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 OPPOSITION TO HEADWATER’S MOTION FOR PARTIAL 

SUMMARY JUDGMENT ON STANDING (DKT. 174)

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TABLE OF CONTENTS

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

II. RESPONSE TO ALLEGEDLY UNDISPUTED MATERIAL FACTS ............................ 2

III. ADDITIONAL MATERIAL FACTS ................................................................................ 3

A. Dr. Raleigh Signed a Broad Patent Assignment with His Employer Qualcomm... 3

B. The Asserted Patents Fall Within the Scope of Dr. Raleigh’s Assignment 

to Qualcomm........................................................................................................... 4

1. The Invention Is Within the Scope of Qualcomm’s Business.................... 4

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

Qualcomm Ownership ................................................................................ 8

3. Headwater Has Not Rebutted the Presumption of Qualcomm Ownership. 8

IV. LEGAL STANDARD....................................................................................................... 10

V. ARGUMENT.................................................................................................................... 10

A. Headwater Does Not Own the Asserted Patents.................................................. 10

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

Leaving Qualcomm, Triggering the Presumption Qualcomm Owns 

the Asserted Patents.................................................................................. 10

2. The Invention Is Within the Scope of Qualcomm’s Business.................. 11

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

Ownership................................................................................................. 12

B. Headwater’s Arguments in its Motion Do Not Change the Result....................... 16

1. Dr. Raleigh’s Uncorroborated Testimony Is Insufficient to Establish 

Conception ................................................................................................ 16

2. Dr. Raleigh’s Provisional Patent Application Cannot Serve as 

Corroborating Evidence ............................................................................ 17

3. The Bio-Rad Case Is Distinguishable ....................................................... 17

4. Qualcomm’s Behavior Is Consistent with Its Ownership of the 

Asserted Patents........................................................................................ 18

C. The Court Should Dismiss for Lack of Standing.................................................. 19

VI. CONCLUSION................................................................................................................. 19

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TABLE OF AUTHORITIES

Cases Page(s)

Apator Miitors ApS v. Kamstrup A/S,

887 F.3d 1293 (Fed. Cir. 2018)..........................................................................................14, 16

Bio-Rad Labs., Inc. v. Int’l Trade Comm’n,

996 F.3d 1302 (Fed. Cir. 2021)..........................................................................................17, 18

Chen v. Bouchard,

347 F.3d 1299 (Fed. Cir. 2003)................................................................................................16

Dawson v. Dawson,

710 F.3d 1347 (Fed. Cir. 2013)................................................................................................13

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

517 F.3d 1284 (Fed. Cir. 2008)................................................................................................10

FilmTec Corp. v Hydranautics,

982 F.2d 1546 (Fed. Cir. 1992) ...............................................................................................11

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

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

Hybritech Inc. v. Monoclonal Antibodies, Inc.,

802 F.2d 1367 (Fed. Cir. 1986)..........................................................................................15, 17

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

248 F.3d 1333 (Fed. Cir. 2001)..........................................................................................10, 19

iRobot Corp. v. SharkNinja Operating LLC,

2024 WL 3687981 (Fed. Cir. Aug. 7, 2024)............................................................................13

MHL Tek, LLC v. Nissan Motor Co.,

655 F.3d 1266 (Fed. Cir. 2011)..........................................................................................17, 18

Preston v. Marathon Oil Co.,

684 F.3d 1276 (Fed. Cir. 2012)................................................................................................14

Price v. Symsek,

988 F.2d 1187 (Fed. Cir. 1993)................................................................................................15

Singh v. Brake,

222 F.3d 1362 (Fed. Cir. 2000)................................................................................................13

Spansion, Inc. v. Int’l Trade Comm’n,

629 F.3d 1331 (Fed. Cir. 2010)................................................................................................15

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TransUnion LLC v. Ramirez,

594 U.S. 413 (2021).....................................................................................................10, 17, 18

Statutes

35 U.S.C. § 281..............................................................................................................................10

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EXHIBIT INDEX AND NOTES1

Exhibit Description

1 U.S. Patent 9,615,192 (Dkt. 177-1)

2 U.S. Patent 8,406,733 (Dkt. 177-2)

3 U.S. Patent 9,198,117(Dkt. 177-3)

4 QC3P_HWvSS422_0000005(Dkt. 177-4)

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

177-5)

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

177-6)

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

177-7)

8 HW_00104069 (Dkt. 177-8)

9 HW_00104071-72 (Dkt. 177-9)

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

177-10)

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

177-11)

12 QC3P_HWvSS422_0000011 (Dkt. 177-12)

13 United States provisional application no. 61/206354 (Dkt. 177-13)

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 (Dkt. 177-14)

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

177-15)

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

177-16)

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

2024 (Dkt. 177-17)

18 HW_00013712-29

* 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.

1 Samsung is not refiling Exs. 1-17 since they are already on the docket.

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I. INTRODUCTION

Despite issuing a Report and Recommendation (“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. 399.2 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 asserted patents were filed within one year of Dr. Raleigh leaving 

Qualcomm. This triggers a presumption Qualcomm owns the asserted patents.

• 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 asserted patents.

• 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 asserted patents, 

negating Constitutional standing.

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

asserted patents, this Court should deny Headwater’s motion for partial summary judgment and 

2 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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instead dismiss for lack of standing.

II. RESPONSE TO ALLEGEDLY UNDISPUTED MATERIAL FACTS

While standing is for the Court, summary judgment is not appropriate because standing 

depends on the Court's fact findings and credibility determinations, as Headwater otherwise 

admits. See Dkt. 174 at 15.

SUMF No. 1: Incomplete. While the R&R found Headwater has standing in HW1, this 

case is materially different for the reasons discussed herein. In addition, the Court has not issued 

a final order on standing in HW1.

SUMF No. 2: Incomplete. While Dr. Raleigh testified at an evidentiary hearing in HW1, 

this case is materially different for the reasons discussed herein.

SUMF No. 3: Disputed. Because Dr. Raleigh had already assigned the asserted patents to 

Qualcomm, he had nothing left to assign to Headwater. 

SUMF No. 4: Partially disputed. While Samsung is not aware of Qualcomm filing any 

action to allege ownership of the asserted patents, it did claim ownership. E.g., Ex. 8 

(HW_00104069).

SUMF No. 5: Undisputed.

SUMF No. 6: Undisputed.

SUMF No. 7: Partially disputed. While California law governs Dr. Raleigh’s contract 

with Qualcomm, that contract does not extend to “post-employment activities.” Rather, it creates 

a rebuttable presumption that patent applications filed within one year of employment were 

conceived during employment. See R&R at 2; Ex. 4 ¶ 1.4.

SUMF No. 8: Undisputed.

SUMF No. 9: Partially disputed. While Samsung is not aware of Qualcomm filing any 

action to allege ownership of the asserted patents, it did claim ownership. E.g., Ex. 8 

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(HW_00104069). Qualcomm has also shown support for Samsung in this case, as indicated by 

Headwater. See Dkt. 177 at 12.

III. ADDITIONAL MATERIAL FACTS

These facts are repeated from Samsung's own motion to dismiss (Dkt. 177) because the 

Local Rules require briefs to be self-contained. Samsung does not understand why Headwater 

chose to file its own standing motion after being informed Samsung would file a motion to dismiss

for lack of standing. Nonetheless, by choosing to file its own motion, Headwater appears to agree 

the issue of standing can be resolved now. Headwater’s motion also confirms Headwater does not 

have sufficient evidence to prove its standing. Samsung’s motion to dismiss should be granted.

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

Qualcomm

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

(asserted patents). 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 Agreement 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 

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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.

B. The Asserted Patents 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 unwield[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 

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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 

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

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 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 “

” 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 

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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 alleges all asserted patents 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.

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. 

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

appears only three times and in a different context (which does not involve aggregation). 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 

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 

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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 histestimony.

IV. 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). As the party 

invoking federal jurisdiction, plaintiffs bear the burden of demonstrating that they have standing.” 

TransUnion LLC v. Ramirez, 594 U.S. 413, 430–31 (2021).

V. ARGUMENT

A. Headwater Does Not Own the Asserted Patents

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

Leaving Qualcomm, Triggering the Presumption Qualcomm Owns 

the Asserted Patents

In its motion, Headwater does not dispute that Qualcomm presumptively 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 alleges all asserted patents 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. 

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4 ¶¶ 1.1, 1.4.

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

In its motion, Headwater does not dispute that the asserted patents are 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 ¶ 1.1.3 

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 

“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 

3 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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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.

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. In its 

motion, Headwater does not point to any allegedly corroborating documents other than its patent 

application. 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 

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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 (which does not involve 

aggregation). See Ex. 14 at 8-11 (listing documents). As another example, for the ‘733 patent, the 

documents cited in Headwater’s interrogatory responses (Ex. 14) cannot corroborate that Dr. 

Raleigh conceived of, among other things, a “service control link,” “securing of the service control 

link with an encryption protocol,” and “service control device link agent.” 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); Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000) (“A conception must encompass 

all limitations of the claimed invention.”).

4

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 

4 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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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 

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. 

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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”). 

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 

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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. Headwater’s Arguments in its Motion Do Not Change the Result

1. Dr. Raleigh’s Uncorroborated Testimony Is Insufficient to Establish 

Conception

Headwater quotes extensively from Dr. Raleigh’s deposition in this case. See Dkt. 174 at 

6-8. However, the law is clear that “[e]ven the most credible inventor testimony is a fortiori

required to be corroborated by independent evidence” and “evidence of corroboration must not 

depend solely on the inventor himself.” Apator, 887 F.3d at 1295. Without documents to 

corroborate Dr. Raleigh’s alleged date of conception, Headwater simply cannot prevail. Indeed, 

contemporaneous evidence undermines Dr. Raleigh’s uncorroborated testimony. As discussed 

above, Dr. Raleigh’s panel remarks and the statement he made to Qualcomm CEO Jacobs suggests 

the alleged inventions were conceived before, not after, Dr. Raleigh left Qualcomm. Dr. Raleigh’s 

contemporaneous statements—made during Dr. Raleigh’s employment at Qualcomm and when 

Dr. Raleigh had no motive to assert ownership over the alleged invention—should be given far 

more weight than Dr. Raleigh’s testimony in litigation. A contrary interpretation would turn the 

requirement for corroboration on its head. See Shu-Hui Chen v. Bouchard, 347 F.3d 1299, 1309 

(Fed. Cir. 2003) (the requirement for corroboration “addresses the concern that a party claiming 

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inventorship might be tempted to describe his actions in an unjustifiably self-serving manner in 

order to obtain a patent or to maintain an existing patent”).

Moreover, as discussed above, Samsung is not suggesting that Headwater must prove a 

negative, but it must provide corroborating evidence of when Dr. Raleigh conceived. Hybritech,

802 F.2d at 1376.

2. Dr. Raleigh’s Provisional Patent Application Cannot Serve as 

Corroborating Evidence

Headwater suggests that Dr. Raleigh’s January 2009 provisional patent application is itself 

corroborating evidence. As discussed above, the Court has already rejected this argument. See

HW1 Dkt. 386 at 173:24-174:20 (evidentiary hearing). The Court was correct. First, the patent 

application is not evidence of when Dr. Raleigh first conceived the claimed invention. Second, as 

a matter of contractual interpretation, it would make no sense if the very patent application that 

triggers the presumption of ownership also overcomes it. Such an argument would apply in every 

case where a patent application is filed within a year of employment, and it would make the 

contract meaningless. 

3. The Bio-Rad Case Is Distinguishable

As plaintiff, Headwater “bear[s] the burden of demonstrating that [it has] standing.” 

TransUnion, 594 U.S. at 430–31; see also MHL Tek, LLC v. Nissan Motor Co., 655 F.3d 1266, 

1273-74 (Fed. Cir. 2011) (same). Headwater attempts to shift the burden onto Samsung by citing 

Bio-Rad Labs., Inc. v. Int’l Trade Comm’n, 996 F.3d 1302 (Fed. Cir. 2021). But Bio-Rad is 

distinguishable. As an initial matter, Bio-Rad did not involve a contract that created a presumption 

of ownership. Here, because Dr. Raleigh’s agreement with Qualcomm makes Qualcomm the 

presumed owner of the asserted patents, as discussed in Section V.A above, Headwater must rebut 

the presumption to be able to demonstrate standing. 

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Further, Bio-Rad did not even involve standing. Instead, at issue in Bio-Rad was an 

affirmative defense of co-ownership, which the accused infringer had the burden to prove. 

Specifically, Bio-Rad, the accused infringer, argued it had co-ownership of the asserted patents 

because the inventors (Bio-Rad’s former employees) had ideas that contributed to the postemployment inventions while employed at Bio-Rad. Id. at 1316. In Bio-Rad, the Federal Circuit 

thus did not mention standing once. By contrast, the issue here is whether Headwater has standing 

to bring an action with respect to the asserted patents, not merely whether Qualcomm is a co-owner 

of the asserted patents. The burden to establish standing remains firmly seated with Headwater. 

See TransUnion, 594 at 430–31; MHL Tek, 655 F.3d at 1273–74. 

In sum, Bio-Rad does not apply here because (1) Bio-Rad did not involve a contract, such 

as Qualcomm’s, that made someone other than the plaintiff a presumed owner of the asserted 

patents, and (2) the defense at issue in Bio-Rad was not standing but co-ownership, which the 

accused infringer undisputedly had the burden to prove.

4. Qualcomm’s Behavior Is Consistent with Its Ownership of the 

Asserted Patents

Headwater makes much of Qualcomm’s behavior in 2017-2022, ignoring Qualcomm’s

behavior closer to the events in question in 2009. In 2009, as demonstrated above, Qualcomm 

asserted ownership, and Headwater took this assertion very seriously. Most revealingly, 

Headwater requested a release “ Ex. 9 at 

HW_00104071-72. Moreover, even if Qualcomm chose not to expend resources on litigation at 

that time, Headwater likewise did not file a declaratory judgment to resolve the dispute. See Ex. 

18 at HW_00013720 ( ). 

By 2017-2022, there is no evidence the same people at Qualcomm were even involved. 

The that Headwater cites (Dkt. 174-5) was signed by Alex Rogers, who does not appear 

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in the 2009 correspondence, and there is no evidence he was aware of the previous ownership 

dispute. Moreover, Dr. Raleigh’s testimony that Qualcomm deliberately let the statute of 

limitations pass is self-serving hearsay, and the Court should disregard it. Regardless,

 Thus, even if the 2017-2022 interactions related to Qualcomm’s previous ownership claim, 

the parties’ behavior has all the hallmarks of an attempted compromise, not a surrender.

Finally, Headwater has the burden to prove standing and the burden to overcome the 

presumption of Qualcomm’s ownership. Qualcomm was not required to expend resources or 

intervene in a distant forum since Qualcomm does not have the burden to disprove standing.

C. 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. 

VI. CONCLUSION 

For the foregoing reasons, the Court should deny Headwater’s motion for summary 

judgment and instead dismiss this case for lack of standing because Qualcomm owns the asserted 

patents.

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Dated: November 4, 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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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 November 4, 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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