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Op-Ed: Judge Koh’s Anti-Patent Bias Triggers Two VoIP-Pal Director Resignations

Emil Malak, CEO of VoIP-Pal.com, Inc.

December 21, 2020





 

As the CEO of VoIP-Pal.com, Inc., I have spent many years developing and defending the company’s intellectual property.  The validity of our patents has been challenged twelve times in inter parties review (IPR) petitions filed with the United States Patent and Trademark Office (USPTO) by some of the largest companies in the world, and all twelve times our patents have prevailed.  Despite those successes, effective as of December 18, 2020, two VoIP-Pal directors have resigned, citing their frustration with what they perceive to be a series of deeply biased and unfair decisions against VoIP-Pal by Judge Lucy Koh in the U.S. District Court, Northern District of California (NDCA).  I feel I should communicate this development to shareholders.

 

Composing op-eds is not new to me, and, typically, I simply express my personal opinions.  In this article, however, I wish to share the opinions and concerns of former Chairman of the Board, Dr. Colin Tucker and former Director, Professor Edwin Candy, who resigned.  Both men were pioneers in the field of telecommunication and their leadership will be missed.  While I would have preferred for my directors to stay, the last straw was a recent decision by Judge Koh in which she refused to dismiss the recently filed complaints of Apple, AT&T and Verizon in the NDCA court, requesting a declaration of non-infringement and invalidity of VoIP-Pal’s patents.  VoIP-Pal was the first to file a patent infringement lawsuit based on previously unasserted U.S. Patent No. 10,218, 606 (also referred to as “the ‘606 patent”) in the Western District of Texas (WDTX).  However, Apple, AT&T and Verizon immediately ran to Judge Koh’s court to ask her to take over the case, even though VoIP-Pal was entitled to pursue its case in Texas. 

 

District Court Judge Likens VoIP-Pal’s Patents to a Growing “Cancer”

 

Dr. Colin Tucker and Professor Ed Candy have long expressed concern over Judge Koh’s ongoing hostility to VoIP-Pal’s patents.  Despite the patents having survived intense scrutiny by multiple panels of administrative law judges at the USPTO with strong technical backgrounds, Judge Koh invalidated many claims of six VoIP-Pal patents in previous proceedings.  The directors pointed out that Judge Koh’s bias was showing even before she had begun adjudicating the merits of VoIP-Pal’s patents.  For example, at a case management conference in San Jose on November 14, 2018 for Northern District of California Case Nos. 18-CV-04523, 18-CV-06054, 18-CV-06177, and 18-CV-06217, Judge Koh openly declared her hostility to VoIP-Pal’s entire RBR patent family to the lawyer’s present, stating: “I don’t want this [patent family] to keep growing like a CANCER, because I’m sure they’re growing the family as we speak.”

 

Dr. Tucker and Professor Candy were stunned that a judge, who is supposed to remain impartial, would openly compare a company’s expanding patent portfolio to a growing “cancer”.  They believe that any subsequent decisions by the judge cannot be viewed as fair and allowing her to preside over further cases regarding Voip-Pal’s patents brings the legal system into disrepute.  No one wants anything to grow like a cancer.

A cancer is a death sentence. Is that why the judge called referred to them as a “cancer”? Had the judge already made up her mind that this family of patents was going to be dead in court even before reviewing them? 

 

The District Court Refuses to Accept Technical Evidence

 

Judge Koh’s subsequent rulings against VoIP-Pal’s patents were highly questionable to Dr. Tucker and Professor Candy.  They both expressed their dismay over what they called “arbitrary interpretations and blatant distortions of technical facts.”  They felt the judge’s reasoning was dishonest with one objective in mind: to destroy Voip-Pal’s patents.  One of them told me that it was abundantly clear from reading Judge Koh’s decisions that she did not understand the actual inventions.  Many specific errors could be pointed out, but we will give just two examples.  In her first decision, Judge Koh incorrectly opined that the “patent specification fails to disclose user-specific calling.”  In her second decision, Judge Koh falsely alleged that the patent specification doesn’t explain how to identify the appropriate Internet address in a routing message.  Both conclusions are completely wrong from a technical standpoint.  Troublingly, to reach these conclusions, the judge overlooked or fundamentally misunderstood pages of detailed technical disclosure in the patents.  Dr. Tucker and Professor Candy felt that Judge Koh often went far beyond both parties’ submissions to arrive at her incorrect technical conclusions. 

 

The former directors are well-qualified to recognize Judge Koh’s technical errors.  Dr. Tucker and Professor Candy are giants in the mobile telecommunications industry.  In 1991 they were among the pioneers that started Orange plc, a telecommunications provider they grew from a Startup to a billion-dollar company.  They are two of the most renowned telephony technical experts in the world and understand our technology well.  They are disturbed by the fact that the U.S. judicial system allows evaluations of complex technology to be made by people who lack the technological expertise necessary to make those assessments, without evidence of the perspective of a person of skill in the art.  One of the former directors said that Judge Koh’s university education was in social studies, which did not qualify her as a skilled person in the field of the invention, nor did it prepare her to independently evaluate our complex technology without the benefit of expert evidence.  (By way of background, VoIP-Pal twice offered Judge Koh the testimony of an expert witness with a Ph.D. in electrical engineering to help her understand the technology, but the judge refused to consider it.)  Dr. Tucker and Professor Candy feel that the Federal Circuit upheld Judge Koh’s decisions without recognizing the flawed technical analysis.  This is understandable, if unfortunate: appeal courts typically only focus on legal issues, trusting the lower court to be correct on the technical facts.

 

The NDCA District Court Asserts Jurisdiction Over VoIP-Pal’s New Texas Lawsuit

 

The last straw for Dr. Tucker and Professor Candy was Judge Koh’s latest decision.  (See Order dated December 11, 2020, Document 60, in NDCA Cases 20-CV-02460, 20-CV-02995 and 20-CV-03092.)  In this decision, Judge Koh decided that her court has the right to adjudicate the merits of a new patent infringement case that VoIP-Pal had brought in the Western District of Texas.  Tucker and Candy were genuinely angered by certain inaccuracies, omissions and distortions that they believe characterize Judge Koh’s latest decision, for example:

 

1.         Judge Koh falsely stated that VoIP-Pal had “several of its executives” in the states of Washington and Utah.  VoIP-Pal does not have executives in those states.

 

2.         Judge Koh stated that because a representative of VoIP-Pal flew to California one time to meet with Apple in 2016, it would not be burdensome for VoIP-Pal to litigate in the Northern District of California.  The judge omits that the same representative, who lives across the country in Florida, also flew to Texas to meet with AT&T.  Is it less burdensome to fly from Florida across the continent to California than to take a short flight across the Gulf from Florida to Texas?  In contrast, Judge Koh criticized VoIP-Pal for filing its case in Waco, Texas, which she says is over 100 miles from Austin, where Apple has a massive operation.  She implies that Apple, a company with more cash than anyone else on the planet, would be unduly burdened by having to travel 100 miles from Austin to Waco.

 

3.         Judge Koh misleadingly implies that VoIP-Pal’s counsel promised at the hearing on November 14, 2018 that VoIP-Pail would not “file additional lawsuits,” and VoIP-Pal broke that commitment by filing additional suits in 2018 and in 2020.  But the conversation which Judge Koh references made no promises about “filing additional lawsuits.”  VoIP-Pal’s counsel stated: “Your Honor, at this time there’s no intention to assert any of the other patents against any of the other defendants. I can’t promise you that that would never change, but that is not the current intent.”  Later, after VoIP-Pal indicated it was filing a third amended complaint, the judge asked “do you have an intent to file any other amended complaints?”  VoIP-Pal’s counsel answered, “Not at this time, your Honor.”  But VoIP-Pal never promised the court that it would not file any other lawsuits on any other patents.  Indeed, the ‘606 patent had not yet even been issued at that point.

 

4.         Judge Koh knew that VoIP-Pal’s suits based on the ‘606 patent were first-filed in Texas and that Judge Albright should decide as to whether the cases need to stay in Texas.  Yet she glossed over that fact and found various “exceptions” that she said allowed the defendants’ cases, which were second-filed, to stay with her.  She expressed concern that Judge Albright might reach a “conflicting decision” on the ‘606 patent, contradicting her own previous decisions on related patents.

 


Dr. Colin Tucker found it disturbing that Judge Koh would hold the fact that VoIP-Pal’s patent portfolio was growing against the company.  He said, “Our patent portfolio began with five core patents and to date has expanded through continuations that the judge labeled as ‘cancer’ to at least 23 patents in the United States alone, not counting our many foreign patents.  Isn’t it the duty of the CEO and the Board of Directors to increase the value of their company?  In the case of VoIP-Pal, increasing value means developing and monetizing its patent portfolio.”

 

A District Court that Dislikes Patent Cases Prepares to Adjudicate VoIP-Pal’s Patents

 

One thing Dr. Tucker found perplexing and contradictory was how the judge had seemed eager to rid herself of VoIP-Pal’s patent cases in 2018 (i.e., to transfer to another judge or even another venue), but now, when she had the opportunity to do so, she refused.  Dr. Tucker was referencing Judge Koh’s comments at the case management conference of November 14, 2018 (mentioned above), where Judge Koh had said, “I don’t like patent cases,” and “believe me, I would be so happy to transfer these [cases] to any of my colleagues… but unfortunately, I think I’m stuck.”  This was the same hearing at which Judge Koh compared VoIP-Pal’s patents to a growing “cancer”.  At this hearing, she also questioned whether the case could be moved to a different jurisdiction: “Now, I wouldn’t mind transferring this case to another venue.  Are we sure that venue is proper here under TC Heartland and Cray?  Is that right?”  (A transcript of the hearing is in the public record so shareholders can read Judge Koh’s comments for themselves.)  Inexplicably, Judge Koh is now going to great lengths to keep VoIP-Pal’s new patent case and any future cases from being heard by an impartial judge in a different venue.

 

In his resignation letter, Dr. Tucker described the current U.S. patent process as an “inequitable system.”  As we have discussed, Judge Koh likened VoIP-Pal’s patents to a growing “cancer” before deciding two of VoIP-Pal’s patent suits—without having a proper technical understanding of VoIP-Pal’s inventions.  Judge Koh’s “cancer” comment made it seem like “she was on a mission to stop us from expanding our patent portfolio,” Dr. Tucker said.  He remarked that the judge seems to view herself as an expert in the field since she has repeatedly refused to construe the claims of VoIP-Pal’s patents, nor would she accept VoIP-Pal’s offer to present expert witness testimony, which she deemed to be unnecessary.  As British citizens, Dr. Tucker and Professor Candy are stunned that such prejudice against patent owners exists in the U.S. legal system.

 

As CEO of VoIP-Pal, I share the concerns of Dr. Colin Tucker and Professor Edwin Candy.  I am facing a trial judge who treats Apple and other giant corporations as if they are victims.  But what about VoIP-Pal’s shareholders who invested in good faith in the company, believing that the U.S. patent system had their back?  Hundreds of small inventors—including Ma’s and Pa’s—have put their savings into the company and have awaited VoIP-Pal’s day in court.  We have won twelve inter parties' reviews (IPR), but we have not had our day in an impartial court.  As explained, the district court judge has refused to construe our claims, has refused to look at any evidence of how a skilled person in the field of the invention would understand our patent, and has denied us an opportunity to respond to her technical errors—which she committed by relying on her own understanding without the benefit of any expert evidence.  Judge Koh has taken offence at the fact that our patent portfolio is growing as if it was cancer.  But, as CEO, I have a duty to shareholders to develop the company’s IP and to monetize our duly issued patents.

 

I fully support USPTO Director Andrei Iancu in his mission to get the courts and the patent office to work together in the decision-making process. Often, the courts and patent office contradict each other.

 

I trust that my op-ed will provide our shareholders with some context for understanding VoIP-Pal’s situation.  I do understand our shareholders’ concern about why we have not yet settled with Apple, Amazon, Google, Facebook, Twitter, AT&T and Verizon.  We have expressed our desire to settle, but so far, they have refused.  The above story helps to explain why they are not in a hurry to settle. The Silicon Valley spends billions of dollars and has spread their tentacles all throughout America. They even control the flow of information that does not conform to their ideals. They have become a state within the state. We have two options: fold up or fight on.  I will fight on for my shareholders. We have confidence in our legal counsel despite these recent setbacks. As an Inventor, owning an issued U.S. patent has become more of a liability than an asset.

 

Dr. Colin Tucker and Professor Edwin Candy are dear friends.  I and VoIP-Pal’s shareholders are deeply grateful to them for their service to VoIP-Pal.  During their tenure as directors and with their technical support and leadership, VoIP-Pal has fully developed its patent portfolio.  It has been an honor to work side by side with such giants of the industry.  I thank them sincerely and wish them and their families a merry Christmas and a healthy and prosperous 2021.

 

We are extremely grateful to all our valued shareholders for their constant support. Patience is a virtue.


Emil Malak Op-ed December 19, 2020, VOIP-PAL Patent Cases, VIOP-PAL Patent Litigation, Op-Ed: Judge Koh’s Anti-Patent Bias Triggers Two VoIP-Pal Director Resignations, OTCQB: VPLM, Intellectual Property Theft, Intellectual Property Violations

The District Court Refuses to Accept Technical Evidence

 

Judge Koh’s subsequent rulings against VoIP-Pal’s patents were highly questionable to Dr. Tucker and Professor Candy.  They both expressed their dismay over what they called “arbitrary interpretations and blatant distortions of technical facts.”  They felt the judge’s reasoning was dishonest with one objective in mind: to destroy Voip-Pal’s patents.  One of them told me that it was abundantly clear from reading Judge Koh’s decisions that she did not understand the actual inventions.  Many specific errors could be pointed out, but we will give just two examples.  In her first decision, Judge Koh incorrectly opined that the “patent specification fails to disclose user-specific calling.”  In her second decision, Judge Koh falsely alleged that the patent specification doesn’t explain how to identify the appropriate Internet address in a routing message.  Both conclusions are completely wrong from a technical standpoint.  Troublingly, to reach these conclusions, the judge overlooked or fundamentally misunderstood pages of detailed technical disclosure in the patents.  Dr. Tucker and Professor Candy felt that Judge Koh often went far beyond both parties’ submissions to arrive at her incorrect technical conclusions.


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