Responding to a recently lodged VoIP-Pal patent lawsuit, Apple in a complaint filed Thursday says it does not infringe on the non-practicing entity’s intellectual property and contends that the patents-in-suit are invalid.
Last week, VoIP-Pal, a firm that exists solely to leverage voice over IP patents against larger technology firms in court, lodged a fresh lawsuit against Apple in the Western District of Texas, claiming the iPhone maker’s iMessage and FaceTime products infringe owned intellectual property. The complaint is one in a long line of legal actions VoIP-Pal has taken against Apple over the past five years.
In its filing with the U.S. District Court for the Northern District of California today, Apple argues that its services do not infringe on VoIP-Pal IP. Further, the patent troll’s clutch of patents, including the pair most recently asserted in Western Texas, are invalid. VoIP-Pal’s legal strategy follows a familiar, if not effective, pattern that dates back to at least 2016, Apple suggests.
“Defendant VoIP-Pal.com, Inc. (“VoIP-Pal”) is a serial (albeit unsuccessful) litigator. Its four prior cases against Apple have resulted in (1) final judgment in favor of Apple based on the invalidity of the two patents-in-suit; (2) final judgment again in favor of Apple based on the invalidity of four patents-in-suit; (3) voluntary dismissal of a complaint filed in the Western District of Texas; and (4) delivering a covenant not-to-sue to Apple in an attempt to escape invalidation of two more patents.”
In cataloguing VoIP-Pal’s attempts to use its IP in an attempt to extract money from larger firms, Apple points to a 2016 suit involving AT&T and Verizon that sought a total of $7 billion for infringement of two VoIP patents. The court found all asserted claims invalid, a decision upheld by the Federal Circuit.
A subsequent complaint in 2018 pulled in Amazon and leveraged four patents from the same family as the 2016 action. Each asserted claim was found invalid, with the judgment again affirmed by the Federal Circuit.
Switching gears, VoIP-Pal took its fight to the patent holder-friendly Western District of Texas, though that action was stayed. The patent troll attempted to dismiss its California suit in a bid to avoid an unfavorable ruling, but the effort was blocked and ultimately resulted in the dismissal of the Western Texas case and a limited covenant with Apple in 2020.
The detente didn’t last long, with VoIP-Pal lodging a new suit in the Western District of Texas. Along with Apple, VoIP-Pal lodged complaints similar against AT&T, Verizon, Amazon, Facebook/WhatsApp, Google, and T-Mobile last week. The most recent filings are based on IP from the same patent family and claims infringement of VoIP technology.
“VoIP-Pal is once again attempting to forum shop, and it is once again asserting patents that are invalid,” Apple says.
There are a number of outstanding issues that have yet to be resolved, including motions to dismiss past lawsuits and intradistrict case assignments, but Apple maintains that its products do not infringe on VoIP-Pal’s patents. With this latest request for declaratory judgment, Apple seeks to halt VoIP-Pal’s newest salvo before it muddies already murky waters.
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