UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

 v.

SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, 

INC.,

Defendants.

Civil Action No. 2:23-cv-00103-JRG-RSP

JURY DEMANDED

JOINT MOTION FOR ENTRY OF DISPUTED PROTECTIVE ORDER

Pursuant to the Court’s Order setting a deadline to file a proposed Protective Order (D.I. 

41), Plaintiff Headwater Research, LLC (“Headwater”) and Defendants Samsung Electronics Co., 

Ltd., and Samsung Electronics America, Inc. (collectively, “Defendants” or “Samsung”), 

(collectively, the “Parties”) hereby submit competing forms of the Proposed Protective Order. The 

parties’ proposals are attached as Exhibit A (Headwater) and Exhibit B (Samsung). 

The parties agree on almost all provisions of the Protective Order, but disagree on how the 

scope of the prosecution bar therein is defined.

Plaintiff’s Position:

Headwater’s proposal follows not only this Court’s model protective order but also the 

protective order language agreed upon in Case No. 2:22-cv-00422-JRG-RSP (“the -422 Action”), 

which involves the exact same parties and counsel as the present action. Samsung provides no 

justification for departing from the Court’s default language and what Samsung agreed to only a 

few months ago in another Headwater case. Samsung’s specific proposal is also problematic 

because, if anything, it seeks to improperly broaden the scope of the prosecution bar and would 

not prevent future disputes in any event.

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Paragraph 11 of this Court’s model protective order uses the exact same language that 

Headwater’s proposal does, limiting the scope of the prosecution bar to “the field of the invention 

of the patents-in-suit.” See E.D. Texas Sample Protective Order for Patent Cases ¶ 11. This 

language is understandable to all parties and this Court. Indeed, it is the default language that has 

been applied by this Court for years in hundreds, if not thousands, of protective orders. Samsung 

offers no legitimate reason for deviating from this default language here.

Indeed, the same parties and counsel agreed to include this exact language in the protective 

order entered in the -422 Action only six months ago. See Case No. 2:22-cv-00422-JRG-RSP, Dkt. 

No. 55 at 13 (E.D. Tex. Apr. 5, 2023). Samsung has not identified anything that has occurred in 

that case or this one suggesting that such language is now suddenly problematic. The same parties 

and counsel agreeing to use the Court’s default language a few months ago only further 

demonstrates that there is no reason to deviate now.

During the parties’ telephonic meet-and-confer, counsel for Headwater pointed out not 

only these facts but also problems with Samsung’s specific proposed language. Samsung proposes 

replacing the default language “the field of the invention of the patents-in-suit” with “the fields of 

invention of the patents in suit (e.g., transmission of messages between a server and an application 

using encryption, network message servers, and message link servers).” See Ex. B (Samsung’s 

Proposed PO) ¶ 11. To generate its proposed language, it appears that Samsung cobbled together 

a few individual words or phrases from three different patent abstracts. That is not a reasonable 

way to define the scope of the prosecution bar here. As one example, one might read Samsung’s 

proposal to encompass all technologies involving communication between a device and a server, 

which would be unreasonably overbroad. And given the lack of clarity in Samsung’s proposal, 

adopting Samsung’s proposed additional language would not avoid future disputes about the scope 

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of the prosecution bar. If any such dispute were to arise later (and Headwater certainly expects 

none), the parties and the Court could simply resolve that dispute by using the default protective 

order language that is routinely applied by this Court (and does not include Samsung’s additional 

parenthetical)—which also governs the same parties and counsel in the -422 Action case involving 

other Headwater patents.

Accordingly, Headwater respectfully requests that its proposed protective order be 

adopted, consistent with this Court’s default protective order.

Defendants’ Position:

A prosecution bar, which both parties agree is appropriate here, protects Samsung’s 

confidential information from misuse. The “field of the invention,” in turn, plays a key role in 

defining the scope of that protection. Samsung has proposed fields of invention for each of the 

three asserted patents that are consistent with the subject matter of the asserted patents. Headwater 

objects to Samsung’s proposed language, yet has failed to propose any alternative or identify 

specific issues in Samsung’s proposed language, despite repeated requests by 

Samsung. Headwater complains that Samsung’s proposal is broad, but fails to identify how or 

why or even offer a counter proposal. Headwater also alleges, without explanation, that future 

disputes regarding the definition of “field of the invention” would be better resolved if the parties 

kick the can down the road. But if any disputes were to arise, the Court and the parties would be 

better served by having pre-defined fields of inventions by which to weigh any alleged violation 

of the prosecution bar. 

Headwater argues that the generic recitation of “field of the invention” “is understandable 

to all parties” but, as this dispute clearly shows, the parties have differing views of what the fields 

of invention are for each patent. Unlike the -422 Action—in which no dispute has arisen—here, 

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a known dispute exists, it should be resolved before Headwater receives confidential 

information. Moreover, given that Headwater disputes Samsung’s language but provides no 

alternative, Samsung cannot determine how Headwater intends to interpret the scope of the 

prosecution bar going forward, further increasing uncertainty and the risk of misuse, even if 

inadvertent.

The field of the invention plays a key role in defining the scope of the prosecution bar and 

protecting Samsung’s information. “In determining the scope of a prosecution bar, the relevant 

question is . . . in which fields the patented technology could reasonably be used, i.e. the areas of 

technology where there is a risk that individuals may inadvertently exploit their new knowledge 

in future patent prosecution.” E–Contact Techs., LLC v. Apple, Inc., No. 1:11-CV-426 LED/KFG, 

2012 WL 11924448, at *2 (E.D. Tex. June 19, 2012); see also Visto Corp. v. Seven Networks, Inc., 

No. 2:03-CV-333-TJW, 2006 WL 3741891, at *5 (E.D. Tex. Dec. 19, 2006) (“The purpose for 

this provision is plain—it is to allow discovery in the case to move forward and to prevent a party 

from using its opponent’s confidential technical and financial information for purposes other than 

the prosecution or defense of the lawsuit.”).

Courts routinely define broad “fields of the invention” in prosecution bars found in 

protective orders. See E–Contact Techs., 2012 WL 11924448 at *3 (adopting defendant’s broader 

definition and finding that “[i]t is necessary to impose a broader prosecution bar to protect 

Defendants' confidential information which will be exchanged in this case”); see also Arigna Tech. 

Ltd. v. Google LLC, No. 21-cv-01045-ADA, ECF No. 37 (W.D. Tex. Apr. 12, 2022); Free Stream 

Media Corp. v. Alphonso Inc., No. 15-cv-01725, ECF No. 82 (E.D. Tex. Oct. 5, 2016); PaR Sys. 

Inc. v. iPHOTON SOLS., LLC, No. 10-cv-00393, ECF No. 53 (N.D. Tex. Aug. 23, 2010). This 

makes sense. Now that a dispute exists, the “field of the invention” can and should be determined 

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before Headwater has access to Samsung confidential information. Indeed, defining the “field of 

the invention” before Headwater receives Samsung’s confidential information eliminates the risk 

that Headwater “may inadvertently exploit their new knowledge” by later defining the “field of 

the invention” based on Samsung’s confidential information. E–Contact Techs., 2012 WL 

11924448 at *2. Additionally, specifying the “field of the invention” in the protective order 

provides clarity to all parties and counsel regarding the bounds of the protective order and 

minimizes future disputes regarding protective order violations. 

Thus, Samsung requests that the Court adopt Samsung’s prosecution bar provision.

Dated: October 27, 2023

/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)

DC Bar No. 1034255

hartzman@fr.com

Joshua Carrigan (pro hac vice)

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

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 Hayden

CA State Bar No. 287026

James Milkey

CA State Bar No. 281283

Jason M. Wietholter

CA State Bar No. 337139

RUSS AUGUST & KABAT

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Benjamin K. Thompson

GA Bar No. 633211 

bthompson@fr.com

Nicholas A. Gallo (pro hac vice)

GA Bar No. 546590

gallo@fr.com

Steffen Lake (pro hac vice)

GA Bar No. 512272

lake@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

ldavid@fr.com

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

John-Paul R. Fryckman (pro hac vice)

CA Bar No. 317591

FISH & RICHARDSON P.C.

12860 El Camino Real, Ste. 400

San Diego, CA 92130

Telephone: (858) 678-5070

Facsimile: (858) 678-5099

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

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Telephone: 310-826-7474

rak_headwater@raklaw.com

Robert Christopher Bunt

Parker, Bunt & Ainsworth, P.C.

Texas State Bar No. 00787165

100 E. Ferguson Suite 418

Tyler, Texas 75702

Tel.: (903) 531-3535

rcbunt@pbatyler.com 

ATTORNEYS FOR PLAINTIFF,

Headwater Research LLC

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tom@gillamsmithlaw.com 

GILLAM & SMITH, LLP

102 N. College, Ste. 800

Tyler, Texas 75702

Telephone: (903) 934-8450

Facsimile: (903) 934-9257

Attorneys for Defendants

Samsung Electronics Co., Ltd. and

Samsung Electronics America, Inc.

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CERTIFICATE OF SERVICE

I hereby certify that all counsel of record who are deemed to have consented to electronic 

service are being served this 27th day of October 2023, with a copy of this document via the Court’s 

CM/ECF system per Local Rule CV-5(a)(3).

/s/ Marc Fenster

Marc Fenster

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CERTIFICATE OF CONFERENCE

The undersigned certifies that counsel met and conferred multiple times per Eastern 

District of Texas Local Rule CV-7(h) and were able to resolve most of their disputes, but the 

dispute identified above still remains. The parties are in agreement on filing this Joint Motion.

/s/ Kristopher Davis

Kristopher Davis

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