H W Technology LC v. Apple Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: H-W Technology L.C. (Texas)
  • Defendant: Apple Inc. (California) and 31 other entities
  • Plaintiff’s Counsel: Navarro Huff, PLLC
• Case Identification: 3:11-cv-00651, N.D. Tex., 03/30/2011
• Venue Allegations: Plaintiff alleges venue is proper because Defendants have transacted business and committed acts of patent infringement within the Northern District of Texas, including through the provision of interactive websites.
• Core Dispute: Plaintiff alleges that Defendants’ smartphones and associated software applications infringe a patent related to using a multi-convergence device to complete a merchant transaction over a data network without generating a voice call.
• Technical Context: The technology concerns the integration of data-based e-commerce and advertising services on communication devices, a foundational concept for the modern mobile application ecosystem on smartphones.
• Key Procedural History: A Certificate of Correction was issued for the asserted patent, which amended a key claim to include language that closely tracks the infringement theory articulated in the complaint.

Case Timeline

Date	Event
2004-03-19	Priority Date for U.S. Patent No. 7,525,955
2009-04-28	Issue Date for U.S. Patent No. 7,525,955
2011-03-30	Complaint Filed
2013-05-28	Certificate of Correction Issued for U.S. Patent No. 7,525,955

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,525,955 - "Internet Protocol (IP) Phone with Search and Advertising Capability," issued April 28, 2009

The Invention Explained

• Problem Addressed: The patent describes shortcomings of IP phones circa 2004, noting they were not easily adaptable for different software applications or communication infrastructures (e.g., broadband and POTS lines concurrently) and lacked the ability to perform contextual searches for local businesses, for which there was a perceived market demand (’955 Patent, col. 2:1-23).
• The Patented Solution: The invention proposes a "converged communications terminal" with a flexible, layered software platform that abstracts the hardware and communication network layers from the application layer (’955 Patent, Abstract; Fig. 3). This architecture is designed to enable a device to run various applications (like e-commerce or advertising) over different networks (like VoIP or POTS), allowing a user to conduct transactions with merchants, such as by performing a search and completing a purchase, entirely through a data-based application without making a traditional voice call (’955 Patent, col. 2:36-49).
• Technical Importance: The technology aimed to transform an IP phone from a voice-centric device into a multi-functional terminal capable of supporting integrated data services, prefiguring the functionality of modern mobile application platforms (’955 Patent, col. 2:28-32).

Key Claims at a Glance

The complaint alleges infringement of the ’955 Patent generally, and a post-filing Certificate of Correction amended independent method claim 9 to add limitations that are central to the complaint's infringement theory. The elements of the corrected independent claim 9 are:

• A method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:
  • receiving a command to perform a contextual search;
  • receiving search criteria from a user of said IP phone;
  • submitting said search criteria to a server coupled to said IP phone; and
  • receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list;
• wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call;
• wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and
• wherein said user's contact and payment information is not transmitted to said one of said merchants listed, wherein said user's contact and payment information is available to said one of said merchants listed.

The complaint does not explicitly reserve the right to assert dependent claims, though such a reservation is standard practice.

III. The Accused Instrumentality

Product Identification

The complaint accuses a wide range of products and services across the mobile industry. The primary accused instrumentalities are smartphones (e.g., the Apple iPhone, Blackberry Torch, HTC Thunderbolt) and associated "domain specific applications" that enable e-commerce and other services (e.g., the Amazon, eBay, and Hotels.com smartphone applications) (Compl. ¶¶40-56).

Functionality and Market Context

The complaint alleges that the accused smartphones function as "multi-convergence device[s]" and that the accused applications allow users to "connect to a... server and complete a merchant transaction without the need to generate a voice call" (Compl. ¶42, ¶45). This describes the core functionality of mobile commerce, where a user on a smartphone can browse, search for, and purchase goods or services directly within a software application using a data network connection. The breadth of named defendants suggests the accused functionality is a central feature of the modern smartphone and mobile commerce market (Compl. ¶¶1-33).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint provides a high-level, repetitive infringement theory against all defendants without mapping allegations to specific claim elements. The following chart summarizes the narrative theory as it maps to the elements of the corrected independent claim 9.

'955 Patent Infringement Allegations

Claim Element (from Independent Claim 9, as corrected)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
a method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of: receiving a command to perform a contextual search; receiving search criteria from a user of said IP phone; submitting said search criteria to a server...; and receiving from said server a list of merchants...	The accused systems, such as the Apple iPhone running an e-commerce application, allegedly allow a user to initiate a search, input criteria, send the query to a server, and receive results.	¶39, ¶40	col. 28:11-20
wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call	The core allegation is that users of the accused smartphone applications can complete a merchant transaction entirely within the application over a data network, without initiating a voice call.	¶39, ¶40	col. 28:21-23
wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers... wherein said selected offer is transmitted to said one of said merchants listed electronically	The search results presented in the accused applications allegedly constitute "offers" from which a user can select, and that selection is then transmitted electronically to the merchant to complete a purchase.	¶39, ¶40	col. 28:24-28
wherein said user's contact and payment information is not transmitted... wherein said user's contact and payment information is available to said one of said merchants listed	The complaint does not provide sufficient detail for analysis of this specific data-transfer mechanism.	¶39, ¶40	col. 28:24-28

• Identified Points of Contention:
  • Scope Questions: A central dispute may arise over whether the term "Internet Protocol (IP) phone," rooted in the patent's 2004 priority date and depiction of a desk-style phone (Fig. 2), can be construed to read on the accused modern "smartphones," which function as general-purpose mobile computers.
  • Technical Questions: Corrected claim 9 requires a specific data flow where user payment information is simultaneously "not transmitted" but is "available" to the merchant. The complaint's generalized allegations about completing a transaction raise the question of what evidence will be presented to prove this specific, two-part data-handling limitation is met by the accused systems.

V. Key Claim Terms for Construction

• The Term: "Internet Protocol (IP) phone"

  • Context and Importance: The construction of this term is fundamental to the scope of the patent. A narrow construction limited to the VoIP desk phones common at the time of the invention could place the accused modern smartphones outside the claim scope, whereas a broader construction could cover any IP-enabled communication device.
  • Evidence for a Broader Interpretation: The specification also refers to the invention as a "converged communications terminal" and notes its ability to be used with "wireless communication," language that may support application to devices beyond traditional desk phones (’955 Patent, Abstract; col. 1:35-36).
  • Evidence for a Narrower Interpretation: The patent is titled "Internet Protocol (IP) Phone," and Figure 2 depicts a device with the form factor of a desk phone or early 2000s feature phone, not a modern smartphone with a large touchscreen interface (’955 Patent, Title; Fig. 2). The background repeatedly frames the invention in the context of IP phones and traditional PSTN phones (’955 Patent, col. 1:40-54).

• The Term: "completes a transaction... without the need to generate a voice call"

  • Context and Importance: This phrase, added via the Certificate of Correction, is the crux of the infringement allegation. Practitioners may focus on this term because its meaning will define the allegedly infringing act. The dispute will likely concern what specific sequence of user actions and system responses constitutes "complet[ing] a transaction."
  • Evidence for a Broader Interpretation: The patent describes a "no contact call service" where a user provides information via an "input interface" and the system transfers it to the merchant, which could be argued to encompass a wide range of modern e-commerce checkout processes (’955 Patent, col. 24:46-51; Fig. 25).
  • Evidence for a Narrower Interpretation: The functionality is described in the context of replacing a direct voice call to a merchant. A defendant could argue the claim should be limited to transactions that would have traditionally required a phone call (e.g., ordering food for delivery), as opposed to all forms of online commerce.

VI. Other Allegations

• Willful Infringement: The complaint alleges that infringement will be willful at least from the date the complaint was filed, thereby providing notice to the defendants (Compl., Prayer for Relief ¶D). It further reserves the right to seek a finding of willfulness for pre-suit conduct should facts supporting such a claim be revealed in discovery (Compl. ¶57).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "Internet Protocol (IP) phone," originating from a 2004 priority date and illustrated with a hardware-centric device, be construed to cover modern, software-driven smartphones that function as general-purpose computers?
• A key evidentiary question will be one of technical proof: can the plaintiff demonstrate that the accused e-commerce applications perform the specific data-handling method of the corrected Claim 9, where a user's payment information is both not transmitted to a merchant yet simultaneously available to that merchant during a transaction? The complaint's high-level allegations do not specify how this is accomplished in any accused system.