H-W Technology, L.C. ("H-W") filed a patent infringement action against Apple and several other defendants including Amazon and Buy.com. H-W alleged that it had ownership of U.S. Patent No. 7,525,955, entitled "Internet Protocol (IP) Phone with Search and Advertising Capability" (the '955 patent). The 955 patent is directed to systems and methods of using a multi-convergence device, including phones commonly referred to as smartphones, which are able to converge voice and data within a single terminal, and which allow users of such devices via domain specific applications to receive information and offers from merchants and to complete a transaction with one of said merchants without having to generate a phone call.

The Defendants argued that claims 1 and 17 of the patent were indefinite and invalid under 35 U.S.C. § 112, paragraph 2, for combining two statutory classes of invention within a single claim. The defendants also asserted that claim construction was not necessary to rule on the motion to dismiss because H-W had not included any argument in its claim construction briefs regarding the subject-matter class covered by the claim language at issue. H-W asserted that the validity of its patent claims had to be considered on summary judgment context, with the benefit of claim construction and expert discovery, and not on a motion to dismiss.

The district court agreed with H-W, finding that "at least one court in this district has held that claim indefiniteness is a matter which is more appropriately addressed through summary judgment. See Mannatech, Inc. v. TechMedia Health, Inc., No. 3:06-CV-00813-P, 2009 WL 3614359, at *15 (N.D. Tex. Oct. 29, 2009) (determination of claim indefiniteness is not appropriate at the claim construction stage because "a court must first attempt to determine what a claim means before it can determine whether the claim is invalid for indefiniteness"). Another court in this circuit has refused to consider validity arguments even on a summary judgment motion, reasoning that claim construction had not yet occurred. See Innovention Toys, LLC v. MGA Entm't, Inc., No. 07-6510, 2009 WL 424398, at *8 (E.D. La. Feb. 19, 2009) ('[I]t is incumbent on a court to set forth its construction of any disputed terms before making findings on validity unless the court determines that the resolution of claim construction would not impact its ruling.").

As the district court explained, "[b]ased on this reasoning, the Court denied Defendants' first motion to dismiss." As further explained by the district court, "[t]he earlier recommendation distinguished the authorities cited by Defendants, noting that those courts which granted 12(b)(6) dismissals found the patents invalid under § 101 because they claimed ineligible subject matter-not because the claims were invalid for indefiniteness under § 112, paragraph 2. (Doc. 316 at 7.) Moreover, the cases which did dismiss on the same grounds urged by Defendants were decided in a different procedural context, e.g., at the summary judgment stage. (Id. at 8.) Defendants have presented no additional authority holding that claim construction is unnecessary to determine whether a claim combines two statutory classes of invention. As a ruling on claim construction is still outstanding, the Court should decline to address Defendants' indefiniteness argument upon the present record and at this particular stage."

The Defendants also contended that H-W had failed to plead sufficient facts to support a claim for direct infringement under 35 U.S.C. § 271(a). As explained by the district court, "[a]s in their first motion, Defendants again argue that claim 9 is a method claim with steps requiring performance by at least two parties. They contend that to succeed on its direct infringement claim, Plaintiff must make joint infringement allegations against the defendants- and that it has not done so. (Docs. 195 at 15-17; 391 at 2-3.) Defendants contend that a cognizable claim of joint infringement requires identification of a second party and an allegation that each defendant exercises control over the second party through an agency or contractual relationship. (Doc. 195 at 16.)" Contrary to the defendants' assertion, H-W maintained that the method may be performed by a single party and that the Court cannot properly decide Defendants' motion without engaging in claim construction. H-W therefore contended that the Defendants' motion was premature and should also be denied on grounds that the Court had not yet issued its claim construction ruling.

The district court then explained that it had "dismissed Defendants' earlier filed motion as premature. So, too, did the district court in Actus, LLC v. Bank of Am. Corp., No. 2:09-CV-102-TJW, 2010 WL 547183, at *2 (E.D. Tex. Feb. 10, 2010), when faced with a similar motion. In Actus, the court explained that plaintiffs in a patent infringement lawsuit are not required to attach fully-developed infringement contentions to their complaint. See id.; see also TQP Dev., LLC v. Ticketmaster Entm't, Inc., No. 2:09-CV- 279-TJW, 2010 WL 1740927, at *2 (E.D. Tex. April 29, 2010) (adopting the same reasoning). Yet another court faced with a similar motion declined to construe the patent claim to determine whether the claim required an allegation of joint infringement, reasoning that the proper time to address claim construction was not on a motion to dismiss. Yangaroo, 2009 WL 2386643, at *3; see also In re Bill of Lading, 695 F. Supp. 2d at 689 ("[W]hether the method of the patent requires one or more actors is not properly determined in a Rule 12 context, but is a question for claim construction.")."

Based on this reasoning, the district court again concluded that "the case is in essentially the same procedural posture as before-no claim construction ruling has issued and, therefore, dismissal is premature. The Court should deny Defendants' motion to dismiss Plaintiff's claim for direct infringement of independent claim 9 and its dependent claims."

H-W Technology, L.C. v. Apple, Inc., Case No. 3:11-CV-651-G (N.D. Tex. May 28, 2013)