1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 MARBLE VOIP PARTNERS LLC, Case No. 23-cv-03619-JSW
8 Plaintiff, ORDER DENYING DEFENDANT'S 9 v. MOTION FOR JUDGMENT ON THE PLEADINGS 10 ZOOM VIDEO COMMUNICATIONS, INC, Re: Dkt. No. 113 11 Defendant.
12 13 Now before the Court for consideration is Defendant Zoom Video Communications, Inc.’s 14 (“Defendant” or “Zoom”) motion for judgment on the pleadings under Federal Rule of Civil 15 Procedure 12(c). (Dkt. No. 113 (“Mot.”).) The Court found the motion suitable for disposition 16 without oral argument, and took the matter under submission under Civ. L.R. 7-1(b). (Dkt. No. 17 126.) Having carefully reviewed the parties’ papers, considered their arguments, and the relevant 18 legal authority, the Court DENIES Zoom’s motion. 19 BACKGROUND 20 On June 24, 2022, Plaintiff Marble VOIP Partners LLC (“Plaintiff” or “Marble VOIP”) 21 filed this action against Zoom in the United States District Court for the District of Kansas, 22 alleging infringement of United States Patent No. 7,376,129 (the “’129 Patent”). (Dkt. No. 1.) 23 The ’129 Patent, entitled “Enabling collaborative applications using Session Initiation Protocol 24 (SIP) based Voice over Internet protocol Networks (VoIP)” is “directed to a method, program 25 storage device, and system for enabling Voice over Internet Protocol (“VoIP”) for computer 26 applications.” (Dkt. No. 27 ¶ 1, see also Dkt. No. 27-1.) Marble VOIP alleges that Zoom’s Zoom 27 Phone and Zoom Meetings platform infringe claims 1–3, 5–15, and 17–13 of the ’129 Patent. 1 On December 2, 2022, Zoom moved to dismiss the First Amended Complaint under Rule 2 12(b)(6). (Dkt. Nos 29, 30.) As relevant here, Zoom argued in its motion that the ’129 Patent was 3 directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. (Dkt. No. 30 at 7–23.) On 4 April 24, 2023, Judge Robinson issued an Order denying Zoom’s motion to dismiss, finding that 5 “there are plausible factual allegations that the [’129 Patent] claims are not directed to an abstract 6 idea or do include inventive concepts.” (Dkt No. 41 (“12(b)(6) Order”) at 21.) 7 Subsequently, Zoom answered the First Amended Complaint (Dkt. No. 62) and moved to 8 transfer this case to this District. (Dkt. No. 49.) The motion to transfer was granted, and this case 9 was transferred to this Court on July 21, 2023 (Dkt. Nos. 74, 75.) On October 25, 2023, Zoom 10 filed this motion for judgment on the pleadings under Rule 12(c), again on the grounds that the 11 ’129 Patent is directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. (Dkt. No. 113.) 12 ANALYSIS 13 A. Legal Standard 14 Federal Rule of Civil Procedure 12(c) permits a party to move for judgment on the 15 pleadings “[a]fter the pleadings are closed – but early enough not to delay trial[.]” Fed. R. Civ. P. 16 12(c). A Rule 12(c) motion is “functionally identical” to a motion to dismiss pursuant to Federal 17 Rule of Civil Procedure 12(b)(6) and challenges the legal sufficiency of the claims asserted in the 18 complaint. Ross v. U.S. Bank Nat’l Ass’n, 542 F. Supp. 2d 1014, 1023 (N.D. Cal 2008). Judgment 19 on the pleadings should be entered when a complaint does not plead “enough facts to state a claim 20 to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). 21 “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to 22 draw a reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. 23 Iqbal, 556 U.S. 662, 678 (2009). As with a motion to dismiss, for purposes of a Rule 12(c) motion 24 for judgment on the pleadings, “the allegations of the non-moving party must be accepted as true.” 25 Hal Roach Studios, Inc. v. Richard Feiner and Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1990). 26 Thus, “[j]udgment on the pleadings is proper when the moving party clearly establishes on the 27 face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to B. “Law of the Case” Doctrine 1 Marble VOIP argues that Zoom’s motion is barred by the “law of the case” doctrine. (Dkt. 2 No. 119 (“Opp.”) at 6–9.) A Rule 12(c) motion for judgment on the pleadings that raises issues 3 already decided on a prior Rule 12(b)(6) motion to dismiss is subject to the “law of the case” 4 doctrine. See Strigliabotti v. Franklin Res., Inc., 398 F. Supp. 2d 1094, 1098 (N.D. Cal. 2005). 5 “Under the ‘law of the case’ doctrine, ‘a court is generally precluded from reconsidering an issue 6 that has already been decided by the same court, or a higher court in the identical case.’ ” United 7 States v. Alexander, 106 F.3d 874, 876 (9th Cir. 1997) (quoting Thomas v. Bible, 983 F.2d 152, 8 154 (9th Cir. 1993). This applies to decisions made by a transferor court prior to transfer. Muth v. 9 Fondren, 676 F.3d 815, 818 (9th Cir. 2012), as amended (May 31, 2012); see also Opperman v. 10 Path, Inc., No. 13-CV-00453-JST, 2014 WL 246972, at *4 (N.D. Cal. Jan. 22, 2014). However, 11 this doctrine is “not a limitation on a tribunal’s power, but rather a guide to discretion.” 12 Alexander, 106 F.3d at 876. Accordingly, a court may exercise its discretion and decline to follow 13 the law of the case where “1) the first decision was clearly erroneous; 2) an intervening change in 14 the law has occurred; 3) the evidence on remand is substantially different; 4) other changed 15 circumstances exist; or 5) a manifest injustice would otherwise result.” Id. 16 Zoom does not dispute that the issue of patent eligibility it raises in this motion is identical 17 to that which it raised in its prior motion to dismiss. Instead, Zoom argues that the law of the case 18 doctrine should not apply here because the patent eligibility issue was not actually decided in 19 Judge Robinson’s prior order. (See Dkt. No. 125 (“Reply”) at 3.) The Court disagrees. Zoom 20 argues that the 12(b)(6) Order clarified that “it [did] not decide at [that] time that the underlying 21 claims are patent eligible”, but this argument rings hollow – Judge Robinson explicitly decided 22 that under Rule 12(b)(6), “there are plausible factual allegations that the claims are not directed to 23 an abstract idea or do include inventive concepts.” (12(b)(6) Order at 21.) That is the precise 24 issue that Zoom is raising in this motion – whether under Rule 12(c), a functionally identical 25 standard to Rule 12(b)(6), there are sufficient plausible allegations that the claims of the ’129 26 Patent are patent eligible under 35 U.S.C § 101.
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 MARBLE VOIP PARTNERS LLC, Case No. 23-cv-03619-JSW
8 Plaintiff, ORDER DENYING DEFENDANT'S 9 v. MOTION FOR JUDGMENT ON THE PLEADINGS 10 ZOOM VIDEO COMMUNICATIONS, INC, Re: Dkt. No. 113 11 Defendant.
12 13 Now before the Court for consideration is Defendant Zoom Video Communications, Inc.’s 14 (“Defendant” or “Zoom”) motion for judgment on the pleadings under Federal Rule of Civil 15 Procedure 12(c). (Dkt. No. 113 (“Mot.”).) The Court found the motion suitable for disposition 16 without oral argument, and took the matter under submission under Civ. L.R. 7-1(b). (Dkt. No. 17 126.) Having carefully reviewed the parties’ papers, considered their arguments, and the relevant 18 legal authority, the Court DENIES Zoom’s motion. 19 BACKGROUND 20 On June 24, 2022, Plaintiff Marble VOIP Partners LLC (“Plaintiff” or “Marble VOIP”) 21 filed this action against Zoom in the United States District Court for the District of Kansas, 22 alleging infringement of United States Patent No. 7,376,129 (the “’129 Patent”). (Dkt. No. 1.) 23 The ’129 Patent, entitled “Enabling collaborative applications using Session Initiation Protocol 24 (SIP) based Voice over Internet protocol Networks (VoIP)” is “directed to a method, program 25 storage device, and system for enabling Voice over Internet Protocol (“VoIP”) for computer 26 applications.” (Dkt. No. 27 ¶ 1, see also Dkt. No. 27-1.) Marble VOIP alleges that Zoom’s Zoom 27 Phone and Zoom Meetings platform infringe claims 1–3, 5–15, and 17–13 of the ’129 Patent. 1 On December 2, 2022, Zoom moved to dismiss the First Amended Complaint under Rule 2 12(b)(6). (Dkt. Nos 29, 30.) As relevant here, Zoom argued in its motion that the ’129 Patent was 3 directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. (Dkt. No. 30 at 7–23.) On 4 April 24, 2023, Judge Robinson issued an Order denying Zoom’s motion to dismiss, finding that 5 “there are plausible factual allegations that the [’129 Patent] claims are not directed to an abstract 6 idea or do include inventive concepts.” (Dkt No. 41 (“12(b)(6) Order”) at 21.) 7 Subsequently, Zoom answered the First Amended Complaint (Dkt. No. 62) and moved to 8 transfer this case to this District. (Dkt. No. 49.) The motion to transfer was granted, and this case 9 was transferred to this Court on July 21, 2023 (Dkt. Nos. 74, 75.) On October 25, 2023, Zoom 10 filed this motion for judgment on the pleadings under Rule 12(c), again on the grounds that the 11 ’129 Patent is directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. (Dkt. No. 113.) 12 ANALYSIS 13 A. Legal Standard 14 Federal Rule of Civil Procedure 12(c) permits a party to move for judgment on the 15 pleadings “[a]fter the pleadings are closed – but early enough not to delay trial[.]” Fed. R. Civ. P. 16 12(c). A Rule 12(c) motion is “functionally identical” to a motion to dismiss pursuant to Federal 17 Rule of Civil Procedure 12(b)(6) and challenges the legal sufficiency of the claims asserted in the 18 complaint. Ross v. U.S. Bank Nat’l Ass’n, 542 F. Supp. 2d 1014, 1023 (N.D. Cal 2008). Judgment 19 on the pleadings should be entered when a complaint does not plead “enough facts to state a claim 20 to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). 21 “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to 22 draw a reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. 23 Iqbal, 556 U.S. 662, 678 (2009). As with a motion to dismiss, for purposes of a Rule 12(c) motion 24 for judgment on the pleadings, “the allegations of the non-moving party must be accepted as true.” 25 Hal Roach Studios, Inc. v. Richard Feiner and Co., Inc., 896 F.2d 1542, 1550 (9th Cir. 1990). 26 Thus, “[j]udgment on the pleadings is proper when the moving party clearly establishes on the 27 face of the pleadings that no material issue of fact remains to be resolved and that it is entitled to B. “Law of the Case” Doctrine 1 Marble VOIP argues that Zoom’s motion is barred by the “law of the case” doctrine. (Dkt. 2 No. 119 (“Opp.”) at 6–9.) A Rule 12(c) motion for judgment on the pleadings that raises issues 3 already decided on a prior Rule 12(b)(6) motion to dismiss is subject to the “law of the case” 4 doctrine. See Strigliabotti v. Franklin Res., Inc., 398 F. Supp. 2d 1094, 1098 (N.D. Cal. 2005). 5 “Under the ‘law of the case’ doctrine, ‘a court is generally precluded from reconsidering an issue 6 that has already been decided by the same court, or a higher court in the identical case.’ ” United 7 States v. Alexander, 106 F.3d 874, 876 (9th Cir. 1997) (quoting Thomas v. Bible, 983 F.2d 152, 8 154 (9th Cir. 1993). This applies to decisions made by a transferor court prior to transfer. Muth v. 9 Fondren, 676 F.3d 815, 818 (9th Cir. 2012), as amended (May 31, 2012); see also Opperman v. 10 Path, Inc., No. 13-CV-00453-JST, 2014 WL 246972, at *4 (N.D. Cal. Jan. 22, 2014). However, 11 this doctrine is “not a limitation on a tribunal’s power, but rather a guide to discretion.” 12 Alexander, 106 F.3d at 876. Accordingly, a court may exercise its discretion and decline to follow 13 the law of the case where “1) the first decision was clearly erroneous; 2) an intervening change in 14 the law has occurred; 3) the evidence on remand is substantially different; 4) other changed 15 circumstances exist; or 5) a manifest injustice would otherwise result.” Id. 16 Zoom does not dispute that the issue of patent eligibility it raises in this motion is identical 17 to that which it raised in its prior motion to dismiss. Instead, Zoom argues that the law of the case 18 doctrine should not apply here because the patent eligibility issue was not actually decided in 19 Judge Robinson’s prior order. (See Dkt. No. 125 (“Reply”) at 3.) The Court disagrees. Zoom 20 argues that the 12(b)(6) Order clarified that “it [did] not decide at [that] time that the underlying 21 claims are patent eligible”, but this argument rings hollow – Judge Robinson explicitly decided 22 that under Rule 12(b)(6), “there are plausible factual allegations that the claims are not directed to 23 an abstract idea or do include inventive concepts.” (12(b)(6) Order at 21.) That is the precise 24 issue that Zoom is raising in this motion – whether under Rule 12(c), a functionally identical 25 standard to Rule 12(b)(6), there are sufficient plausible allegations that the claims of the ’129 26 Patent are patent eligible under 35 U.S.C § 101. Judge Robinson’s clarification was to indicate 27 that the 12(b)(6) Order would not preclude Zoom from re-raising the issue at a later motion for 1 summary judgment or at trial, with the benefit of a full evidentiary record. It was not, as Zoom 2 now contends, an invitation to take a second bite at the apple under Rule 12(c). 3 Having determined that the issue raised in this motion was already decided by Judge 4 Robinson in the 12(b)(6) Order, the Court now turns to the question of whether it should exercise 5 its discretion and depart from the law of the case. Here, Zoom does not argue that the 12(b)(6) 6 Order was clearly erroneous, that an intervening change in law has occurred, or that following the 7 law of the case would result in manifest injustice. Rather, Zoom urges the Court to reconsider the 8 12(b)(6) Order in light of an intervening claim construction order in a parallel case brought by 9 Marble VOIP against RingCentral, Inc. asserting the ’129 Patent (the “RingCentral Case”). See 10 Dkt. No. 113-1 (the “RingCentral Claim Construction Order”). Zoom argues that the RingCentral 11 Claim Construction Order, as well as statements made in Marble VOIP’s claim construction 12 briefing in that case, constitute changed circumstances or new evidence that warrants departing 13 from the law of the case here. The Court disagrees and finds no reason to do so. 14 Judge Robinson’s 12(b)(6) Order, at least as to Alice step one, did not rely upon or 15 consider any claim construction issues in concluding that Marble VOIP “has plausibly alleged that 16 the ’129 Patent is sufficiently concrete to satisfy step one of the Alice inquiry.” (12(b)(6) Order at 17 19–20.) Thus, even if the Court were to consider the RingCentral Claim Construction Order and 18 related briefing, nothing in those documents materially impacts the 12(b)(6) Order’s findings as to 19 Alice step one, and correspondingly, its ultimate conclusion as to the sufficiency of the pleadings 20 as to patent eligibility. Zoom’s arguments as to inconsistencies between Marble VOIP’s 21 arguments in opposing this motion and its claim construction briefing in the RingCentral case are 22 irrelevant – what matters here is whether the claim construction issues in the RingCentral Case are 23 material to the prior order that it urges the Court to reconsider. Here, they are not because Judge 24 Robinson did not rely upon any claim construction issues in deciding the patent eligibility issue in 25 the 12(b)(6) Order. For these reasons, the Court finds no changed circumstances or new evidence 26 exist here that warrant departing from the law of the case. See Alexander, 106 F.3d at 877 27 (declining to depart from law of the case based on inaccurate witness declarations, reasoning that 1 declarations in making his finding[.]”). 2 Having found no reason to depart from the law of the case here, the Court need not reach 3 the rest of Zoom’s arguments as to patent eligibility. 4 CONCLUSION 5 Because Zoom’s motion for judgment on the pleadings raises the same issues that Judge 6 Robinson previously decided in denying its motion to dismiss, and the Court finds no reason to 7 depart from the law of the case here, the Court DENIES Zoom’s motion. 8 IT IS SO ORDERED. 9 Dated: January 8, 2024 10 ______________________________________ JEFFREY S. WHITE 11 United States District Judge 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27