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

JURY TRIAL DEMANDED

 

PLAINTIFF HEADWATER RESEARCH LLC’S REPLY IN SUPPORT OF ITS 

MOTION FOR SUMMARY JUDGMENT OF NO INVALIDITY BASED ON THE 

MOTOROLA E815

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TABLE OF CONTENTS

I. Summary judgment is justified on the merits because Samsung concedes that Dr. Foster 

failed to show that the E815 supported the transport of application data. ............................ 1

II. Samsung is also estopped from presenting both (1) substantive evidence based on the TS23.140 specification at trial and (2) Samsung’s E815 theory more generally. ..................... 4

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TABLE OF AUTHORITIES

Cases

Biscotti Inc. v. Microsoft Corp., 

No. 2:13-cv-01015-JRG-RSP, 2017 WL 2526231 (E.D. Tex. May 11, 2017) ...................... 4, 5

Cimline, Inc. v. Crafco, Inc., 

413 F. App'x 240 (Fed. Cir. 2011).............................................................................................. 3

Fiber Sys. Int'l, Inc. v. Applied Optical Sys., Inc., 

No. 2:06-CV-473, 2009 WL 3571350 (E.D. Tex. Oct. 26, 2009).............................................. 3

Gen. Access Sols., Ltd. v. Sprint Spectrum L.P.,

No. 2:20-cv-00007-RWS, 2020 WL 12572917 (E.D. Tex. Dec. 1, 2020)................................ 4

InTouch Techs., Inc. v. VGO Commc'ns, Inc., 

751 F.3d 1327 (Fed. Cir. 2014) .................................................................................................. 2

Wyers v. Master Lock Co., 

616 F.3d 1231 (Fed. Cir. 2010) .................................................................................................. 3

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Samsung’s opposition (Dkt. 208) confirms that Samsung can present no E815-based 

invalidity theory to the jury that could possibly meet the clear and convincing evidence standard. 

On the merits, Samsung introduces theories not even alleged to be timely presented with

Dr. Foster’s invalidity report. Samsung presents no justification for reliance on waived theories, 

and its reliance on waived theories confirms that its non-waived theories were insufficient.

Regarding estoppel, Samsung points to alleged differences between the Motorola E815 and 

the estopped TS-23.140 specification. But the alleged differences Samsung relies on are contrary 

to the teachings of TS-23.140 (as well as Samsung’s own representations to the PTAB) 

Furthermore, Samsung is estopped from any reliance on the TS-23.140 specification. 

I. Summary judgment is justified on the merits because Samsung concedes that Dr. 

Foster failed to show that the E815 supported the transport of application data.

Samsung’s assertion that “The E815 Supported Transport of Application Data” (Dkt. 208, 

1-4) is pure conjecture, unsupported by any testimony from its invalidity expert Dr. Foster. As 

such, Samsung effectively concedes that Dr. Foster has failed to make the requisite showing, and 

attempts to backfill Dr. Foster’s deficient opinions with equally-deficient new attorney argument.

For example, Samsung contends that “ample evidence exists to support a finding that the 

E815 included the relevant feature of MMS, namely the ability to transport application-specific 

data.” Id., 2. But in support of that theory, Samsung acknowledges that this capability “was 

optional on the device side” (id.) and merely asserts that because the E815 was released “after the 

feature-at-issue was already a part of the MMS standard,” one could assume that the E815 used 

that optional feature. Id. However, Samsung does not present any expert testimony in support of 

this conclusion (see id., not once citing to Dr. Foster’s report in support of these attorney 

arguments), and Samsung’s conjecture in this regard is directly contradicted by Samsung’s own 

evidence. Dkt. 179-5 at 734 (“[T]he support for the new feature of transporting data is an optional 

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requirement for an implementation of MMS. So, an MMS UA in a new terminal may not support 

the feature.”) (emphasis added).

Samsung also alleges that “Headwater does not dispute that the E815 would have needed 

ways to transport data to a specific application.” Dkt. 208, 2. Headwater does dispute as much, at 

least insofar as Samsung is referring to a way to transport application-specific data via MMS as 

Samsung’s theory requires. Samsung had never previously alleged that “the E815 would have 

needed ways to transport data to a specific application” using MMS (id.), and so of course 

Headwater previously had no reason to dispute as much. But, in fact, numerous non-MMS ways 

to transport application data were well known in the art, including simply having the application 

communicate directly with an application server without the use of MMS. For example, a banking 

app can communicate directly with the bank provider’s server, and need not use MMS to obtain 

data. See, e.g., Ex. 1 ¶¶248-249 (explaining a configuration in which a server can transmit 

application data using a “direct connection” rather than MMS).

Samsung further alleges that “the record supports a finding that it would have been obvious 

for the E815 to support transport of application data [via MMS].” Dkt. 208, 2. This is a theory not 

even alleged in Dr. Foster’s report, and Samsung cannot raise this new theory now as it is waived. 

See id., 3 (not citing to Dr. Foster’s report on this point). And it would be prejudicial for Samsung 

to present this belated argument to the jury,

1 as Headwater’s expert had no opportunity to rebut it. 

1 Even if not waived, attorney argument is insufficient to meet Samsung’s burden on this 

point. See InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1353-54 (Fed. Cir. 2014)

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Furthermore, Samsung’s opposition highlights the fact that there is no motivation to modify 

the E815 in the alleged manner; even Samsung’s attorney argument does not set forth any 

motivation to modify the E815 to use MMS in the alleged manner. For instance, Samsung does 

not identify any benefits to doing so, or even explain what changes this modification would have 

entailed. Nor could Samsung have articulated any alleged benefit; there is no evidence of how the 

E815 actually operated in relevant respect, such that a jury considering the issue could only

speculate as to whether any modifications to the E815’s operation might have been beneficial.

Accordingly, even setting aside that Samsung has no Rule 26 basis to argue the obviousness 

of modifying the E815 to transport application data via MMS, on the evidence of record no 

reasonable jury could find clear and convincing evidence that it would have been obvious to 

modify the E815 in that manner that Samsung now proposes for the first time in its opposition.

And more generally, all of the argument in Section II.A of Samsung’s opposition is devoid 

of Rule 26 basis. See generally Dkt. 208, 1-4 & n.1 (Section II.A. containing only a footnote 

citation to Dr. Foster’s report explaining Dr. Foster’s reliance on the “Mostafa” reference). Thus,

(reversing jury verdict of invalidity where expert “failed to provide any meaningful explanation or 

why one of ordinary skill in the art would be motivated to” modify the prior art). Samsung’s 

examples of obviousness without expert testimony (Dkt. 208, 3) are distinguishable. In Samsung’s 

examples “the technology [was] easily understandable, even without the assistance of expert 

opinion.” Cimline, Inc. v. Crafco, Inc., 413 F. App'x 240, 246 (Fed. Cir. 2011) (addressing a patent 

for heavy machinery equipment where it was undisputed that the only difference between the 

invention and the prior art was “a powered conveyor belt, rather than a manual conveyor belt”); 

Wyers v. Master Lock Co., 616 F.3d 1231, 1233 (Fed. Cir. 2010) (addressing “hitch pin locks that 

secure trailers to cars”); Fiber Sys. Int'l, Inc. v. Applied Optical Sys., Inc., No. 2:06-CV-473, 2009 

WL 3571350, at *3 (E.D. Tex. Oct. 26, 2009) (addressing a patent for a physical cable connector 

and noting that plaintiff “has not established that its invention is sufficiently complex to require 

expert testimony”). In contrast, this case involves complex software and server communications 

technology on which the parties have submitted thousands of pages of expert reports.

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even if Samsung’s belated attorney argument did have any credibility, Samsung would not be able 

to present the facts allegedly supporting these arguments to a jury via witness testimony. As such, 

Samsung cannot even present these new invalidity arguments to a jury.

Finally, the arguments set forth in Sections II.B and II.C of Samsung’s opposition are also 

deficient, but need not be considered in evaluating Headwater’s Motion because Samsung and Dr. 

Foster have failed to set forth any genuine dispute of material fact as to whether there is clear and 

convincing evidence that the E815 used MMS to transport application data.

II. Samsung is also estopped from presenting both (1) substantive evidence based on 

the TS-23.140 specification at trial and (2) Samsung’s E815 theory more generally.

Samsung argues that its E815 theory is not cumulative with the TS-23.140 theory Samsung 

raised in the IPR and is estopped from raising here. That is incorrect, as explained in further detail 

below, but even if it were correct, summary judgment would still be proper.

As Headwater explained in its motion, Biscotti and its progeny have been applied “to 

prevent defendants from using [estopped] publications” other than to establish the priority date of 

the alleged prior art system. Dkt. 179, 8-9 (citing Biscotti Inc. v. Microsoft Corp., No. 2:13-cv01015-JRG-RSP, 2017 WL 2526231, at *8 (E.D. Tex. May 11, 2017), and Gen. Access Sols., Ltd. 

v. Sprint Spectrum L.P., No. 2:20-cv-00007-RWS, 2020 WL 12572917, at *4 (E.D. Tex. Dec. 1, 

2020)). But as Headwater showed (and Samsung does not dispute) “TS-23.140 is the exclusive

source of how the E815 allegedly operated [regarding transport of application data].” Dkt. 179 at 

10 (emphasis added); id. at 1 (“Other than [TS-23.140], [Dr. Foster] does not present any evidence 

of how the Motorola E815 actually operated in relevant respect.”). Accordingly, Samsung cannot

possibly set forth a prima facie case of invalidity based on the Motorola E815 without reliance on 

the TS-23.140 publication. And because Samsung is precluded from relying on the TS-23.140 

publication under Biscotti and similar cases, summary judgment should be granted.

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Instead of even attempting to grapple with the fact that Biscotti and its progeny prohibit 

any of Samsung’s reliance on the TS-23.140 publication, Samsung contends that the E815 is 

cumulative with the TS-23.140 publication. See generally Dkt. 208, 6-9. While that contention is 

ultimately irrelevant because Samsung cannot rely on TS-23.140 at all, it is also incorrect.

For example, Samsung contends that “the ability to download applications... is 

unquestionably a disclosure unique to the E815.” Dkt. 208, 8. This assertion is not well-taken; TS23.140 explicitly discloses that “[t]he application registration process.... may also be the initial 

step after the download of a downloadable application to a mobile phone” (Dkt.179-3 at 54), a 

fact that Samsung itself acknowledged in its IPR petition. Ex. 2 at 68 (quoting TS-23.140 at 54).2

Samsung also contends that the presence of an “end-user device,” a “modem,” and 

“memory” are unique to the E815. Dkt. 208, 8. Samsung’s reliance on E815 as being an “end-user 

device” as non-cumulative with TS-23.140 is also untenable; Samsung itself acknowledged that 

“A POSITA understood [TS-23.140’s] ‘UE [user equipment’/‘external device’... is an ‘end-user 

device.’” Ex. 2, at 20 (quoting TS-23.140 at 14). Regarding a “modem,” Samsung previously 

asserted (and Headwater did not dispute) that “[u]sing a modem would be “nothing more than 

utilizing familiar, known components to achieve a predictable result of facilitating TS-23.140’s 

communications.” Id., 9. And Samsung acknowledges that TS-23.140 also discloses a “memory.”

Id., 15 (“TS-23.140’s user device has ‘memory.’”) (citing TS-23.140, 19-20).

In sum, this Court’s precedent requires that Samsung be estopped from relying on the TS23.140 regardless of cumulativeness, but even Samsung’s “non-cumulative” arguments fail.

2 Notably, “downloadable applications” is not a claim limitation, and Dr. Foster does not rely on 

the E815’s teachings regarding downloadable applications in his invalidity analysis.

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Dated: November 12, 2024 Respectfully submitted,

/s/ Marc Fenster

Marc Fenster

CA State Bar No. 181067

Reza Mirzaie

CA State Bar No. 246953

Brian Ledahl

CA State Bar No. 186579

Ben Wang

CA State Bar No. 228712

Paul Kroeger

CA State Bar No. 229074

Neil A. Rubin

CA State Bar No. 250761

Kristopher Davis

CA State Bar No. 329627

James S. Tsuei

CA State Bar No. 285530

Philip Wang

CA State Bar No. 262239

Amy E. Hayden

CA State Bar No. 287026

Adam Hoffman

CA State Bar No. 218740

Dale Chang

CA State Bar No. 248657

James Milkey

CA State Bar No. 281283

Jason M. Wietholter

CA State Bar No. 337139

James N. Pickens

CA State Bar No. 307474

Qi (Peter) Tong

TX State Bar No. 24119042

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Telephone: 310-826-7474

headwater@raklaw.com 

Andrea L. Fair

TX State Bar No. 24078488

MILLER FAIR HENRY PLLC

1507 Bill Owens Parkway

Longview, TX 75604

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Telephone: 903-757-6400

andrea@millerfairhenry.com 

ATTORNEYS FOR PLAINTIFF,

Headwater Research LLC

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CERTIFICATE OF SERVICE

I hereby certify that counsel of record who to have consented to electronic service are being 

served on November 12, 2024, with a copy of this document via the Court’s CM/ECF system.

/s/ Marc Fenster

Marc Fenster

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