Voip-Pal Sues Apple May 25, 2018

Case 2:18-cv-00953-RFB-GWF Document 1 Filed 05/24/18 Page 1 of 30
1 ALVERSON, TAYLOR,
MORTENSEN & SANDERS
2 KURT R. BONDS, ESQ.
3 Nevada Bar No. 6228
ADAM R. KNECHT, ESQ.
6605 Grand Montecito Parkway
5 Suite 200
Las Vegas, Nevada 89149
6 (702) 384-7000
7 efile@alversontaylor.com
8 Attorneys for Plaintiff

VoIP-Pal.com, Inc.
9
Of Counsel:
10
ALVERSON, TAYLOR, MORTENSEN & SANDERS
11 MALEK MOSS PLLC

KEVIN N. MALEK, ESQ.
12 340 Madison Avenue, FL 19
New York, New York 10173
6605 GRAND MONTECITO PKWY, STE. 200
13 (212) 812-1491
kevin.malek@malekmoss.com
LAS VEGAS, NEVADA 89149
14
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UNITED STATES DISTRICT COURT

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15
16 DISTRICT OF NEVADA
17 * * *
18
19 VOIP-PAL.COM, INC., a Nevada corporation, CASE NO.:
20 Plaintiff,
v.
21 JURY TRIAL DEMANDED
APPLE, INC.; a California corporation,
22
23 Defendant.
24
COMPLAINT
25
Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”), for its Complaint against Defendant Apple,
26
27 Inc. (“Apple”) hereby alleges as follows:
28 ///
1
1 PARTIES
2 1. Plaintiff VoIP-Pal is a Nevada corporation with its principal place of business
3
located at 10900 NE 4th Street, Suite 2300, Bellevue, Washington 98004.
4
2. Defendant Apple is a California corporation with its principal place of business at
5
1 Infinite Loop, Cupertino, California 95014. On information and belief, Apple regularly
6
7 conducts and transacts business in the District of Nevada and throughout the United States, and,
8 as set forth below, has committed and continues to commit, tortious acts of patent infringement
9 within the District of Nevada.

10 NATURE OF THE ACTION
11
3. This is a civil action for infringement of United States Patent No. 9,537,762 (the
12
“‘762 Patent”), United States Patent No. 9,813,330 (the “‘330 Patent”), United States Patent No.
13
9,826,002 (the “‘002 Patent”), and United States Patent No. 9,948,549 (the “‘549 Patent,” and
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together with the ‘762 Patent, the ‘330 Patent and the ‘002 Patent, the “Patents-in-Suit”) under
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15
16 the Patent Laws of the United States, 35 U.S.C. § 1 et seq.
17 JURISDICTION AND VENUE

18
4. This Court has jurisdiction over the subject matter of this action pursuant to 28
19
U.S.C. §§ 1331 and 1338(a).
20
5. This Court has personal jurisdiction over Apple because, among other things,
21
Apple has committed, aided, abetted, contributed to, and/or participated in the commission of
22
23 patent infringement in this judicial district and elsewhere that led to foreseeable harm and injury
24 to VoIP-Pal.
25 6. This Court also has personal jurisdiction over Apple because, among other things,
26
Apple has established minimum contacts within the forum such that the exercise of jurisdiction
27
over Apple will not offend traditional notions of fair play and substantial justice. Moreover,
28
2
1 Apple has placed products and provided services that practice the claimed inventions of the
2 Patents-in-Suit into the stream of commerce with the reasonable expectation and/or knowledge
3
that purchasers and users of such products and services were located within this District. Apple
4
has sold, advertised, marketed, distributed and made available products and services in this
5
District that practice the claimed inventions of the Patents-in-Suit.
6
7 7. Venue is proper in this district pursuant to 28 U.S.C. § 1400(b).
8 BACKGROUND OF THE TECHNOLOGY AND THE PATENTS-IN-SUIT
9 8. United States Patent No. 9,537,762 (the “‘762 Patent”) entitled “Producing
10 Routing Messages For Voice Over IP Communications” was duly and legally issued by the
11
United States Patent and Trademark Office on January 3, 2017. A copy of the ‘762 Patent is
12
attached hereto as Exhibit 1.
13
9. United States Patent No. 9,813,330 (the “‘330 Patent”) entitled “Producing
14
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Routing Messages For Voice Over IP Communications” was duly and legally issued by the
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15
16 United States Patent and Trademark Office on November 7, 2017. A copy of the ‘330 Patent is
17 attached hereto as Exhibit 2.

18
10. United States Patent No. 9,826,002 (the “‘002 Patent”) entitled “Producing
19
Routing Messages For Voice Over IP Communications” was duly and legally issued by the
20
United States Patent and Trademark Office November 21, 2017. A copy of the ‘762 Patent is
21
22
23 11. United States Patent No. 9,948,549 (the “’549 Patent”) entitled “Producing
24 Routing Messages For Voice Over IP Communications” was duly and legally issued by the
25 United States Patent and Trademark Office on April 17, 2008. A copy of the ‘549 Patent is
26
27
12. The ‘762 Patent, ‘330 Patent, ‘002 Patent and ‘549 Patent are collectively referred
28
3
1 to herein as the “Patents-In-Suit”.

2 13. The inventions of the Patents-In-Suit originated from breakthrough work and
3
development in the internet protocol communications field.
4
14. Internet protocol (IP) communications commonly involve personal computers
5
(PCs), phones, and other devices, sending and receiving various types of communication in
6
7 various formats (e.g., audio, video, text, and other data formats), for example, over local and wide
8 area networks between client and server devices.
9 15. Furthermore, IP communication systems and methods may involve

10 communication within or between IP networks, and between an IP network and external
11
networks, such as the public switched telephone network (PSTN) including cellular networks for
12
mobile devices.
13
16. Processing and routing such communications preferably requires resilience,
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reliability, high availability and flexibility in routing the communications within and between
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16 networks.
17 17. VoIP-Pal has provided significant improvements to communications technology

18
by the invention of novel methods, processes and apparatuses that facilitate communications
19
between internet protocol based systems and networks, such as internally controlled systems and
20
external networks (e.g., between private networks and public networks), including the
21
classification and routing thereof.
22
23 18. The Patents-In-Suit represent fundamental advancements to the art of internet
24 protocol (IP) based communication, including improved functioning, routing and reliability for
25 communications over the internet.
26
19. For example, claim 1 of the ‘762 Patent recites:
27
A method of routing communications in a system in which a first
28 participant identifier is associated with a first participant registered
4
1 with the system and wherein a second participant identifier is

associated with a second participant, the first participant being
2 associated with a first participant device operable to establish a
3 communication using the system to a second participant device
associated with the second participant, the system comprising at
4 least one processor operably configured to execute program code
stored in at least one memory, the method comprising:
5
in response to the first participant device initiating the
6 communication to the second participant device, receiving the first
7 participant identifier and the second participant identifier from the
first participant device;
8
using the first participant identifier to locate, via the at least one
9 processor, a first participant profile from among a plurality of
participant profiles that are stored in a database, the first
10 participant profile comprising one or more attributes associated
11 with the first participant;
12 processing the second participant identifier, via the at least one

processor, based on at least one of the one or more attributes from
13 the first participant profile, to produce a new second participant

identifier;
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classifying the communication, via the at least one processor, using

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15
the new second participant identifier, as a first network
16 communication if a first network classification criterion is met and
as a second network communication if a second network
17 classification criterion is met;
18
when the first network classification criterion is met, producing,
19 via the at least one processor, a first network routing message, the
first network routing message identifying an address in the system,
20 the address being associated with the second participant device;
21 and when the second network classification criterion is met,
producing, via the at least one processor, a second network routing
22
message, the second network routing message identifying an
23 address associated with a gateway to a network external to the
system, wherein the second network classification criterion is met
24 if the second participant is not registered with the system.
25 20. For example, claim 1 of the ‘330 Patent recites:
26
A method for routing a communication in a communication system
27 between an Internet-connected first participant device associated
with a first participant and a second participant device associated
28 with a second participant, the method comprising:
5
1
in response to initiation of the communication by the first
2 participant device, receiving, by a controller comprising at least
3 one processor, over an Internet protocol (IP) network a first
participant identifier and a second participant identifier;
4
causing at least one processor to access at least one database
5 comprising user profiles using the first participant identifier, each
user profile comprising a respective plurality of attributes for a
6 respective user, to locate a user profile for the first participant
7 including a plurality of first participant attributes;
8 comparing at least a portion of the second participant identifier,

using the at least one processor, with at least one of the plurality of
9 first participant attributes obtained from the user profile for the
first participant;
10
11 causing at least one processor to access the at least one database to

search for a user profile for the second participant;
12
classifying the communication, based on the comparing, as a
13 system communication or an external network communication,

using the at least one processor;
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when the communication is classified as a system communication,

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producing a system routing message identifying an Internet address
16 of a communication system node associated with the second
participant device based on the user profile for the second
17 participant, using the at least one processor, wherein the system
routing message causes the communication to be established to the
18
second participant device; and
19
when the communication is classified as an external network
20 communication, producing an external network routing message
identifying an Internet address associated with a gateway to an
21 external network, using the at least one processor, wherein the
external network routing message causes the communication to the
22
second participant device to be established using the gateway to
23 the external network.
24 21. For example, claim 1 of the ‘002 Patent recites:

25 A method of routing a communication in a communication system
28 in response to initiation of the communication by the first

6
1 participant device, receiving, by a controller comprising at least

one processor, over an Internet protocol (IP) network a first
2 participant identifier and a second participant identifier, the second
3 participant identifier being associated with the second participant
device;
4
causing at least one processor to access a database comprising user
5 profiles, using the first participant identifier, each user profile
associating a respective plurality of attributes with a respective
6 user, to locate a plurality of first participant attributes;
7
processing the second participant identifier, using the at least one
8 processor, based on at least one of the plurality of first participant
attributes obtained from a user profile for the first participant, to
9 produce a new second participant identifier;
10 classifying the communication, based on the new second
11 participant identifier, as a system communication or an external

network communication, using the at least one processor;
12
when the communication is classified as a system communication,
13 producing a system routing message identifying an Internet address

associated with the second participant device, using the at least one
14
processor, wherein the system routing message causes the
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communication to be established to the second participant device;

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and
16
when the communication is classified as an external network
identifying an Internet address associated with a gateway to an
18
external network, using the at least one processor, wherein the
19 external network routing message causes the communication to the
second participant device to be established using the gateway to
20 the external network.
21 22. For example, claim 1of the ‘549 Patent recites:
22
A method of routing a communication in a communication system
25 causing at least one processor to access at least one memory
26 storing a first participant profile identifying at least one first
participant attribute;
27
receiving, by the at least one processor, a second participant
28 identifier inputted by the first participant using the first participant
7
1 device to initiate a communication, the second participant

identifier being associated with the second participant device;
2
3 processing the second participant identifier, based on the at least

one first participant attribute obtained from the first participant
4 profile, to produce a new second participant identifier;
5 classifying the communication as a system communication or an

external network communication;
6
7 when the communication is classified as a system communication,

producing a system routing message, based on the new second
8 participant identifier, that identifies an Internet Protocol (IP)
address of a network element through which the communication is
9 to be routed thereby causing the communication to be established
to the second participant device; and
10
11 when the communication is classified as an external network

communication, producing an external network routing message,
12 based on the new second participant identifier, that identifies an
address associated with a gateway to an external network thereby
13 causing the communication to the second participant device to be

established by use of the gateway to the external network.
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23. VoIP-Pal is the sole owner and assignee of the entire right title and interest in the
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15
16 ‘762 Patent, the ‘330 Patent, the ‘002 Patent and the ‘549 Patent and has the right to sue and
17 recover damages for any current or past infringement of the ‘762 Patent, the ‘330 Patent, the ‘002
18
Patent and the ‘549 Patent.
19
OVERVIEW OF THE ACCUSED INSTRUMENTALITIES
20
24. Each of the instrumentalities described herein made, used, sold and/or offered for
21
sale by Apple comprises systems and devices relating to and supporting communications using
22
23 devices, computers, servers, systems and methods used by, operated by and performed by Apple.
24 25. Apple’s iMessage® system and service allows devices to communicate between
25 participants, e.g., as between a first participant or user registered with Apple (such as through an
26
Apple identifier) or that is using an Apple device, and a second user or participant that may or
27
may not be a user registered with Apple or that may or may not be using an Apple device. The
28
8
1 system makes use of attributes that are part of a profile for the first participant in order to classify
2 communications.
3
26. Apple’s Facetime® system and service allows devices to initiate an audio or
4
video/audio communication between at least two participants which may or may not be
5
associated with an Apple identification or Apple devices/software. The system makes use of
6
7 attributes that are part of a user profile in order to classify the communication.
8 27. Apple enables the use of WiFi Calling in conjunction with its iMessage® and
9 Facetime® systems and services, which allows an Apple device to initiate communications
10 between participants using internet protocol (IP) based communication methods and participants
11
using external networks, such as the PSTN. Apple also enables the use of mobile devices that
12
communicate directly with external networks, such as iPhone® devices that can communicate
13
over cellular networks.
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COUNT I
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15
16 Infringement Of The ‘762 Patent
17 28. Paragraphs 1 through 27 are incorporated by reference as if fully stated herein.

18
29. Apple, either alone or in conjunction with others, has infringed and continues to
19
infringe, both directly and indirectly, one or more claims of the ‘762 Patent, including at least
20
exemplary claim 1, under 35 U.S.C. § 271, either literally and/or under the doctrine of
21
equivalents, by using, offering to sell, selling and/or importing into the United States at least
22
23 certain methods, apparatuses, products and services used for communication, including, without
24 limitation, messaging (iMessage®), video/audio communication (Facetime®), WiFi calling,

25 telephony functionality, smartphone (iPhone®), tablet (iPad®), Apple Watch® and/or mobile
26
devices, handheld and desktop computers including Mac® and the like (collectively, “the ‘762
27
Accused Instrumentalities”).
28
9
1 30. For example, Apple infringes exemplary claim 1 of the ‘762 Patent by using,
2 offering to sell, selling and/or importing into the United States at least the ‘762 Accused
3
Instrumentalities, which ‘762 Accused Instrumentalities comprise a method for routing
4
communications in a system:
5
• in which a first participant identifier is associated with a first participant
6
7 registered with the system (e.g., Apple’s iMessage® system and
8 Facetime® system associate a first participant with an identifier such as a
9 phone number or other identifier of the participant) and wherein a second

10
participant identifier is associated with a second participant (e.g., Apple’s
11
iMessage® system and Facetime® system associate a second participant
12
with an identifier such as a phone number or other identifier of the
13
participant), the first participant being associated with a first participant
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device operable to establish a communication using the system to a second

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16 participant device associated with the second participant (e.g., Apple’s

17 iMessage® system and Facetime® system associate the participants with
18
devices such as an iPhone® or a Mac® desktop computer or other mobile
19
or desktop devices), the system comprising at least one processor operably
20
configured to execute program code stored in at least one memory, the
21
22 method comprising (e.g., Apple’s iMessage® system and Facetime®
23 system comprise at least computers and/or servers that comprise
24 processors configured to execute program code stored in memory):

25
• in response to the first participant device initiating the communication to
26
the second participant device, receiving the first participant identifier and
27
the second participant identifier from the first participant device (e.g., in
28
10
1 Apple’s iMessage® system and Facetime® system, the communication is

2 initiated by the first participant and the first participant identifier and the
3
second participant identifier are received by the system , the identifiers
4
being a phone number or other identification of the participants);
5
• using the first participant identifier to locate, via the at least one processor,
6
7 a first participant profile from among a plurality of participant profiles that
8 are stored in a database, the first participant profile comprising one or
9 more attributes associated with the first participant (e.g., in Apple’s

10
iMessage® system and Facetime® system, the first participant profile is
11
located within at least one database that stores profiles associated with
12
participants, using the identifier such as a phone number, Apple ID or
13
other identification of the first participant);
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• processing the second participant identifier, via the at least one processor,
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15
16 based on at least one of the one or more attributes from the first participant
17 profile, to produce a new second participant identifier (e.g., Apple’s
18
iMessage® system and Facetime® system processes the participant
19
identifier using the first participant profile to produce a new second
20
participant identifier);
21
22 • classifying the communication, via the at least one processor, using the
23 new second participant identifier, as a first network communication if a
24 first network classification criterion is met and as a second network

25
communication if a second network classification criterion is met (e.g.,
26
Apple’s iMessage® system and Facetime® system classify the
27
communication through a server or computer, using the new second
28
11
1 participant identifier, such as when the identifier represents an Apple

2 registered device, and classifies it as the appropriate network
3
communication when the corresponding network criterion is met);
4
• when the first network classification criterion is met, producing, via the at
5
least one processor, a first network routing message, the first network
6
7 routing message identifying an address in the system, the address being
8 associated with the second participant device (e.g., Apple’s iMessage®
9 system and Facetime® system send or receive a produced routing message

10
that identifies an address on the system that is associated with the second
11
participant for routing to an Apple device);
12
• and when the second network classification criterion is met, producing, via
13
14 the at least one processor, a second network routing message, the second
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network routing message identifying an address associated with a gateway

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15
16 to a network external to the system, wherein the second network

17 classification criterion is met if the second participant is not registered
18
with the system (e.g., Apple’s iMessage® system and Facetime® system
19
can send and receive communications to and from external networks, for
20
example, SMS/MMS messages to be communicated over WiFi Calling or
21
22 a cellular network, or audio communications using a PSTN network over
23 WiFi Calling; and a routing message that identifies an address associated
24 with a gateway to such an external network is produced for routing to a

25
non-Apple device).
26
31. On information and belief, Apple has had knowledge of the ‘762 Patent since at
27
least April 12, 2018 when VoIP-Pal issues a press release announcing the issuance of the ‘762
28
12
1 Patent. (See https://www.voip-pal.com/voip-pal-strengthens-patent-holding).

2 32. Despite its knowledge and notice of the ‘762 Patent and its infringement of that
3
patent, Apple has continued to make, use, sell and offer to sell the ‘762 Accused Instrumentalities
4
in the United States. Accordingly, Apple’s infringement has been and continues to be willful.
5
33. Apple has induced infringement, and continues to induce infringement, of one or
6
7 more claims of the ‘762 Patent under 35 U.S.C. § 271(b). Apple actively, knowingly, and
8 intentionally induced, and continues to actively, knowingly and intentionally induce infringement
9 of the ‘762 Patent by selling or otherwise making available and/or supplying the ‘762 Accused
10 Instrumentalities; with the knowledge and intent that third parties will use the ‘762 Accused
11
Instrumentalities supplied by Apple to infringe the ‘762 Patent; and with the knowledge and
12
intent to encourage and facilitate third party infringement through the dissemination of the ‘762
13
Accused Instrumentalities and/or the creation and dissemination of promotional and marketing
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materials, supporting materials, instructions, product manuals, and/or technical information

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15
16 related to the ‘762 Accused Instrumentalities.
17 34. Apple specifically intended and was aware that the ordinary and customary use of
18
the ‘762 Accused Instrumentalities would infringe the ‘762 Patent. For example, Apple sells,
19
uses, makes available and provides the ‘762 Accused Instrumentalities, which when used in their
20
ordinary and customary manner intended by Apple, infringe one or more claims of the ‘762
21
Patent, including at least exemplary claim 1. Upon information and belief, Apple further
22
23 provides product manuals and other technical information that cause Apple customers and other
24 third parties to use and to operate the ‘762 Accused Instrumentalities for their ordinary and
25 customary use. Apple customers and other third parties have directly infringed the ‘762 Patent,
26
including at least exemplary claim 1, through the normal and customary use of the ‘762 Accused
27
Instrumentalities. By providing instruction and training to customers and other third parties on
28
13
1 how to use the ‘762 Accused Instrumentalities in an infringing manner, Apple specifically
2 intended to induce infringement of the ‘762 Patent, including at least exemplary claim 1. Apple
3
accordingly has induced and continues to induce Apple customers and other users of the ‘762
4
Accused Instrumentalities in their ordinary and customary way to infringe the ‘762 Patent,
5
knowing, or at least being willful blind to the fact, that such use constitutes infringement of the
6
7 ‘762 Patent.
8 35. VoIP-Pal has been and continues to be damaged by Apple’s infringement of the
9 ‘762 Patent.
10 36. Apple’s conduct in infringing the ‘762 Patent renders this case exceptional within
11
the meaning of 35 U.S.C. § 285.
12
COUNT II
13
Infringement Of The ‘330 Patent
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37. Paragraphs 1 through 36 are incorporated by reference as if fully stated herein.

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16 38. Apple, either alone or in conjunction with others, has infringed and continues to
17 infringe, both directly and indirectly, one or more claims of the ‘330 Patent, including at least
18
19
20
certain methods, apparatuses, products and services used for communication, including, without
21
limitation, messaging (iMessage®) and video/audio communication (Facetime®), WiFi calling,
22
23 telephony functionality, smartphone (iPhone®), tablet (iPad®), Apple Watch® and/or mobile
24 devices, handheld and desktop computers, including Mac® and the like (collectively, “the ‘330
25 Accused Instrumentalities”).
26
39. For example, Apple infringes exemplary claim 1 of the ‘330 Patent by using,
27
offering to sell, selling and/or importing into the United States at least the ‘330 Accused
28
14
1 Instrumentalities, which ‘330 Accused Instrumentalities comprise a method for routing a

2 communication in a system:
3
• between an Internet-connected first participant device associated with a
4
first participant and a second participant device associated with a second
5
participant, the method comprising (e.g., Apple’s iMessage® system and
6
7 Facetime® system comprises various servers that perform a method of
8 routing communications in a system where first participants or senders of
9 a communication have one or more Apple devices that can be connected to

10
the Internet):
11
• in response to initiation of the communication by the first participant
12
device, receiving, by a controller comprising at least one processor, over
13
14 an Internet protocol (IP) network a first participant identifier and a second

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participant identifier (e.g., in Apple’s iMessage® system and Facetime®

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15
16 system, the communication is initiated by the first participant and the first
17 participant identifier and the second participant identifier are received over
18
an IP network by the system, the identifiers being a phone number or
19
other identification of the participants);
20
• causing at least one processor to access at least one database comprising
21
22 user profiles using the first participant identifier, each user profile
23 comprising a respective plurality of attributes for a respective user, to
24 locate a user profile for the first participant including a plurality of first
25
participant attributes (e.g., in Apple’s iMessage® system and Facetime®
26
system, the first participant profile is located within at least one database
27
that stores profiles associated with users or participants);
28
15
1 • comparing at least a portion of the second participant identifier, using the

2 at least one processor, with at least one of the plurality of first participant
3
attributes obtained from the user profile for the first participant (e.g.,
4
Apple’s iMessage® system and Facetime® system compare at least one of
5
the attributes of the first participant or sender’s profile, such as the IDD or
6
7 NDD, to a least a portion of the second participant’s or recipient’s
8 identifier);
9 • causing at least one processor to access the at least one database to search
10
for a user profile for the second participant (e.g. Apple’s iMessage®
11
system and Facetime® system search at least one database of registered
12
users for a profile for the second participant);
13
•
14 classifying the communication, based on the comparing, as a system

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communication or an external network communication, using the at least

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15
16 one processor (e.g., Apple’s iMessage® system and Facetime® system

17 allow communications to be made to and from external networks, for
18
example, messages using SMS/MMS over WiFi Calling or a cellular
19
network, or audio to be communicated to and from PSTN networks over
20
WiFi Calling; Apple’s systems classify whether the communication is a
21
22 system communication or an external network communication, using at
23 least one processor);
24 • when the communication is classified as a system communication,

25
producing a system routing message identifying an Internet address of a
26
communication system node associated with the second participant device
27
based on the user profile for the second participant, using the at least one
28
16
1 processor, wherein the system routing message causes the communication

2 to be established to the second participant device (e.g., in Apple’s
3
iMessage® system and Facetime® system, if the communication is
4
classified as a system communication, a routing message is produced,
5
using at least one processor, to identify an address in the system such that
6
7 communication can be established to an Apple device associated with the
8 second participant); and
9 • when the communication is classified as an external network

10
communication, producing an external network routing message
11
identifying an Internet address associated with a gateway to an external
12
network, using the at least one processor, wherein the external network
13
routing message causes the communication to the second participant
14
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device to be established using the gateway to the external network (e.g., in

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15
16 Apple’s iMessage® system and Facetime® system, if the communication

17 is classified as an external communication, a routing message is produced,
18
using at least one processor to identify an address associated with a
19
gateway to an external network, e.g., for messages sent via SMS/MMS or
20
communications over the PSTN).
21
22 40. On information and belief, Apple has had knowledge of the ‘330 Patent since at
23 least April 12, 2018 when VoIP-Pal issues a press release announcing the issuance of the ‘330

26
27
28
17
1 42. Apple has induced infringement, and continues to induce infringement, of one or
3
intentionally induced, and continues to actively, knowingly and intentionally induce infringement
4
of the ‘330 Patent by selling or otherwise making available and/or supplying the ‘330 Accused
5
Instrumentalities; with the knowledge and intent that third parties will use the ‘330 Accused
6
7 Instrumentalities supplied by Apple to infringe the ‘330 Patent; and with the knowledge and
8 intent to encourage and facilitate third party infringement through the dissemination of the ‘330
9 Accused Instrumentalities and/or the creation and dissemination of promotional and marketing
10 materials, supporting materials, instructions, product manuals, and/or technical information
11
related to the ‘330 Accused Instrumentalities.
12
43. Apple specifically intended and was aware that the ordinary and customary use of
13
14
(702) 384-7000
LAWYERS
15
16 ordinary and customary manner intended by Apple, infringe one or more claims of the ‘330
17 Patent, including at least exemplary claim 1. Upon information and belief, Apple further
18
provides product manuals and other technical information that cause Apple customers and other
19
third parties to use and to operate the ‘330 Accused Instrumentalities for their ordinary and
20
customary use. Apple customers and other third parties have directly infringed the ‘330 Patent,
21
22
23 Instrumentalities. By providing instruction and training to customers and other third parties on
26
27
28
18
1 knowing, or at least being willful blind to the fact, that such use constitutes infringement of the
2 ‘330 Patent.
3
44. VoIP-Pal has been and continues to be damaged by Apple’s infringement of the
4
‘330 Patent.
5
45. Apple’s conduct in infringing the ‘330 Patent renders this case exceptional within
6
7 the meaning of 35 U.S.C. § 285.
8 COUNT III

10 46. Paragraphs 1 through 45 are incorporated by reference as if fully stated herein.
11
12
13
14
(702) 384-7000
LAWYERS
15

18
telephony functionality, smartphone (iPhone®), tablet (iPad®), Apple Watch® and/or mobile
19
devices, handheld and desktop computers, including Mac® and the like (collectively, “the ‘002
20
21
22

25 communication in a system:
26
27
28
19
1 participant, the method comprising (e.g., in Apple’s iMessage® system

2 and Facetime® system, the system comprises various servers that
3
communicate with first participants or senders with Apple devices, such as
4
desktop computers, laptops, tablets or mobile handheld devices that can be
5
connected to the Internet and that can send communications):
6
7 • in response to initiation of the communication by the first participant
8 device, receiving, by a controller comprising at least one processor, over
9 an Internet protocol (IP) network a first participant identifier and a second

10
participant identifier, the second participant identifier being associated
11
with the second participant device (e.g., in Apple’s iMessage® system and
12
Facetime® system, the system receives identifiers for the participants
13
when a communication is initiated by the user of the Apple device, where
14
(702) 384-7000
the participants’ identifiers may be an Apple identifier or a phone number,

LAWYERS
15
16 for example, which is handled by a controller and at least one processor);

17 • causing at least one processor to access a database comprising user
18
profiles, using the first participant identifier, each user profile associating
19
a respective plurality of attributes with a respective user, to locate a
20
plurality of first participant attributes (e.g., in Apple’s iMessage® system
21
22 and Facetime® system, attributes associated with the first participant are
23 located within at least one database that stores profiles associated with
24 users , using an identifier such as a phone number of other identification of

25
the first participant);
26
• processing the second participant identifier, using the at least one
27
processor, based on at least one of the plurality of first participant
28
20
1 attributes obtained from a user profile for the first participant, to produce a
2 new second participant identifier (e.g., in Apple’s iMessage® system and
3
Facetime® system, a new second participant identifier is produced based
4
on the first participant attributes );
5
• classifying the communication, based on the new second participant
6
7 identifier, as a system communication or an external network
8 communication, using the at least one processor (e.g., Apple’s iMessage®
9 system and Facetime® system allow communications to be made to and

10
from external networks, for example, communication of SMS/MMS
11
messages over WiFi Calling or a cellular network, or audio
12
communication to or from a PSTN networks over WiFi Calling, and such
13
a communication is classified as a system communication or external
14
(702) 384-7000
network communication using at least one processor);

LAWYERS
15
16 • when the communication is classified as a system communication,

17 producing a system routing message identifying an Internet address
18
associated with the second participant device, using the at least one
19
processor, wherein the system routing message causes the communication
20
to be established to the second participant device (e.g., Apple’s
21
22 iMessage® system and Facetime® system classifies the system
23 communication and produces a routing message that identifies an Internet
24 address associated with the second participant for routing to an Apple

25
device of the second participant such that the communication can be
26
established); and
27
• when the communication is classified as an external network
28
21

2 identifying an Internet address associated with a gateway to an external
3
network, using the at least one processor, wherein the external network
4
routing message causes the communication to the second participant
5
device to be established using the gateway to the external network (e.g., in
6
7 Apple’s iMessage® system and Facetime® system, if the communication
8 is classified as an external communication, an external network routing
9 message is produced that identifies an Internet address associated with a

10 gateway to an external network, for example, for messages using
11
SMS/MMS over WiFi calling or cellular, or for communicating audio
12
using the PSTN over WiFi calling, such that the communication is
13
established to the device of the second participant).
14
(702) 384-7000
LAWYERS
15

18
50. Despite its knowledge and notice of the ‘002 Patent and its infringement of that
19
20
21
22
25 of the ‘002 Patent by selling or otherwise making available and/or supplying the ‘002 Accused
26
27
28
22
3
materials, supporting materials, instructions, product manuals, and/or technical information
4
related to the ‘002 Accused Instrumentalities.
5
6
7 the ‘002 Accused Instrumentalities would infringe the ‘002 Patent. For example, Apple sells,
8 uses, makes available and provides the ‘002 Accused Instrumentalities, which when used in their
9 ordinary and customary manner intended by Apple, infringe one or more claims of the ‘002
11
provides product manuals and other technical information that cause Apple customers and other
12
13
14
(702) 384-7000
LAWYERS
15
16 Instrumentalities. By providing instruction and training to customers and other third parties on
18
intended to induce infringement of the ‘002 Patent, including at least exemplary claim 1. Apple
19
20
21
22
23 ‘002 Patent.
25 ‘002 Patent.
26
27
28
23
1 COUNT IV
3
55. Paragraphs 1 through 54 are incorporated by reference as if fully stated herein.
4
5
6
7 exemplary claim 1, under 35 U.S.C. § 271, either literally and/or under the doctrine of
8 equivalents, by using, offering to sell, selling and/or importing into the United States at least
11
telephony functionality, smartphone (iPhone®), tablet (iPad®), Apple Watch® and/or mobile
12
devices, handheld and desktop computers, including Mac® and the like (collectively, “the ‘549
13
14
(702) 384-7000
LAWYERS
15

18
communication in a system:
19
20
21
22 participant, the method comprising (e.g., in Apple’s iMessage® system
23 and Facetime® system, the system comprises various servers that
24 communicate with first participants or senders with Apple devices, such as

25 desktop computers, laptops, tablets or mobile handheld devices that are
26
connected to a network and that can send communications; alternatively or
27
in addition, the system comprises functionality incorporated within Apple
28
24
1 devices such as desktop computer, laptops, tablets or mobile handheld

2 devices):
3
• causing at least one processor to access at least one memory storing a first
4
participant profile identifying at least one first participant attribute (e.g.,
5
Apple’s iMessage® system and Facetime® system locate a participant
6
7 profile stored on an Apple server; alternatively or in addition, the first
8 participant profile is stored on an Apple device such as a laptop computer
9 or mobile device);
10
• receiving, by the at least one processor, a second participant identifier
11
inputted by the first participant using the first participant device to initiate
12
a communication, the second participant identifier being associated with
13
14 the second participant device (e.g., in Apple’s iMessage® system and

(702) 384-7000
Facetime® system, when a communication is initiated by the first

LAWYERS
15
16 participant inputting of the second participant’s identifier, such as a phone

17 number, Apple identifier or other identifier that is associated with the
18
device of the second participant, the second participant identifier is
19
received by an Apple server; alternatively or in addition, the second
20
participant identifier is received by a portion of an Apple device such as a
21
22 laptop computer or mobile device);
23 • processing the second participant identifier, based on the at least one first
24 participant attribute obtained from the first participant profile, to produce a

25
new second participant identifier (e.g., Apple’s iMessage® system and
26
Facetime® system processes the second participant’s or receiver’s
27
identifier using at least one processor to produce a new identifier for the
28
25
1 second participant based on attributes obtained from the first participant’s

2 profile, such as where at least one participant’s attribute indicates that the
3
first participant is blocked or at least one participant’s attribute indicates
4
processing of dialing conventions associated with the first participant;
5
alternatively or in addition, a contact list stored on an Apple device such
6
7 as a laptop computer or mobile device may be consulted to produce a new
8 second participant identifier);
9 • classifying the communication as a system communication or an external

10
network communication (e.g., Apple’s iMessage® system and Facetime®
11
system allow communications to be made to other Apple devices and to
12
and from external networks, and the communication may be classified as a
13
system communication or external network communication using a
14
(702) 384-7000
processor on an Apple server; alternatively, the communication may be

LAWYERS
15
16 classified using a processor on an Apple device such as a laptop computer

17 or mobile handheld device);
18
• when the communication is classified as a system communication,
19
producing a system routing message, based on the new second participant
20
identifier, that identifies an Internet Protocol (IP) address of a network
21
22 element through which the communication is to be routed thereby causing
23 the communication to be established to the second participant device (e.g.,
24 Apple’s iMessage® system and Facetime® system classifies the system

25
communication and produces a routing message on an Apple server that
26
identifies an internet protocol (IP) address associated with the second
27
participant device for routing to an Apple device; alternatively, a system
28
26
1 routing message may be produced on an Apple device such as a laptop

2 computer or mobile handheld device); and
3
• when the communication is classified as an external network
4
communication, producing an external network routing message, based on
5
the new second participant identifier, that identifies an address associated
6
7 with a gateway to an external network thereby causing the communication
8 to the second participant device to be established by use of the gateway to
9 the external network (e.g., in Apple’s iMessage® system and Facetime®

10
system, if the communication is classified as an external communication,
11
an external network routing message is produced by an Apple server that
12
identifies an internet address associated with a gateway to an external
13
network, for example, a gateway for the communication of SMS/MMS
14
(702) 384-7000
messages or a PSTN gateway for communicating audio, such that the

LAWYERS
15
16 communication is established to the device of the second participant by

17 use of the gateway; alternatively, the external routing message may be
18
produced by an Apple device such as a laptop computer or mobile
19
handheld device).
20
21
25 patent, Apple has continued to make, use, sell and offer to sell the ‘549 Accused Instrumentalities
26
27
28
27
3
of the ‘549 Patent by selling or otherwise making available and/or supplying the ‘549 Accused
4
5
6
9 materials, supporting materials, instructions, product manuals, and/or technical information

10 related to the ‘549 Accused Instrumentalities.
11
12
13
14
(702) 384-7000
ordinary and customary manner intended by Apple, infringe one or more claims of the ‘549
LAWYERS
15
17 provides product manuals and other technical information that cause Apple customers and other
18
19
20
21
Instrumentalities. By providing instruction and training to customers and other third parties on
22
25 accordingly has induced and continues to induce Apple customers and other users of the ‘549
26
27
28
28
1 ‘549 Patent.
3
‘549 Patent.
4
5
6
7 PRAYER FOR RELIEF
8 WHEREFORE, VoIP-Pal respectfully requests that this Court enter judgment against
9 Apple as follows:
10 A. That Apple has infringed the Patents-In-Suit;
11
B. That VoIP-Pal be awarded damages adequate to compensate VoIP-Pal for Apple’s
12
past infringement and any continuing and future infringement up until the date
13
such judgment is entered, including pre- and post-judgment interests, costs,
14
(702) 384-7000
disbursements as justified under 35 U.S.C. § 284;

LAWYERS
15
16 C. That any award of damages be enhanced under 35 U.S.C. § 284 as a result of
17 Apple’s willful infringement;

18
D. That this case be declared an exceptional case within the meaning of 35 U.S.C. §
19
285 and that VoIP-Pal be awarded reasonable attorney fees;
20
E. A judgment requiring that VoIP-Pal be awarded a compulsory ongoing licensing
21
fee or reasonable royalty; and
22
23 F. That VoIP-Pal be awarded such other and further relief at law or equity as this
24 Court deems just and proper.

25 ///
26
///
27
///
28
29
1 DEMAND FOR JURY TRIAL

2 Plaintiff VoIP-Pal demands a trial by jury on all claims and issues so triable.
3
DATED this 24th day of May, 2018.
4
ALVERSON, TAYLOR,
5 MORTENSEN & SANDERS
6 /s/ Kurt R. Bonds ..

KURT R. BONDS, ESQ.
ADAM R. KNECHT, ESQ.
6605 Grand Montecito Parkway
9 Suite 200
Las Vegas, Nevada 89149
10
Attorneys for Plaintiff
11 VoIP-Pal.com, Inc.
12 Of Counsel:
13 MALEK MOSS PLLC

KEVIN N. MALEK, ESQ. )
14 340 Madison Avenue, FL 19

New York, New York 10173
(702) 384-7000
LAWYERS
15 (212) 812-1491
kevin.malek@malekmoss.com
16
17
18
19
20
21
22
23
24
25
26
27
28
30

Voip-Pal Sues Apple May 25, 2018

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Voip-Pal Sues Apple May 25, 2018

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Case 2:18-cv-00953-RFB-GWF Document 1 Filed 05/24/18 Page 1 of 30

8 Attorneys for Plaintiff

11 MALEK MOSS PLLC

UNITED STATES DISTRICT COURT

19 VOIP-PAL.COM, INC., a Nevada corporation, CASE NO.:

27 Inc. (“Apple”) hereby alleges as follows:

9 within the District of Nevada.

16 the Patent Laws of the United States, 35 U.S.C. § 1 et seq.

17 JURISDICTION AND VENUE

7 7. Venue is proper in this district pursuant to 28 U.S.C. § 1400(b).

8 BACKGROUND OF THE TECHNOLOGY AND THE PATENTS-IN-SUIT

17 attached hereto as Exhibit 2.

1 to herein as the “Patents-In-Suit”.

8 area networks between client and server devices.

9 15. Furthermore, IP communication systems and methods may involve

17 17. VoIP-Pal has provided significant improvements to communications technology

23 18. The Patents-In-Suit represent fundamental advancements to the art of internet

1 with the system and wherein a second participant identifier is

11 with the first participant;

12 processing the second participant identifier, via the at least one

13 the first participant profile, to produce a new second participant

classifying the communication, via the at least one processor, using

8 comparing at least a portion of the second participant identifier,

11 causing at least one processor to access the at least one database to

13 system communication or an external network communication,

when the communication is classified as a system communication,

24 21. For example, claim 1 of the ‘002 Patent recites:

28 in response to initiation of the communication by the first

1 participant device, receiving, by a controller comprising at least

11 participant identifier, as a system communication or an external

13 producing a system routing message identifying an Internet address

communication to be established to the second participant device;

1 device to initiate a communication, the second participant

3 processing the second participant identifier, based on the at least

5 classifying the communication as a system communication or an

7 when the communication is classified as a system communication,

11 when the communication is classified as an external network

13 causing the communication to the second participant device to be

16 Infringement Of The ‘762 Patent

17 28. Paragraphs 1 through 27 are incorporated by reference as if fully stated herein.

24 limitation, messaging (iMessage®), video/audio communication (Facetime®), WiFi calling,

7 registered with the system (e.g., Apple’s iMessage® system and

8 Facetime® system associate a first participant with an identifier such as a

9 phone number or other identifier of the participant) and wherein a second

device operable to establish a communication using the system to a second

16 participant device associated with the second participant (e.g., Apple’s

22 method comprising (e.g., Apple’s iMessage® system and Facetime®

23 system comprise at least computers and/or servers that comprise

24 processors configured to execute program code stored in memory):

1 Apple’s iMessage® system and Facetime® system, the communication is

7 a first participant profile from among a plurality of participant profiles that

8 are stored in a database, the first participant profile comprising one or

9 more attributes associated with the first participant (e.g., in Apple’s

23 new second participant identifier, as a first network communication if a

24 first network classification criterion is met and as a second network

1 participant identifier, such as when the identifier represents an Apple

7 routing message identifying an address in the system, the address being

8 associated with the second participant device (e.g., Apple’s iMessage®

9 system and Facetime® system send or receive a produced routing message

network routing message identifying an address associated with a gateway

16 to a network external to the system, wherein the second network

22 a cellular network, or audio communications using a PSTN network over

23 WiFi Calling; and a routing message that identifies an address associated

24 with a gateway to such an external network is produced for routing to a