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 

JURY TRIAL DEMANDED 

SAMSUNG’S SUR-REPLY TO HEADWATER’S MOTION FOR PARTIAL 

SUMMARY JUDGMENT ON STANDING (DKT. 174) 

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TABLE OF EXHIBITS AND NOTES[1]

Exhibit Description 

1 U.S. Patent 8,406,733 (Dkt. 177-1) 

2 U.S. Patent 9,198,117 (Dkt. 177-2) 

3 U.S. Patent 9,615,192 (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 (Dkt. 204-1) 

* 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

 All exhibits are already on the docket, as indicated in the descriptions. 

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Introduction: Headwater’s reply simply repeats its same arguments and cases. It adds 

nothing new except a citation to a 2009 email string between Headwater and Qualcomm where 

Qualcomm states “ ” (before a 

business deal could be consummated). Dkt. 220-2 at HW_00104077. This confirms Qualcomm 

asserted it owned the patents when it was closest to the issue, in 2009. 

Headwater’s reply also admits standing depends on fact finding and credibility 

determinations. Accordingly, given that it is Headwater’s burden to prove standing and that on a 

motion for summary judgment all facts must be interpreted in the light most favorable to the nonmovant (Samsung), Headwater’s motion for summary judgment must fail. Standing should be 

addressed in the context of Samsung’s motion to dismiss. 

Finally, the Court should dismiss because Headwater has failed to meet its triple burden 

(1) to establish standing, (2) to prove its conception date under the Qualcomm contract, and (3) to 

corroborate that date with documentary evidence. 

Corroboration Is Required: 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 Miitors ApS v. Kamstrup 

A/S, 887 F.3d 1293, 1295 (Fed. Cir. 2018) (citation omitted). In its reply, Headwater again seeks 

to distinguish Apator and similar cases because the patentee bore the burden in those cases, but 

Headwater is the patentee and similarly bears the burden. Headwater is also wrong that Samsung 

is trying to establish a conception date. Headwater has the burden of proof under both the contract 

and standing law, so Headwater must establish a conception date. Without sufficient proof of a 

conception date, Qualcomm owns all patents filed within one year of employment. It is as simple 

as that. 

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Headwater’s cases also support Samsung. Headwater argues FilmTec turned on 

“laboratory notebooks” and Bio-Rad turned on “multiple slide presentations and emails.” Reply 

at 9, citing FilmTec Corp. v Hydranautics, 982 F.2d 1546, 1552 (Fed. Cir. 1992) and Bio-Rad 

Labs., Inc. v. Int’l Trade Comm’n, 996 F.3d 1302, 1320 (Fed. Cir. 2021). But Headwater has cited 

no such documents in this case, and without evidence, Headwater cannot prevail since it bears the 

burden of proof. 

Finally, Headwater continues to insist that Samsung is attempting to impose a negative 

burden. This is wrong. What Headwater must prove is when it conceived. This is not a word 

game. It is the law, as stated by the Federal Circuit in the seminal Hybritech case Headwater never 

addresses. The Federal Circuit held that the question of whether an invention was conceived 

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

conceived.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) 

(original emphasis omitted). Whether conception is before or after some other event is a separate 

question that can be reached only after the date of conception is established and corroborated. 

Headwater Has No Corroboration: Headwater persists in arguing that its HW1 

documents are enough in this case. They are not. The most the HW1 documents could arguably 

corroborate is a “device” invention, yet Headwater does not dispute that the invention in this case

is a network/server invention. This is apparent whether one considers Dr. Raleigh’s shorthand 

description, “aggregated messaging,” or whether one looks at the claims. Even Dr. Raleigh 

admitted the asserted patents require “servers,” which are not “devices” in the parlance of this 

case. Ex. 5 at 117:4-118:23. And to prove conception, Headwater must show that each element 

of each patented claim was in Dr. Raleigh’s possession at the time. Headwater has proffered no 

such evidence. 

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

patents. For example, the ’117 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 another example, the 

‘733 patent claims require a “service control link,” “securing of the service control link with an 

encryption protocol,” and a “service control device link agent.” Yet none of these things are in 

the Best Buy slides. Headwater does not even say they are there. Therefore, Headwater has zero 

corroboration for the invention in this case even if the Court believes the “device” invention of 

HW1 appears in the slides. This means Headwater has failed as a matter of law to prove its 

conception 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.”). 

Finally, Headwater again relies on its patent filing, but it never responds to why the Court 

already rejected this as sufficient evidence of conception. See HW1 Dkt. 386 at 173:24-174:20 

(evidentiary hearing). First, the patent application is not evidence of when Dr. Raleigh first

conceived the claimed invention. In re Costello, 717 F.2d 1346, 1350 (Fed. Cir. 1983), cited by 

Headwater, is not to the contrary. It merely holds that an application “constitutes documentary 

evidence that appellants had conceived of the invention as of the filing date.” Id. The filing date 

is not evidence of when the inventor first conceived the invention. Second, as a matter of 

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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. 

Thus, because Headwater has no corroborating evidence, it has failed to establish a 

conception date. And since the asserted patents were filed within one year of Dr. Raleigh’s 

departure from Qualcomm, Qualcomm owns them.2

Dr. Raleigh Is Not Credible: The Court should end its inquiry based on lack of 

corroboration. See Apator, 887 F.3d at 1295 (“[e]ven under the ‘rule of reason’ analysis . . . the 

‘evidence of corroboration must not depend solely on the inventor himself’”). But if it decides to 

consider Dr. Raleigh’s testimony, it should find Dr. Raleigh’s self-serving testimony not credible 

and undercut by his other admissions that create disputes of fact that must be weighed in favor of 

the non-movant. The following new deposition testimony distinguishes HW1, where there were 

no such admissions: (i) the asserted patents in this case “solved critical problems that literally 

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

network” (before he left Qualcomm) and (ii) Dr. Raleigh recognized these problems while at 

Qualcomm. See Ex. 5 at 45:20-46:21, 122:2-15. To be sure, Samsung cannot prove Dr. Raleigh 

2

 Headwater also attempts to revive its argument the Qualcomm contract is void in its 

reply, but it is too late to inject that argument here. The Court also rightly rejected it in HW1. 

See R&R at 5 (“The Court finds that the one-year provision does not run afoul of either 

California statute. The provision does not create ‘restraint of a substantial character’ as it is only 

a rebuttable presumption.”). In addition, Headwater may not challenge the validity of the 

Qualcomm agreement without adding Qualcomm as a party. E.g., Larson v. Correct Craft, Inc., 

569 F.3d 1319, 1327 (Fed. Cir. 2009) (finding no standing where plaintiff’s claim required “first 

voiding his patent assignments”); Ash Grove Texas, L.P. v. City of Dallas, 2009 WL 3270821, 

*15 (N.D. Tex. Oct. 9, 2009) (federal courts “consistently hold that a party to an agreement in 

dispute is an indispensable party”). 

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conceived the invention around the time he first identified the problem (while at Qualcomm), but

Samsung does not have the burden of proof. Headwater has the burden, and it has failed to meet 

it.3

Headwater’s repeated argument that Dr. Raleigh did not work at Qualcomm as an 

“engineer” is belied by the fact Qualcomm required him to sign an invention agreement and by his 

previous testimony that he was “VP of Wireless Internet” at Qualcomm. HW1 Dkt. 386 at 82:7-

16. It is also irrelevant because the agreement is not conditioned on Dr. Raleigh being an engineer. 

In short, Headwater cannot establish standing by reliance on its inventor’s credibility.4

Qualcomm’s Behavior Supports Samsung: Qualcomm has believed it owns the 

Headwater patents—certainly in 2009 when it employed personnel who were closest to the issue—

and it chose not to pursue a claim and instead tried to reach a settlement with Headwater as part of 

a business deal. Those basic facts support Samsung, not Headwater. 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. 

3

 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. 

4

 Dr. Raleigh’s reference to “a disaster on the network” in his panel remarks also aligns 

this case more closely with what Dr. Raleigh observed at Qualcomm regarding “critical problems 

that literally brought down the Cingular network.” See HW1 Dkt. 236-1 at 46:00-46:51; Ex. 5 at 

45:20-46:21, 122:2-15. Dr. Raleigh’s blunt admission in this case that there is no “idea that [he] 

disclosed to Dr. Jacobs that [he] believe[s] is now in every smartphone” also distinguishes HW1. 

See Ex. 5 at 112:14-18. That testimony means Headwater’s position depends on Dr. Raleigh’s 

panel remarks being false, not merely abbreviated. If Dr. Raleigh made false claims before this 

case was filed, why should the Court accept his self-serving testimony now? Doing so would 

turn the requirement for corroboration on its head. Without corroboration, Headwater cannot 

overcome the presumption of Qualcomm’s ownership. 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 inventorship might be tempted to describe his actions in an unjustifiably selfserving manner in order to obtain a patent or to maintain an existing patent”). 

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Headwater’s single new exhibit on reply is an email string in which Qualcomm asserts IP 

ownership must be resolved before any business deal. Dkt. 220-2 at HW_00104077 

). This confirms Qualcomm’s belief 

in 2009 that it owned the patents. Moreover, Headwater did request a release “

.” Ex. 9 at HW_00104071-72. Headwater says this is a “false 

characterization,” but it is a quote of the proposed release Headwater sent Qualcomm in 2009. 

While Qualcomm and Headwater may have attempted to resolve this dispute in 2017-2022, 

they were unable to reach a deal. Dr. Raleigh wanted more money than Qualcomm was willing to 

pay. Thus, Qualcomm’s behavior has all the hallmarks of an attempted compromise, not a 

surrender. It does not help Headwater establish standing. 

Conclusion: The Court should deny Headwater’s motion for summary judgment and 

dismiss this case for lack of standing because Headwater has not established it owns the asserted 

patents. 

 

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Dated: November 20, 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 

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FISH & RICHARDSON P.C. 

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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 20, 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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