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

Background

Twitter, Apple, AT&T Corp., AT&T Services, Inc., AT&T Mobility LLC, and Cellco Partnership d/b/a Verizon Wireless were plaintiffs in four related cases against Voip-Pal.com, Inc. The cases sought declarations that Voip-Pal’s U.S. Patent Nos. 10,218,606 and 9,935,872 were not infringed or were invalid. The patents concern routing internet-protocol-based communications. The parties proposed using the same protective order in all four cases.

Most terms were agreed. The remaining disputes involved: (1) the subject matter covered by a patent-prosecution bar; (2) whether Voip-Pal’s patent-prosecution counsel could receive plaintiffs’ nonpublic prior art; and (3) storage of protected information outside the United States and access by Voip-Pal representatives who might be Canadian or reside in Canada. The court resolved the dispute without a hearing.

Prosecution bar

A prosecution bar restricts certain patent-prosecution activities by people who receive specified confidential litigation information. The parties agreed that the bar would apply to information marked “Confidential Outside Counsel Only” or “Restricted Confidential – Source Code,” but disagreed about its scope. Plaintiffs proposed a broad description concerning routing communications over networks and managing user identities and contacts. Voip-Pal proposed a narrower description tied to particular call-classification and routing methods.

The court concluded that plaintiffs’ proposal was too broad and Voip-Pal’s was too narrow. It suggested covering methods, systems, processes, or apparatuses that facilitate communications across or between internet-protocol-based communication systems or networks and use user-specific attributes of the initiating or receiving party to classify or route communications across private networks or between private and public networks. The court directed the parties to file a further joint submission, with no more than 600 words per side, if they could not agree to that language. The court set November 13, 2020, as the deadline for the further submission.

Access to nonpublic prior art

Voip-Pal requested an exception allowing its patent-prosecution counsel, despite the prosecution bar, to receive plaintiffs’ nonpublic prior art. Voip-Pal argued that this access could be necessary to satisfy its duty to disclose information material to patentability to the U.S. Patent and Trademark Office. Plaintiffs argued that the requested patent-prosecution activities were competitive decisionmaking and created a risk that confidential information could be used or disclosed.

The court agreed with plaintiffs that the contemplated activities were competitive decisionmaking and found a risk of deliberate use or disclosure because Voip-Pal sought to provide the information to counsel so counsel could disclose it to the Patent and Trademark Office if material to patentability. The court also recognized that Voip-Pal still had a duty to disclose material information, even when the information was covered by a protective order, and that a redacted submission might sometimes address the problem.

The court declined to adopt Voip-Pal’s proposed blanket exception. It adopted plaintiffs’ proposed language for the relevant provision, with a clarification that the prosecution bar applies only to prior art designated “Confidential Outside Counsel Only” or “Restricted Confidential – Source Code,” rather than merely to nonconfidential prior art. The court stated that Voip-Pal could seek case-specific relief through the discovery-dispute procedure in Judge DeMarchi’s standing order if it believed a particular item had to be disclosed to prosecution counsel and the Patent and Trademark Office.

Storage and access in Canada

Voip-Pal proposed allowing protected information to be stored in the United States or Canada. It also sought permission for qualifying party representatives who were Canadian or resided in Canada to access information designated “Confidential.” Plaintiffs objected to storage outside the United States and to access by Canadian representatives.

The court declined to authorize storage of all protected information outside the United States. It noted that some information could be highly confidential or subject to export controls. The court agreed that a Canadian representative might sometimes appropriately access material designated “Confidential” to help Voip-Pal defend the cases, but found Voip-Pal’s proposed language too broad. The court declined to adopt that language and stated that Voip-Pal could seek relief through the discovery-dispute procedure after identifying a representative who would otherwise be entitled to access the material but was excluded because of nationality or residence.

Disposition

The court resolved the protective-order disputes without a hearing, declined Voip-Pal’s proposed language concerning the prior-art exception and Canadian storage and access, adopted plaintiffs’ proposed prior-art language with the stated clarification, proposed alternative prosecution-bar language, and required a further submission if the parties could not agree. The opinion was signed by Virginia K. Demarchi, United States Magistrate Judge.