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. 4:23-CV-00103-JRG-RSP

DEFENDANTS’ UNOPPOSED MOTION FOR LEAVE TO 

AMEND INVALIDITY CONTENTIONS

Defendants Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. 

(“Defendants” or “Samsung”) seek leave, per Local Patent Rule 3-6(b), to amend their Invalidity 

Contentions for good cause. This is Samsung’s first request to amend its Invalidity Contentions, 

and Headwater Research LLC (“Plaintiff” or “Headwater”) does not oppose this request.

The amendments to Samsung’s contentions relate to two categories of prior art. First, 

Samsung’s proposed amended contentions provide further detail and support regarding the Google 

Message Delivery prior art system (the “Google Message Delivery Prior Art”) disclosed in 

Samsung’s original Invalidity Contentions served on November 30, 2023. This additional detail 

and support comes from information and source code recently produced in response to Samsung’s 

subpoena to third-party Google, which Samsung served shortly after fact discovery opened.

Second, Samsung’s proposed amended contentions include OpenWave’s Mobile Access 

Gateways prior art system (the “OpenWave Prior Art”). The OpenWave Prior Art was also 

disclosed in Samsung’s original Invalidity Contentions: Samsung expressly referenced 

“OpenWave Devices” as a prior art system of interest and charted a patent application by 

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OpenWave. Samsung obtained a technical production of non-public materials regarding the 

OpenWave Prior Art in response to Samsung’s subpoena to third-party OpenWave, which 

Samsung served also shortly after fact discovery opened. 

Samsung therefore respectfully submits that good cause exists under P.R. 3-6(b) to grant it 

leave to amend its Invalidity Contentions and Exhibits A-07, B-07, and C-07 thereto and to add 

Exhibits A-18, B-18, and C-18 thereto. 

I. ARGUMENT

A party may amend or supplement invalidity contentions “by order of the Court, which 

shall be entered only upon a showing of good cause.” P.R. 3-6(b). Courts in this district generally 

consider the following factors when determining good cause: “(1) the explanation for the party’s 

failure to meet the deadline, (2) the importance of what the Court is excluding, (3) the potential 

prejudice if the Court allows that thing that would be excluded, and (4) the availability of a 

continuance to cure such prejudice.” Garrity Power Servs. LLC v. Samsung Elecs. Co. Ltd. et al., 

No. 2:20-CV-269-JRG, 2021 WL 4894262, at *1 (E.D. Tex. Oct. 19, 2021) (citing Keranos, LLC 

v. Silicon Storage Tech., Inc., 797 F.3d 1025, 1035 (Fed. Cir. 2015)). Good cause exists here, as 

all factors favor amendment.

Good cause exists for Samsung to amend its Invalidity Contentions because: Samsung was 

diligent in discovering the additional evidence and seeking to amend its Invalidity Contentions to 

reflect the additional discovered evidence; the Google Message Delivery Prior Art and the 

OpenWave Prior Art are both important to Samsung’s invalidity case; and the time passed is minor 

and will not affect the case schedule or prejudice Headwater. See, e.g., Netsocket Inc. v. Cisco 

Sys., Inc., No. 2:22-CV-172-JRG, Dkt. No. 68 (E.D. Tex. June 21, 2023) (granting defendant’s 

unopposed motion for leave to amend invalidity contentions where the amended contentions added 

a claim chart based on two previously disclosed references); Orckit Corp. v. Cisco Sys., Inc., No. 

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2:22-CV-276-JRG, Dkt. No. 61 (E.D. Tex. Apr. 13, 2023) (granting defendant’s unopposed 

motion for leave to amend invalidity contentions “to include prior art documents recently received 

from third-party subpoenas”); Garrity Power Servs. LLC, No. 2:20-CV-269-JRG, 2021 WL 

4894262, at *1 (granting defendants’ motion for leave to amend invalidity contentions where 

amended contentions did not add new prior art—only newly discovered evidence).

A. Samsung Acted Diligently and in Good Faith

Samsung diligently pursued via discovery the material it now seeks to incorporate into its 

Invalidity Contentions via amendment, all the while keeping Headwater updated on its intent to 

supplement and its third-party subpoena efforts.

Samsung served third-party subpoenas to obtain prior art documentation—including 

documentation describing the Google Message Delivery Prior Art and OpenWave Prior Art 

systems shortly after fact discovery opened and before Samsung’s Invalidity Contentions were due 

under P.R. 3-3.1 See Dkt. Nos. 54, 57, 58 (Docket Control Order, Discovery Order, Protective 

Order filed October 27, 2023); Ex. A (Google Subpoena); Ex. B (OpenWave Subpoena). Even 

though Google and OpenWave did not produce the requested information until after Samsung 

timely served its original Invalidity Contentions on November 30, 2023, Samsung put Headwater 

on early notice of its intent to rely on these systems. Samsung’s original Contentions expressly 

identified—and charted—the Google Message Delivery Prior Art system as § 102 and § 103 prior 

art to the extent possible based on public information. Similarly, Samsung referenced “OpenWave 

1

In fact, Samsung subpoenaed OpenWave just five weeks after Headwater served its initial 

Infringement Contentions and seven weeks before Headwater served its First Amended 

Infringement Contentions, and Samsung subpoenaed Google just nine weeks after Headwater 

served its initial Infringement Contentions and three weeks before Headwater served its First 

Amended Infringement Contentions. Consistent with Fed. R. Civ. P. 45(a)(4), Samsung served 

notices of the subpoenas to Headwater, so Headwater was on notice of the additional information 

that Samsung was seeking from Google and OpenWave.

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Devices” as a prior art system of interest and charted an OpenWave published patent application 

to “Wills” as prior art, which led Samsung to seek additional information from OpenWave via 

subpoena. See Ex. C (Excerpts from Samsung’s original Invalidity Contentions) at 27, 38. In 

addition, Samsung’s original invalidity contention charts specifically noted that Samsung expected 

to seek leave to supplement in view of “information obtained during discovery as the case 

progresses.” Samsung’s original contentions further “reserve[d] the right to supplement these 

Contentions if it becomes aware of additional prior art . . . or becomes aware of any other relevant 

information through discovery, including non-party discovery.” Id. at 3.

After diligently pursuing the requested discovery from OpenWave, Samsung received an 

initial document production on December 12, 2023, after which Samsung: promptly relayed the 

production to Headwater on December 14, 2023 and supplemented its interrogatory responses on 

January 12, 2024 to identify the documents and notify Headwater that it planned to further 

supplement its contentions based on forthcoming subpoenaed documents. Ex. D at Samsung’s 2nd

Suppl. Response to Headwater Rog. 1. Samsung followed this interrogatory supplement with an 

email to Headwater’s counsel, stating that Samsung planned to supplement its Invalidity 

Contentions with respect to prior art obtained from OpenWave. Ex. E (1/12/2024 Email fr. Bright 

to Headwater). 

Similarly, after Samsung diligently pursued the requested discovery from Google, Google 

began producing source code on February 1, 2024. In light of Google’s production, Samsung 

discovered additional information regarding Google Message Delivery Prior Art. Samsung 

supplemented its interrogatory responses a few days later, on February 6, 2024, to identify 

Google’s production and notify Headwater that it planned to supplement its invalidity contentions 

based on Google’s currently produced and potentially forthcoming documents. Ex. D at 

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Samsung’s 2nd Suppl. Response to Headwater Rog. 1. Samsung followed this interrogatory 

supplement with an email to Headwater’s counsel, again notifying Headwater that Samsung 

expected to supplement its Invalidity Contentions. Ex. F (2/12/2024 Email fr. Crisler to 

Headwater). 

On February 23, 2024, Samsung notified Headwater of its intent to seek leave to amend its 

Invalidity Contentions, and asked if Headwater would oppose. See Ex. G (2/23/2024 Email fr. 

Bright to Headwater). Samsung subsequently provided Headwater with its revised contentions 

(two charts for each Asserted Patent and a revised cover pleading). See Ex. H (Samsung’s 

Amended Invalidity Contentions Cover Pleading and Representative Claim Charts). Headwater 

stated that it would not oppose Samsung’s motion via an email sent on March 14, 2024. See Ex. I

(3/14/2024 Email fr. Wieholter to Bright). Samsung prepared and filed this motion thereafter.

B. The Proposed Amendments Are Important

Samsung’s proposed amendments are important to Samsung’s invalidity case. Samsung 

expects to rely on the Google Message Delivery Prior Art and the OpenWave Prior Art for its 

invalidity defenses at trial. The proposed amended Invalidity Contentions and attached claim 

charts help explain and clarify for the jury how these prior systems—one of which was expressly

disclosed in Samsung’s original Invalidity Contentions—anticipate and/or render obvious the 

Asserted Patents’ alleged inventions. See Garrity Power, No. 2:20-CV-269-JRG, 2021 WL 

4894262, at *2 (“Defendants acknowledged the importance of the prior art by disclosing it in their 

initial contentions and expending efforts to locate the Fulton System to supplement its 

contentions[.]”). Further, the Google Message Delivery Prior Art and the OpenWave Prior Art 

may become paramount to Samsung’s invalidity defense. These system references are not only 

strong on their merits, but they are also not subject to estoppel under 35 U.S.C. § 315(e) and thus 

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will remain in the case regardless of the resolution of Samsung’s pending inter partes review 

(“IPR”) petitions.

2

C. Headwater Will Not be Prejudiced; No Continuance is Required

The proposed amendments will not prejudice Headwater, nor will they necessitate a 

continuance or any other schedule changes. 

As to the Google Message Delivery Prior Art, the amended cover pleading and claim charts 

merely provide further detail and support for the Google Message Delivery Prior Art that Samsung 

already disclosed in its original Invalidity Contentions, and, as to the OpenWave Prior Art, the 

amended cover pleading and claim charts expand upon systems related to the Wills prior art 

reference Samsung already disclosed in its original Invalidity Contentions. See Garrity Power, 

No. 2:20-CV-269-JRG, 2021 WL 4894262, at *3 (“The fact that Plaintiff would have to respond 

to invalidity theories” included in “Defendants’ timely original invalidity contentions—which 

were well before Markman[,]” “was already baked into this situation.”); see also Seven Networks, 

LLC v. Google LLC, No. 2:17-CV-00442-JRG, 2018 WL 3327927, at *3 (E.D. Tex. July 6, 2018) 

(“Given that the prior art will be in the case regardless, and SEVEN will have accounted for its 

teachings in developing its claim construction positions, the Court finds that there is minimal 

prejudice.”). Headwater has been on notice of Samsung’s reliance on the Google Message 

Delivery Prior Art and the OpenWave Prior Art for months, and it has been kept apprised of 

Samsung’s collection efforts and forthcoming amendments. See Ex. D at Samsung’s 2nd Suppl. 

Response to Headwater Rog. 1. 

Moreover, Headwater has stated that it does not oppose Samsung obtaining leave to amend 

its contentions. Further, the case is still in the early stages of fact discovery, the parties have not 

2 Samsung has so far filed four IPR petitions as to the three Asserted Patents, and no final 

written decision has been issued. 

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yet exchanged proposed constructions for claim terms, and the Markman hearing is not until July 

11, 2024. Thus, the Court’s schedule will not need to be adjusted if leave to supplement is granted. 

See Seven Networks, LLC, 2018 WL 3327927, at *3; see also Uniloc 2017 LLC v. Google LLC, 

No. 2:18-CV-00493-JRG-RSP, 2019 WL 6465318, at *2 (E.D. Tex. Dec. 2, 2019). 

II. CONCLUSION

For the reasons set forth herein and for any others that may appear to the Court, Samsung 

respectfully requests that the Court grant its Unopposed Motion for Leave to Amend Invalidity 

Contentions. 

Dated: March 28, 2024 Respectfully submitted, 

By: /s/ Noah C. Graubart

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

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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

Noah C. Graubart

GA Bar No. 141862

graubart@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

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

Michael E. Jones 

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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

QUINN EMANUEL URQUHART & SULLIVAN,

LLP - LA

865 S. Figueroa Street, 10th Floor

Los Angeles, CA 90017 USA

213/443-3000 Fax: 213/443-3100

Email:Lanceyang@quinnemanuel.Com

Jon 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 CONFERENCE

Counsel for Plaintiff and counsel for Defendants have met and conferred in compliance 

with Local Rule CV-7(h). Plaintiff does not oppose this motion.

By /s/ Noah C. Graubart

Noah C. Graubart 

CERTIFICATE OF SERVICE

I hereby certifies that a true and correct copy of the above and foregoing document has 

been sent to all counsel of record who are deemed to have consented to electronic service via the 

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

By /s/ Noah C. Graubart

Noah C. Graubart

CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL

I hereby certify that the foregoing document is authorized to be filed under seal pursuant 

to the Protective Order entered in this case. 

By /s/ Noah C. Graubart

Noah C. Graubart

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