Voip-pal vs ATT/Verizon Case: 2:16-cv-00271
Joint Status Report filed 1/26/2018 in Nevada District Court
UNITED STATES DISTRICT COURT DISTRICT OF NEVADA
Case No. 2:16-cv-00271-RCJ-VCF
JOINT STATUS REPORT
Pursuant to this Court's order (see ECF No. 37), Plaintiff Voip-Pal.com, Inc. ("Plaintiff" or "Voip-Pal") and Cellco Partnership d/b/a Verizon Wireless ("Verizon") and AT&T Corp. ("AT&T," and together with Verizon, "Defendants"), through undersigned counsel, hereby submit the following Joint Status Report outlining the parties' positions on how this case should proceed in light of recent developments in proceedings concurrently pending in the Patent Trial and Appeal Board ("PTAB").
I. PROCEDURAL HISTORY
On February 10, 2016, VoIP-Pal filed this action against Defendants alleging infringement of U.S. Patent Nos. 8,542,815 (the "'815 patent") and 9,179,005 (the "'005 patent"). (ECF No. 1.) VoIP-Pal filed an Amended Complaint on April 6, 2016 and a Second Amended Complaint on May 5, 2016. (ECF Nos. 8, 10.) By stipulation, Defendants' deadline to respond to the Second Amended Complaint was extended to July 29, 2016. (ECF Nos. 11, 12.)
On July 29, 2016, the Court granted the parties' stipulation to stay this litigation pending decisions by the Patent Trial and Appeal Board ("PTAB") on whether to institute inter partes review ("IPR") on the '815 and '005 patents based on petitions filed by Apple (the "IPR Petitions"). (ECF No. 31.) On November 21, 2016, the PTAB instituted IPR on all asserted claims of the '815 and '005 patents. (See ECF No. 36 at 6-7.) On February 2, 2017, the Court granted the parties' stipulation and proposed order to continue the stay pending final written decisions by the PTAB in the pending IPR proceedings. (ECF No. 32, 33.)
On January 8, 2018, the Court granted the parties' stipulation to extend the deadline to provide the Court with their respective positions on how the case should proceed in light of the PTAB's final written decisions to January 26, 2018. (ECF No. 37.) Similar status reports are being concurrently filed in two other cases filed by VoIP-Pal, pending in this district and asserting the same patents: VoIP-Pal.com, Inc v. Apple, Inc.., Case No. 2:16-cv-00260-RFB- VCF and VoIP-Pal.com, Inc. v. Twitter Inc., Case No. 2:16-cv-02338-RFB-VCF. (See ECF No. 36 11).
On November 20, 2017, the PTAB issued final written decisions concerning the IPR Petitions. In its decisions, the PTAB held that Apple did not show by a preponderance of the evidence that the asserted claims of the '815 and '005 patents were unpatentable. (See ECF No. 36 at 9.). Additionally, the PTAB denied institution of IPRs for five other petitions filed against the '815 and '005 patents, namely, three IPR petitions filed by AT&T (IPR2017-01382, IPR2017-01383, and IPR2017-01384), and two follow-on petitions filed by Apple (IPR2017- 01398 and IPR2017- 01399). (See id.).
II. THE PARTIES' POSITIONS
VoIP-Pal and Defendants respectfully request that the stay of this case be lifted, and that Defendants' answer or other response to VoIP-Pal's Second Amended Complaint (ECF No. 10) shall be due thirty (30) days after an order of this Court lifting the stay of this case. The parties agree to confer on a case schedule and discovery plan pursuant to Fed. R. Civ. P. 26(f) after Defendants file their responsive pleadings, and the parties agree to submit their plan to the Court no later than seven (7) days before the Court's scheduling conference under Fed. R. Civ. P. 16(b). In preparing responsive pleadings and conferring under Rule 26, the parties will confer further on issues regarding venue.
Defendants contend that there is a misjoinder issue with having AT&T and Verizon in the same case that will need to be addressed. It has also come to Defendants' attention that Plaintiff did not identify the Apple and Twitter cases pending before Judge Boulware as related cases in the civil cover sheets. Defendants anticipate one of the parties filing a notice of related cases.
The parties further respectfully inform the Court that Apple has filed post-judgment "Motion(s) For Entry Of Judgment In Favor Of Petitioner As A Sanction For Improper Ex Parte Communications By Patent Owner, Or, Alternatively, For New And Constitutionally Correct Proceedings" in the PTAB proceedings. (See Case No. IPR2016-01198, Paper No. 55 (P.T.A.B. Dec. 20, 2017); Case No. IPR2016-01201, Paper No. 55 (P.T.A.B. Dec. 20, 2017).; see also ECF No. 36 10.) Briefing on Apple's motions close on January 26, 2018. According to the Joint Status Report being filed today in the Voip-Pal/Apple case, Apple may renew its request to stay that case if the PTAB grants Apple's requested relief; similarly,
Defendants may renew their request to stay this case if the PTAB grants Apple's requested relief.
Dated: January 26, 2018
