action, supported 

 

10 Id.

11 Id.

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by mere conclusory statements, do not suffice.” Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. 

at 555).

VoIP-Pal asserts willful and indirect infringement against Apple, but it fails to allege facts 

necessary to support those claims. VoIP-Pal has not plausibly alleged that it is entitled to relief 

for willful or indirect infringement, and those claims should be dismissed. 

B. VoIP-Pal Fails To Adequately Plead Willful Infringement.

Willful infringement is reserved for “egregious infringement behavior,” which is typically 

described as conduct that is “willful, wanton, malicious, bad-faith, deliberate, consciously 

wrongful, flagrant, or—indeed—characteristic of a pirate.” Halo Elecs., 136 S. Ct. at 1932. And 

to state a claim of willful infringement, “a plaintiff must allege facts plausibly showing that as of 

the time of the claim’s filing, the accused infringer (1) knew of the patent-in-suit; (2) after 

acquiring that knowledge, it infringed the patent; and (3) in doing so, it knew, or should have 

known, that its conduct amounted to infringement of the patent.” Parity Networks, LLC v. Cisco 

Sys., Inc., No. 19-207, 2019 WL 3940952, at *3 (W.D. Tex. July 26, 2019) (citation and internal 

quotation marks omitted). As this Court has recognized, plaintiffs should plead willfulness with 

“sufficient articulation of the relevant facts.” Id. 

Here, the willful infringement claim cannot stand because VoIP-Pal (1) fails to allege that 

Apple knew of the ’606 Patent; (2) fails to allege any egregious conduct by Apple; and (3) fails to 

allege that Apple knew or should have known that its conduct amounted to infringement. 

First, VoIP-Pal fails to include any well-pleaded allegations that Apple knew of the patent 

at the time suit was filed. The only facts regarding Apple’s alleged knowledge that VoIP-Pal

articulates are that the patent was issued on February 26, 2019 and that VoIP-Pal issued a press 

Case 6:20-cv-00275-ADA Document 19 Filed 07/10/20 Page 8 of 17
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release announcing the issuance of the patent on March 12, 2019.12 But based on those facts, 

VoIP-Pal’s conclusion that Apple knew about the patent is speculative and conclusory. There are 

no facts alleged that could give rise to a plausible inference that Apple monitored all new patents 

issued or that it received or ever saw VoIP-Pal’s press release. Without any factual enhancement 

articulating how Apple actually acquired knowledge of the patent, VoIP-Pal’s bare assertion that 

Apple knew of the patent as a result of the mere issuance of the patent or press release is not 

entitled to the presumption of truth. Because VoIP-Pal fails to allege sufficient factual content that 

would allow any reasonable inference that Apple knew of the patent at the time the suit was filed,

its claim of willful infringement should be dismissed. 

VoIP-Pal does not expressly rely on post-suit knowledge as a basis for its willful 

infringement claim, and even doing so would not save the claim because this Court and others 

have found that a willful infringement claim must be based on pre-suit knowledge of a patent. 

See, e.g., Parity Networks, 2019 WL 3940952, at *3 (stating that the elements of the claim must 

be established “as of the time of the claim’s filing”) (Albright, J.); Frac Shack Inc. v. AFD 

Petroleum (Tex.) Inc., No. 19-26, 2019 WL 3818049, at *5 (W.D. Tex. June 13, 2019) (Albright, 

J.) (“Ordinarily the Court would dismiss an allegation of willfulness without prejudice absent a 

specific allegation of pre-suit knowledge of the asserted patents.”) (emphasis added); VLSI Tech. 

LLC v. Intel Corp., No. 18-966, 2019 WL 1349468, at *2 (D. Del. Mar. 26, 2019) (dismissing 

willful infringement claim because “the complaint itself cannot serve as the basis for a defendant’s 

actionable knowledge [of the patent]. The purpose of a complaint is not to create a claim but rather 

to obtain relief for an existing claim.”). 

Second, the willful infringement claim fails for the additional reason that VoIP-Pal does 

 

12 Id. at ¶ 48.

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not allege any egregious conduct as required to impose enhanced damages under a willful 

infringement theory. Instead, it merely alleges that Apple continued to make, use, and sell the 

Accused Instrumentalities despite having knowledge of the patent and its infringement of the 

patent (allegations which are themselves insufficiently pleaded).13 This amounts to nothing more 

than the “garden-variety” type of patent case where claims for enhanced damages based on willful 

infringement are routinely dismissed. See, e.g., M & C Innovations, LLC v. Igloo Prods. Corp., 

No. 17-2372, 2018 WL 4620713, at *5 (S.D. Tex. July 31, 2018) (dismissing willful infringement 

claim as the patent claims were “garden-variety”); Genentech, Inc. v. Eli Lilly & Co., No. 18-1518, 

2019 WL 4345788, at *6 (S.D. Cal. Sept. 12, 2019) (“Plaintiff further asserts that Defendant’s 

knowledge of the patent and its continuing manufacture, sale, and marketing constitutes egregious 

conduct. But Defendant’s continuing post-suit manufacturing and sales cannot be the sole 

evidence to support a willful infringement claim.”); VLSI Tech. LLC v. Intel Corp., No. 19-254, 

ECF No. 52 (W.D. Tex. Aug. 6, 2019) (dismissing without prejudice an enhanced damages claim 

based on willful infringement); Meetrix IP, LLC v. Cisco Sys., Inc., No. 18-309, 2018 WL 

8261315, at *3 (W.D. Tex. Nov. 30, 2018) (dismissing willful infringement claim based on mere 

conclusory statements and finding that “the complaint does not allege any facts raising a plausible 

inference of the egregious behavior required under Halo”). 

For instance, in M & C Innovations, LLC v. Igloo Prods. Corp., the Court dismissed a 

willful infringement claim based on allegations of a defendant’s continued manufacturing of 

allegedly infringing products after receiving notice of a patent because the case was a “‘gardenvariety’ patent case . . . ill-suited for a finding of willfulness”:

Assuming for the sake of argument that the complaint put [Defendant] on notice of 

the existing patents, and [Defendant] continued its manufacturing its infringing 

 

13 Id. ¶ 49.

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products, this would simply be the kind of “garden-variety” patent case that Halo

affirms is ill-suited for a finding of willfulness. Halo, 136 S. Ct. at 1935 (2016). 

Moreover, this post-suit fact pattern characterizes every infringement action except 

for those in which an alleged infringer immediately ceases production following 

service of the complaint. [Plaintiff] has offered no allegations suggesting that 

[Defendant] deliberately re-dedicated itself to infringing after being served with the 

complaint.

M & C Innovations, LLC, 2018 WL 4620713, at *5.

As in M & C Innovations, VoIP-Pal does not allege any facts that could conceivably push 

it beyond a “garden-variety” patent case. VoIP-Pal’s allegations are limited to the bare assertion 

that Apple had knowledge of the patent (which, as discussed above, is itself inadequate) and that 

it has continued to make and sell the Accused Instrumentalities.14 VoIP-Pal does not allege any 

malicious, bad faith, or egregious conduct by Apple whatsoever. The claim alleged is a typical, 

“garden-variety” infringement case that does not support a willful infringement claim.

Finally, the willful infringement claim must be dismissed because VoIP-Pal does not 

include factual allegations that Apple knew or should have known that its conduct amounted to 

infringement. To state a claim for willful infringement, a plaintiff must factually allege that the 

defendant “acted despite a risk of infringement that was either known or so obvious that it should 

have been known.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1371 

(Fed. Cir. 2017) (citation and internal quotation marks omitted); see Parity Networks, LLC, 2019 

WL 3940952, at *3. The complaint is devoid of any factual allegations plausibly supporting a 

reasonable inference that Apple should have known it was infringing the patent and chose to 

proceed regardless. VoIP-Pal’s unsupported and conclusory allegation that “Apple’s infringement 

has been and continues to be willful” is simply insufficient to maintain its willful infringement 

claim.

 

14 Id. ¶¶ 48-49.

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VoIP-Pal fails to adequately allege any of the elements necessary to state a claim for willful 

infringement, and the claim should be dismissed. 

C. VoIP-Pal Fails To Adequately Plead Indirect Infringement.

VoIP-Pal asserts indirect infringement through induced infringement.15 To state a claim 

of induced infringement, a plaintiff must allege that the defendant knew of the patent and that the 

induced acts constitute patent infringement. Parity Networks, 2019 WL 3940952, at *2. In 

addition, a plaintiff must allege a specific intent to induce infringement, which requires “culpable 

conduct, directed to encouraging another’s infringement, not merely that the inducer had 

knowledge of the direct infringer’s activities.” Id. (quoting DSU Med. Corp. v. JMS Co., 471 F.3d 

1293, 1306 (Fed. Cir. 2006)). Courts distinguish knowingly inducing infringement from merely 

knowingly inducing the acts that constitute direct infringement, which is insufficient to support an 

induced infringement claim. See DSU Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).

The induced infringement claim must be dismissed because VoIP-Pal (1) fails to 

sufficiently allege that Apple had pre-suit knowledge of the ’606 Patent and (2) fails to allege any 

specific intent to induce infringement. 

First, as explained above, VoIP-Pal’s only allegations addressing Apple’s knowledge of 

the patent amount to nothing more than mere conclusions without sufficient factual content. VoIPPal does not set forth any factual allegations explaining how Apple learned of the patent’s issuance 

or how or when Apple ever saw or received VoIP-Pal’s press release announcing the patent.16

VoIP-Pal simply assumes, without any support, that Apple (and presumably everyone) is charged 

 

15 VoIP-Pal does not assert indirect infringement based on contributory infringement. Even 

it if it did, however, that claim would likewise fail. Contributory infringement also includes a 

“knowledge of the patent” element, and as discussed, VoIP-Pal fails to allege that Apple knew of 

the ’606 patent. See Parity Networks, 2019 WL 3940952, at *2. 

16 See Compl. ¶¶ 48-49 (R. Doc. 1).

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with knowledge of patents and press releases upon their issuance. This is not the case, and it is 

not sufficient to maintain an induced infringement claim. 

Further, any attempt by VoIP-Pal to rely on post-suit knowledge as a basis for its claim 

fails because this Court and others have found that pre-suit knowledge is required for an indirect 

infringement claim. See, e.g., Parus Holdings Inc. v. Apple Inc., No. 19-00432 (W.D. Tex. Feb. 

20, 2020) (Albright, J.) (granting motion to dismiss indirect infringement claim (R. Doc. 35) for 

failing to adequately allege pre-suit notice); VLSI Tech., LLC v. Intel Corp., No. 19-254, ECF No. 

52 (W.D. Tex. Aug. 6, 2019) (Albright, J.) (dismissing indirect infringement for failing to 

sufficiently allege pre-suit knowledge via willful blindness).17

VoIP-Pal’s passing reference to willful blindness does not overcome its failure to plead 

adequate facts to support a reasonable inference that Apple either knew of the patent or that it was 

indeed willfully blind.18 Willful blindness—taking deliberate actions to avoid confirming a high 

probability of wrongdoing—may satisfy the actual knowledge requirement for induced 

infringement. Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016);

see Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011) (defining willful 

blindness). Here, however, VoIP-Pal alleges only that Apple was willfully blind to the fact that 

the ordinary and customary uses constituted infringement—not that Apple was willfully blind to 

the existence of the patent.19 So this allegation cannot satisfy the knowledge requirement. And in 

any event, VoIP-Pal’s allegation of willful blindness is a mere conclusion unsupported by any 

 

17 See also, e.g., Brandywine Commc’ns Techs., LLC v. CenturyTel Broadband Servs., LLC, 

No. 12-286-Orl-36DAB, 2014 WL 12866968, at *5 (M.D. Fla. Jan. 15, 2014); Aguirre v. 

Powerchute Sports LLC, No. 10-0702, 2011 WL 2471299, at *3 (W.D. Tex. June 17, 2011).

18 Id. ¶ 51 (alleging in a cursory manner and without any factual support that Apple was “at 

least being willful [sic] blind to the fact” that its uses of the Accused Instrumentalities infringe the 

patent).

19 Id.

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well-pleaded facts, and it should be disregarded. See Meetrix IP, LLC v. Cisco Sys., Inc., No. 18-

309, 2018 WL 8261315, at *3 (W.D. Tex. Nov. 30, 2018) (finding that plaintiff’s legal conclusion 

that defendant “was willfully blind to the Patents-in-Suit” lacked supporting factual allegations 

and need not be accepted as true).

Finally, VoIP-Pal’s induced infringement claim fails for lack of factual allegations that 

Apple had the specific intent to induce infringement. “[A] claim of induced infringement ‘must 

contain facts plausibly showing that [the defendants] specifically intended their customers to 

infringe the [asserted] patent and knew that the customer’s acts constituted infringement.’” Affinity 

Labs of Tex., LLC v. Toyota Motor N. Am., No. 13–365, 2014 WL 2892285, at *3 (W.D. Tex. May 

12, 2014) (quoting In re Bill of Lading Transmission & Processing Syst. Patent Litig., 681 F.3d 

1323, 1339 (Fed. Cir. 2012)). This specific intent element is “demanding” and requires more than 

unsubstantiated and generalized allegations that the accused infringer induced infringement via 

“marketing and sales tactics.” Id. at *7 (“[G]eneralized allegations that Toyota induced others to 

infringe . . . through its marketing and sales tactics are likewise insufficient.”).

Equally insufficient is an inducement claim that “simply recites the legal conclusion that 

Defendants acted with specific intent” or generically alleges that a defendant acted to “urge, 

instruct, [or] encourage” infringement. Addiction & Detoxification Inst. L.L.C. v. Carpenter, 620 

Fed. App’x 934, 938 (Fed. Cir. 2015). An inducement claim must instead include factual 

allegations showing how inducement occurs. Affinity Labs, 2014 WL 2892285, at *7 (“The 

complaint generally alleges that Toyota induced its customers to purchase its vehicles, but fails to 

allege how Toyota induced its customers to use the vehicles in a manner that would violate the 

Asserted Patents.”); see also Hypermedia Navigation LLC v. Google LLC, No. 18-6137, 2019 WL 

1455336, at *3 (N.D. Cal. Apr. 2, 2019) (“[T]he complaint only states bald conclusions that an 

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end user following YouTube instructions results in infringement. In no way does the complaint 

detail how an end user would infringe [plaintiff’s] patents by following instructions . . . .”). 

VoIP-Pal’s induced infringement claim here falls fall short of these standards. It consists 

of precisely the type of generalized and unsubstantiated allegations that this Court warned against 

in Affinity Labs:

Apple actively, knowingly, and intentionally induced, and continues to actively, 

knowingly and intentionally induce infringement of the ’606 patent by: selling or 

otherwise making available and/or supplying the Accused Instrumentalities; with 

the knowledge and intent that third parties will use the Accused Instrumentalities 

supplied by Apple to infringe the ’606 patent; and with the knowledge and intent 

to encourage and facilitate third party infringement through the dissemination of 

the Accused Instrumentalities and/or the creation and dissemination of promotional 

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

and/or technical information related to the Accused Instrumentalities.

Compl. ¶ 50; see also id. ¶ 51 (alleging that “[b]y providing instruction and training to customers 

and other third parties on how to use the Accused Instrumentalities in an infringing manner, Apple 

specifically intended to induce infringement of the ’606 patent”). 

VoIP-Pal does not include any facts supporting an inference of specific intent. Its 

allegation that Apple intended to “encourage and facilitate” third party infringement through 

dissemination of instructions, training, or marketing materials mirrors the generic, unsubstantiated 

allegations that were rejected by the Federal Circuit in Addiction and by this Court in Affinity Labs. 

Ignoring this Court’s guidance in Affinity Labs, VoIP-Pal fails to include any factual allegations 

detailing how Apple allegedly induces infringement through dissemination of materials or what 

those materials included. Because VoIP-Pal “simply recites the legal conclusion that [Apple] acted 

with specific intent” without any well-pleaded facts supporting that conclusion, its inducement 

claim should be dismissed. See Addiction, 620 F. App’x at 938.

IV. CONCLUSION

VoIP-Pal’s failure to adequately plead that Apple had pre-suit knowledge of the ’606 Patent 

Case 6:20-cv-00275-ADA Document 19 Filed 07/10/20 Page 15 of 17
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is grounds to dismiss both the willful and indirect infringement claims. Moreover, VoIP-Pal asserts 

only a “garden-variety” patent case without any allegation of the type of egregious conduct 

necessary for a willful infringement claim. And by reciting the legal conclusion that Apple 

specifically intended to induce infringement without any factual support for that accusation, 

VoIP-Pal fails to state a claim for induced infringement. Apple therefore requests that VoIP-Pal’s 

claims for willful infringement and indirect infringement be dismissed. 

Dated: July 10, 2020

By:

Respectfully submitted,

/s/ J. Stephen Ravel

DESMARAIS LLP

John M. Desmarais (pro hac vice)

Ameet A. Modi (pro hac vice)

Joze Welsh (pro hac vice)

Raymond N. Habbaz (pro hac vice)

230 Park Avenue

New York, NY 10169

Telephone: (212) 351-3400

Facsimile: (212) 351-3401

jdesmarais@desmaraisllp.com

amodi@desmaraisllp.com

jwelsh@desmaraisllp.com

rhabbaz@desmaraisllp.com

Peter C. Magic (pro hac vice)

101 California Street, Suite 3070

San Francisco, CA 94111

Telephone: (415) 573-1900

Facsimile: (415) 573-1901

pmagic@desmaraisllp.com

KELLY HART & HALLMAN LLP

J. Stephen Ravel

Texas State Bar No. 16584975

303 Colorado Street, Suite 2000

Austin, TX 78701

Telephone: (512) 495-6429

Facsimile: (512) 495-6401

steve.ravel@kellyhart.com

Attorneys for Defendant, Apple Inc.

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true and correct copy of the above and foregoing 

document has been served on July 10, 2020, to all counsel of record who are deemed to have 

consented to electronic service via the Court’s CM/ECF system per Local Rule CV-5(b).

/s/ J. Stephen Ravel

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