Opinions / Panel Activity

Last week, the Federal Circuit decided In re VoIP-Pal.com, Inc., a patent case we have been tracking because it attracted an amicus brief. Judge Moore authored a unanimous panel opinion denying VoIP-Pal’s petition for a writ of mandamus. The panel found that the district court did not clearly abuse its discretion by declining to dismiss the case based on the first-to-file rule. This is our opinion summary.

In this case, VoIP-Pal filed a petition for a writ of mandamus, alleging that the Northern District of California abused its discretion in declining to apply the first-to-file rule. The district court agreed to hear the declaratory judgment case in which various companies allege that VoIP-Pal’s patents are invalid even though VoIP-Pal had already filed a complaint alleging infringement of these patents in the Western District of Texas. As mentioned, the panel denied the petition seeking to order the district court to dismiss the case.

Judge Moore summarized the relevant background:

These cases are not the first in Northern California between the parties concerning VoIP-Pal’s patents. In 2016, VoIP-Pal sued Respondents alleging infringement of the ’815 and ’005 patents. . . . In 2018, VoIP-Pal sued Apple and Amazon, Inc. asserting infringement of the ’762, ’330, ’002, and ’549 patents. . . . 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 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. . . . [T]he 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.

The Federal Circuit began by acknowledging that the first-to-file rule is not absolute, that application of the rule is ultimately committed to the district court’s discretion, and that, on mandamus, the Federal Circuit reviews only for “a clear abuse of discretion.”

The panel then noted that previously adjudication of a matter that involved the same parties on its own may not overcome the first-to-file rule. In this case, however, the panel explained that the patents at issue and the patents in the prior cases all share a common specification, title, parent application, and inventors. The court also noted that the patents shared similar technology and accused products. Additionally, the court highlighted, the Northern District of California previously wrote 113 pages of analysis of the validity of the patents, suggesting considerable familiarity with the issues in this case.

Aside from efficiency grounds, the panel was persuaded by the concern that VoIP-Pal was engaging in forum shopping. The panel found that the district court was reasonable in suggesting that VoIP-Pal may have tried to avoid an unfavorable decision by the Northern District of California like the ones it had previously received by filing in a district with no connection to the patents.

The panel found “no error that is mandamus worthy,” and thus denied the petition.