EXHIBIT 6

Case 6:20-cv-00269-ADA Document 25-7 Filed 07/31/20 Page 1 of 6
Nos. 2020-1241, 2020-1244 

IN THE

United States Court of Appeals 

for the Federal Circuit

VOIP-PAL.COM, INC., 

Plaintiff-Appellant,

v.

APPLE, INC., 

Defendant-Appellee.

___________________________

VOIP-PAL.COM, INC., 

Plaintiff-Appellant,

v.

AMAZON.COM, INC., AMAZON TECHNOLOGIES, INC., 

Defendants-Appellees.

Appeals from the U.S. District Court for the Northern District of California 

in Case Nos. 5:18-cv-06216-LHK and 5:18-cv-07020-LHK 

JOINT RESPONSE BRIEF FOR APPELLEES 

Mark A. Perry 

Principal Attorney

GIBSON, DUNN & CRUTCHER LLP

1050 Connecticut Avenue, N.W.

Washington, D.C. 20036

(202) 887-3667 

MPerry@gibsondunn.com

Counsel for Apple Inc.

Daniel T. Shvodian 

Principal Attorney

PERKINS COIE, LLP

3150 Porter Drive 

Palo Alto, CA 94304 

(650) 838-4300 

DShvodian@perkinscoie.com 

Counsel for Amazon.com, Inc. and 

Amazon Technologies, Inc. 

Additional Counsel Listed on Inside Cover

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construe the pleadings in the light most favorable to the nonmoving party.” 

Manzarek v. St. Paul Fire & Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008). 

But the Court is not required to “assume the truth of legal conclusions merely 

because they are cast in the form of factual allegations.” Fayer v. Vaughn, 649 F.3d 

1061, 1064 (9th Cir. 2011) (quotation omitted). 

Subject-matter eligibility under section 101 is a question of law reviewed de 

novo. Berkheimer, 881 F.3d at 1365. Sometimes eligibility may turn on underlying 

facts, such as whether a claim element or combination is well-understood, routine, 

and conventional under Alice step two. Id. at 1368. However, “not every § 101 

determination contains genuine disputes over the underlying facts material to the 

§ 101 inquiry.” Id. Dismissal on section 101 grounds remains appropriate where 

there are no disputed facts material to patent eligibility. See, e.g., Interval Licensing 

LLC v. AOL, Inc., 896 F.3d 1335, 1342 n.4 (Fed. Cir. 2018). 

ARGUMENT 

The district court correctly determined that all of the asserted claims are directed to patent ineligible subject matter under section 101. Appx9-76. For purposes 

of analysis, the district court selected four representative claims that require the same 

basic steps: 

1. receiving identifiers associated with the caller and/or callee; 

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2. searching a database or memory for information about the caller and/or 

callee; 

3. processing the information of the caller and/or callee; 

4. classifying the communication between the caller and callee as a system 

or external communication; and 

5. (a) producing a routing message to establish the communication; or (b) 

not routing the communication (i.e., producing an error message or 

blocking the communication). 

See Appx27-39. 

The district court determined that the asserted claims are directed to the abstract “idea of routing a communication based on characteristics of the participants.” 

Appx40. Not coincidentally, the same court had previously determined that the representative claims asserted by VoIP-Pal in the first wave cases are drawn to the same 

abstract idea. First Wave Order at 21 (“The Court finds that claim 1 of the ’815 

Patent is directed to the abstract idea of routing a call based on characteristics of the 

caller and callee”); id. at 35 (same for claim 74 of the ’005 patent). VoIP-Pal appealed that decision, and specifically challenged the step one determination. 

While the First Wave Appeal was pending, the district court issued its dismissal order in the second wave cases. VoIP-Pal appealed that order as well, but made 

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no effort to coordinate the two appeals. Nor did VoIP-Pal identify the cases as “related” in its briefs filed in either appeal—notwithstanding its obligation to identify 

“any case ... that will directly affect or be directly affected by this court’s decision 

in the pending appeal.” Fed. Cir. R. 47.5(b). Indeed, the Second Wave Order expressly identifies the first wave cases as “related” (Appx16); yet, other than a single 

citation to the First Wave Order (BB45), VoIP-Pal’s principal brief in this second 

wave appeal says nothing about the previous case and does not even note the thenpending appeal. 

The two appeals are obviously related: they were brought by the same patentee, asserting claims from the same family of patents with nearly identical specifications and similar issued claims, against (in the case of Apple) the same defendant; they were resolved by the same district court on the same ground; and VoIPPal’s arguments are similar, and in many instances identical, in each appeal. VoIPPal, however, does not even attempt to explain in its principal brief how the claims 

asserted in this second wave cases are different from the claims previously asserted 

in a way that matters to patent-eligibility, and it should not be permitted to do so for 

the first time in its reply brief. 

The Court has already decided (in the First Wave Appeal) that the representative claims previously selected by VoIP-Pal are not eligible for patenting; accordingly, this Court’s inquiry should be what, if anything, about the claims asserted in 

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these second wave cases could (or should) lead to a different outcome under section 

101. Appellees respectfully submit that there is no meaningful difference when it 

comes to eligibility. VoIP-Pal does not contend otherwise in its principal brief; nor 

has it given this Court any basis on which it could reach a different result here. 

Even if this Court were to ignore the previous appeal as assiduously as VoIPPal does, the district court correctly determined that the claims asserted in these cases 

are ineligible—as Appellees explain in the remainder of this brief. 

I. The District Court Correctly Concluded That The Asserted Claims Are 

Not Patent Eligible 

Under the established framework for patent-eligibility, the Court “must first 

determine whether the claims at issue are directed to a patent-ineligible concept,” 

such as an abstract idea. Alice, 573 U.S. at 218. This Court has described the step 

one inquiry “as looking at the ‘focus’ of the claims, their ‘character as a whole.’” 

Elec. Power Grp., 830 F.3d at 1353 (quoting Enfish, LLC v. Microsoft Corp., 822 

F.3d 1327, 1335-36 (Fed. Cir. 2016)); see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). 

If the claims are directed to an abstract idea, they are ineligible unless the 

Court finds that the claims recite an “inventive concept” at step two. Alice, 573 U.S. 

at 217. The inventive-concept requirement asks whether the claims contain “significantly more than a patent upon the ineligible concept itself.” Id. at 218 (emphasis 

added) (alteration and quotation omitted). 

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