Case: 21-112 Document: 32 Page: 1 Filed: 02/19/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: VOIP-PAL.COM, INC.,
Petitioner
______________________
2021-112
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Northern District of California in
Nos. 5:20-cv-02460-LHK, 5:20-cv-02995-LHK, and 5:20-cv-
03092-LHK, Judge Lucy H. Koh.
______________________
ON PETITION
______________________
Before NEWMAN, MOORE, and STOLL, Circuit Judges.
MOORE, Circuit Judge.
ORDER
VoIP-Pal.com, Inc. petitions this court for a writ of
mandamus directing the United States District Court for
the Northern District of California to vacate its order deny-
ing VoIP-Pal’s motion to dismiss this declaratory judgment
action. VoIP-Pal contends that granting its motion was re-
quired under the first-to-file rule. Because we conclude
that the court did not clearly abuse its discretion in declin-
ing to apply that rule here, we deny the petition.
Case: 21-112 Document: 32 Page: 2 Filed: 02/19/2021
2 IN RE: VOIP-PAL.COM, INC.
I.
VoIP-Pal is the owner of several patents relating to a
system for routing communications over Internet Protocol,
including U.S. Patent Nos. 10,218,606 (“the ’606 patent”);
8,542,815 (“the ’815 patent”); 9,179,005 (“the ’005 patent”);
9,537,762 (“the ’762 patent”); 9,813,330 (“the ’330 patent”);
9,826,002 (“the ’002 patent”); 9,948,549 (“the ’549 patent”);
and 9,935,872 (“the ’872 patent”).
This petition arises out of complaints filed by Respond-
ents Apple Inc., AT&T Corp. (and other related AT&T en-
tities), and Verizon Wireless in the Northern District of
California seeking a declaratory judgment that the ’606 pa-
tent is invalid and not infringed. Apple’s complaint also
seeks a declaratory judgment of non-infringement and in-
validity of the ’872 patent. Apple filed its operative com-
plaint on April 14, 2020, and AT&T and Verizon filed their
complaints on April 30th and May 5th, respectively.
These cases are not the first in Northern California be-
tween the parties concerning VoIP-Pal’s patents. In 2016,
VoIP-Pal sued Respondents alleging infringement of the
’815 and ’005 patents. The same trial court judge assigned
to the present cases issued a lengthy decision finding the
asserted claims were unpatentable under 35 U.S.C. § 101,
which was ultimately affirmed. In 2018, VoIP-Pal sued Ap-
ple and Amazon, Inc. asserting infringement of the ’762,
’330, ’002, and ’549 patents. The same trial judge again
issued a lengthy decision concluding that the claims were
unpatentable, which also was affirmed.
Nor are these cases the only ones currently pending be-
tween the parties involving the ’606 patent. Shortly after
this court’s affirmances in those prior litigations and
shortly before Respondents filed the instant declaratory
judgment actions in California, VoIP-Pal filed suit against
Apple, AT&T, Verizon, Amazon, Facebook, and Google in
the United States District Court for the Western District of
Texas for infringement of the ’606 patent. Those
Case: 21-112 Document: 32 Page: 3 Filed: 02/19/2021
IN RE: VOIP-PAL.COM, INC. 3
proceedings are currently stayed, and Facebook, Google,
and Amazon have filed pending motions to transfer venue
to the Northern District of California.
VoIP-Pal moved the Northern District of California to
decline jurisdiction over the cases citing the first-to-file
rule. On December 11, 2020, the court denied the motion.
The court recognized that a first-filed infringement suit is
ordinarily favored over an identical or substantially over-
lapping second filed, declaratory judgment action. How-
ever, the court concluded an exception was warranted here
based on fairness and efficiency grounds, citing among
other things, its handling of the prior litigation between
the parties. VoIP-Pal then filed this petition.
II.
The question of whether to decline jurisdiction over a
declaratory judgment action under the first-to-file rule is
governed by Federal Circuit law. See Elecs. for Imaging,
Inc. v. Coyle, 394 F.3d 1341, 1345–46 (Fed. Cir. 2005). Our
precedent on this issue makes clear that the rule is not ab-
solute, and exceptions may be made if justified by “consid-
erations of judicial and litigant economy, and the just and
effective disposition of disputes.” Id. at 1347 (citation and
internal quotation marks omitted). Application of the rule
is ultimately committed to the district court’s discretion.
See Futurewei Techs., Inc. v. Acacia Rsch. Corp., 737 F.3d
704, 708 (Fed. Cir. 2013). And on mandamus, we review
only for “a clear abuse of discretion.” In re Shared Memory
Graphics LLC, 659 F.3d 1336, 1339 (Fed. Cir. 2011).
We see no error that is mandamus-worthy in the
court’s analysis. To be sure, the mere fact that a district
court previously adjudicated a matter that involved the
same parties or a related patent may not, standing alone,
justify an exception to the first-to-file rule. But here, the
conclusion that it would be far less efficient for the Western
District of Texas to resolve these cases based on the North-
ern District of California’s familiarity with the overlapping
Case: 21-112 Document: 32 Page: 4 Filed: 02/19/2021
4 IN RE: VOIP-PAL.COM, INC.
issues is particularly well supported. First, the patents in
the current cases and prior cases all share a common spec-
ification, title, parent application, and inventors. Second,
the instant cases and prior cases involve similar technology
and accused products. And third, the district court previ-
ously wrote a total of 113 pages on the validity of the pa-
tents, suggesting the court has considerable familiarity
with overlapping validity issues in these cases.
These efficiency grounds also do not stand alone. The
court reasonably expressed its concern that the lack of any
obvious connection between the Western District of Texas
and VoIP-Pal or the lawsuits suggested to it “that Defend-
ant may be forum shopping, attempting to avoid this
Court’s unfavorable decisions by filing in another district.” *
The district court’s ruling also poses no clear and obvious
risk of inconsistent judgments or waste of party and judi-
cial resources. These cases were filed within days of the
cases that were filed in the Western District of Texas. The
Western District of Texas has stayed proceedings. And, as
far as we have been informed, there is no indication that
the Western District of Texas intends to proceed in parallel
with the California actions. On this record, we cannot say
that the district court clearly abused its discretion.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
* VoIP-Pal contends that the district court has made
statements demonstrating bias towards its claims. We,
however, cannot say that VoIP-Pal has fairly characterized
those statements or that there is any basis here to suggest
that the court has prejudged the issues.
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IN RE: VOIP-PAL.COM, INC. 5
FOR THE COURT
February 19, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s25