IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

HEADWATER RESEARCH LLC 

Plaintiff, 

v. 

SAMSUNG ELECTRONIC CO., LTD and 

SAMSUNG ELECTRONICS AMERICA, INC., 

Defendants. 

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

DEFENDANTS’ REPLY IN SUPPORT OF ITS 

MOTION TO STAY PENDING INTER PARTES REVIEW

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TABLE OF CONTENTS

HEADWATER DOES NOT SHOW UNDUE PREJUDICE ............................................. 1

THE MOST SUBSTANTIVE WORK LIES AHEAD ....................................................... 3

THE SIMPLIFICATION FACTOR FAVORS A STAY ................................................... 4

CONCLUSION ................................................................................................................... 5

 

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TABLE OF AUTHORITIES

Cases Page(s) 

Chart Trading Dev., LLC v. Tradestation Grp., Inc., 

No. 6:15-cv-1136-JDL, 2016 WL 1246579 (E.D. Tex. Mar. 29, 2016) ....................................5 

CyWee Grp. Ltd. v. Samsung Elecs. Co., Ltd., 

No. 2:17-CV-00140-WCB-RSP, 2019 WL 11023976 (E.D. Tex. Feb. 14, 

2019) ..........................................................................................................................................2 

e-Watch Inc. v. Apple, Inc., 

No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668 (E.D. Tex. Mar. 25, 2015) .........................4 

Landmark Tech., LLC v. iRobot Corp., 

No. 6:13–cv–411, 2014 WL 486836 (E.D. Tex. Jan. 24, 2014) ................................................5 

NFC Tech. LLC v. HTC Am., Inc., 

No. 2:13-cv-1058-WCB, 2015 WL 1069111 (E.D. Tex. Mar. 11, 2015) ..................................2 

Smartflash LLC v. Apple Inc., 

621 F. App’x 995 (Fed. Cir. 2015) ............................................................................................3

Stragent LLC v. BMW of N. Am., LLC, 

No. 6:16-CV-446, 2017 WL 3709083 (E.D. Tex. July 11, 2017) .............................................2 

Trover Group, Inc. v. Dedicated Micros USA, 

No. 2:13-CV-1047-WCB, 2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) ................................5 

VirtualAgility Inc. v. Salesforce.com, Inc., 

759 F.3d 1307 (Fed. Cir. 2014)..................................................................................................2 

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While Headwater relies on the blanket assertion that pre-institution stays are improper, it 

fails to rebut facts showing that a stay is appropriate in this particular case. Headwater’s routine 

and significant delays and refusals to engage in discovery have slowed this case’s progress, such 

that the requested stay will not disrupt any substantive activity in this case. Despite alleging that 

its 6-year delay in filing this suit was due to years of intense pre-suit diligence (Dkt. 74 (“Opp.”) 

at 6-7), Headwater has failed to locate and produce basic discovery, respond to correspondence, 

or provide required disclosures. Headwater also ignores that the two decisions rendered to date on 

Samsung’s petitions challenging patents related to the Asserted Patents both instituted IPR.1 These 

decisions give indications about how the PTAB will analyze the Asserted Patents in this case. 

Here, Headwater faces no undue prejudice from the proposed stay, especially given its 

leisurely approach to bringing and maintaining this action. In contrast, Samsung’s efforts in filing 

the IPRs and requesting a stay gives the Court an opportunity to streamline this litigation. Notably, 

between this and the -422 Case, Headwater asserts 12 patents against Samsung, all of which have 

pending IPRs.2 Given the size and magnitude of Headwater’s far-reaching litigation campaign, 

the Court can save significant judicial resources with a stay. Further, given the stage of this case, 

there is much to be gained and very little to be lost staying now. In the unlikely event that the 

Patent Office does not institute, the stay will be relatively brief. And in the more likely institution 

scenario, the Court will not be faced with interrupting the case after substantive activities. 

HEADWATER DOES NOT SHOW UNDUE PREJUDICE 

Headwater does not articulate any specific need for an expeditious resolution of its claims, 

1

 (See Ex. 1, IPR2023-01157, Paper No. 9; Ex. 2, IPR2023-01226, Paper No. 9.) Headwater asserts 

these patents in the related case number 4:22-cv-00422 pending before the Court. The patents 

asserted in the -422 Case share substantially the same specification, a common inventor, and 

common priority applications with the Asserted Patents. 

2

 Headwater asserts 4 more patents against Samsung in this District. (Case No. 2:23-cv-00641.) 

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such that it would face undue prejudice from a pre-institution stay. See VirtualAgility Inc. v. 

Salesforce.com, Inc., 759 F.3d 1307, 1318 (Fed. Cir. 2014) (“[W]hether the patentee will be unduly 

prejudiced by a stay in the district court proceedings . . . focuses on the patentee’s need for an 

expeditious resolution of its claim.”). The temporary deferral of litigation alone does not create 

undue prejudice, because a “stay will not diminish the monetary damages to which [plaintiff] will 

be entitled if it succeeds in its infringement suit—it only delays realization of those damages.” Id.; 

see also Stragent LLC v. BMW of N. Am., LLC, No. 6:16-CV-446, 2017 WL 3709083, at *2 (E.D. 

Tex. July 11, 2017); NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 

1069111, at *2 (E.D. Tex. Mar. 11, 2015).3

 Headwater’s claim that it will suffer based on the 

delay associated with a pre-institution stay is insufficient to show prejudice. 

Moreover, Headwater cannot credibly dispute its own lack of diligence—waiting over six 

years and, in the case of the ’733 patent, nearly ten years, to bring this suit—which shows that it 

did not feel a need for any particularly expeditious enforcement of its alleged rights.4 No such 

need now arises simply because Samsung has filed its IPRs. See CyWee Grp. Ltd. v. Samsung 

Elecs. Co., Ltd., No. 2:17-CV-00140-WCB-RSP, 2019 WL 11023976, at *4 (E.D. Tex. Feb. 14, 

3

 To be clear, any claim by Headwater that it is not an NPE but really somehow a competitor of 

Samsung (see Opp. at 5-6) should be disregarded. Headwater’s request for injunctive relief is 

perfunctory, as Samsung and Headwater are not competitors, ItsOn no longer exists (as detailed in 

this Reply), and Headwater has not identified any other licensees. And, as further outlined in this 

Reply, Headwater has repeatedly stonewalled nearly all discovery on this issue, often taking 

conflicting positions and refusing (or unable) even to answer the basic question of what Headwater 

alleges constitutes the “ItsOn software/application/solution” that pervades its Complaint, and 

whether it actually practiced any of the Asserted Patents. (Exs. 3, 4.) As just one example, 

Headwater’s P.R. 3-1(F) disclosure contends that the “ItsOn software may incorporate or reflect 

the claims,” (Ex. 5 at 14), but Headwater has admitted that it does not know whether the “ItsOn 

Software” practiced the Asserted Patents. (Ex. 6 at 6.) 

4

 Headwater’s claim that the “number of [purportedly] infringing products” explains its delay 

ignores that Headwater’s infringement accusations are focused on functionality that it was aware 

of well before filing suit. (See, e.g., Dkt. 31; Dkt. 70 at 3.) 

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2019) (“Further undermining [plaintiff’s] suggestion as to the urgency of obtaining judicial relief 

is the fact that [it] delayed for more than three years after the issuance of the [asserted] patents 

before bringing suit against Samsung.”). Indeed, in these intervening years: ItsOn―the company 

also founded by Dr. Raleigh and on which Headwater’s “story” against Samsung relies (Opp. at 

5)―ceased to exist; ItsOn’s at-issue source code and documents were lost, disappeared, and/or not 

maintained; and seemingly all evidence of what constituted the alleged ItsOn 

software/application/solution was lost, disappeared, and/or not maintained. (See -422 Case, Dkt. 

69-2, 69-3 at 2.)5 These intervening years were indicative of self-imposed delay and should not 

now be disregarded to thwart Samsung’s stay motion. 

Even after filing suit, Headwater has continued to exhibit a lack of diligence, which further 

belies any prejudice claim. Headwear has continuously refused to timely and meaningfully 

communicate with Samsung. (See Ex. 3 (outlining some of these deficiencies); Ex. 4 (same).) 

Headwater’s deficiencies are characterized by discovery responses that conflict with its 

infringement contentions, narratives relating to unspecific IP and technology not at issue here, and 

disregard of the local rules.6

 (See, e.g., Exs. 3, 4.) 

THE MOST SUBSTANTIVE WORK LIES AHEAD 

Neither the parties nor the Court have engaged in the most costly and time consuming parts 

of the case such as fact witness depositions, expert reports and depositions, dispositive motions, 

and pretrial disclosures. See Smartflash LLC v. Apple Inc., 621 F. App’x 995, 1004 (Fed. Cir. 

2015) (“The primary cost of litigation is incurred pretrial and in a trial on the merits.”). Headwater 

5

 Despite Samsung’s repeated requests for Headwater to clarify the status of ItsOn and the ItsOn 

software in this case, Headwater has not done so. (See Exs. 4, 7.) Rather, Headwater has suggested 

that ItsOn and its relationship with the Asserted Patents are not relevant. (See Ex. 4.) 

6

 Headwater served purported supplemental infringement contentions on December 16, 2023, but 

has yet to seek leave to amend its contentions pursuant to Local Patent Rule 3-6(b). 

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cannot dispute that all of these substantive stages remain ahead. Instead, it focuses on the modest 

discovery taken to date—some document production and written discovery7

—and points to the 

preliminaries performed in all patent cases in this District (i.e., contentions and case management 

pleadings). (Opp. at 8.) Just because some work has already been undertaken does not mean the 

case is at an advanced stage, especially where the plaintiff has repeatedly refused to communicate 

and engage in meaningful discovery. Indeed, the current stage of the case is particularly 

appropriate for a stay, given that any work done to date will be applicable once the stay is lifted. 

In addition, the PTAB’s institution decisions and final written decisions on the Asserted Patents 

are likely to reduce the necessary work for the parties, experts, and the Court in the remaining 

stages of the case. Thus, a short stay could save the Court and the parties substantial wasted efforts. 

THE SIMPLIFICATION FACTOR FAVORS A STAY 

The simplification factor also favors a stay, even though institution has not yet been 

granted. While Headwater argues that a simplification fact analysis is premature before institution 

in light of this District’s “‘universal practice’ of denying pre-institution motions” (Opp. at 1), this 

practice is not without exception.8

 For example, courts in this District have granted a preinstitution stay where, as here, “the issues before this Court will be greatly streamlined” if the 

petitions are granted, and, if the petitions were not granted, “the Court can lift the stay with minimal 

7

 Unable to credibly state that it has “invested substantial resources over the past year,” Headwater 

instead attempts to rely on Samsung’s own “third-party” discovery to “Apple, Blackberry, 

Microsoft, Nokia, and Openwave Mobility.” (Opp. at 8.) Headwater’s reliance on Samsung’s 

investments, rather than its own, only further shows that Headwater would not be unduly 

prejudiced by a stay at this time. Further, Headwater’s investment in this case to date is minimal—

its written discovery responses largely copy its responses from the -422 Case. 

8

 Headwater Samsung’s need to preserve its ability to also seek a post-grant stay in the likely event 

that the PTAB grants one or more of the pending IPR petitions. See, e.g., e-Watch Inc. v. Apple, 

Inc., No. 2:13-cv-1061-JRG-RSP, 2015 WL 12915668, at *3 (E.D. Tex. Mar. 25, 2015) (according 

weight to the timing of defendant’s pre-institution stay motion when ruling on its renewed postinstitution stay motion). 

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delay.” Chart Trading Dev., LLC v. Tradestation Grp., Inc., No. 6:15-cv-1136-JDL, 2016 WL 

1246579, at *4 (E.D. Tex. Mar. 29, 2016) (as to CBMs). 

Headwater’s position that pre-institution stays should never be granted suggests that the 

Court need not consider the substance of the motion or how this case measures against 

reasonableness and precedent. In essence, Headwater hopes the Court will ignore this outlier case, 

notwithstanding the level of negligent prosecution Headwater has demonstrated. To the contrary, 

courts in this District consider case-specific circumstances that may warrant a pre-institution stay, 

as shown by the cases that Headwater cites. For example, in Trover Group, Inc. v. Dedicated 

Micros USA, No. 2:13-CV-1047-WCB, 2015 WL 1069179 (E.D. Tex. Mar. 11, 2015) (involving 

only two patents), Judge Bryson explained that such circumstances include whether “[a]t the time 

the court ruled on the stay motion, the PTAB was due to decide whether to grant the CBM review 

petition within four months.” Trover Grp., No. 2:13-CV-1047-WCB, 2015 WL 1069179, at *6-7 

(distinguishing Landmark Tech., LLC v. iRobot Corp., No. 6:13–cv–411, 2014 WL 486836 (E.D. 

Tex. Jan. 24, 2014)). Similarly, here, all four institution decisions are due within three to five 

months after the close of briefing on this motion (between May and July 2024). (Ex. 8.) Thus, 

the PTAB will issue decisions on the ’192 and ’117 patents before the parties serve their opening 

claim construction briefs, and the ’733 decisions may issue before the Markman hearing. 

Under this case’s present circumstances, as outlined above and in Samsung’s motion (Dkt. 

70)―especially given Headwater’s dilatory actions and continued failure to meaningfully move 

this litigation forward―the potential to simplify the case before any truly substantive litigation 

activities take place favors a pre-institution stay. 

CONCLUSION 

Because each factor favors a stay, Samsung respectfully requests that the Court stay this 

case pending the IPR proceedings’ final resolution in the likely event that the IPRs are instituted. 

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Dated: February 15, 2024 Respectfully submitted, 

By: /s/ Andria Rae Crisler 

 Ruffin B. Cordell 

TX Bar No. 04820550 

Michael J. McKeon 

DC Bar No. 459780 

mckeon@fr.com 

Jared Hartzman (pro hac vice forthcoming) 

DC Bar No. 1034255 

hartzman@fr.com 

Joshua Carrigan (pro hac vice forthcoming) 

VA Bar No. 96911 

carrigan@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 

Nicholas A. Gallo 

GA Bar No. 546590 

gallo@fr.com 

Steffen Lake (pro hac vice forthcoming) 

GA Bar No. 512272 

lake@fr.com 

Vivian C. Keller (admitted pro hac vice) 

GA Bar No. 651500 

keller@fr.com 

FISH & RICHARDSON P.C. 

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 

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Andria Rae Crisler 

TX Bar No. 24093792 

crisler@fr.com 

FISH & RICHARDSON P.C.

1717 Main Street, Suite 5000 

Dallas, TX 75201 

Telephone: (214)747-5070 

Facsimile: (214) 747-2091 

Melissa R. Smith 

State Bar No. 24001351 

Melissa@gillamsmithlaw.com 

Harry Lee Gillam , Jr 

gil@gillamsmithlaw.com 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

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 

Tel: (903) 597-8311 

Fax: (903) 593-0846 

Lance Lin Yang 

Lanceyang@quinnemanuel.com 

QUINN EMANUEL URQUHART & SULLIVAN,

LLP – LA 

Los Angeles, CA 90017 USA 

Tel: (213) 443-3000 

Fax: (213) 443-3100 

Jon Bentley Hyland 

Texas Bar No. 24046131 

jhyland@hilgersgraben.com 

Grant K. Schmidt 

Texas Bar No. 24084579 

gschmidt@hilgersgraben.com 

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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 February 15, 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/ Andria Rae Crisler 

 Andria Rae Crisler 

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