Twitter, Inc. v. Voip-Pal.com, Inc.

— 1 — — 2 — — 3 — — 4 — — 5 — — 6 — — 7 — 8 UNITED STATES DISTRICT COURT — 9 — NORTHERN DISTRICT OF CALIFORNIA — 10 — SAN JOSE DIVISION — 11 — 12 TWITTER, INC., Case No. 21-CV-02769-LHK 13 Plaintiff, ORDER DENYING MOTION TO DISMISS 14 v. Re: Dkt. No. 25 15 VOIP-PAL.COM, INC., 16 Defendant. — 17 — 18 Plaintiff Twitter, Inc. (“Twitter”) brings the instant case against Defendant VoIP-Pal.com, 19 Inc. (“Defendant”) seeking a declaratory judgment that Twitter’s products do not infringe U.S. 20 Patent No. 9,935,872 (“the ’872 patent”). ECF No. 1 (“Compl.”). Defendant moves to dismiss 21 the instant case for lack of subject matter jurisdiction, lack of personal jurisdiction, and improper 22 venue. ECF No. 25. Having considered the parties’ submissions, the relevant law, and the record 23 in this case, the Court DENIES Defendant’s motion to dismiss. 24 I. BACKGROUND 25 Over the past five years, Defendant has litigated numerous cases involving a family of 26 patents that relate to methods and systems for communicating over an internet protocol (“IP”) 27 network. See VoIP-Pal.Com, Inc. v. Apple Inc., 375 F. Supp. 3d 1110, 1118 (N.D. Cal. 2019). 1 Defendant has asserted at least eight patents in this family against various telecommunications and 2 internet companies, including Twitter. In turn, several companies, including Twitter, have filed 3 actions against Defendant seeking declaratory judgments that those companies’ products do not 4 infringe Defendant’s IP network patents and that those patents are invalid. 5 The ’872 patent is part of the same patent family. Accordingly, the instant case is the most 6 recent dispute between the parties about whether Twitter has infringed one of Defendant’s IP 7 network patents. Below, the Court describes in turn: (1) the parties; (2) the ’872 patent and 8 Defendant’s patent family; (3) the previous cases involving Defendant’s patent family; and (4) the 9 procedural history of the instant case. 10 A. The Parties 11 Twitter is a Delaware corporation with its principal place of business in San Francisco, 12 California. Compl. ¶ 14. Twitter “operates a global Internet platform for public self-expression 13 and conversation in real time.” Id. ¶ 15. “Twitter uses and sells messaging services using 14 messaging application software and/or equipment, servers and/or gateways that route messages to 15 computing devices such as smartphones, tablet computers, and personal computers.” Twitter, Inc. 16 v. VoIP-Pal.Com, Inc., No. 20-CV-02397-LHK, 2021 WL 3861446 , at *1 (N.D. Cal. Aug. 30, 17 2021) (internal quotation omitted). 18 Defendant is a Nevada corporation with its principal place of business in Waco, Texas. 19 Compl. ¶ 16. Defendants own a family of patents related to communications over IP networks. 20 See VoIP-Pal.Com, 375 F. Supp. 3d at 1118 . 21 B. The ’872 Patent and Defendant’s Patent Family 22 The ’872 patent is titled “Producing Routing Messages for Voice Over IP 23 Communications.” The ’872 patent describes and claims “methods and apparatus[es] for routing 24 and billing” communications over an IP network. See ’872 patent, col. 1:20–29; see, e.g., id., col. 25 37:28–38:10 (claiming a “method for routing a communication in a communication system 26 between an Internet-connected first participant device associated with a first participant and an 27 Internet-connected second participant device associated with a second participant”). The 1 application for the ’872 patent was filed on October 11, 2017, and the ’872 patent issued on April 2 3, 2018. 3 The ’872 patent is directly related to at least seven other patents that Defendant owns. 4 Specifically, the ’872 patent issued from a continuation of U.S. Patent Application No. 15/396,344 5 (“the ’344 application”), which is now U.S. Patent No. 9,813,330 (“the ’330 patent”). U.S. Patent 6 Nos. 9,948,549 (“the ’549 patent”) and 9,826,002 (“the ’002 patent”) also issued from 7 continuations of the ’344 application. In turn, the ’344 application was a continuation of the 8 application that became U.S. Patent No. 9,537,762 (“the ’762 patent”), which issued from a 9 continuation of the application that became U.S. Patent No. 9,179,005 (“the ’005 patent”), which 10 issued from a continuation of the application that became U.S. Patent No. 8,542,815 (“the ’815 11 patent”). Finally, the ’872 patent is the parent of U.S. Patent No. 10,218,606 (“the ’606 patent”). 12 Thus, these eight patents have the same title, identical figures, nearly identical 13 specifications, and similar claims. 14 C. Previous Related Cases 15 1. The 2016 Cases Involving the ’815 and ’005 Patents 16 In 2016, Defendant filed four actions in the District of Nevada asserting that Twitter, 17 Apple Inc. (“Apple”), AT&T Corp. (“AT&T”), and Verizon Wireless Services, LLC (“Verizon) 18 infringed claims of the ’815 and ’005 patents. See VoIP-Pal.Com, 375 F. Supp. 3d at 1121–22. 19 Because Apple filed petitions for inter partes reviews challenging the patentability of the asserted 20 claims, the District of Nevada stayed all four cases. Id. After the Patent Trial and Appeal Board 21 (“PTAB”) of the U.S. Patent and Trademark Office (“PTO”) rejected Apple’s challenges, the 22 District of Nevada lifted the stays. Id. 23 On February 28, 2018, Twitter moved to transfer Defendant’s action against Twitter to the 24 Northern District of California. VoIP-Pal.Com, Inc. v. Twitter, Inc., Case No. 16-CV-02338, 2018 25 WL 3543031 , at *1 (D. Nev. July 23, 2018). On July 23, 2018, the District of Nevada granted 26 Twitter’s motion and transferred the case. Id. 27 In October 2018, Defendant stipulated to transfer its actions against Apple, AT&T, and 1 Verizon to the Northern District of California as well. VoIP-Pal.Com, 375 F. Supp. 3d at 1121 . 2 As a result, all four cases were transferred and assigned to this Court. 3 In November 2018, this Court entered an order consolidating all four cases. Id. at 1122 . 4 On March 25, 2019, this Court granted Twitter, Apple, AT&T, and Verizon’s consolidated 5 motion to dismiss all four cases. Id. at 1117 . In a 45-page order, the Court concluded that the 6 asserted claims of the ’815 and ’005 patents were unpatentable under 35 U.S.C. § 101 . Id. at 7 1138, 1144. 8 On March 16, 2020, the Federal Circuit affirmed this Court’s decision. VoIP-Pal.Com, 9 Inc. v. Apple, Inc., 798 F. App’x 644 , 645 (Fed. Cir. 2020). 10 On April 8, 2020, Defendant issued a press release which stated that Defendant was 11 “undeterred in [its] fight to assert [its] intellectual property rights” and that Defendant “remain[ed] 12 firm in [its] resolve to achieve monetization for [its] shareholders.” See Compl. ¶ 4; ECF No. 1-4 13 at 2–3. 14 On April 15, 2020, Defendant filed a petition with the Federal Circuit requesting panel or 15 en banc rehearing of its appeal. VoIP-Pal.Com, Inc. v. Twitter, Case No. 19-1808, ECF No. 89 16 (Fed. Cir. May 18, 2020). On May 18, 2020, the Federal Circuit denied Defendant’s petition. Id., 17 ECF No. 99. 18 2. The 2018 Cases Involving the ’762, ’330, ’002, and ’569 Patents 19 In 2018, Defendant filed two actions in the District of Nevada asserting that Apple and 20 Amazon.Com, Inc. (“Amazon”) had infringed claims of the ’762, ’330, ’002, and ’549 patents. 21 See VoIP-Pal.Com, Inc. v. Apple Inc., 411 F. Supp. 3d 926 , 934 (N.D. Cal. 2019). After both 22 cases were transferred and assigned to this Court, this Court consolidated the two cases. Id. 23 On November 1, 2019, this Court granted Apple and Amazon’s consolidated motion to 24 dismiss both cases. Id. at 930. In a 68-page order, the Court concluded that the asserted claims of 25 the ’762, ’330, ’002, and ’549 patents were unpatentable under 35 U.S.C. § 101 . Id. at 941. 26 On November 3, 2020, the Federal Circuit affirmed this Court’s decision. VoIP-Pal.Com, 27 Inc. v. Apple, Inc., 828 F. App’x 717 , 717 (Fed. Cir. 2020). On December 17, 2020, Defendant 1 filed a petition with the Federal Circuit requesting panel or en banc rehearing of its appeal. VoIP2 Pal.com, Inc. v. Apple, Inc., Case No. 20-1241, ECF No. 52 (Fed. Cir. Jan. 26, 2021). On January 3 26, 2021, the Federal Circuit denied Defendant’s petition. Id., ECF No. 53. 4 On June 25, 2021, Defendant filed a petition for a writ of certiorari asking the United 5 States Supreme Court to review the Federal Circuit’s decision. See VoIP-Pal.com, Inc. v. Apple, 6 Inc., Case No. 20-1809 (U.S. Oct. 4, 2021). On October 4, 2021, the Supreme Court denied 7 Defendant’s petition. See id., 2021 WL 4507874 , at *1. 8 3. The 2020 Cases Involving the ’606 and ’872 Patents 9 On April 2, 2020, Defendant filed an action in the Waco Division of the Western District 10 of Texas asserting that Facebook, Inc. (“Facebook”) infringed claims of the ’606 patent. VoIP11 Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 1 (W.D. Tex. Apr. 2, 12 2020). 13 Between April 3, 2020 and April 7, 2020, Defendant filed actions in the Waco Division of 14 the Western District of Texas asserting the ’606 patent against Google LLC (“Google”), Amazon, 15 and Apple. See VoIP-Pal.Com, Inc. v. Google LLC, Case No. 20-CV-00269-ADA, ECF No. 1 16 (W.D. Tex. Apr. 3, 2020); VoIP-Pal.Com, Inc. v. Amazon.Com, Inc.., Case No. 20-CV-0027217 ADA, ECF No. 1 (W.D. Tex. Apr. 6, 2020); VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV18 00275-ADA, ECF No. 1 (W.D. Tex. Apr. 7, 2020). 19 On April 10, 2020, Apple filed an action in the Northern District of California seeking a 20 declaratory judgment that Apple’s products do not infringe the ’606 and ’872 patents and that 21 certain claims of those patents are invalid. Id. 22 On April 24, 2020, Defendant filed actions in the Waco Division of the Western District of 23 Texas asserting the ’606 patent against AT&T and Verizon. See VoIP-Pal.Com, Inc. v. AT&T 24 Inc., Case No. 20-CV-00325-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.Com, Inc. v. 25 Verizon Comms., Inc., Case No. 20-CV-00327-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020). 26 On April 30, 2020, AT&T filed an action in the Northern District of California seeking a 27 declaratory judgment that AT&T’s products do not infringe the ’606 patent. Id. 1 On May 5, 2020, Verizon filed an action in the Northern District of California seeking a 2 declaratory judgment that Verizon’s products do not infringe the ’606 patent. Id. 3 On July 8, 2020, AT&T moved to stay Defendant’s action in the Western District of 4 Texas. VoIP-Pal.Com, Inc. v. AT&T, Inc., Case No. 20-CV-00325-ADA, ECF No. 22 (W.D. Tex. 5 July 8, 2020). Specifically, AT&T argued that, because this Court previously had adjudicated 6 cases involving Defendant’s related patents, the Western District of Texas should stay Defendant’s 7 action in favor of AT&T’s action in this Court. Id. at 1. On July 9, 2020, Apple and Verizon filed 8 similar motions. See VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV-00275-ADA, ECF No. 9 17 (W.D. Tex. Jul. 9, 2020); VoIP-Pal.Com, Inc. v. Verizon Comms., Inc., Case No. 20-CV10 00327-ADA, ECF No. 17 (W.D. Tex. Jul. 9, 2020). 11 After Defendant sued Apple, Amazon, Facebook, and Google in the Waco Division of the 12 Western District of Texas, Twitter, on April 8, 2020, filed an action in the Northern District of 13 California seeking a declaratory judgment that Twitter’s products do not infringe the ’606 patent. 14 See Twitter, 2021 WL 3861446 , at *4. On June 26, 2020, Twitter filed a First Amended 15 Complaint which challenged the validity of certain claims of the ’606 patent. Id. at *5. 16 On July 10, 2020, Defendant filed a motion to dismiss Twitter’s action in the Northern 17 District of California for lack of subject matter jurisdiction, lack of personal jurisdiction, and 18 improper venue. Twitter, Inc. v. VoIP-Pal.com, Inc., No. 20-CV-02397-LHK, 2020 WL 7342733 , 19 at *5 (N.D. Cal. Dec. 14, 2020). 20 Also on July 10, 2020, Defendant filed a consolidated motion to dismiss Apple’s, AT&T’s, 21 and Verizon’s actions in the Northern District of California. Apple Inc. v. VoIP-Pal.com, Inc., 506 22 F. Supp. 3d 947, 957 (N.D. Cal. 2020). With respect to Apple’s, AT&T’s, and Verizon’s claims 23 relating to the ’606 patent, Defendant argued that the Court should “decline to exercise jurisdiction 24 under the first-to-file rule,” that the Court lacked personal jurisdiction, and that venue was 25 improper. Id. Additionally, Defendant argued that Apple’s claims relating to the ’872 patent 26 should be dismissed for lack of subject matter jurisdiction. Id. 27 After Defendant moved to dismiss the Northern District of California actions, each of 1 Google, Amazon, and Facebook moved to stay its respective case in the Western District of Texas 2 pending the resolution of Defendant’s motions in the Northern District of California. See VoIP3 Pal.Com, Inc. v. Google LLC, Case No. 20-CV-00269- ADA, ECF No. 18 (W.D. Tex. Jul. 10, 4 2020); VoIP-Pal.Com, Inc. v. Amazon.Com, Inc., Case No. 20-CV-00272-ADA, ECF No. 26 5 (W.D. Tex. Jul. 15, 2020); VoIP-Pal.Com, Inc. v. Facebook, Case No. 20-CV-00267-ADA, ECF 6 No. 26 (W.D. Tex. Jul. 29, 2020). 7 On September 29, 2020, the Western District of Texas stayed all six cases that were 8 pending before it. See VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV-00275-ADA, ECF No. 9 43 (W.D. Tex. Sept. 29, 2020). 10 On December 11, 2020, this Court denied Defendant’s motion to dismiss Apple’s, 11 AT&T’s, and Verizon’s actions alleging noninfringement and invalidity of claims of the ’606 and 12 ’872 patents. Apple, 506 F. Supp. 3d at 969. Because the Court had already ruled on the 13 patentability of six of Defendant’s related patents, the Court declined to apply the first-to-file rule. 14 Id. at 958–59. Additionally, because Defendant had purposefully directed its patent enforcement 15 activities at California, the Court found that personal jurisdiction existed. Id. at 964–65. For the 16 same reason, the Court concluded that venue was proper. Id. at 966. Finally, the Court concluded 17 that the Court had subject matter jurisdiction over Apple’s claims relating to the ’872 patent. Id. at 18 968–69. The Court explained that Defendant had created an active controversy with respect to the 19 ’872 patent by enforcing related patents against Apple. Id. 20 On December 14, 2020, the Court denied Defendant’s motion to dismiss Twitter’s action 21 alleging noninfringement and invalidity of claims of the ’606 patent. Twitter, 2020 WL 7342733 , 22 at *5. Because Defendant had previously enforced related patents against Twitter, there was an 23 active controversy between the parties with respect to the ’606 patent. Id. at *7–8. Additionally, 24 because Defendant had purposefully directed its patent enforcement activities at California, the 25 Court found that personal jurisdiction existed. Id. at *10. For the same reason, the Court 26 concluded that venue was proper. Id. at *13. 27 Defendant subsequently filed a petition for a writ of mandamus in the Federal Circuit 1 regarding this Court’s declination to apply the first-to-file rule to Apple’s, AT&T’s, and Verizon’s 2 actions. In re VoIP-Pal.Com, Inc., 845 F. App’x 940 (Fed. Cir. 2021). 3 On February 19, 2021, the Federal Circuit denied Defendant’s petition. Id. The Federal 4 Circuit held that “the conclusion that it would be far less efficient for the Western District of 5 Texas to resolve these cases based on the Northern District of California’s familiarity with the 6 overlapping issues is particularly well supported” because all the relevant patents were related and 7 because all the cases involved “similar technology and accused products.” Id. at 942. 8 On March 24, 2021, Defendant filed renewed motions to dismiss Twitter’s, Apple’s, 9 AT&T’s, and Verizon’s actions in the Northern District of California and, in each motion, 10 provided a covenant not to sue for infringement of the ’606 patent. See Twitter, 2021 WL 11 3861446, at *6; Apple Inc. v. VoIP-Pal.Com, Inc., No. 20-CV-02460-LHK, 2021 WL 3810263 , at 12 *5 (N.D. Cal. Aug. 26, 2021); AT&T Corp. v. VoIP-Pal.Com, Inc., No. 20-CV-02995-LHK, 2021 13 WL 3773611 , at *5 (N.D. Cal. Aug. 25, 2021). Defendant also provided Apple with a covenant 14 not to sue for infringement of the ’872 patent. Apple, 2021 WL 3810263 , at *5. 15 The same day, Defendant voluntarily dismissed its actions against Apple, AT&T, and 16 Verizon in the Western District of Texas. See VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 20-CV17 00275-ADA, ECF No. 49 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.Com, Inc. v. AT&T Inc., Case No. 18 20-CV-00325-ADA, ECF No. 51 (W.D. Tex. Mar. 24, 2021); VoIP-Pal.Com, Inc. v. Verizon 19 Comms., Inc., Case No. 20-CV-00327-ADA, ECF No. 47 (W.D. Tex. Mar. 24, 2021). 20 Additionally, Defendant filed a notice in the Western District of Texas stating that 21 Defendant’s motions to dismiss the Northern District of California actions and Defendant’s 22 voluntary dismissal of the Western District of Texas actions against Apple, AT&T, and Verizon 23 would “resolve all pending actions involving the ’606 patent between [Defendant] and Apple, 24 AT&T, and Verizon.” VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF 25 No. 45 at 3 (W.D. Tex. Mar. 24, 2021). Accordingly, Defendant stated, “Defendant’s cases 26 against Amazon, Google, and Facebook will soon be the only pending cases in any court involving 27 the ’606 patent.” Id. Defendant’s actions in the Western District of Texas against Amazon, 1 Facebook, and Google remain pending and have been stayed since September 29, 2020. VoIP2 Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 49 (W.D. Tex. Sept. 29, 3 2021). 4 On August 25, 2021, this Court denied Defendant’s renewed motion to dismiss AT&T’s 5 action alleging noninfringement and invalidity of the ’606 patent. See AT&T, 2021 WL 3773611 , 6 at *11. Although Defendant had granted AT&T a covenant not to sue, that covenant did not cover 7 AT&T’s customers. Id. at *10. The Court found that this fact weighed against dismissal because, 8 in Defendant’s action against AT&T in the Western District of Texas, Defendant had alleged “that 9 AT&T’s customers infringed the ’606 patent” and that AT&T induced this infringement. Id. 10 Additionally, the Court found it significant that Defendant had asserted seven directly related 11 patents against AT&T in three different actions. Id. at *7–*8. Taken together, the Court 12 explained, “Defendant’s history of litigation against AT&T and the litigation circumstances under 13 which Defendant granted the [covenant not to sue]” created an active controversy between 14 Defendant and AT&T regarding the ’606 patent. Id. at *10. On August 26, 2021, the Court 15 denied Defendant’s motion to dismiss Apple’s action for similar reasons. Apple, 2021 WL 16 3810263, at *10–11. 17 On August 30, 2021, the Court granted Defendant’s motion to dismiss Twitter’s action 18 alleging noninfringement and invalidity of the ’606 patent. Twitter, 2021 WL 3861446 , at *10. 19 The Court explained that, unlike Apple and AT&T, Defendant had never enforced the ’606 patent 20 against Twitter. Id. at *9. Accordingly, the “Court conclude[d] that Defendant's covenant not to 21 sue divest[ed] the Court of subject matter jurisdiction” over Twitter’s action. Id. at *10. 22 D. Procedural History of the Instant Case 23 On April 16, 2021, Twitter filed a complaint seeking a declaratory judgment that the ’872 24 patent is not infringed by Twitter’s products. See Compl. ¶ 53–58. The instant case initially was 25 assigned to U.S. District Judge James Donato. ECF No. 13. 26 On April 26, 2021, Twitter filed a motion requesting that the instant case be designated as 27 related to VoIP-Pal.com, Inc. v. Twitter, Inc., Case No. 18-cv-04523-LHK and Twitter, Inc. v. 1 VoIP-Pal.com, Inc., Case No. 20-cv-02397-LHK, both of which were pending before this Court. 2 ECF No. 14 at 2. On May 17, 2021, the Court granted Twitter’s motion to relate. ECF No. 18. 3 The same day, the instant case was reassigned to the Court. ECF No. 19. 4 On June 21, 2021, Defendant moved to dismiss the instant case. ECF No. 25 (“Mot.”). 5 Defendant offered three grounds for dismissal: (1) the Court lacks subject matter jurisdiction over 6 Twitter’s action; (2) the Court does not have personal jurisdiction over Defendant; and (3) venue 7 is improper. See id. at 8–9, 13, 19. On July 20, 2021, Twitter filed an opposition to Defendant’s 8 motion to dismiss. ECF No. 31 (“Opp.”). On August 3, 2021, Defendant filed a reply in support 9 of its motion to dismiss. ECF No. 35 (“Reply”). 10 II. LEGAL STANDARD 11 A. Motion to Dismiss Under Rule 12(b)(1) 12 A defendant may move to dismiss for lack of subject matter jurisdiction pursuant to Rule 13 12(b)(1) of the Federal Rules of Civil Procedure. Whereas lack of statutory standing requires 14 dismissal for failure to state a claim under Rule 12(b)(6), lack of Article III standing requires 15 dismissal for want of subject matter jurisdiction under Rule 12(b)(1). See Maya v. Centex Corp., — 16 — 658 F.3d 1060, 1067 (9th Cir. 2011). 17 “A Rule 12(b)(1) jurisdictional attack may be facial or factual.” Safe Air for Everyone v. 18 Meyer, 373 F.3d 1035, 1039 (9th Cir. 2004). “In a facial attack, the challenger asserts that the 19 allegations contained in a complaint are insufficient on their face to invoke federal jurisdiction.” — 20 — Id. The Court “resolves a facial attack as it would a motion to dismiss under Rule 12(b)(6): 21 Accepting the plaintiff's allegations as true and drawing all reasonable inferences in the plaintiff's 22 favor, the court determines whether the allegations are sufficient as a legal matter to invoke the 23 court’s jurisdiction.” Leite v. Crane Co., 749 F.3d 1117, 1121 (9th Cir. 2014). “[I]n a factual 24 attack,” on the other hand, “the challenger disputes the truth of the allegations that, by themselves, 25 would otherwise invoke federal jurisdiction.” Safe Air for Everyone, 373 F.3d at 1039 . “In 26 resolving a factual attack on jurisdiction,” the Court “may review evidence beyond the complaint 27 without converting the motion to dismiss into a motion for summary judgment.” Id. The Court 1 “need not presume the truthfulness of the plaintiff’s allegations” in deciding a factual attack. Id. 2 Once the defendant has moved to dismiss for lack of subject matter jurisdiction under Rule 3 12(b)(1), the plaintiff bears the burden of establishing the Court's jurisdiction. See Chandler v. 4 State Farm Mut. Auto Ins. Co., 598 F.3d 1115, 1122 (9th Cir. 2010). 5 B. Motion to Dismiss Under Rule 12(b)(2) 6 In a motion challenging personal jurisdiction under Federal Rule of Civil Procedure 7 12(b)(2), the plaintiff, as the party seeking to invoke the jurisdiction of the federal court, has the 8 burden of establishing that jurisdiction exists. See In re Boon Global Ltd., 923 F.3d 643, 650 (9th 9 Cir. 2019). “Where, as here, the defendant’s motion is based on written materials rather than an 10 evidentiary hearing, ‘the plaintiff need only make a prima facie showing of jurisdictional facts to 11 withstand the motion to dismiss.’” Ranza v. Nike, Inc., 793 F.3d 1059, 1068 (9th Cir. 2015) 12 (quoting CollegeSource, Inc. v. AcademyOne, Inc., 653 F.3d 1066, 1073 (9th Cir. 2011)). 13 However, this standard “is not toothless,” and the party asserting jurisdiction “cannot 14 simply rest on the bare allegations of its complaint.” In re Boon Global Ltd., 923 F.3d at 650 15 (quoting Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800 (9th Cir. 2004)). Thus, 16 courts may consider declarations and other evidence outside the pleadings to determine whether it 17 has personal jurisdiction. See id. At this stage of the proceeding, “uncontroverted allegations in 18 plaintiff’s complaint must be taken as true, and ‘[c]onflicts between parties over statements 19 contained in affidavits must be resolved in the plaintiff’s favor.’” Id. (quoting Schwarzenegger, — 20 — 374 F.3d at 800 ). On the other hand, courts “may not assume the truth of allegations in a pleading 21 which are contradicted by affidavit.” Mavrix Photo, Inc. v. Brand Techs., Inc., 647 F.3d 1218 , 22 1223 (9th Cir. 2011). 23 C. Motion to Dismiss Under Rule 12(b)(3) 24 Under Federal Rule of Civil Procedure 12(b)(3), a defendant may move to dismiss a 25 complaint for improper venue. Once the defendant has challenged the propriety of venue in a 26 given court, the plaintiff bears the burden of showing that venue is proper. Piedmont Label Co. v. 27 Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). When considering a motion to 1 dismiss for improper venue, a court may consider facts outside of the pleadings. Murphy v. 2 Schneider National, Inc., 362 F.3d 1133, 1138 (9th Cir. 2004). 3 Pursuant to 28 U.S.C. § 1406 (a), if the court determines that venue is improper, the court 4 must either dismiss the action or, if it is in the interests of justice, transfer the case to a district or 5 division in which it could have been brought. Whether to dismiss for improper venue, or 6 alternatively to transfer venue to a proper court, is a matter within the sound discretion of the 7 district court. See King v. Russell, 963 F.2d 1301, 1304 (9th Cir. 1992). 8 D. Leave to Amend 9 If the Court determines that a complaint should be dismissed, it must then decide whether 10 to grant leave to amend. Under Rule 15(a) of the Federal Rules of Civil Procedure, leave to 11 amend “shall be freely given when justice so requires,” bearing in mind “the underlying purpose 12 of Rule 15 to facilitate decisions on the merits, rather than on the pleadings or technicalities.” 13 Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000) (en banc) (alterations and internal quotation 14 marks omitted). When dismissing a complaint for failure to state a claim, “a district court should 15 grant leave to amend even if no request to amend the pleading was made, unless it determines that 16 the pleading could not possibly be cured by the allegation of other facts.” Id. at 1130 (internal 17 quotation marks omitted). Accordingly, leave to amend generally shall be denied only if allowing 18 amendment would unduly prejudice the opposing party, cause undue delay, or be futile, or if the 19 moving party has acted in bad faith. Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522 , 532 20 (9th Cir. 2008). 21 III. DISCUSSION 22 Defendant moves to dismiss Twitter’s declaratory judgment action on three grounds. First, 23 Defendant argues that the Court lacks subject matter jurisdiction over Twitter’s action. Mot. at 8– 24 13. Second, Defendant argues that the Court lacks personal jurisdiction over Defendant. Id. at 25 13–19. Third, Defendant argues that the Northern District of California is not a proper venue for 26 the action. Id. at 19–20. The Court addresses each argument in turn. 27 A. The Court Has Subject Matter Jurisdiction Over the Instant Case 1 Defendant argues that the Court lacks subject matter jurisdiction because Twitter has not 2 plausibly alleged that there is an “actual controversy” between the parties sufficient to establish 3 jurisdiction under the Declaratory Judgment Act. Mot. at 8. For the reasons below, the Court 4 rejects Defendant’s argument. 5 In general, whether a court has subject matter jurisdiction “is a procedural question not 6 unique to patent law” and thus is governed by regional circuit law. Toxgon Corp. v. BNFL, Inc., — 7 — 312 F.3d 1379, 1380 (Fed. Cir. 2002). However, “[w]hether an actual case or controversy exists 8 so that a district court may entertain an action for declaratory judgment of non-infringement and/or 9 invalidity is governed by Federal Circuit law.” 3M Co v. Avery Dennison Corp., 673 F.3d 1372 , 10 1377 (Fed. Cir. 2012). 11 The Declaratory Judgment Act provides that, “[i]n the case of actual controversy within its 12 jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may 13 declare the rights and other legal relations of any interested party in seeking such declaration.” 28 14 U.S.C. § 2201 (a). “[T]he phrase ‘case of actual controversy’ in the Act refers to the type of 15 ‘Cases’ and ‘Controversies’ that are justiciable under Article III.” MedImmune, Inc. v. Genentech, 16 Inc., 549 U.S. 118, 127 (2007). Thus, to bring a claim under the Declaratory Judgment Act, a 17 plaintiff must establish that there is a live case or controversy between the parties. ActiveVideo 18 Networks, Inc. v. TransVideo Elecs., Ltd., 975 F. Supp. 2d 1083, 1086 (N.D. Cal. 2013). 19 To satisfy this requirement, Twitter must show that Defendant has taken affirmative acts 20 which indicate Defendant’s intent to enforce the ’827 patent against Twitter. In general, a plaintiff 21 satisfies the case or controversy requirement if “the facts alleged, under all the circumstances, 22 show that there is a substantial controversy, between parties having adverse legal interests, of 23 sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, — 24 — 549 U.S. at 127 . The Federal Circuit has explained that, in the context of an action seeking a 25 declaration of patent rights, a plaintiff meets the MedImmune standard if the plaintiff plausibly 26 alleges “both (1) an affirmative act by the patentee related to the enforcement of his patent rights 27 and (2) meaningful preparation to conduct potentially infringing activity.” Assoc. for Molecular 1 Pathology, 689 F.3d at 1318. In the instant case, “there is no dispute as to the second factor 2 because Twitter’s products and services at issue are already used in the marketplace.” Opp. at 6. 3 This test gives the Court a significant amount of discretion and allows the Court to look at 4 a variety of factors. Because the Court must evaluate “all the circumstances,” the Court has 5 “unique and substantial discretion in deciding whether to declare the rights of litigants.” 6 MedImmune, 549 U.S. at 136 . Indeed, although “more is required than ‘a communication from a 7 patent owner to another party, merely identifying its patent and the other’s product line,” “[h]ow 8 much more is required is determined on a case-by-case analysis.” 3M, 673 F.3d at 1378–79. In 9 recognition of this broad, case-by-case approach, courts in the Northern District of California have 10 previously stated that there are at least thirteen factors which can be relevant: (1) the strength of 11 threatening language in communications between the parties; (2) the depth and extent of 12 infringement analysis conducted by the patent holder; (3) whether the patent holder imposed a 13 deadline to respond; (4) any prior litigation between the parties; (5) the patent holder’s history of 14 enforcing the patent at issue; (6) whether the patent holder’s threats have induced the alleged 15 infringer to change its behavior; (7) the number of times the patent holder has contacted the 16 alleged infringer; (8) whether the patent holder is a holding company with no income other than 17 enforcing patent rights; (9) whether the patent holder refused to give assurance it will not enforce 18 the patent; (10) whether the patent holder has identified a specific patent and specific infringing 19 products; (11) the extent of the patent holder’s familiarity with the product prior to suit; (12) the 20 length of time that transpired after the patent holder asserted infringement; and (13) whether 21 communications initiated by the plaintiff appear as an attempt to create a controversy. 22 ActiveVideo, 975 F. Supp. 2d at 1087–88 (citing Cepheid v. Roche Molecular Systems, Inc., Case 23 No C-12-4411 EMC, 2013 WL 184125 , at *6 (N.D. Cal. Jan. 17, 2013)). 24 Despite the wide variety of factors that may be relevant, the Federal Circuit has held that, if 25 the defendant previously has asserted patents against the plaintiff, the plaintiff typically may seek 26 a declaration regarding related patents. In Arkema Inc. v. Honeywell Intern., Inc., 706 F.3d 1351 27 (2013), the Federal Circuit considered whether Arkema Inc. could seek a declaratory judgment 1 that a certain product did not infringe two U.S. patents owned by Honeywell International, Inc. Id. 2 at 1354. Before Arkema had filed its declaratory judgment action, Honeywell had asserted two 3 related U.S. patents and a European patent covering similar technologies against Arkema’s sale of 4 the product in question. Id. at 1355 . The Federal Circuit held that the case presented a 5 “quintessential example of a situation in which declaratory relief is warranted” because 6 Honeywell’s previous assertion of related patents “made it clear that [Honeywell] will protect its 7 patent rights against” Arkema’s sale of the product. Id. at 1357 . In a subsequent case, the Federal 8 Circuit reiterated that “a history of patent litigation between the same parties involving related 9 technologies, products, and patents is another circumstance to be considered, which may weigh in 10 favor of the existence of subject matter jurisdiction.” Danisco U.S. Inc. v. Novozymes A/S, 744 11 F.3d 1325 (Fed. Cir. 2014). 12 Given this precedent, Defendant’s previous actions asserting the ’815 and ’005 patents 13 against Twitter strongly support Twitter’s claim that there is an active controversy regarding the 14 ’872 patent. The ’872 patent is a direct descendant of the ’815 and ’005 patents. The three patents 15 have the same title, identical figures, nearly identical specifications, and similar claims. In 2016, 16 Defendant filed an action against Twitter alleging that the same Twitter products that are the 17 subject of the instant case infringed the ’815 and ’005 patents. See VoIP-Pal.Com, 375 F. Supp. 18 3d at 1121–22; Compl. ¶ 21. Defendant pursued those infringement claims until May 2020, at 19 which point the Federal Circuit rejected Defendant’s request to have the en banc Federal Circuit 20 adjudicate the validity of the ’815 and ’005 patents. VoIP-Pal.Com, Inc. v. Twitter, Case No. 1921 1808, ECF No. 99 (Fed. Cir. May 18, 2020). Indeed, a month before the Federal Circuit denied 22 Defendant’s en banc petition, Defendant stated in a press release that it was “undeterred in [its] 23 fight to assert [its] intellectual property rights” and that Defendant “remain[ed] firm in [its] resolve 24 to achieve monetization for [its] shareholders.” ECF No. 1-4 at 2–3. By aggressively asserting 25 patents against the Twitter products that are the subject of the instant case, Defendant “made it 26 clear that it will protect its patent rights against” those products. Arkema, 706 F.3d at 1357 . 27 Accordingly, as the Court explained with respect to Twitter’s similar action regarding the ’606 1 patent, “Defendant’s prior litigation weighs heavily in favor of a finding that Defendant has 2 engaged in an affirmative act related to the enforcement of its patent rights.” Twitter, 2020 WL 3 7342733, at *7. 4 The Court is not convinced by Defendant’s argument that Defendant’s previous actions 5 against Twitter happened too long ago to be relevant. Defendant contends that, because Defendant 6 “has not sued Twitter in five years and that action closed over two years ago,” any prior litigation 7 between the parties is too old to create an actual controversy with respect to the ’872 patent. Mot. 8 at 9–10 (emphasis in original). The premise of Defendant’s argument is not accurate. As 9 discussed, Defendant’s previous action against Twitter did not terminate until May 2020, when the 10 Federal Circuit rejected Defendant’s petition for en banc rehearing. See VoIP-Pal.Com, Inc. v. 11 Twitter, Case No. 19-1808, ECF No. 99 (Fed. Cir. May 18, 2020). Moreover, although the Court 12 agrees that Twitter’s claim would be stronger if Defendant’s actions against Twitter still were 13 pending, Defendant has provided no authority which suggests that the Court cannot take those 14 actions into account. Indeed, the relevant authority suggests the opposite. The Federal Circuit has 15 explained that the “history of patent litigation between the same parties” supports declaratory 16 judgment jurisdiction. Danisco, 744 F.3d at 1331 (emphasis added). Similarly, other courts in the 17 Northern District of California have stated that “prior litigation between the parties” supports 18 jurisdiction. ActiveVideo, 975 F. Supp. 2d at 1087–88 (emphasis added). Given these clear 19 statements about the relevance of “histor[ic]” and “prior” litigation, the termination of Defendant’s 20 previous actions asserting the ’005 and ’815 patents against Twitter does not make those actions 21 less relevant. 22 Additionally, Defendant’s recent actions against other telecommunications and internet 23 companies, some of which remain pending, bolster Twitter’s claim. The ’872 patent is directly 24 related to the ’762, ’330, ’002, ’549, and ’606 patents. Those six patents have the same title, 25 identical figures, nearly identical specifications, and similar claims. In 2018, Defendant asserted 26 claims of the ’762, ’330, ’002, and ’549 patents against Amazon and Apple. See VoIP-Pal.Com, 27 Inc. v. Apple Inc., 411 F. Supp. 3d 926 , 934 (N.D. Cal. 2019). After this Court concluded that the 1 asserted claims were unpatentable, Defendant appealed to the Federal Circuit. VoIP-Pal.Com, Inc. 2 v. Apple, Inc., 828 F. App’x 717 , 717 (Fed. Cir. 2020). On November 3, 2020, the Federal Circuit 3 affirmed this Court’s decision. Id. Undeterred, Defendant litigated the patentability of those 4 claims all the way to the United States Supreme Court. See VoIP-Pal.com, Inc. v. Apple, Inc., 5 Case No. 20-1809 (U.S. Oct. 4, 2021). It was not until October 4, 2021 that the Supreme Court 6 denied Defendant’s petition for a writ of certiorari and terminated Defendant’s actions asserting 7 the ’762, ’330, ’002, and ’549 patents. See id., 2021 WL 4507874 , at *1. 8 Meanwhile, in April 2020, Defendant asserted the ’606 patent against Apple, AT&T, 9 Verizon, Amazon, Facebook, and Google. See VoIP-Pal.Com, Inc. v. Apple Inc., Case No. 2010 CV-00275-ADA, ECF No. 1 (W.D. Tex. Apr. 7, 2020); VoIP-Pal.Com, Inc. v. AT&T Inc., Case 11 No. 20-CV-00325-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP-Pal.Com, Inc. v. Verizon 12 Comms., Inc., Case No. 20-CV-00327-ADA, ECF No. 1 (W.D. Tex. Apr. 24, 2020); VoIP13 Pal.Com, Inc. v. Amazon.Com, Inc.., Case No. 20-CV-00272-ADA, ECF No. 1 (W.D. Tex. Apr. 6, 14 2020); VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 1 (W.D. 15 Tex. Apr. 2, 2020); VoIP-Pal.Com, Inc. v. Google LLC, Case No. 20-CV-00269-ADA, ECF No. 1 16 (W.D. Tex. Apr. 3, 2020). Defendant’s actions against Amazon, Facebook, and Google remain 17 pending. VoIP-Pal.Com, Inc. v. Facebook, Inc., Case No. 20-CV-00267-ADA, ECF No. 49 18 (W.D. Tex. Sept. 29, 2021). 19 Although the Court does not find Defendant’s 2018 and 2020 actions against other 20 telecommunications and internet companies sufficient to demonstrate a live controversy between 21 Defendant and Twitter on their own, these actions show that Defendant has repeatedly, 22 aggressively, and recently enforced the patent family to which the ’872 patent belongs. All these 23 actions were pending when Twitter filed its Complaint in the instant case and three of these 24 actions are still pending. Accordingly, these actions bolster Twitter’s claim that there is a 25 substantial risk Defendant will enforce the ’872 patent against Twitter in the future. 26 Finally, although Defendant relies heavily on the Federal Circuit’s decision in Cisco Sys., 27 Inc. v. Alberta Telecommunications Rsch. Ctr, 538 Fed. Appx. 894 (Fed. Cir. 2013), that decision 1 does not provide Defendant with any support. Defendant points out that Defendant “has not 2 accused Twitter of infringing the ’872 patent and . . has not refused to grant Twitter a covenant 3 not to sue on the ’872 patent.” Reply at 3–4. Citing Cisco, Defendant contends that the “Federal 4 Circuit has recognized that both of these facts distinguish the instant circumstances from Arkema.” 5 Reply at 4. However, in Cisco, the defendant’s counsel expressly stated that the defendant had 6 “no basis for suing [the plaintiff] either for direct or indirect infringement.” Cisco, 538 Fed. 7 Appx. at 897. Additionally, the defendant “ha[d] expressly offered to give [the plaintiff] a 8 covenant not to sue.” Id. at 898. In the instant case, Defendant has neither stated that Twitter does 9 not infringe the ’872 patent nor offered Twitter a covenant not to sue on the ’872 patent. The mere 10 fact that Defendant has neither affirmatively accused Twitter of infringement nor refused Twitter’s 11 request for a covenant not to sue does not divest the Court of jurisdiction over Twitter’s action. 12 Assessing “all the circumstances,” the Court concludes that Defendant has engaged in 13 affirmative acts which indicate Defendant’s intent to enforce the ’827 patent against Twitter. See 14 Monolithic Power Sys., No. C 07-2363 CW, 2007 WL 2318924 , at *3 (N.D. Cal. Aug. 13, 2007) 15 (“[T]he assertion of rights, evidenced through a prior lawsuit between the same parties regarding 16 the same technology . . . and solidified through the express press release statement indicating an 17 intent to sue alleged patent infringers, presents enough evidence to establish the case or 18 controversy required for declaratory judgment jurisdiction.”). Thus, the Court has subject matter 19 jurisdiction over Twitter’s action seeking a declaratory judgment that the ’827 patent is not 20 infringed by Twitter’s products. 21 B. The Court Has Specific Personal Jurisdiction Over Defendant 22 Defendant argues that the Court lacks personal jurisdiction because Defendant has never 23 enforced the ’872 patent in California, Mot. at 14–17, and because Twitter’s claim does not arise 24 out of Defendant’s contacts with California, id. at 17–18. Additionally, Defendant argues that 25 asserting personal jurisdiction is “not reasonable and fair.” Id. at 18–19. For the reasons below, 26 the Court rejects these arguments. 27 Because the issue of personal jurisdiction in a patent action “is ‘intimately involved with 1 the substance of the patent laws,’” the Court applies Federal Circuit law to assess Defendant’s 2 arguments. Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1328 (Fed. Cir. 2008) 3 (quoting Akro Corp. v. Luker, 45 F.3d 1541, 1543 (Fed. Cir. 1995)). 4 “Determining whether personal jurisdiction exists over an out-of-state defendant involves 5 two inquiries: whether a forum state’s long-arm statute permits service of process, and whether the 6 assertion of personal jurisdiction would violate due process.” Avocent, 552 F.3d at 1329 (quoting 7 Inamed Corp. v. Kuzmak, 249 F.3d 1356, 1359 (Fed. Cir. 2001)). However, because “California’s 8 long-arm statute . . . is coextensive with federal due process requirements, . . . the jurisdictional 9 analyses under state law and federal due process are the same.” Mavrix Photo, Inc. v. Brand 10 Techs., Inc., 647 F.3d 1218, 1223 (9th Cir. 2011); see also Cal. Civ. Proc. Code § 410.10 (“[A] 11 court of this state may exercise jurisdiction on any basis not inconsistent with the Constitution of 12 this state or of the United States.”). For a court to exercise personal jurisdiction over a defendant 13 consistent with due process, that defendant must have “certain minimum contacts” with the 14 relevant forum “such that the maintenance of the suit does not offend ‘traditional notions of fair 15 play and substantial justice.’” Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (quoting 16 Milliken v. Meyer, 311 U.S. 457, 463 (1940)). 17 A court may exercise either general or specific jurisdiction over a defendant. Avocent., — 18 — 552 F.3d at 1330 . “To be subject to general jurisdiction, a defendant business entity must 19 maintain ‘continuous and systematic general business contacts’ with the forum, even when the 20 cause of action has no relation to those contacts.” Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. 21 de Equip. Medico, 563 F.3d 1285, 1297 (Fed. Cir. 2009) (quotation omitted). By contrast, specific 22 jurisdiction is appropriate when a suit “aris[es] out of or relate[s] to the defendant’s contacts with 23 the forum.” Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408 , 414 n. 8 (1984). 24 To determine whether a court can exercise specific jurisdiction consistent with due process, the 25 court must consider: “(1) whether the defendant ‘purposefully directed’ its activities at residents of 26 the forum; (2) whether the claim ‘arises out of or relates to’ the defendant’s activities with the 27 forum; and (3) whether assertion of personal jurisdiction is ‘reasonable and fair.’” Xilinx, Inc. v. 1 Papst Licensing GmbH & Co. KG, 848 F.3d 1346, 1353 (Fed. Cir. 2017) (quoting Inamed Corp. v. 2 Kuzmak, 249 F.3d 1356, 1360 (Fed. Cir. 2001)). “The first two factors correspond with the 3 minimum contacts prong of the [International Shoe] analysis, and the third factor corresponds with 4 the ‘fair play and substantial justice’ prong of the analysis.” Inamed, 249 F.3d at 1360 . 5 Twitter alleges that the Court has specific jurisdiction over Defendant. Compl. ¶ 22. Thus, 6 the Court first considers whether Twitter has adequately alleged that Defendant “purposefully 7 directed” activities at California and whether Twitter’s claim arises out of those activities. The 8 Court then assesses whether personal jurisdiction is “reasonable and fair.” 9 1. Defendant Has Purposefully Directed Patent Enforcement Activities at California Residents and Twitter’s Claim Arises Out of Those Activities — 10 — The Court first must determine whether Defendant has “purposefully directed” activities at — 11 — California and whether Twitter’s claim “arises out of or relates to” those activities. Xilinx, 848 — 12 — F.3d at 1353. The burden of establishing these factors is on Twitter. Elecs. for Imaging v. Coyle, — 13 — 340 F.3d 1344, 1350 (Fed. Cir. 2003). — 14 — Because Twitter’s declaratory judgment action “arises out of or relates to the activities of — 15 — [Defendant] in enforcing the patent . . . in suit,” “the relevant inquiry for specific personal — 16 — jurisdiction” is “to what extent [Defendant] ‘purposefully directed [such enforcement activities] at — 17 — residents of the forum,’ and the extent to which the declaratory judgment claim ‘arises out of or — 18 — relates to those activities.’” Avocent, 552 F.3d at 1332 (quoting Breckenridge Pharm., Inc. v. — 19 — Metabolite Labs, 444 F.3d 1356, 1363 (Fed. Cir. 2006)). “A declaratory judgment claim arises out — 20 — of the patentee’s contacts with the forum state only if those contacts ‘relate in some material way — 21 — to the enforcement or the defense of the patent.’” Maxchief Invs. Ltd. v. Wok & Pan, Ind., Inc., — 22 — 909 F.3d 1134, 1138 (Fed. Cir. 2018) (quoting Avocent, 552 F.3d at 1336 ). — 23 — A defendant’s previous assertion of patents in the forum easily qualifies as an enforcement — 24 — activity that is “purposefully directed” at the forum. See ActiveVideo, 975 F. Supp. 2d at 1097–98 — 25 — (holding that the defendant was subject to personal jurisdiction because the “defendant ha[d] — 26 — engaged in judicial patent enforcement (with respect to the patents at issue or a related patent)” in — 27 — 1 the forum); see also Avocent, 552 F.3d at 1338–39 (noting that a lawsuit in the same forum on the 2 same patent “is a significant contact with the forum materially related to the enforcement of the 3 relevant patent”). For example, in ActiveVideo, another court in the Northern District of 4 California determined that a defendant had purposefully directed enforcement activities at the 5 forum by litigating six cases in the Northern District of California “regarding the very same or 6 related patents.” 975 F. Supp. 2d at 1096–97. Courts outside the Ninth Circuit have reached 7 similar results. See, e.g., Pro Sports Inc. v. West, 639 F. Supp. 2d 475, 481 (D.N.J. 2009) (finding 8 that a defendant had purposefully directed patent enforcement activities at the forum by bringing 9 patent infringement actions against other parties in the forum); Neuralstem, Inc. v. StemCells, Inc., — 10 — 573 F. Supp. 2d 888, 898 (D. Md. 2008) (concluding that the court had personal jurisdiction over a 11 defendant who had filed “a prior suit against [in the district] with respect to related patents”). 12 Thus, Twitter’s allegations that Defendant has asserted patents related to the ’872 patent in 13 this Court establish that Defendant has purposefully directed patent enforcement activities at the 14 forum. Specifically, Twitter alleges that Defendant previously asserted the ’815 and ’005 patents 15 against Twitter in this Court and that Defendant voluntarily transferred actions asserting the ’815, 16 ’005, ’762, ’330, ’002, and ’549 patents against Apple, AT&T, Verizon, and Amazon to this 17 Court. Compl. ¶ 22; see also VoIP-Pal.Com, 375 F. Supp. 3d at 1121–22 (describing Defendant’s 18 actions asserting the ’815 and ’005 patents in this Court); VoIP-Pal.Com, 411 F. Supp. at 934 19 (N.D. Cal. 2019) (describing Defendant’s actions asserting the ’762, ’330, ’002, and ’549 patents 20 in this Court). Under the relevant precedent, these allegations are more than sufficient to show 21 that Defendant directed patent enforcement activities at the forum. 22 Although Defendant contends that these actions are irrelevant because Defendant 23 originally filed them in Nevada, the Court previously has rejected this argument. Defendant 24 contends that Defendant “never purposely directed its activities to this forum because [Defendant] 25 filed the 2016/2018 cases in the District of Nevada, not in the NDCAL.” Mot. at 15. However, as 26 the Court previously explained, Defendant purposefully availed itself of California’s judicial 27 resources by “stipulat[ing] to transfer its infringement lawsuits against Apple, Verizon, and AT&T 1 to this district.” Apple, 506 F. Supp. 3d at 963. For purposes of personal jurisdiction, voluntarily 2 transferring an action to a court is no different than filing the action in the court to begin with. Id. 3 Moreover, Defendant “purposefully availed itself of the courts in California because Defendant 4 continued to prosecute its lawsuits in this district.” Id. Because Defendant has provided no reason 5 for the Court to revisit this decision, the Court declines to do so. 6 Indeed, the Federal Circuit endorsed the reasoning behind this Court’s previous decision. 7 In In re VoIP-Pal.Com, Inc., 845 Fed. Appx. 940 , 942 (Fed. Cir. 2021), the Federal Circuit 8 considered whether this Court erred by refusing to dismiss Apple’s, Verizon’s, and AT&T’s 9 actions against Defendant in the Northern District of California based on the “first-to-file rule.” 10 The Federal Circuit affirmed this Court’s decision to retain jurisdiction over those actions and 11 expressly noted that “the conclusion that it would be far less efficient for the Western District of 12 Texas to resolve these cases based on the Northern District of California's familiarity with the 13 overlapping issues is particularly well supported.” Id. Thus, the Federal Circuit agreed with this 14 Court’s conclusion that Defendant’s prior patent actions in this district created a substantial 15 connection with this district. 16 Two additional contacts with California bolster Plaintiff’s claim that Defendant has 17 directed patent enforcement activities at the forum. “As the Supreme Court has explained, 18 ‘physical entry into the State—either by the defendant in person or through an agent, goods, mail, 19 or some other means—is certainly a relevant contact.” Xilinx, 848 F.3d at 1354 (quoting Walden 20 v. Fiore, 571 U.S. 277, 285 (2014)); see also Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de 21 Equip. Medico, 563 F.3d 1285 , 1297–98 (Fed. Cir. 2009) (concluding that a defendant’s 22 representatives’ entrance into the forum to attend a trade show with products that allegedly 23 infringed the plaintiff’s patents constituted a relevant contact for the purposes of personal 24 jurisdiction). Twitter alleges that Defendant has employed at least two agents who have worked in 25 this district to enforce Defendant’s patents. First, Twitter points out that Defendant has retained a 26 law firm located in Mountain View, California to litigate all of Defendant’s patent cases, including 27 the cases in this district. Compl. ¶ 22. Second, Twitter alleges that, “on or about April 20, 2016, 1 [Defendant’s] representative Ray Leon met with representatives of Apple in the Northern District 2 of California in connection with [Defendant’s] patent enforcement campaign.” Id. Although the 3 Court does not find these contacts sufficient to create personal jurisdiction over Defendant on their 4 own, these contacts bolster the contacts created by Defendant’s ten patent infringement actions in 5 this Court. 6 Having determined that Defendant has purposefully directed patent enforcement activities 7 at the forum, there is no question that Twitter’s claim arises out of these activities. The primary 8 basis for Twitter’s claim that the Court has subject matter jurisdiction over the instant case is 9 Defendant’s action asserting the ’815 and ’005 patents against Twitter in this Court. See Compl. 10 ¶ 22; pp. XX, supra. Similarly, although Defendant’s actions in this Court asserting the ’762, 11 ’330, ’002, and ’549 patents do not create subject matter jurisdiction on their own, these actions 12 bolster Twitter’s claim that there is an actual controversy between the parties. See pp. XX, supra. 13 Accordingly, Twitter’s claim arises directly out of Defendant’s patent enforcement activities in 14 this District. See ActiveVideo, 975 F. Supp. 2d at 1097–98 (concluding that there was personal 15 jurisdiction over the defendant based on the defendant's previous infringement lawsuits in the 16 district with respect to the patents at issue or a related patent). 17 Thus, the Court concludes that Defendant has purposefully directed patent enforcement 18 activities at the forum and that Twitter’s claim arises out of those activities. 19 2. Asserting Personal Jurisdiction over Defendant is Reasonable and Fair 20 The Court also must determine whether asserting personal jurisdiction over Defendant is 21 “reasonable and fair.” Xilinx, 848 F.3d at 1353 . The burden of establishing that jurisdiction is not 22 reasonable and fair is on Defendant, who must “present a compelling case that the presence of 23 some other considerations would render jurisdiction unreasonable under the five-factor test 24 articulated by the Supreme Court in Burger King [Corporation v. Rudewicz, 471 U.S. 462 , 475–77 25 (1985)].” Breckenridge, 444 F.3d 1356, 1363 (Fed. Cir. 2006). The five factors outlined in 26 Burger King are: (1) the burden on the defendant; (2) the forum State’s interest in adjudicating the 27 dispute; (3) the plaintiff’s interest in obtaining convenient and effective relief; (4) the interstate 1 judicial system’s interest in obtaining the most efficient resolution; and (5) the shared interest of 2 the several States in furthering fundamental substantive social policies. Avocent, 552 F.3d at 1331 3 (citing Burger King, 471 U.S. at 475–77). The Court addresses each factor in turn. 4 First, litigating in this District imposes a minimal burden on Defendant. The Federal 5 Circuit has explained that a defendant’s previous lawsuits in a forum demonstrate that litigating in 6 that forum does not place an undue burden on the defendant. See Xilinx, 848 F.3d at 1357–58 7 (explaining that “[t]he lack of significant burden on [the defendant] is also evidenced by [the 8 defendant’s] prior litigations in California itself,” including seven patent infringement lawsuits 9 there); Acorda Therapeutics Inc. v. Mylan Pharma. Inc, 817 F.3d 755, 764 (Fed. Cir. 2016) 10 (concluding that the burden on defendant “will be at most modest, as [the defendant] . . . has 11 litigated many . . . lawsuits” in the forum); Viam Corp. v. Iowa Exp.-Imp. Trading Co., 84 F.3d 12 424 , (Fed. Cir. 1996) (concluding that litigation in California was not unduly burdensome because 13 the defendant had filed previous lawsuits in California). Thus, because Defendant has litigated at 14 least ten cases in this district related to the relevant family of patents, litigating the instant case in 15 this district will not impose an undue burden on Defendant. 16 Second, California has an interest in having California courts adjudicate this dispute. In 17 general, “California has a substantial interest in protecting its residents from unwarranted claims 18 of patent infringement.” Elecs. for Imaging, 340 F.3d at 1352 . Thus, because Twitter has its 19 principal place of business in California, Compl. ¶ 14, California has an interest in having 20 California courts adjudicate the instant case. 21 Third, litigating the instant case in California will further Twitter’s interest in obtaining 22 convenient and effective relief. Plaintiff, which has its principal place of business in California, 23 Compl. ¶ 14, “indisputably has an interest in protecting itself from patent infringement by 24 obtaining relief ‘from a nearby federal court’ in its home forum.” Xilinx, 848 F.3d at 1356 . 25 Fourth, litigating the instant case in this Court will allow for the most efficient resolution 26 of the parties’ dispute. This Court already has issued substantive decisions in six cases alleging 27 infringement of Defendant’s related patents, all of which were affirmed by the Federal Circuit. See 1 VoIP-Pal.Com, 375 F. Supp. 3d at 1110 , aff'd, 798 F. App’x at 645; VoIP-Pal.Com, Inc, 411 F. 2 || Supp. 3d at 926, aff'd, 828 F. App’x at 717. 3 Finally, “[t]here does not appear to be any conflict between the interests of California and 4 || any other state, because ‘the same body of federal patent law would govern the patent invalidity 5 claim irrespective of the forum.’” Xilinx, 848 F.3d at 1356 (quoting Elecs. for Imaging, 340 F.3d 6 || at 1352). Thus, the fifth factor does not weigh against a finding of personal jurisdiction. 7 In sum, Defendant has “failed to convince [this Court] that this is one of the ‘rare’ 8 situations in which sufficient minimum contacts exist but where the exercise of jurisdiction would 9 || be unreasonable.” Elecs for Imaging, 340 F.3d at 1352 . Accordingly, the Court concludes that it 10 || has personal jurisdiction over Defendant. 11 C. Venue Is Proper in the Instant Case 12 Finally, Defendant argues that venue is improper. Mot. at 19. However, under the general 13 || federal venue statute, which governs actions for declaratory judgments of noninfringement, venue 14 || is proper in any judicial district where a defendant resides. Id. § 1391(b)(1). A corporate 3 15 defendant “reside[s] . . . in any judicial district in which such defendant is subject to the court’s a 16 || personal jurisdiction with respect to the civil action in question.” Id. § 1391(c)(2). Moreover, 3 17 Twitter’s principal place of business is in California and specifically in this district. Compl. 14. 18 Thus, because the Court has personal jurisdiction over Defendant in the instant case, venue is 19 || proper in this district. 20 || IV. CONCLUSION 21 For the foregoing reasons, the Court DENIES Defendant’s motion to dismiss Twitter’s 22 || complaint. 23 || ITISSO ORDERED. — 24 — 25 Dated: November 2, 2021 fue He. oh LUCY MH. KOH 27 United States District Judge 28 25 Case No. 21-CV-02769-LHK