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

Background

Twitter brought this case seeking declarations that it did not infringe U.S. Patent No. 10,218,606 and that the patent was invalid. The patent concerns a system for routing communications over Internet Protocol. The case arose amid several earlier patent disputes between Twitter and VoIP-Pal involving related patents and technology.

VoIP-Pal moved to dismiss under Federal Rule of Civil Procedure 12(b)(1), which allows dismissal for lack of subject-matter jurisdiction. VoIP-Pal relied on a covenant not to sue—a binding promise not to bring a patent-infringement lawsuit against Twitter. The original covenant covered Twitter’s current products and services and activities before the date of the covenant. In its reply, VoIP-Pal revised the covenant to state that it would not sue Twitter, now or in the future, for infringement of any claim of the ’606 patent based on products and services Twitter was using or had used, sold, offered for sale, or imported before the covenant’s date.

Parties’ Arguments

VoIP-Pal argued that the covenant eliminated the concrete, ongoing dispute required for a declaratory-judgment case. Twitter argued that the original covenant did not cover future activities involving its current products and services and did not expressly cover past products and services. Twitter also argued that the court could consider attorney-fee motions even if it lacked subject-matter jurisdiction.

Court’s Analysis

A declaratory-judgment action requires an actual controversy that remains sufficiently concrete and immediate throughout the case. The court explained that a patent owner’s covenant not to sue can eliminate that controversy, although the effect depends on the covenant’s scope and all the surrounding circumstances.

The court considered VoIP-Pal’s prior infringement lawsuit against Twitter involving related patents, as well as VoIP-Pal’s later lawsuits against other companies involving the ’606 patent and related patents. The court found that VoIP-Pal had not sued Twitter for infringement of the ’606 patent or the related patents. It also considered the timing and scope of the revised covenant, including that VoIP-Pal provided it after the Federal Circuit denied VoIP-Pal’s request concerning related cases and on the date it was required to provide infringement contentions in this case.

The court concluded that the revised covenant covered Twitter’s past and current products and services and that, considering all the circumstances, the covenant eliminated the subject-matter jurisdiction for Twitter’s claims concerning the ’606 patent. The court therefore did not reach the merits of infringement or patent validity.

Disposition

The court GRANTED Defendant’s motion to dismiss. The opinion does not state that the dismissal was with or without prejudice. The court also held that it could consider attorney-fee motions even after determining that it lacked subject-matter jurisdiction, but it did not award fees in this order.