Defendants.have.filed.an.identical.Motion.in.each.of.the.captioned actions.
For the Court’s convenience, references herein to ECF numbers are to the ECF numbers in the case styled VoIP-Pal.com, Inc. v. AT&T Corp., Case No. 18-cv-06177-LHK (N.D. Cal.). The various complaints are as set forth in Defendants’ Motion at FN 1.
I. INTRODUCTION
Defendants ask this Court to invalidate every asserted claim of the Patents-in-Suit at the motion to dismiss stage before construction of any claim and in the absence of any factual record. But this is not the first time VoIP-Pal has faced a challenge to its patents. First, the claims of the Patents-in-Suit were argued to be invalid in view of prior art challenges brought by both Apple, Inc. and AT&T Corp. in Inter Partes Review proceedings before the Patent Trial and Appeal Board in the United States Patent and Trademark Office. With VoIP-Pal having overcome those challenges, Verizon Wireless and AT&T Corp., only months ago, filed separate motions to dismiss under Fed. R. Civ. Proc. 12(b)(6), alleging the asserted claims were invalid under 35 U.S.C. § 101.
In view of evidence submitted by VoIP-Pal in the form of proposed amendments to its complaints, both Verizon Wireless and AT&T Corp. withdrew their motion(s) to dismiss, declining to argue that the amendments were futile, leading to only one obvious conclusion – that the modest development of the record by VoIP-Pal defeated their early stage attempt to rush this
a case out of court before VoIP-Pal could defend its United States pateN
VOIP-PAL’S OPPOSITION TO DEFENDANTS’ CONSOLIDATED MOTION TO DISMISS
The bottom line is that the claims are not ineligible under 35 U.S.C. § 101 and the Motion must be denied for at least the following reasons:
First, the asserted claims are not directed to an abstract idea, but are instead generally directed to an improved call routing technology enabling better interoperability of communication networks by, inter alia, evaluating a callee identifier provided by a caller in conjunction with caller-specific “attributes” located from a profile associated with the caller, to identify and classify an intended destination, as between two networks, and based on the classification, producing a routing message to setup a call controller to establish the call to the intended destination via identified suitable network communication infrastructure;
Second, the asserted claims constitute an improvement in call controller technology and are conceptually inventive, because the claims enable transparent routing of calls integrated over private and public networks based upon caller-specific profile information in conjunction with information about the callee; and
Third, the Motion is premature in that there are numerous factual disputes made of issue by the Motion and due to the nature of the evidence that VoIP-Pal would elicit during discovery as identified in VoIP-Pal’s proffer of evidence submitted herewith.
Defendants fail to even acknowledge the heavy burden they bear on their Motion, namely, to prove invalidity by “clear and convincing evidence.” Bascom Research, LLC v. LinkedIn, Inc., 77 F. Supp. 3d 940, 945 (N.D. Cal. 2015) (emphasis added); see also Card Verification Solutions, Inc. v. Citigroup, No. 13-cv-06339, 2014 WL 4922524, at *2 (N.D. Ill. Sept. 29, 2014)
(“dismissal is appropriate solely when the only plausible reading of the patent is that there is clear and convincing evidence of ineligibility” (emphasis added)).
Yet Defendants rely on unsupported factual allegations for key arguments and summarily dismiss contrary material facts asserted in VoIP-Pal’s Complaint.2 The Court should deny the current motion to dismiss because Defendants have not met its burden.
2
Because this Motion is consolidated, VoIP-Pal references only the Third Amended Complaint filed in the AT&T Action, Case No. 5:18-cv-6177-LHK (ECF. No. 59). See Malek Decl., Exhibit 1. To not burden the Court with additional filings, VoIP-Pal has not amended each complaint in each action with identical allegations but would do so if given permission and if necessary to the Court’s analysis of the Motion.
Accordingly, VoIP-Pal attaches the Third Amended Complaint in the AT&T action as an Exhibit to this Brief to be filed in each case in order to preserve the record.
If the Court desires that VoIP-Pal make the same information of record in each case through amended complaints, then VoIP-Pal respectfully requests permission to amend its complaint in each case to do so. VoIP-Pal submits that such action would be ministerial at this stage. See Aatrix Software, Inc. v. Green Shades Software, Inc., No. 2017-1452, 2018 WL 843288 (Fed. Cir. Feb. 14, 2018).
AND
C. Numerous Factual Disputes Show This Rule 12(b)(6) Motion is Premature.
Defendants’ Motion to Dismiss under § 101 should be denied for the separate reason that it is premature. Not only is claim construction required, but the factual record in this case is as-yet undeveloped. Given that the Motion is brought under Fed. R. Civ. P. 12(b)(6), VoIP-Pal is limited to the intrinsic record. Accordingly, VoIP-Pal submits the following as a proffer of evidence and notes that the material is being submitted for illustrative purposes and is not intended to convert
the Motion into a Fed. motion for summary judgment. See, e.g., Geinosky v. City of Chicago, 675 F.3d 743, FN 1 (2012).
If provided the opportunity to engage in discovery, VoIP-Pal would elicit evidence to show that a VoIP system is inherently a computer network,19 and that a VoIP system may use non-PSTN protocols such as Session Initiation Protocol (SIP) and a variety of caller/callee identifiers, including proprietary identifiers that are incompatible with PSTN callee identifiers.20
Consequently, for any routing controller or call controller intended to interoperate with both private and public network elements, there is a requirement for computer-based methods of communication to bridge the divide. Indeed, the patented method could not be performed without computing equipment such as the routing controller. (See generally, Mangione-Smith Decl.)).
Moreover, as stated in footnote 16 of this Brief, Defendants’ arguments about what is conventional should be regarded with skepticism absent a fulsome factual record based on submissions by Defendant Apple in various IPR proceedings.
