Verna IP Holdings LLC v. Pocketstop LLC

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
DALLAS DIVISION
VERNA IP HOLDINGS, LLC, 	§
Plaintiff, 	§
§
v. 	§ 	No. 3:24-CV-02408-L-BW
§
POCKETSTOP, LLC, 	§
Defendant. 	§
FINDINGS, CONCLUSIONS, AND RECOMMENDATION
OF THE UNITED STATES MAGISTRATE JUDGE
Before the Court is Defendant Pocketstop, LLC’s (“ATAC”)1 Rule 12(b)(6)
Motion to Dismiss for Failure to State a Claim (Dkt. No. 18 (“Motion”)) in this case
brought by Plaintiff Verna IP Holdings, LLC (“Verna”). United States District
Judge Sam A. Lindsay referred this case to the undersigned United States Magistrate
Judge for pretrial management. (Dkt. No. 17.) All dispositive motions, such as
ATAC’s Motion, are referred to the undersigned for hearing, if necessary, and for the
submission of proposed findings and recommendations for disposition. (See id.)
Based on the relevant filings and applicable law, the undersigned recommends
that the Motion be DENIED WITHOUT PREJUDICE.
I. BACKGROUND
A. 	The Asserted Patent
U.S. Patent No. 11,403,932 (“the ‘932 patent”), titled “Digitized Voice
Alerts,” was filed by Verna on August 4, 2020 and issued on August 2, 2022. (Dkt.
1 Pocketstop, LLC was renamed to ATAC, LLC in May 2024. (Dkt. No. 27 at 2 n.1.)
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No. 1 (“Complaint”), Ex. A (“‘932 Patent”) Cover.) The ‘932 patent’s specification
describes “an improved and efficient approach for transmitting or broadcasting
instant voice alerts to remote electronic devices automatically during times of
emergencies or as a part of security monitoring systems.” (‘932 Patent at 1:64–67.)
The system involves a “server” capable of communicating with one or more real-
time information services operated by private security companies, non-profits, or
government agencies. (See id. at 8:7–17.) The system can also connect with a
Personal Localized Alert Network (PLAN) “for the transmission of local emergency
services, Amber alerts, Presidential messages, [and] government notices” to wireless
companies, which in turn “use their cell towers to forward the messages to
subscribers in the affected area.” (Id. at 20:5–14.) The ‘932 patent describes a
process for converting these text-based emergency messages into “digitized voice
alert[s] for automatic delivery in a selected series of languages” to remote electronic
devices, (id. at Abstract), so that “users can hear the message[s] without doing
anything,” (id. at 15:8–9). Emergency text notifications are replaced with audio
announcements that play directly from phones, tablets, and computers automatically
upon receipt.
On September 24, 2024, Verna filed the instant lawsuit against ATAC,
asserting that ATAC infringed the ‘932 patent. (Complaint.) Verna accuses ATAC
of direct and indirect infringement, including induced infringement, of “one or more
of claims 1–18 of the ‘932 patent” through the maintenance, operation, and
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administration of ATAC’s mass notification products and services. (Id. ¶¶ 8–13.)
The ’932 patent has four independent claims: Claims 1, 10, 17, and 18. (Motion at
10.) Verna argues that “Claim 1 is representative” of the claims at issue in this case.
(Dkt. No. 21 (“Resp.”) at 1.) ATAC initially offered up Claim 18 as the
representative claim in this case, (Motion at 10), but ultimately argued that, because
the differences between the four independent claims are negligible, there is no
difference between treating Claim 1 or Claim 18 as representative, (Dkt. No. 25
(“Reply”) at 4).
Claim 1 of the ‘932 patent recites:
1. A method for providing instant emergency voice alerts to wireless hand held
device users in a specified region, the method comprising:
determining an emergency situation affecting a specified region and requiring
emergency notification of the emergency situation to wireless hand held
device users in the specified region;
generating and converting a text message indicative of the emergency situation
into a digitized voice alert;
converting the digitized voice alert into at least one language selected from a
plurality of languages for broadcast of the digitized voice alert through the
at least one wireless hand held device; and
transmitting the digitized voice alert through specific towers of a cellular
communications network in the specified region for distribution of an
emergency announcement about the emergency situation provided by the
digitized voice alert to at least one wireless hand held device in
communication with the specific towers of the cellular communications
network in the specified region.
(‘932 Patent at Cl. 1.)
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B. 	Procedural Background
In response to Verna’s complaint, ATAC filed this motion to dismiss on
March 26, 2025, arguing that dismissal is warranted for two reasons: (1) Verna’s ‘932
patent is ineligible for patent protection because it attempts to patent an abstract idea,
and (2) even if the ‘932 patent is valid, Verna cannot argue infringement because it
cannot plausibly allege that ATAC violated every element of the asserted claims.
(Motion at 1.) ATAC also filed an Answer with Counterclaims, (Dkt. No. 19 (“D.
Ans.”)), that same day, seeking declarations regarding the invalidity of, and ATAC’s
non-infringement of, the ‘932 patent, (id. at 8–9). Verna filed its Response, (Resp.),
on April 9, 2025 and its Answer to Counterclaims, (Dkt. No. 22 (“P. Ans.”)), on
April 16, 2025, arguing that ATAC’s portrayal of the ‘932 patent is an
“oversimplification” and that Verna has made sufficient factual allegations to
preclude dismissal at the Rule 12(b)(6) stage, (Resp. at 9, 12–13). ATAC filed a
Reply (Reply) on April 30, 2025.
The parties in this case filed a Joint Claim Construction and Prehearing
Statement, (Dkt. No. 26 (“Joint Br.”)), on July 15, 2025, setting forth each party’s
proposed construction of a disputed claim term found in both Claim 1 and Claim 18
of the ‘932 patent, (id. at 2). On September 12, 2025, ATAC filed its Claim
Construction Brief (Dkt. No. 27 (“D. Claim Br.”)). In it, ATAC argued that,
because Verna failed to file its own claim construction brief within 45 days of the
filing of the joint claim construction and prehearing statement as required under this
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Court’s Misc. Order No. 62 ¶ 4-5(a), Verna had forfeited its right to file a claim
construction brief and should at most be permitted to file a reply brief. (Id. at 2.)
Verna then filed its Claim Construction Brief, (Dkt. No. 28 (“P. Claim Br.”)), on
November 3, 2025, asserting that the case “has not progressed” and that the Misc.
Order No. 62 deadlines were not applicable because there has not been an initial
conference in this case, (id. at 2).
II. LEGAL STANDARD
A. 	Rule 12(b)(6)
A party may move to dismiss a claim if the complaint “fail[s] to state a claim
upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). To survive a Rule
12(b)(6) motion to dismiss, a complaint must allege “enough facts to state a claim to
relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). “A claim has facial plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the defendant is liable for the
misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). When considering a
Rule 12(b)(6) motion to dismiss, a court must “accept all well-pleaded facts as true
and view those facts in the light most favorable to” the nonmoving party. Sterling v.
City of Jackson, 159 F.4th 361, 372 (5th Cir. 2025). But this does not mean that courts
are “bound to accept as true a legal conclusion couched as a factual allegation,”
Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555); nor does it require courts
to presume true mere “conclusory statements” or “threadbare recitals of the elements
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of a cause of action,” Armstrong v. Ashley, 60 F.4th 262, 269 (5th Cir. 2023) (quoting
Harmon v. City of Arlington, 16 F.4th 1159, 1162–63 (5th Cir. 2021)). Rather, it simply
means that courts should take the well-pleaded factual allegations in a complaint
and, assuming their veracity, “determine whether they plausibly give rise to an
entitlement to relief.” Iqbal, 556 U.S. at 679.
B. 	Patent Eligibility
Determining whether a patent’s subject-matter is eligible for protection “under
§ 101 is a question of law, resolved based on underlying facts,” WhitServe LLC v.
Donuts Inc., 809 F. App’x 929, 932 (Fed. Cir. 2020), and “[l]ike other legal questions
based on underlying facts, this question may be . . . resolved on a Rule 12(b)(6)”
motion to dismiss, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir.
2018). This is only true, however, “when there are no factual allegations that, taken
as true, prevent resolving the eligibility question as a matter of law.” Aatrix Software,
Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018). A
nonmoving party’s plausible factual allegations regarding the issues undergirding the
eligibility inquiry can preclude dismissal and shield a patent from an early
ineligibility determination. See id.
Section 101 of the Patent Act provides that anyone who “invents or discovers
any new and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent.” 35 U.S.C. § 101. But
this provision is subject to “an important implicit exception: laws of nature, natural
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phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (cleaned up). These three excluded categories encompass the
“basic tools of scientific and technological work,” the monopolization of which
through “the grant of a patent might tend to impede innovation more than it would
tend to promote it.” Id. (citations omitted). To determine when a patent includes
ineligible subject-matter, and to distinguish the patents that attempt to claim these
basic tools of human ingenuity for themselves from those that apply them to new and
useful ends, courts apply the two-step Alice test. Id. at 216–18.
At Alice step one, courts determine “whether the claims at issue are directed to
a patent-ineligible concept,” like an abstract idea. Alice, 573 U.S. at 218. They do
this by looking at the “focus” of the claims and assessing their “character as a
whole.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)). If the
claims are directed to a patent-ineligible concept, courts then move to Alice step two
and consider whether the elements of each claim, “both individually and ‘as an
ordered combination,’” add enough to “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Serv. v.
Prometheus Lab., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court has described
this second step in the Alice test as a search for some “‘inventive concept’, sufficient
to ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Mayo, 566 U.S. at 72–73 (citations omitted). Step two is
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satisfied when the claim limitations amount to more than the “performance of well-
understood, routine, and conventional activities previously known to the industry.”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
A court may analyze a single representative claim for the eligibility of the
entire patent where all the asserted and challenged “claims are substantially similar
and linked to the same” purportedly abstract idea. Cleveland Clinic Found. v. True
Health Diagnostics LLC, 859 F.3d 1352, 1360 (Fed. Cir. 2017) (quoting Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed.
Cir. 2014)). The parties in this case do not dispute that it would be appropriate here
to focus on a single representative claim. Verna believes that Claim 1 is
representative. (Resp. at 1.) ATAC argued that Claim 18 is representative, (Motion
at 10), but the impact would be negligible if Claim 1 were instead treated as
representative, (Reply at 4).
C. 	Patent Infringement
“Direct infringement requires a party to perform or use each and every step or
element of a claimed method or product.” BMC Res., Inc. v. Paymentech, L.P., 498
F.3d 1373, 1378 (Fed. Cir. 2007) (citations omitted). “For process patents or method
patent claims, infringement occurs when a party performs all of the steps of the
process.” Id. at 1379 (citing Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir.
1993)). This “all-elements rule” means that it is only infringement when every
claimed step of a patented process has been performed, either “literally or by an
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equivalent of that step.” Canton Bio-Med., Inc. v. Integrated Liner Techs., Inc., 216 F.3d
1367, 1370 (Fed. Cir. 2000) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520
U.S. 17, 29, 40 (1997)). “Processes are equivalent, in terms of the law of patent
infringement, when there is no substantial difference between the patented process
and the accused process.” Id. at 1369.
To allege indirect infringement, the plaintiff must plead specific facts sufficient
to show that the accused infringer had actual knowledge of the patent-in-suit or was
willfully blind to the existence of the patent-in-suit. Glob.-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754, 766, 769 (2011). “Whoever actively induces infringement of a
patent shall be liable as an infringer.” 35 U.S.C. § 271(b). To succeed on an induced
infringement claim, “the patentee must establish first that there has been direct
infringement, and second that the alleged infringer knowingly induced infringement
and possessed specific intent to encourage another’s infringement.” ACCO Brands,
Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1312 (Fed. Cir. 2007) (cleaned up).
Liability under § 271(b) “requires knowledge that the induced acts constitute patent
infringement.” Glob.-Tech, 563 U.S. at 766. “For an allegation of induced
infringement to survive a motion to dismiss, a complaint must plead facts plausibly
showing that the accused infringer specifically intended another party to infringe the
patent and knew that the other party’s acts constituted infringement.” Lifetime Indus.,
Inc. v. Trim-Lok, Inc., 869 F.3d 1372, 1379 (Fed. Cir. 2017) (cleaned up).
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Another form of indirect infringement is contributory infringement, which
“occurs if a party sells or offers to sell, a material or apparatus for use in practicing a
patented process, and that ‘material or apparatus’ is material to practicing the
invention, has no substantial non-infringing uses, and is known by the party ‘to be
especially made or especially adapted for use in infringement of such patent.’” In re
Bill of Lading Transmission & Processing Sys. Pat. Litig., 681 F.3d 1323, 1337 (Fed. Cir.
2012) (quoting 35 U.S.C. § 271(c)). Like induced infringement, contributory
infringement requires both a showing that “an act of direct infringement” has
occurred, Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312
(Fed. Cir. 2005), and a showing that the alleged infringer had “knowledge of the
patent in suit and knowledge of patent infringement.” Commil USA, LLC v. Cisco Sys.,
Inc., 575 U.S. 632, 639 (2015).
III. ANALYSIS
A. 	35 U.S.C. § 101
ATAC filed the instant Motion arguing that the claims of the ‘932 patent are
invalid under 35 U.S.C. § 101 because they all “are directed to the abstract idea of
providing voice messages as localized emergency alerts, and none of the claims
contain an ‘inventive concept . . . sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the ineligible concept itself.’”
(Motion at 9–10 (quoting Alice, 573 U.S. at 217–18).) In short, ATAC argues that
the independent claims of the ‘932 patent are directed to the abstract idea of
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providing voice messages as localized emergency alerts, that the claims are not
directed to a specific improvement in a computer’s capabilities, and that the claims
are untethered to a specific implementation. (See id. at 11–15.) Regarding Alice step
two, ATAC argues the ‘932 patent’s claims do not contain an inventive concept. (Id.
at 15–18.)
Verna responds that the claims of the ‘932 patent are directed to concrete steps
and that ATAC oversimplifies the claimed invention and ignores important
limitations. (Resp. at 9.) Verna argues that the focus of the claims is “automatic
digitized conversion of text messages to voice alerts for transmission to remote
electronic devices.” (Id. at 4.) Furthermore, Verna argues that inventive concepts
exist that preclude dismissal at this stage and that certain factual allegations in the
Complaint and Patent Specification preclude dismissal. (Id. at 13.) Those factual
allegations include: (1) “providing an audible notification to a driver of a vehicle so
they are not distracted;” (2) “providing that such notifications were not possible prior
to the claimed invention” in a PLAN; and (3) “providing an improved and efficient
approach for transmitting or broadcasting instant voice alerts to remote electronic
devices automatically during times of emergency or security monitoring to save lives
and resources.” (Id. at 14.)
ATAC’s Motion to Dismiss was filed prior to claim construction and before
the close of fact discovery. For the reasons explained below, the undersigned does
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not believe this case to be one where it is appropriate to resolve the § 101 eligibility of
the asserted patent at the Rule 12(b) motion to dismiss stage.
Patents granted by the United States Patent and Trademark Office are
presumptively valid. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 100 (2011) (citing
35 U.S.C. § 282). Because the Patent and Trademark Office has already examined
the ‘932 patent and determined it satisfies “the prerequisites for issuance of a patent,”
it is presumed to fall within the patent eligible subject-matter of 35 U.S.C. § 101.
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019) (quoting
Microsoft, 564 U.S. at 95–96). Overcoming the presumption of validity in a district
court generally requires clear and convincing evidence. Microsoft, 564 U.S. at 95.
This is true in the context of § 101 eligibility. At the second step of Alice’s two-
part test, a claim is sufficiently inventive to amount to more than a patent on an
ineligible abstract idea when the “claim limitations involve more than performance
of well-understood, routine, and conventional activities previously known to the
industry.” Berkheimer, 881 F.3d at 1367. And “[t]he question of whether a claim
element or combination is well-understood, routine and conventional to a skilled
artisan in the relevant field is a question of fact.” Id. at 1368. The Federal Circuit
has been clear—any fact “that is pertinent to the invalidity conclusion,” such as
whether a claim element or combination is well-understood or routine, “must be
proven by clear and convincing evidence.” Id. at 1368.
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When analyzing a Rule 12(b) motion to dismiss, a court must accept the
complaint’s factual allegations as true and must “draw all reasonable inferences in
the [patentee’s] favor.” Lormand v. U.S. Unwired, Inc., 565 F.3d 228, 232 (5th Cir.
2009). This means that, when deciding § 101 patent eligibility on a motion to
dismiss, a court at Alice step two must first accept the complaint’s factual allegations
as true before determining whether there is clear and convincing evidence that the
patent’s claim limitations are merely well-understood, routine, or conventional
activities in the relevant industry. The stacking of this heightened burden of proof
upon Rule 12(b)’s factual deference to the nonmoving party creates a high hurdle for
the movant to clear. Concrete allegations in the complaint that “individual elements
and the claimed combination are not well-understood, routine, or conventional
activity” can often be enough at Alice step two to ensure a patent’s survival of a
motion to dismiss. Aatrix, 882 F.3d at 1128. This makes a Rule 12(b) motion to
dismiss a “procedurally awkward place for a court to resolve a patent’s § 101
eligibility.” Slyce Acquisition Inc. v. Syte-Visual Conception Ltd., No. 6:19-cv-257-ADA,
2020 WL 278481, at *5 (W.D. Tex. Jan. 10, 2020).
Due to its fact-intensive nature, the inquiry at Alice step two would benefit
from a robust factual record developed through the discovery process. To resolve the
question of patent eligibility now, well before fact discovery has opened, would
necessarily place the undersigned in the posture of accepting Verna’s allegations as
fact and likely ruling in favor of the ‘932 patent’s eligibility. By contrast, waiting for
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fact discovery would allow both parties to bring more information under judicial
notice and provide a stronger foundation for the factual determination of whether
claim limitations are “well-understood, routine, and conventional to a skilled artisan
at the time of the patent.” Berkheimer, 881 F.3d at 1369. Fact discovery can affect
the outcome of a § 101 eligibility analysis—it would be premature to resolve the issue
before it could occur.
“Claim construction is not an inviolable prerequisite to a validity
determination under § 101.” Content Extraction, 776 at 1349 (cleaned up). But it will
nonetheless “ordinarily be desirable—and often necessary—to resolve claim
construction disputes prior to a § 101 analysis, for the determination of patent
eligibility requires a full understanding of the basic character of the claimed subject
matter.” Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273–74
(Fed. Cir. 2012). The parties in this case dispute the construction of a key phrase
found in both Claim 1 and Claim 18 of the ‘932 patent that could significantly widen
or narrow the scope of what is covered under the claimed process. (See Joint Br. at
2.)
It is understood that claim construction can itself affect, and in some cases
completely change, a court’s § 101 eligibility analysis. Slyce, 2020 WL 278481, at *5,
*8. The Federal Circuit has explained that, when a claim construction dispute arises
at the motion to dismiss stage, the district court “must either adopt the non-moving
party’s constructions or resolve the dispute to whatever extent is needed to conduct
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the § 101 analysis.” MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373, 1379 (Fed. Cir.
2019) (citing Aatrix, 882 F.3d at 1125). The undersigned is persuaded that “it is
generally wiser—and more efficient—to wait to determine a patent’s § 101
eligibility” until after claim construction disputes have been fully resolved. Slyce,
2020 WL 278481, at *5.
Finally, the difficulty of the Alice test itself counsels in favor of delaying the
§ 101 analysis to a later stage of the proceedings. The test’s inconsistent results over
the last decade at the Federal Circuit have made it “near impossible to know with
any certainty whether [a given] invention is or is not patent eligible.” Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1348–56 (Fed. Cir. 2018) (Plager, J.,
concurring in part and dissenting in part). The already challenging two-step
framework becomes “almost impossible to apply consistently and coherently” when
it is directed to the ill-defined “contours of the abstract idea exception,” as it is in this
case. Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1377 (Fed. Cir.
2017) (Linn, J., dissenting in part and concurring in part).
Faced with an “indeterminate” test that seemingly produces “arbitrary
results,” id., parties often draw on analogies to technologies and patents from prior
cases to argue their patent-in-suit is or is not directed to an abstract idea. But under
such a fact-intensive test, and one that draws such fine lines between ineligible
patents directed to abstract ideas and valid patents directed toward improving
computer processes, see Enfish, 822 at 1336, relying on the limited pool of prior
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Federal Circuit eligibility determinations for contrived comparisons to the patent at
hand can have the effect of obscuring the important technical details that could
decide a patent’s eligibility under § 101. Delaying the patent eligibility inquiry would
allow the undersigned to spend more time with the ‘932 patent, developing a more
complete understanding of the nuances of its claimed process through claim
construction, the discovery process, and the filing of subsequent motions. A deeper
familiarity with the patent, and greater fact development on what was well-
understood, routine, or conventional in the industry, would give the undersigned the
best foundation to make the correct § 101 eligibility decision.
B. 	Patent Infringement
Verna accuses ATAC of maintaining, operating, and administering devices,
products, and systems that directly infringe the claims of its ‘932 patent. (Complaint
¶ 8.) Verna also accuses ATAC of indirectly infringing the ‘932 patent by selling its
products and services to customers and instructing them on how they can be used to
send out automatic real-time voice alerts to remote electronic devices; Verna refers to
this as both induced infringement and contributory infringement. (Id. ¶ 11–12.)
Verna’s accusations of infringement are specifically directed at ATAC’s now-inactive
“RedFlag platform,” through which ATAC provided “mass notification solutions to
organizations and institutions.” (Motion at 7.) The system allowed user
organizations to send mass messages and notices to members within specific
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geographic areas. (See Complaint, Ex. B at 7–13.) One communication method
offered through this system was a “mobile phone voice” message. (Motion at 7.)
ATAC argues that Verna cannot plausibly allege direct infringement because
ATAC could not possibly have performed every element of any asserted claim of the
‘932 patent. (See id. at 6.) Both Claim 1 and Claim 18 of the ‘932 patent describe
methods that involve “transmitting the digitized voice alert through specific towers
of a cellular communications network in the specified region for distribution.” (‘932
Patent at Cl. 1, Cl. 18.) In ATAC’s view, it is not capable of performing this element
and infringing the patent because it is not, and never was, “a cellular network
provider that controls how to place calls through cell towers.” (Motion at 7.)
ATAC argues that only a wireless carrier that owns and controls its own cell
towers can choose to “transmit” a voice alert through “specific towers of a cellular
communications network.” (Reply at 1–2.) When RedFlag was used to send mobile
phone voice messages to members, the system used cellular networks in the same
way any individual does when he places a call to a cell phone. (Motion at 7.) The
only way ATAC could have performed this element is by exercising control over, or
operating a joint enterprise with, a third-party cellular provider to commit divided or
joint infringement, which Verna does not allege. (Motion at 8; see Complaint ¶¶ 8–
13.) ATAC asserts that Verna cannot plausibly allege direct infringement, which in
turn means that Verna cannot plausibly allege indirect infringement, and thus all
infringement claims must be dismissed. (Motion at 9.)
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Verna insists that its complaint provided plausible allegations adequate to
support its infringement claims against ATAC. (Resp. at 16.) Verna contends that
when RedFlag was used to deliver voice messages, broadcast from cell towers, to
mobile phones within specific regions or areas, it was being used to “transmit . . .
digitized voice alert[s] through specific towers of a cellular communications network
in [a] specified region.” (See Complaint, Ex. B at 22; ‘932 Patent at Cl. 1, Cl. 18.)
The argument between Verna and ATAC regarding the meaning of this key
phrase found in both Claim 1 and Claim 18 of the ‘932 patent is the sole subject of
the parties’ claim construction dispute. (See Joint Br.) This disagreement cuts
directly to the heart of Verna’s infringement claims, and its resolution with a
definitive, unquestioned interpretation of the contested claim terms would have
significant implications for the ultimate outcome of this case. After reviewing the
‘932 patent and the pleadings in this case, the undersigned believes that proper claim
construction—with the discovery, briefing, and opportunity for hearing it entails—is
necessary to ensure this case is not prematurely disposed of in a motion to dismiss.
The undersigned finds that, as pleaded, factual allegations remain sufficient to defeat
the motion to dismiss. But ATAC should be granted leave to file a motion for
summary judgment after the close of fact discovery and with the benefit of expert
reports.
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IV. RECOMMENDATION
For the foregoing reasons, the undersigned RECOMMENDS that the District
Judge DENY Defendant Pocketstop, LLC’s Motion to Dismiss for Failure to State a
Claim (Dkt. No. 18) and GRANT Defendant Pocketstop, LLC leave to file a motion
for summary judgment after the close of fact discovery, and with the benefit of expert
reports.
SO RECOMMENDED on December 22, 2025.
BRIAN McKAY
UNITED STATES MAGISTRATE JUDGE
INSTRUCTIONS FOR SERVICE AND
NOTICE OF RIGHT TO APPEAL/OBJECT
A copy of this report and recommendation will be served on all parties in the
manner provided by law. Any party who objects to any part of this report and
recommendation must file specific written objections within 14 days after being
served with a copy. See 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(b). To be specific,
an objection must identify the finding or recommendation to which objection is
made, state the basis for the objection, and indicate the place in the magistrate
judge’s report and recommendation where the disputed determination is found. An
objection that merely incorporates by reference or refers to the briefing before the
magistrate judge is not specific. Failure to file specific written objections will bar the
aggrieved party from appealing the factual findings and legal conclusions of the
magistrate judge that are accepted or adopted by the district court, except upon
grounds of plain error. See Douglass v. United Services Automobile Ass’n, 79 F.3d 1415,
1417 (5th Cir. 1996), modified by statute on other grounds, 28 U.S.C. § 636(b)(1)
(extending the time to file objections to 14 days).
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