IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

HEADWATER RESEARCH LLC, 

Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO., LTD and 

SAMSUNG ELECTRONICS AMERICA, INC., 

Defendants. 

Case No. 2:23-CV-00103-JRG-RSP 

SAMSUNG’S MOTION TO DISMISS FOR LACK OF STANDING 

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TABLE OF CONTENTS 

I. INTRODUCTION .............................................................................................................. 1

II. FACTUAL BACKGROUND ............................................................................................. 2

A. Dr. Raleigh Signed a Broad Patent Assignment with His Employer Qualcomm ... 2

B. The Patents-in-Suit Fall Within the Scope of Dr. Raleigh’s 

Assignment to Qualcomm ...................................................................................... 3

1. The Invention Is Within the Scope of Qualcomm’s Business .................... 3

2. The Asserted Patents Fall Within the One-Year Presumption of 

Qualcomm Ownership ................................................................................ 6

3. Headwater Has Not Rebutted the Presumption of Qualcomm 

Ownership ................................................................................................... 6

III. LEGAL STANDARD ......................................................................................................... 8

IV. ARGUMENT ...................................................................................................................... 9

A. Qualcomm Owns the Asserted Patents ................................................................... 9

1. Dr. Raleigh Filed the Relevant Application Within One Year of 

Leaving Qualcomm, Triggering the Presumption Qualcomm 

Owns the Asserted Patents .......................................................................... 9

2. The Invention Is Within the Scope of Qualcomm’s Business .................... 9

3. Headwater Has Failed to Rebut the Presumption of Qualcomm’s 

Ownership ................................................................................................. 11

B. The Court Should Dismiss for Lack of Standing .................................................. 14

V. CONCLUSION ................................................................................................................. 14

 

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TABLE OF AUTHORITIES 

Cases Page(s) 

Apator Miitors ApS v. Kamstrup A/S, 

887 F.3d 1293 (Fed. Cir. 2018)................................................................................................12 

Dawson v. Dawson, 

710 F.3d 1347 (Fed. Cir. 2013)................................................................................................12 

DDB Technologies, L.L.C. v. MLB Advanced Media, L.P., 

517 F.3d 1284 (Fed. Cir. 2008)..................................................................................................8 

FilmTec Corp. v Hydranautics, 

982 F.2d 1546 (Fed. Cir. 1992)..................................................................................................9 

Headwater Research LLC v. Samsung Elecs. Am., Inc., 

Case No. 2:22-cv-00422 (E.D. Tex.), Dkt. 399 .....................................................................1, 2 

Hybritech Inc. v. Monoclonal Antibodies, Inc., 

802 F.2d 1367 (Fed. Cir. 1986)................................................................................................13 

Intellectual Prop. Dev., Inc. v. TCI Cablevision of California, Inc., 

248 F.3d 1333 (Fed. Cir. 2001)............................................................................................8, 14

iRobot Corp. v. SharkNinja Operating LLC, 

2024 WL 3687981 (Fed. Cir. Aug. 7, 2024) ............................................................................11 

Preston v. Marathon Oil Co., 

684 F.3d 1276 (Fed. Cir. 2012)................................................................................................12 

Price v. Symsek, 

988 F.2d 1187 (Fed. Cir. 1993)................................................................................................13 

Spansion, Inc. v. Int’l Trade Comm’n, 

629 F.3d 1331 (Fed. Cir. 2010)................................................................................................13 

Statutes 

35 U.S.C. § 281 ................................................................................................................................8 

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EXHIBIT INDEX AND NOTES 

Exhibit Description 

1 U.S. Patent 9,615,192 

2 U.S. Patent 8,406,733 

3 U.S. Patent 9,198,117 

4 QC3P_HWvSS422_0000005 

5 Excerpts from the Deposition of Gregory Raleigh, taken Sept. 10, 2024 

6 Excerpts from the Deposition of Gregory Raleigh, taken June 14, 2024 

7 Exhibit 5 from the Deposition of Gregory Raleigh, taken Sept. 10, 2024 

8 HW_00104069 

9 HW_00104071-72 

10 Exhibit 6 from the Deposition of Gregory Raleigh, taken Sept. 10, 2024 

11 Exhibit 7 from the Deposition of Gregory Raleigh, taken Sept. 10, 2024 

12 QC3P_HWvSS422_0000011 

13 United States provisional application no. 61/206354 

14 Excerpts from Plaintiff Headwater Research LLC’s Fifth (Sixth) Supplemental 

Objections and Responses to Defendants’ First Set of Interrogatories (Nos. 1-

14), dated September 24, 2024 

15 Exhibit 11 from the Deposition of Gregory Raleigh, taken June 14, 2024 

16 Exhibit 2 from the Deposition of Gregory Raleigh, taken March 7, 2024 

17 Excerpts from the Expert Report of Erik de la Iglesia, dated September 26, 

2024 

* Emphasis added unless otherwise noted. 

* Form objections are omitted from deposition transcript quotations unless otherwise noted. 

* In this brief, “Headwater” refers to Plaintiff and its purported predecessors, and “Samsung” 

refers to Defendants.

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I. INTRODUCTION 

Despite issuing a Recommendation and Report (“R&R”) finding standing in a related case, 

this Court should find no standing in this case because the facts are materially different. See

Headwater Research LLC v. Samsung Elecs. Am., Inc., Case No. 2:22-cv-00422 (E.D. Tex.) 

(hereinafter “HW1”), Dkt. 399.1

 Notably, while the same Qualcomm employment agreement at 

issue in HW1 also governs this case, the following are key differences: 

 In this case, Headwater clearly claims a priority date of January 28, 2009, so there is no 

question that the patents-in-suit were filed within one year of Dr. Raleigh leaving 

Qualcomm. This triggers a presumption Qualcomm owns the patents-in-suit. 

 The corroborating evidence the Court cited in the R&R is inapplicable because Headwater 

admits this case does not involve any shift “from a network side solution to a device side 

solution.” Compare R&R at 12. 

 Indeed, none of Headwater’s cited evidence corroborates when Dr. Raleigh conceived the 

claimed invention because none of it discusses an “aggregated messaging channel,” which 

is how Dr. Raleigh describes the patents-in-suit. 

 Dr. Raleigh is the sole inventor in this case, so there is no issue of when he collaborated 

with any co-inventors. 

 Since there are no co-inventors, Qualcomm is the sole owner of the patents-in-suit, 

negating Constitutional standing. 

In short, because Headwater has failed to rebut the presumption that Qualcomm owns the 

patents-in-suit, this Court should dismiss for lack of standing. 

1

 While Samsung notes differences between the present litigation and HW1, Samsung 

fully maintains its position that Headwater lacks standing in Case No. 2:22-CV-00422-JRG-RSP, 

as explained in its Objections to the R&R that are pending before the Court. 

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II. FACTUAL BACKGROUND 

All patents asserted in this case name one inventor, Dr. Greg Raleigh. See Exs. 1-3 

(asserted patents). 

A. Dr. Raleigh Signed a Broad Patent Assignment with His Employer 

Qualcomm 

The Court accurately described the background facts in the R&R. Dr. Raleigh was 

previously employed by Qualcomm and in the course of that employment signed an assignment 

agreement. R&R at 1. The Assignment Agreement provides all Inventions are assigned to 

Qualcomm and defines “Inventions” as: 

All inventions, discoveries, developments, formulae, processes, improvements, 

ideas and innovations, whether patentable or not ... made, conceived, reduced to 

practice, authored, or fixed in a tangible medium of expression by me, ... whether 

or not made, conceived, reduced to practice, authored, or fixed in a tangible medium 

of expression during working hours, which results from my work or association 

with the Company, or which results from or is aided by the use of the Company’s 

equipment, supplies, facilities or trade secret information, or which is related to or 

coming within the scope of the Company's business, or related to the Company’s 

products or any research, design, experimental or production work carried on by 

the Company. 

Id. at 2; see also Ex. 4 ¶ 1.1. The Assignment Agreements additionally provides: 

I agree that an Invention disclosed by me to a third person or described in a patent 

application filed by me or in my behalf within one year following termination of 

my employment with the Company shall be presumed to be an Invention subject to 

the terms of this Agreement unless proved by me to have been conceived and first 

reduced to practice by me following the termination of my employment with the 

Company. 

R&R at 2; see also Ex. 4 ¶ 1.4. The Court rejected Headwater’s challenges to the validity of this 

agreement, R&R at 4-6, and concluded “it is on Headwater to show either the disclosed invention 

is not ‘within the scope of the company’s business,’ and thus not an ‘Invention’ under the 

agreement, or that the invention was conceived and reduced to practice after Dr. Raleigh’s 

employment.” Id. at 6. Headwater did not file any objections to the R&R. 

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B. The Patents-in-Suit Fall Within the Scope of Dr. Raleigh’s Assignment to 

Qualcomm 

1. The Invention Is Within the Scope of Qualcomm’s Business 

In the R&R, the Court found “the invention is within the scope of Qualcomm’s business.” 

R&R at 7. The same is true in this case. Here, Dr. Raleigh stated that the asserted patents relate 

to the problem of aggregating messages from smartphone apps because these apps may otherwise 

overwhelm the network. He testified “[t]hese patents solved critical problems that literally brought 

down the Cingular network when the first iPhones and Androids were attached to the network.” 

Ex. 5 at 45:20-46:21. He explained that “[t]he world that existed when I was looking at this 

problem set was a world where applications connected to their own servers and as I described 

earlier that created an unwieldy[y] amount of network chatter and that amount of network chatter 

caused the difficulties that I described.” Id. at 66:11-16. 

Dr. Raleigh addressed this problem with “a single communication channel” between each 

device and the network. Id. at 67:3. He further explained “[y]ou then have all the app servers 

connecting through the network messaging server and then on any one device you have all the 

apps connecting through the messaging agent and you have now one channel that you can manage 

rather than all these point to point connections.” Id. at 67:12-17. Though Dr. Raleigh was careful 

not to read words into his claims, he allowed that the term “aggregated messaging” is “one way to 

describe” the inventive concept in this case. Id. at 68:1-9; see also id. at 54:20-21 (Dr. Raleigh 

referring to “aggregated messaging channel such as patented inventions here”); Ex. 6 at 48:18-

51:1. 

Dr. Raleigh’s testimony is also consistent with the claims and disclosures of the asserted 

patents. For example, the ’177 patent is entitled “NETWORK SYSTEM WITH COMMON

SECURE WIRELESS MESSAGE SERVICE SERVING MULTIPLE APPLICATIONS ON 

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MULTIPLE WIRELESS DEVICES,” and its Abstract states “[t]he network message server 

delivers messages to the device messaging agent on behalf of a plurality of network application 

servers.” Ex. 2 (’117 patent); see also Exs. 1, 3 (other asserted patents); Ex. 17 (de la Iglesia Rpt.) 

at ¶¶ 49, 1229 (Headwater expert describing invention in a similar way). 

As in HW1, Dr. Raleigh admitted that the technology in this case is related to Qualcomm’s 

business, and he admittedly offered it to Qualcomm. For example, after the evidentiary hearing in 

HW1, Headwater produced the following email in this case: 

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Ex. 7. Notably, in this email Dr. Raleigh told Qualcomm CEO Dr. Paul Jacobs that 

 Id.

When shown this email at deposition, Dr. Raleigh also testified 

 Ex. 5 at 130:12-16. The “issues” that came up were Qualcomm’s 

assertions of ownership. Dr. Jacobs referred Dr. Raleigh’s email to Qualcomm Vice President 

David Wise, see Ex. 7, who told Dr. Raleigh after months of negotiations that 

 See Ex. 8 (HW_00104069). 

As the Court knows, Dr. Raleigh also asked Mr. Wise for a Release of Qualcomm’s 

ownership claims “ .” Ex. 9 at HW_00104071-

72. In this case, Headwater also produced a redlined copy of the proposed Release in which 

Qualcomm’s lawyers expressly deleted Headwater’s proposed language that “

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.” Ex. 5 at 134:22-136:11; Exs. 10-11. In addition, Mr. Wise stated that 

Qualcomm would resolve the “ ” for “ .” Ex. 

8 (HW_00104069). However, Dr. Raleigh declined, and no release was signed. Ex. 5 at 136:13-

137:6. 

Finally, Dr. Raleigh agreed that the iPhone network problems that led to his conception of 

the invention in this case occurred while he was still at Qualcomm, and that Qualcomm was subject 

to these problems. He testified “I think the problem began to develop while I was working at 

Qualcomm. The first iPhones began to go on the network during that time, yeah. And the first 

Androids that had this multiple app chatter problem began to go on the network in that time frame.” 

Ex. 5 at 122:2-15. He also agreed that Qualcomm was affected by the problem: “Everybody in 

wireless, users, carriers, everybody was affected by that.” Id. at 121:10-17. 

2. The Asserted Patents Fall Within the One-Year Presumption of 

Qualcomm Ownership 

There is no question the one-year presumption of Qualcomm ownership applies in this 

case. Dr. Raleigh left Qualcomm on September 19, 2008 and filed the ’354 provisional application 

on January 28, 2009, within one year of his departure. R&R at 2; see Ex. 12; Ex. 13. Unlike HW1, 

Headwater asserts that all patents-in-suit benefit from this January 28, 2009 priority date. Ex. 14 

at 8-9. 

3. Headwater Has Not Rebutted the Presumption of Qualcomm 

Ownership 

In this case, Dr. Raleigh asserts that he conceived the claimed invention after he left 

Qualcomm (and after he conceived the invention in HW1). However, he has absolutely no 

corroboration for this assertion. 

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In HW1, the Court relied on a Headwater slide deck dated October 23, 2008 to corroborate 

Dr. Raleigh’s shift “from a network side solution to a device side solution.” R&R at 12. However, 

that evidence is inapplicable to this case, as Dr. Raleigh admitted. First, Dr. Raleigh says he 

conceived the invention in this case after the October 23 meeting with Best Buy—so it is not 

reflected in that slide deck. Ex. 5 at 146:7-8 (“I didn’t have any aha moment about messaging 

services for months after this.”); see also id. at 115:4-116:15. Second, he agreed the asserted 

patents require “servers,” which are not “devices” in the parlance of this case. Id. at 117:4-118:23. 

Thus, the conception evidence cited by the R&R does not apply to this case. 

Moreover, while Headwater’s interrogatory responses in this case cite other slide decks as 

supposed evidence of conception, none of these documents even hint at aggregated messaging. 

The words “aggregated” or “aggregate” do not appear at all, and “message” or “messaging” 

appears only three times and in a different context. There is also no mention of the iPhone or its 

impact on networks. See Ex. 14 at 8-11 (listing documents). 

In addition, Dr. Raleigh admitted that the event which inspired the present invention—the 

iPhone bringing down the network—happened while he was still at Qualcomm, as quoted above. 

Ex. 5 at 122:2-15. 

Finally, the evidence presented in HW1 is again relevant. As the Court knows, Dr. Raleigh 

started working with Best Buy on behalf of himself by September 9-11, 2008—before he left 

Qualcomm on September 19, 2008. Ex. 15. He also incorporated ItsOn on September 17, 2008, 

again before leaving. Ex. 16. And in 2021, he publicly admitted that “At Qualcomm, you know, 

one of the most innovative companies in the world, I had this idea that hey, um, the MIMO 

revolution will take place now, and it’s in full swing, so the next step is operating systems 

technology to manage the way applications connect on these new smartphones, because without 

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that there’s going to be a disaster on the network. I took it to the then CEO of Qualcomm, again 

too far afield, Qualcomm is a chipset company, too risky, too disruptive, here’s another idea for 

you, go run this new group that we’re going to create for you over here that is closer to the 

technology that we do now. So I left Qualcomm to start Headwater, we developed that operating 

system technology, we distributed it to carriers, pitched it to OEMs, and it’s now in every 

smartphone on the planet.” HW1 Dkt. 236-1 at 46:00-46:51. 

While the Court did not find Dr. Raleigh’s panel admission dispositive in HW1, it fits the 

facts of this case even more closely with its reference to a “disaster on the network.” Moreover, 

the Court should question Dr. Raleigh’s credibility. In this case, Samsung asked Dr. Raleigh “Is 

there an idea that you disclosed to Dr. Jacobs that you believe is now in every smartphone?” He 

answered “No.” Ex. 5 at 112:14-18. That means he is either being untruthful in this case or was 

being untruthful on a panel that included former PTO Director Andrei Iancu. While the Court 

characterized Dr. Raleigh’s panel remark as “bluster,” R&R at 13, Dr. Raleigh’s subsequent 

testimony reveals a glaring inconsistency that should affect the Court’s evaluation of his testimony. 

III. LEGAL STANDARD 

35 U.S.C. § 281 gives “the patentee...remedy by civil action for infringement of his 

patent.” Status as a “patentee” thus gives a party constitutional standing under Article III. 

Intellectual Prop. Dev., Inc. v. TCI Cablevision of California, Inc., 248 F.3d 1333, 1345 (Fed. Cir. 

2001). Standing is an issue for the Court to decide and is not tried to a jury. DDB Technologies, 

L.L.C. v. MLB Advanced Media, L.P., 517 F.3d 1284, 1291-92 (Fed. Cir. 2008). 

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IV. ARGUMENT 

A. Qualcomm Owns the Asserted Patents 

1. Dr. Raleigh Filed the Relevant Application Within One Year of 

Leaving Qualcomm, Triggering the Presumption Qualcomm Owns 

the Asserted Patents 

Dr. Raleigh left Qualcomm on September 19, 2008 and filed the ’354 provisional 

application on January 28, 2009, within one year of his departure. R&R at 2. Unlike HW1, 

Headwater asserts that all patents-in-suit benefit from this January 28, 2009 priority date. Ex. 14 

at 8-9. Thus, “it is on Headwater to show either the disclosed invention is not ‘within the scope of 

the company’s business,’ and thus not an ‘Invention’ under the agreement, or that the invention 

was conceived and reduced to practice after Dr. Raleigh’s employment.” R&R at 6; see also Ex. 

4 ¶¶ 1.1, 1.4. 

2. The Invention Is Within the Scope of Qualcomm’s Business 

“Inventions” covered by Dr. Raleigh’s agreement with Qualcomm include “ideas and 

innovations, whether patentable or not” that are “related to or coming within the scope of the 

Company’s business, or related to the Company’s products or any research, design, experimental 

or production work carried on by the Company.” Ex. 4 ¶ 1.1.2

 

In the R&R, the Court found “the invention is within the scope of Qualcomm’s business.” 

R&R at 7. The Court observed that “Dr. Raleigh as an inventor and prior employee of Qualcomm 

is well positioned to understand Qualcomm’s business and compare it to the invention” and that 

2

 As in HW1, this language also means ideas are covered even if not yet ready for patenting. 

The Federal Circuit has held such language can result in an employer owning a patent. See FilmTec 

Corp. v Hydranautics, 982 F.2d 1546, 1553 (Fed. Cir. 1992) (“Cadotte may well have refined the 

invention when he went to FilmTec . . . The record is clear, however, that his work in February 

1978 was on the same invention that he conceived in November 1977. Were we to find that 

inclusion of narrow performance limitations in the claims could serve to expel the claimed 

invention from operation of the Contract under which the invention was made, we would be 

defeating the intentions of the parties to the Contract . . . .”). 

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“Dr. Raleigh seemed to believe at the time that an idea at least related to his invention was 

sufficiently related to Qualcomm’s business to pitch it to the CEO. While this was apparently 

unsuccessful, it demonstrates that Qualcomm’s business is not unrelated.” Id. 

The same is true in this case. As detailed above, Dr. Raleigh says his invention in this case 

was inspired by network problems caused by the launch of the iPhone, which occurred while he 

was at Qualcomm. He testified “[t]hese patents solved critical problems that literally brought 

down the Cingular network when the first iPhones and Androids were attached to the network.” 

Ex. 5 (9-10-24 Raleigh depo) at 45:20-46:21. He further testified “I think the problem began to 

develop while I was working at Qualcomm. The first iPhones began to go on the network during 

that time, yeah. And the first Androids that had this multiple app chatter problem began to go on 

the network in that time frame.” Ex. 5 at 122:2-15. He also agreed that Qualcomm was affected 

by the problem: “Everybody in wireless, users, carriers, everybody was affected by that.” Id. at 

121:10-17. 

In addition, Dr. Raleigh again pitched his invention to Qualcomm’s CEO—first before he 

left Qualcomm, as reflected in his panel remarks (see HW1 Dkt. 236-1), and again in early 2009, 

as reflected in the newly produced email, where he told Qualcomm CEO Jacobs that his invention 

was “ .” Ex. 7. Dr. Raleigh also 

testified “

.” Ex. 5 at 130:12-16. 

As in HW1, the Court should find the invention in this case to be within the scope of 

Qualcomm’s business. 

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3. Headwater Has Failed to Rebut the Presumption of Qualcomm’s 

Ownership 

Headwater has failed to rebut the presumption of Qualcomm’s ownership for two primary 

reasons. First, Headwater has no corroboration for Dr. Raleigh’s alleged conception date. Second, 

Dr. Raleigh’s alleged conception date is simply not credible. 

First, as to corroboration, the evidence cited in the R&R does not apply to this case. In 

HW1, the Court relied on a Headwater slide deck dated October 23, 2008 to corroborate Dr. 

Raleigh’s shift “from a network side solution to a device side solution.” R&R at 12. However, 

that evidence is inapplicable to this case because Dr. Raleigh says he conceived the invention in 

this case after the October 23 meeting with Best Buy—so it is not reflected in that slide deck. Ex. 

5 at 146:7-8. Second, he agreed the asserted patents require “servers,” which are not “devices” in 

the parlance of this case. Id. at 117:4-118:23. Thus, this case does not involve a shift “from a 

network side solution to a device side solution.” Compare R&R at 12. 

Moreover, while Headwater cites other slide decks in its interrogatory responses in this 

case as supposed evidence of conception, it has not identified where in these numerous documents 

the invention is disclosed. Moreover, none of these documents even hint at aggregated messaging, 

which is how Dr. Raleigh characterizes the invention in this case. E.g., Ex. 5 at 68:1-9. The words 

“aggregated” or “aggregate” do not appear at all in the slides Headwater cites, and “message” or 

“messaging” appears only three times and in a different context. See Ex. 14 at 8-11 (listing 

documents). Thus, these documents cannot corroborate Dr. Raleigh’s invention date. See iRobot 

Corp. v. SharkNinja Operating LLC, 2024 WL 3687981, *3-4 (Fed. Cir. Aug. 7, 2024) (rejecting 

corroboration not linked to claim elements).3

3

 The Court also agreed that Headwater’s patent applications cannot themselves serve as 

corroboration. See HW1 Dkt. 386 at 173:24-174:20 (evidentiary hearing). 

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The law requires corroboration of an alleged conception date because conception is a 

“mental act,” subject to self-serving recollection of events long past. Dawson v. Dawson, 710 F.3d 

1347, 1352 and n.1 (Fed. Cir. 2013) (ruling against party with burden on conception, like so many 

conception cases). The Federal Circuit elaborated on this requirement in Apator Miitors ApS v. 

Kamstrup A/S, 887 F.3d 1293 (Fed. Cir. 2018). There it explained: 

It is well established . . . that when a party seeks to prove conception through 

an inventor’s testimony the party must proffer evidence, “in addition to [the 

inventor's] own statements and documents,” corroborating the inventor's testimony. 

Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996); Hahn v. Wong, 

892 F.2d 1028, 1032 (Fed. Cir. 1989). While the requirement of corroboration 

exists to prevent an inventor from “describ[ing] his actions in an unjustifiably selfserving manner,” Chen v. Bouchard, 347 F.3d 1299, 1309 (Fed. Cir. 2003), “[e]ven 

the most credible inventor testimony is a fortiori required to be corroborated by 

independent evidence,” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1171-72 

(Fed. Cir. 2006). 

The sufficiency of the proffered corroboration is determined by a “rule of 

reason” analysis in which all pertinent evidence is examined. In re NTP, Inc., 654 

F.3d 1279, 1291 (Fed. Cir. 2011). Even under the “rule of reason” analysis, 

however, the “evidence of corroboration must not depend solely on the inventor 

himself.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998); see also Hahn, 

892 F.2d at 1033 (corroborating evidence must be “independent of information 

received from the inventor”). 

Id. at 1295 (affirming finding of insufficient corroboration). 

Headwater itself has admitted that the burden of proving conception is “exacting.” HW1 

Dkt. 287 at 2. However, Headwater has argued that the Apator rule is applicable only when an 

alleged inventor seeks to establish conception before employment rather than after. See R&R at 

12 (In Preston v. Marathon Oil Co., 684 F.3d 1276 (Fed. Cir. 2012), “the employee sought to 

demonstrate that he conceived of his invention prior to his employment, not after as here. See id. 

The corroboration requirement simply does not mechanically work in the situation where the party 

without the burden is the one trying to prove an earlier conception date”). To be clear, Samsung 

does not seek to impose the burden of proving a negative on Headwater. That is, Headwater is not 

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required to prove that Dr. Raleigh did not conceive at Qualcomm. Rather, it is required to prove 

when he did conceive to rebut the presumption of Qualcomm’s ownership. See R&R at 2; Ex. 4 

¶ 1.4. 

Thus, what must be corroborated is the date of conception. Whether it is before or after 

some other event is a secondary question. As explained in the seminal conception case of 

Hybritech Inc. v. Monoclonal Antibodies, Inc., the question of whether an invention was conceived 

“before” a particular date is “more properly” analyzed as “when the claimed invention was 

conceived.” 802 F.2d 1367, 1376 (Fed. Cir. 1986); see also Spansion, Inc. v. Int’l Trade Comm’n, 

629 F.3d 1331, 1356 (Fed. Cir. 2010) (“all of the evidence of record must be collectively evaluated 

in determining when the invention was conceived”); Price v. Symsek, 988 F.2d 1187, 1195 (Fed. 

Cir. 1993) (requiring corroboration “where an inventor is proffering oral testimony attempting to 

remember specifically what was conceived and when it was conceived, a situation where, over 

time, honest witnesses can convince themselves that they conceived the invention of a valuable 

patent.” This means Headwater must have corroborating evidence to prevail. 

Regardless, the R&R required some corroboration in HW1—the slides in that case—and 

here Headwater has none. In addition, unlike HW1, Dr. Raleigh is the sole inventor, so there is no 

issue of whether he began collaborating with others within one year of leaving Qualcomm. The 

Court should therefore find that Headwater has failed to rebut the presumption that Qualcomm 

owns the asserted patents in this case. 

Second, even apart from the lack of corroboration, Dr. Raleigh’s alleged conception date 

is simply not credible. Dr. Raleigh admitted that the iPhone network problems that led to his 

conception of the invention in this case occurred while he was still at Qualcomm. Ex. 5 at 122:2-

15; see also id. at 45:20-46:21 (testifying that the iPhone “brought down the Cingular network”). 

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This strongly suggests conception before he left Qualcomm. 

In addition, he started working with Best Buy on behalf of himself by September 9-11, 

2008—before he left Qualcomm on September 19, 2008. Ex. 15. He incorporated ItsOn on 

September 17, 2008, again before leaving. Ex. 16. And in 2021, he publicly admitted he had an 

idea about “technology to manage the way applications connect” to avoid a “disaster on the 

network” while at Qualcomm. HW1 Dkt. 236-1 at 46:00-46:51. He further stated that he disclosed 

this idea to Qualcomm CEO Dr. Jacobs and then took it to Headwater, where “it’s now in every 

smartphone on the planet.” Id. Yet he has now testified he disclosed no idea to Dr. Jacobs that is 

in every smartphone. Ex. 5 at 112:14-18. This glaring inconsistency undermines his credibility. 

Based on the totality of the evidence, the Court should find that Headwater has not carried 

its burden to rebut the presumption that Qualcomm owns the asserted patents. 

B. The Court Should Dismiss for Lack of Standing 

Status as a “patentee” gives a party standing under Article III of the Constitution. 

Intellectual Prop. Dev., 248 F.3d at 1345. Because Qualcomm and not Headwater owns the 

asserted patents, Headwater lacks standing. The Court should dismiss the case. 

V. CONCLUSION 

For the foregoing reasons, the Court should dismiss this case for lack of standing because 

Qualcomm owns the asserted patents. 

 

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Dated: October 25, 2024 Respectfully submitted, 

By: /s/ John W. Thornburgh 

 Ruffin B. Cordell 

TX Bar No. 04820550 

Michael J. McKeon 

DC Bar No. 459780 

mckeon@fr.com 

Jared Hartzman 

DC Bar No. 1034255 

hartzman@fr.com 

FISH & RICHARDSON P.C. 

1000 Maine Avenue, SW, Ste 1000 

Washington, D.C. 20024 

Telephone: (202) 783-5070 

Facsimile: (202) 783-2331 

Thad C. Kodish 

GA Bar No. 427603 

tkodish@fr.com 

Benjamin K. Thompson 

GA Bar No. 633211 

bthompson@fr.com 

Jonathan B. Bright 

GA Bar No. 256953 

jbright@fr.com 

Christopher O. Green 

GA Bar No. 037617 

cgreen@fr.com 

Noah C. Graubart 

GA Bar No. 141862 

graubart@fr.com 

Sara C. Fish 

GA Bar No. 873853 

sfish@fr.com 

Katherine H. Reardon 

NY Bar No. 5196910 

reardon@fr.com 

Nicholas A. Gallo 

GA Bar No. 546590 

gallo@fr.com 

Vivian C. Keller (pro hac vice) 

GA Bar No. 651500 

keller@fr.com 

FISH & RICHARDSON P.C. 

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1180 Peachtree St. NE, Fl. 21 

Atlanta, GA 30309 

Telephone: (404) 892-5005 

Facsimile: (404) 892-5002 

Leonard E. Davis 

TX Bar No. 05521600 

ldavis@fr.com 

Andria Rae Crisler 

TX Bar No. 24093792 

crisler@fr.com 

Thomas H. Reger II 

Texas Bar No. 24032992 

reger@fr.com 

FISH & RICHARDSON P.C.

1717 Main Street, Suite 5000 

Dallas, TX 75201 

Telephone: (214)747-5070 

Facsimile: (214) 747-2091 

John-Paul R. Fryckman (pro hac vice) 

CA Bar No. 317591 

John W. Thornburgh 

CA Bar No. 154627 

thornburgh@fr.com 

FISH & RICHARDSON P.C. 

12860 El Camino Real, Ste. 400 

San Diego, CA 92130 

Telephone: (858) 678-5070 

Facsimile: (858) 678-5099 

Katherine D. Prescott (pro hac vice) 

CA Bar No. 215496 

prescott@fr.com 

FISH & RICHARDSON P.C. 

500 Arguello Street 

Suite 400 

Redwood City, CA 94063 

Telephone: (650) 839-5180 

Facsimile: (650) 839-5071 

Kyle J. Fleming (pro hac vice) 

NY Bar No. 5855499 

kfleming@fr.com 

FISH & RICHARDSON P.C. 

7 Times Square, 20th Floor, 

New York, NY 10036 

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Telephone: (212) 765-5070 

Facsimile: (212) 258-2291 

Melissa R. Smith 

State Bar No. 24001351 

Melissa@gillamsmithlaw.com 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Andrew Thompson (“Tom”) Gorham 

State Bar No. 24012715 

tom@gillamsmithlaw.com 

GILLAM & SMITH, LLP 

102 N. College, Suite 800 

Tyler, Texas 75702 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Michael E. Jones 

State Bar No. 10929400 

mikejones@potterminton.com 

Shaun W. Hassett 

State Bar No. 24074372 

shaunhassett@potterminton.com 

POTTER MINTON, P.C. 

102 N. College Ave., Suite 900 

Tyler, Texas 75702 

Telephone: (903) 597-8311 

Facsimile: (903) 593-0846 

Lance Lin Yang 

CA. Bar No. 260705

Lanceyang@quinnemanuel.com 

Kevin (Gyushik) Jang 

CA Bar No. 337747 

kevinjang@quinnemanuel.com 

Sean S. Pak 

CA Bar No. 219032 

seanpak@quinnemanuel.com 

QUINN EMANUEL URQUHART &

SULLIVAN, LLP

50 California Street, 22nd Floor 

San Francisco, CA 94111 

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Telephone: (415) 875-6600 

Brady Huynh (admitted pro hac vice) 

CA Bar No. 339441 

bradyhuynh@quinnemanuel.com 

QUINN EMANUEL URQUHART &

SULLIVAN, LLP 

555 Twin Dolphin Drive, 5th Floor 

Redwood Shores, CA 94065 

Telephone: (650) 801-5000 

Facsimile: (650) 801-5100 

Jon Bentley Hyland 

Texas Bar No. 24046131 

jhyland@hilgersgraben.com 

Grant K. Schmidt 

Texas Bar No. 24084579 

gschmidt@hilgersgraben.com 

HILGERS GRABEN PLLC 

7859 Walnut Hill Lane, Suite 335 

Dallas, Texas 75230 

Telephone: (972) 645-3097 

ATTORNEYS FOR DEFENDANTS

SAMSUNG ELECTRONICS CO., LTD. AND

SAMSUNG ELECTRONICS AMERICA, INC.

 

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19 

 

CERTIFICATE OF SERVICE 

I hereby certify that a true and correct copy of the foregoing document was filed 

electronically in compliance with Local Rule CV-5 on October 25, 2024. As of this date, all 

counsel of record had consented to electronic service and are being served with a copy of this 

document through the Court’s CM/ECF system under Local Rule CV-5(a)(3)(A). 

/s/ John W. Thornburgh 

John W. Thornburgh 

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