Case: 22-123 Document: 10 Page: 1 Filed: 03/22/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: VOIP-PAL.COM, INC.,
Petitioner
______________________
2022-123
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Northern District of California in No.
3:21-cv-02769-JD, Judge James Donato.
______________________
ON PETITION
______________________
Before MOORE, Chief Judge, DYK and STOLL, Circuit
Judges.
MOORE, Chief Judge.
ORDER
VoIP-Pal.com, Inc. petitions for a writ of mandamus di-
recting the United States District Court for the Northern
District of California to vacate its November 2, 2021 order
and to grant VoIP-Pal’s motion to dismiss. Twitter, Inc.
opposes the petition. VoIP-Pal replies. For the following
reasons, we deny VoIP-Pal’s petition.
Case: 22-123 Document: 10 Page: 2 Filed: 03/22/2022
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
networks, 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; 9,813,330; 9,826,002; 9,948,549; and
9,935,872 (“the ’872 patent”).
VoIP-Pal and Twitter have opposed each other on mul-
tiple occasions concerning these VoIP-Pal patents. Prior to
Twitter’s present action, VoIP-Pal filed an action alleging
that Twitter infringed the ’815 patent and the ’005 patent.
VoIP-Pal brought additional actions against other telecom-
munication and internet companies alleging infringement
of the same patents, and the defendants filed consolidated
motions to dismiss. The district court held the asserted
claims invalid because they covered subject matter ineligi-
ble under 35 U.S.C. § 101. This court affirmed that ruling
in March 2020. See VoIP-Pal.com, Inc. v. Twitter, Inc., 798
F. App’x 644, 645 (Fed. Cir. 2020). VoIP-Pal filed a petition
for panel and en banc rehearing of that decision in April
2020, which this court denied on May 18, 2020.
During the pendency of that infringement suit, VoIP-
Pal brought several actions against other telecommunica-
tion and internet companies alleging infringement of its
other patents, including the ’606 patent. After those suits
were filed, Twitter filed a suit in the Northern District of
California in April 2020, seeking a declaratory judgment
that its products did not infringe the ’606 patent. Accord-
ing to Twitter’s complaint in the present case, after multi-
ple communications between the parties made during the
pendency of that action, VoIP-Pal offered Twitter a cove-
nant not to sue on the ’606 patent but declined to extend
the covenant to the ’872 patent. Compl. at 4, ¶10, Twitter,
Inc. v. VoIP-Pal.com, Inc., No. 3:21-cv-02769 (N.D. Cal.
Apr. 16, 2021), ECF No. 1. On March 24, 2021, VoIP-Pal
Case: 22-123 Document: 10 Page: 3 Filed: 03/22/2022
IN RE: VOIP-PAL.COM, INC. 3
moved to dismiss Twitter’s action based on its covenant not
to sue, which was granted on August 30, 2021.
In the present action, filed on April 16, 2021, Twitter
seeks a declaratory judgment that its products do not in-
fringe the ’872 patent. VoIP-Pal moved to dismiss the com-
plaint, arguing, among other things, that the district court
lacked jurisdiction because no immediate, actual contro-
versy between the parties yet existed. On November 2,
2021, the court denied VoIP-Pal’s motion, concluding,
based on an assessment of all the circumstances, that
VoIP-Pal had engaged in affirmative acts that indicated an
intention to enforce the ’872 patent against Twitter.
Appx18. On December 9, 2021, VoIP-Pal filed a second mo-
tion to dismiss Twitter’s complaint—this time, with the ad-
dition of a covenant not to sue for infringement of the ’872
patent, conditioned on the grant of that motion. The dis-
trict court has scheduled a hearing for that motion for
March 24, 2022. On January 20, 2022, VoIP-Pal filed this
petition. In its reply brief, VoIP-Pal states that it “seeks to
dismiss the underlying action before the district court de-
termines whether the covenant not to sue is sufficient to
divest itself of jurisdiction.” Reply at 4.
II.
The writ of mandamus is available in extraordinary sit-
uations to correct a clear abuse of discretion or usurpation
of judicial power. See In re Calmar, Inc., 854 F.2d 461, 464
(Fed. Cir. 1988). A party seeking a writ bears the burden
of proving that it has no other means of obtaining the relief
desired, see Mallard v. U.S. Dist. Ct. for S. Dist. of
Iowa, 490 U.S. 296, 309 (1989), and that the right to issu-
ance of the writ is “clear and indisputable,” Allied Chem.
Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980) (internal quo-
tation marks and citation omitted). And “even if the first
two prerequisites have been met, the issuing court, in the
exercise of its discretion, must be satisfied that the writ is
appropriate under the circumstances.” Cheney v. U.S. Dist.
Case: 22-123 Document: 10 Page: 4 Filed: 03/22/2022
4 IN RE: VOIP-PAL.COM, INC.
Ct. for D.C., 542 U.S. 367, 381 (2004). VoIP-Pal has not
shown that this standard is satisfied here.
VoIP-Pal has not shown that the district court clearly
and indisputably erred in denying its first motion to dis-
miss. As the district court correctly observed, our cases
have recognized that a history of litigation involving re-
lated patents against the same products can play a signifi-
cant role in establishing declaratory judgment jurisdiction.
See Danisco U.S. Inc. v. Novozymes A/S, 744 F.3d 1325,
1331 (Fed. Cir. 2014) (explaining that “a history of patent
litigation between the same parties involving related tech-
nologies, products, and patents is another circumstance to
be considered, which may weigh in favor of the existence of
subject matter jurisdiction[.]”); Arkema Inc. v. Honeywell
Int’l, Inc., 706 F.3d 1351, 1358 (Fed. Cir. 2013) (“Here, Hon-
eywell has accused Arkema of infringing its rights with re-
spect to 1234yf in litigation over [a] closely related [ ]
patent . . . . This creates a sufficient affirmative act on the
part of the patentee for declaratory judgment purposes.”).
The district court made a reasonable determination
here that VoIP-Pal’s prior patent infringement suit involv-
ing the same products and closely related patents provided
strong support for there being an active controversy be-
tween the parties regarding the ’872 patent. The court also
found that other considerations supported jurisdiction. In
particular, the court noted VoIP-Pal had issued a press re-
lease after this court’s affirmance decision stating that it
was “undeterred in [its] fight to assert [its] intellectual
property rights” and “remain[ed] firm in [its] resolve to
achieve monetization for [its] shareholders,” Appx15; had
continued to aggressively enforce its patents against other
telecommunications and internet companies, Appx16–17,
and, at the time, declined to grant a covenant not to sue on
the ’872 patent, Appx18. Based on these circumstances, we
cannot say that VoIP-Pal has shown a clear right to dismis-
sal of the action for lack of a case or controversy.
Case: 22-123 Document: 10 Page: 5 Filed: 03/22/2022
IN RE: VOIP-PAL.COM, INC. 5
Nor has VoIP-Pal shown that it had no other means to
obtain dismissal of Twitter’s action other than by way of
granting its mandamus petition. VoIP-Pal has a pending
motion at the district court to dismiss the suit based on a
proposed covenant not to sue, and the court has a sched-
uled upcoming hearing on the motion. VoIP-Pal responds
that it should not have to provide a covenant not to sue in
order to secure dismissal of the action, and that if success-
ful on its first motion to dismiss, the district court need not
reach the second motion and the conditional covenant. But
that problem is one of VoIP-Pal’s own making. VoIP-Pal is
the one that decided to offer the covenant rather than wait
to challenge the ruling on direct appeal following final
judgment. See Bankers Life & Cas. Co. v. Holland, 346
U.S. 379, 383 (1953) (“[E]xtraordinary writs cannot be used
as substitutes for appeals . . . even though hardship may
result from delay and perhaps unnecessary trial[.]” (cita-
tion omitted)).
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
March 22, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court