EXHIBIT A 

Case 2:23-cv-00103-JRG-RSP Document 85-1 Filed 04/09/24 Page 1 of 48 PageID #: 3097
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. 2:22-CV-00422-JRG-RSP 

JURY TRIAL DEMANDED 

SAMSUNG ELECTRONIC CO., LTD AND SAMSUNG 

ELECTRONICS AMERICA, INC.’S AMENDED ANSWER AND DEFENSES TO 

PLAINTIFF HEADWATER RESEARCH LLC’S SECOND AMENDED 

COMPLAINT FOR PATENT INFRINGEMENT 

Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc. 

(“SEA”) (collectively “Defendants” or “Samsung”) respectfully submit this Amended Answer to 

Headwater Research LLC’s (“Headwater”) Second Amended Complaint for Patent Infringement 

(“Complaint”) filed on March 13, 2023. Samsung denies the allegations and characterizations in 

Headwater’s Complaint unless expressly admitted in the following paragraphs, which correspond 

to the numbered paragraphs in the Complaint. 

BACKGROUND1

1. Samsung admits that Headwater purports to bring a patent infringement action for

alleged infringement of United States Patent Nos. 9,137,701 (“the ’701 patent”), 9,143,976 (“the 

1

 Samsung repeats the headings set forth in the Complaint to simplify comparison of the Complaint 

and this response. In doing so, Samsung makes no admissions regarding the substance of the 

headings or any other allegations of the Complaint. Unless otherwise stated, to the extent that a 

particular heading can be construed as an allegation, Samsung specifically denies all such 

allegations. 

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’976 patent”), 9,271,184 (“the ’184 patent”), 9,277,433 (“the ’433 patent”), 9,277,445 (“the ’445 

patent”), 9,521,578 (“the ’578 patent”), 9,609,544 (“the ’544 patent”), 10,237,773 (“the ’733 

patent”) and 11,405,224 (“the ’224 patent”) (collectively, the “Asserted Patents”). Samsung 

denies any remaining allegations contained in Paragraph 1 of the Complaint. 

2. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 2 of the Complaint and therefore denies them. 

3. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 3 of the Complaint and therefore denies them. 

4. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 4 of the Complaint and therefore denies them. 

5. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 5 of the Complaint and therefore denies them. 

6. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 6 of the Complaint and therefore denies them. 

7. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 7 of the Complaint and therefore denies them. 

8. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 8 of the Complaint and therefore denies them. 

9. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 9 of the Complaint and therefore denies them. 

10. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 10 of the Complaint and therefore denies them. 

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11. To the extent Paragraph 11 recites and implicates legal conclusions, no response is 

required. Samsung admits that certain mobile devices can used for communication and 

entertainment and can exchange data via wireless and cellular networks. Samsung denies any 

remaining allegations. 

12. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 12 of the Complaint and therefore denies them. 

13. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 13 of the Complaint and therefore them. 

14. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 14 of the Complaint and therefore denies them. 

15. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 15 of the Complaint and therefore denies them. 

NOTICE OF THE ASSERTED PATENTS 

16. To the extent that Paragraph 16 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 16 of the Complaint and therefore 

denies them. 

17. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 17 of the Complaint and therefore denies them. 

18. To the extent that Paragraph 18 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of the allegations in Paragraph 18 of the Complaint and therefore denies 

them. 

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19. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 19 of the Complaint and therefore denies them. 

20. Samsung admits that between 2013-2016, SEA worked with Sprint. Samsung 

further admits that in instances during 2013-2016, SEA interacted with ItsOn in relation to SEA’s 

work with Sprint. Samsung is without knowledge or information sufficient to form a belief about 

the allegations concerning work between Sprint and ItsOn and on that basis denies them. To the 

extent that Paragraph 20 alleges the Asserted Patents are valid, Samsung denies any such 

allegation. Samsung denies the remaining allegations in Paragraph 20 of the Complaint 

21. Samsung admits that certain ItsOn software was installed on certain end user 

Samsung wireless devices sold by Sprint. To the extent that Paragraph 21 alleges the Asserted 

Patents are valid, Samsung denies any such allegation. Samsung denies the remaining allegations. 

22. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 22 of the Complaint and therefore denies them. 

23. Samsung admits that in instances, SEA employees interacted with ItsOn employees 

concerning bugs in ItsOn technology. Samsung is without knowledge or information sufficient to 

form a belief about the truth of the remaining allegations in Paragraph 23 of the Complaint and 

therefore denies them. 

24. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 24 of the Complaint and therefore denies them. 

25. Samsung admits that in instances, SEA employees interacted with ItsOn employees 

concerning bugs in ItsOn technology. Samsung is without knowledge or information sufficient to 

form a belief about the truth of the remaining allegations in Paragraph 25 of the Complaint and 

therefore denies them. 

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26. To the extent that Paragraph 26 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 26 of the Complaint and therefore 

denies them. 

27. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 27 of the Complaint and therefore denies them. 

28. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 28 of the Complaint and therefore denies them. 

29. To the extent paragraph 29 is purely argumentative and/or asserts legal conclusions, 

no response is required. Samsung denies any remaining allegations. 

30. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 30 of the Complaint and therefore denies them. 

31. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 31 of the Complaint and therefore denies them. 

32. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 32 of the Complaint and therefore denies them. 

33. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 33 of the Complaint and therefore denies them. 

34. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 34 of the Complaint and therefore denies them. 

35. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 35 of the Complaint and therefore denies them. 

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36. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 36 of the Complaint and therefore denies them. 

37. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 37 of the Complaint and therefore denies them. 

38. To the extent that Paragraph 38 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 38 of the Complaint and therefore 

denies them. 

39. Samsung admits that it has released various devices since 2016 having beneficial 

features. Samsung denies all remaining allegations in Paragraph 39 of the Complaint. 

PLAINTIFF HEADWATER AND THE PATENTS-IN-SUIT 

40. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 40 of the Complaint and therefore denies them. 

41. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,137,701. Samsung admits that a purported copy of the ’701 patent is attached to the Complaint 

as Exhibit 1. Samsung admits that Exhibit 1 bears the title “Wireless end-user device with 

differentiated network access for background and foreground device applications” and a “Date of 

Patent” of September 15, 2015. Samsung denies any remaining allegations in Paragraph 41 of the 

Complaint. 

42. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,271,184. Samsung admits that a purported copy of the ’184 patent is attached to the Complaint 

as Exhibit 2. Samsung admits that Exhibit 2 bears the title “Wireless end-user device with perapplication data limit and traffic control policy list limiting background application traffic” and a 

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“Date of Patent” of February 23, 2016. Samsung denies any remaining allegations in Paragraph 

42 of the Complaint. 

43. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,521,578. Samsung admits that a purported copy of the ’578 patent is attached to the Complaint 

as Exhibit 3. Samsung admits that Exhibit 3 bears the title “Wireless end-user device with 

application program interface to allow applications to access application-specific aspects of a 

wireless network access policy” and a “Date of Patent” of December 13, 2016. Samsung denies 

any remaining allegations in Paragraph 43 of the Complaint. 

44. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,277,445. Samsung admits that a purported copy of the ’445 patent is attached to the Complaint 

as Exhibit 4. Samsung admits that Exhibit 4 bears the title “Wireless end-user device with 

differential traffic control policy list and applying foreground classification to wireless data 

service” and a “Date of Patent” of March 1, 2016. Samsung denies any remaining allegations of 

Paragraph 44 of the Complaint. 

45. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

11,405,224. Samsung admits that a purported copy of the ’224 patent is attached to the Complaint 

as Exhibit 5. Samsung admits that Exhibit 5 bears the title “Device-assisted services for protecting 

network capacity.” Samsung denies that the ’224 patent issued on of August 8, 2022. Samsung 

denies any remaining allegations in Paragraph 45 of the Complaint. 

46. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,143,976. Samsung admits that a purported copy of the ’976 patent is attached to the Complaint 

as Exhibit 6. Samsung admits that Exhibit 6 bears the title “Wireless end-user device with 

differentiated network access and access status for background and foreground device 

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applications” and a “Date of Patent” of September 22, 2015. Samsung denies any remaining 

allegations of Paragraph 46 of the Complaint. 

47. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,277,433. Samsung admits that a purported copy of the ’433 patent is attached to the Complaint 

as Exhibit 7. Samsung admits that Exhibit 7 bears the title “Wireless end-user device with policybased aggregation of network activity requested by applications” and a “Date of Patent” of March 

1, 2016. Samsung denies any remaining allegations of Paragraph 47 of the Complaint. 

48. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,609,544. Samsung admits that a purported copy of the ’544 patent is attached to the Complaint 

as Exhibit 8. Samsung admits that Exhibit 8 bears the title “Device-assisted services for protecting 

network capacity” and a “Date of Patent” of March 28, 2017. Samsung denies any remaining 

allegations of Paragraph 48 of the Complaint. 

49. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

10,237,773. Samsung admits that a purported copy of the ’773 patent is attached to the Complaint 

as Exhibit 9. Samsung admits that Exhibit 9 bears the title “Device-assisted services for protecting 

network capacity” and a “Date of Patent” of March 19, 2019. Samsung denies any remaining 

allegations of Paragraph 49 of the Complaint. 

DEFENDANTS AND THE ACCUSED INSTRUMENTALITIES 

50. Samsung admits that SEC is a corporation organized under the laws of the Republic 

of Korea with its principal place of business at 129 Samsung-Ro, Yeongtong-gu, Suwon-si, 

Gyeonggi-do, 443-742, Republic of Korea. Samsung denies any remaining allegations in 

Paragraph 50 of the Complaint. 

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51. Samsung admits that SEA is a corporation organized under the laws of the State of 

New York, with its principal place of business at 85 Challenger Road, Ridgefield Park, New Jersey 

07660. Samsung admits that SEA is a wholly owned subsidiary of SEC. Samsung admits that 

SEA distributes certain Samsung consumer electronics products in the United States. Samsung 

denies any remaining allegations in Paragraph 51 of the Complaint. 

52. Samsung admits that SEA has corporate offices at 6625 Excellence Way, Plano, 

Texas 75023. Samsung denies that SEA has corporate offices at 1303 East Lookout Drive, 

Richardson, Texas 75082 and 2800 Technology Drive, Suite 200, Plano, Texas 75074. Samsung 

admits that SEA may be served through CT Corporation System, 1999 Bryan Street, Suite 900, 

Dallas, Texas 75201-3136. Samsung denies any remaining allegations in Paragraph 52 of the 

Complaint. 

53. Samsung admits that Headwater, through its Complaint, accuses various Samsung 

mobile electronic devices of allegedly infringing the Asserted Patents. Samsung denies any 

alleged infringement. Samsung denies the remaining allegations in Paragraph 53 of the Complaint. 

JURISDICTION AND VENUE 

54. Samsung admits that the Complaint purports to set forth a claim for patent 

infringement arising under the patent laws of the United States, Title 35 of the United States Code. 

Samsung denies any allegations of infringement. 

55. Samsung admits that this Court has subject matter jurisdiction over actions for 

patent infringement under 28 U.S.C. §§ 1331 and 1338(a). Samsung denies that Headwater is 

entitled to any relief for its allegations of patent infringement, whether by award of damages, 

injunction, or otherwise. Samsung denies any allegations of infringement. 

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56. Samsung does not contest, solely for the purpose of the present litigation, whether 

personal jurisdiction properly lies in this District. SEA admits that it engages in offering and 

selling certain products to customers in Texas. However, Samsung denies that it has committed 

acts of infringement in the Eastern District of Texas or elsewhere, or that it has committed any act, 

directly or indirectly, that would give rise to any cause of action under the Complaint. Samsung 

denies any remaining allegations in Paragraph 56 of the Complaint. 

57. SEA admits that it engages in offering and selling certain products to customers in 

Texas. However, Samsung denies that it has committed acts of infringement in the Eastern District 

of Texas or elsewhere, or that it has committed any act, directly or indirectly, that would give rise 

to any cause of action under the Complaint. Samsung denies any remaining allegations in 

Paragraph 57 of the Complaint. 

58. Samsung does not contest, solely for the purposes of the present action, whether 

venue over them properly lies in this District. However, Samsung denies that venue in this District 

is convenient. Samsung denies that it has committed acts of infringement in this District or 

elsewhere in the State of Texas, or that it has committed any act, directly or indirectly, that would 

give rise to any cause of action under the Complaint in Paragraph 58. 

59. Samsung admits that SEA has a place of business at 6625 Excellence Way, Plano, 

Texas 75023. Samsung denies that it has regular and established places of business at 1303 East 

Lookout Drive, Richardson, Texas 75082 and 2800 Technology Drive, Suite 200, Plano, Texas 

75074. Samsung denies any remaining allegations in Paragraph 59 of the Complaint. 

60. Samsung admits that SEC is a foreign corporation and that for purposes of this 

action only, and without waiving any defense of improper venue in connection with any other 

cause of action or claim, Samsung admits that the Complaint’s alleged venue as to SEC is proper 

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under 28 U.S.C. §1391(c). Samsung denies any remaining allegations in Paragraph 60 of the 

Complaint.

61. Samsung admits that in certain prior cases, based on the specific and unique facts 

of those cases, Samsung has either admitted or not contested proper venue in this District. 

Samsung denies any suggestion that this is a convenient forum to resolve this dispute. Samsung 

denies any remaining allegations in Paragraph 61 of the Complaint. 

COUNT 1 – CLAIM FOR INFRINGEMENT OF THE ’701 PATENT 

62. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

63. Samsung admits that Exhibit 1 bears the title “Wireless end-user device with 

differentiated network access for background and foreground device applications” and a “Date of 

Patent” of September 15, 2015. Samsung denies any remaining allegations in Paragraph 63 of the 

Complaint. 

64. Samsung admits that Headwater purports to be the owner of the ’701 patent. 

Samsung denies any remaining allegations in Paragraph 64 of the Complaint. 

65. To the extent paragraph 65 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 65 of the Complaint 

66. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 66 of the Complaint and therefore denies them. 

67. Denied. 

68. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 68 of the Complaint. 

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69. Samsung admits Headwater attaches an Exhibit 10 to its Complaint that purports to 

show alleged infringement of the ’701 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 69 of the Complaint. 

70. Samsung admits that the ’701 patent is listed as a reference cited on at least one 

issued patent that identifies the applicant as Samsung Electronics Co. Ltd. Samsung denies any 

alleged infringement. Samsung denies all remaining allegations in Paragraph 70 of the Complaint. 

71. Denied. 

72. Denied. 

73. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 73 of the 

Complaint. 

74. Denied. 

75. Denied. 

COUNT 2 – CLAIM FOR INFRINGEMENT OF THE ’184 PATENT 

76. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

77. Samsung admits that Exhibit 2 bears the title “Wireless end-user device with perapplication data limit and traffic control policy list limiting background application traffic” and a 

“Date of Patent” of February 23, 2016. Samsung denies any remaining allegations in Paragraph 

77 of the Complaint. 

78. Samsung admits that Headwater purports to be the owner of the ’184 patent. 

Samsung denies any remaining allegations in Paragraph 78 of the Complaint. 

79. To the extent Paragraph 79 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 79 of the Complaint. 

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80. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 80 of the Complaint and therefore denies them. 

81. Denied. 

82. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 82 of the Complaint. 

83. Samsung admits Headwater attaches an Exhibit 11 to its Complaint that purports to 

show alleged infringement of the ’184 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 83 of the Complaint. 

84. Denied. 

85. Denied. 

86. Denied. 

87. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 87 of the 

Complaint. 

88. Denied. 

89. Denied. 

COUNT 3 – CLAIM FOR INFRINGEMENT OF THE ’578 PATENT 

90. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

91. Samsung admits that Exhibit 3 bears the title “Wireless end-user device with 

application program interface to allow applications to access application-specific aspects of a 

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wireless network access policy” and a “Date of Patent” of December 13, 2016. Samsung denies 

any remaining allegations in Paragraph 91 of the Complaint. 

92. Samsung admits that Headwater purports to be the owner of the ’578 patent. 

Samsung denies any remaining allegations in Paragraph 92 of the Complaint. 

93. To the extent paragraph 93 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 93 of the Complaint. 

94. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 94 of the Complaint and therefore denies them. 

95. Denied. 

96. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 96 of the Complaint. 

97. Samsung admits Headwater attaches an Exhibit 12 to its Complaint that purports to 

show alleged infringement of the ’578 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 73 of the Complaint. 

98. Denied. 

99. Denied. 

100. Denied. 

101. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 101 of the 

Complaint. 

102. Denied. 

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103. Denied. 

COUNT 4 – CLAIM FOR INFRINGEMENT OF THE ’445 PATENT 

104. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

105. Samsung admits that Exhibit 4 bears the title “Wireless end-user device with 

differential traffic control policy list and applying foreground classification to wireless data 

service” and a “Date of Patent” of March 1, 2016. Samsung denies any remaining allegations in 

Paragraph 105 of the Complaint. 

106. Samsung admits that Headwater purports to be the owner of the ’445 patent. 

Samsung denies any remaining allegations in Paragraph 106 of the Complaint. 

107. To the extent Paragraph 107 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 107 of the Complaint. 

108. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 108 of the Complaint and therefore denies them. 

109. Denied. 

110. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 110 of the Complaint. 

111. Samsung admits Headwater attaches an Exhibit 13 to its Complaint that purports to 

show alleged infringement of the ’445 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 111 of the Complaint. 

112. Denied. 

113. Denied. 

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114. Denied. 

115. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 115 of the 

Complaint. 

116. Denied. 

117. Denied. 

COUNT 5 – CLAIM FOR INFRINGEMENT OF THE ’224 PATENT 

118. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

119. Samsung admits that Exhibit 5 bears the title “Device-assisted services for 

protecting network capacity” and a “Date of Patent” of August 2, 2022. Samsung denies any 

remaining allegations in Paragraph 119 of the Complaint. 

120. Samsung admits that Headwater purports to be the owner of the ’224 patent. 

Samsung denies any remaining allegations in Paragraph 120 of the Complaint. 

121. To the extent Paragraph 121 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 121 of the Complaint. 

122. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 122 of the Complaint and therefore denies them. 

123. Denied. 

124. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 124 of the Complaint. 

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125. Samsung admits Headwater attaches an Exhibit 14 to its Complaint that purports to 

show alleged infringement of the ’224 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 125 of the Complaint. 

126. Denied. 

127. Denied. 

128. Denied. 

129. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 129 of the 

Complaint. 

130. Denied. 

131. Denied. 

COUNT 6 – CLAIM FOR INFRINGEMENT OF THE ’976 PATENT 

132. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

133. Samsung admits that Exhibit 6 bears the title “Wireless end-user device with 

differentiated network access and access status for background and foreground device 

applications” and a “Date of Patent” of September 22, 2015. Samsung denies any remaining 

allegations in Paragraph 133 of the Complaint. 

134. Samsung admits that Headwater purports to be the owner of the ’976 patent. 

Samsung denies any remaining allegations in Paragraph 134 of the Complaint. 

135. To the extent Paragraph 135 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 135 of the Complaint. 

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136. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 136 of the Complaint and therefore denies them. 

137. Denied. 

138. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 138 of the Complaint. 

139. Samsung admits Headwater attaches an Exhibit 15 to its Complaint that purports to 

show alleged infringement of the ’976 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 139 of the Complaint. 

140. Denied. 

141. Denied. 

142. Denied. 

143. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 143 of the 

Complaint. 

144. Denied. 

145. Denied. 

COUNT 7 – CLAIM FOR INFRINGEMENT OF THE ’433 PATENT 

146. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

147. Samsung admits that Exhibit 7 bears the title “Wireless end-user device with 

policy-based aggregation of network activity requested by applications” and a “Date of Patent” of 

March 1, 2016. Samsung denies any remaining allegations in Paragraph 147 of the Complaint. 

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148. Samsung admits that Headwater purports to be the owner of the ’433 patent. 

Samsung denies any remaining allegations in Paragraph 148 of the Complaint. 

149. To the extent Paragraph 149 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 149 of the Complaint. 

150. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 150 of the Complaint and therefore denies them. 

151. Denied. 

152. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 152 of the Complaint. 

153. Samsung admits Headwater attaches an Exhibit 16 to its Complaint that purports to 

show alleged infringement of the ’433 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 153 of the Complaint. 

154. Denied. 

155. Denied. 

156. Denied. 

157. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 157 of the 

Complaint. 

158. Denied. 

159. Denied. 

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COUNT 8 – CLAIM FOR INFRINGEMENT OF THE ’544 PATENT 

160. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

161. Samsung admits that Exhibit 8 bears the title “Device-assisted services for 

protecting network capacity” and a “Date of Patent” of March 28, 2017. Samsung denies any 

remaining allegations in Paragraph 161 of the Complaint. 

162. Samsung admits that Headwater purports to be the owner of the ’544 patent. 

Samsung denies any remaining allegations in Paragraph 162 of the Complaint. 

163. To the extent Paragraph 163 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 163 of the Complaint. 

164. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 164 of the Complaint and therefore denies them. 

165. Denied. 

166. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 166 of the Complaint. 

167. Samsung admits Headwater attaches an Exhibit 17 to its Complaint that purports to 

show alleged infringement of the ’544 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 167 of the Complaint. 

168. Denied. 

169. Denied. 

170. Denied. 

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171. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 171 of the 

Complaint. 

172. Denied. 

173. Denied. 

 COUNT 9 – CLAIM FOR INFRINGEMENT OF THE ’773 PATENT 

174. Samsung incorporates by reference its responses the preceding paragraphs as if 

fully stated herein. 

175. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

10,237,773. Samsung admits that a purported copy of the ’773 patent is attached to the Complaint 

as Exhibit 9. Samsung admits that Exhibit 9 bears the title “Device-assisted services for protecting 

network capacity” and a “Date of Patent” of March 19, 2019. Samsung denies any remaining 

allegations of Paragraph 175 of the Complaint. 

176. Samsung admits that Exhibit 9 bears the title “Device-assisted services for 

protecting network capacity” and a “Date of Patent” of March 19, 2019. Samsung denies any 

remaining allegations in Paragraph 176 of the Complaint. 

177. Samsung admits that Headwater purports to be the owner of the ’773 patent. 

Samsung denies any remaining allegations in Paragraph 177 of the Complaint. 

178. To the extent Paragraph 178 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 178 of the Complaint. 

179. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 179 of the Complaint and therefore denies them. 

180. Denied. 

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181. Samsung admits that certain of its mobile phones and tablets are used, imported, 

offered for sale, and/or sold in the United States. Samsung denies all remaining allegations in 

Paragraph 181 of the Complaint. 

182. Samsung admits Headwater attaches an Exhibit 18 to its Complaint that purports to 

show alleged infringement of the ’773 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 182 of the Complaint. 

183. Denied. 

184. Denied. 

185. Denied. 

186. Samsung admits that certain Galaxy tablets and phones are imported into and sold 

within the United States. Samsung denies all remaining allegations in Paragraph 186 of the 

Complaint. 

187. Denied. 

188. Denied. 

189. Headwater makes no allegations in paragraph 189, and therefore no response is 

required. 

JURY DEMAND 

190. Samsung is not required to provide a response to Headwater’s request for a trial by 

jury. 

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RELIEF REQUESTED 

Samsung denies that Headwater is entitled to any relief it seeks in its Complaint. 

GENERAL DENIAL 

To the extent that any allegations of the Complaint have not been previously specifically 

admitted or denied, Samsung denies them. 

**** 

SAMSUNG’S ADDITIONAL DEFENSES 

Pursuant to Federal Rule of Civil Procedure 8(c), Samsung, without waiver, limitation, or 

prejudice, hereby asserts the additional defenses listed below. Samsung reserves the right to 

amend this Answer to add additional defenses, including allegations of inequitable conduct, and/or 

any other defenses currently unknown to Samsung, as they become known throughout the course 

of discovery in this action. Assertion of a defense is not a concession that Samsung has the burden 

of proving the matter asserted. 

FIRST ADDITIONAL DEFENSE 

(Non-Infringement) 

Samsung does not and has not infringed, under any theory of infringement, (including 

directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)), 

any valid and enforceable claim of the Asserted Patents, either literally or under the Doctrine of 

Equivalents, and has not committed any acts in violation of 35 U.S.C. § 271. 

SECOND ADDITIONAL DEFENSE 

(Invalidity and/or Ineligibility) 

Each asserted claim of the Asserted Patents is invalid for failure to comply with one or 

more of the requirements of United States Code, Title 35, including without limitation, 35 U.S.C. 

§§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. 

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One or more claims of the ’701 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’184 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’578 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’445 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’224 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’976 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’433 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

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One or more claims of the ’544 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’773 patent fails to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

THIRD ADDITIONAL DEFENSE 

(Laches, Equitable Estoppel, Waiver, and/or Unclean Hands) 

Headwater’s attempted enforcement of the Asserted Patents against Samsung is barred by 

laches, equitable estoppel, waiver, acquiescence, and/or unclean hands. 

FOURTH ADDITIONAL DEFENSE 

(Prosecution History Estoppel and/or Disclaimer) 

Headwater’s claims are barred by the doctrine(s) of prosecution history estoppel and/or 

disclaimer based on statements, representations, and admissions made during prosecution of the 

patent applications resulting in the Asserted Patents. 

FIFTH ADDITIONAL DEFENSE 

(Notice, Damages, Marking, and Costs) 

Headwater’s claims for damages are statutorily limited or wholly barred under 35 U.S.C. 

§§ 286 and 287. For example: 

Marking. Headwater alleges that the “ItsOn software,” “ItsOn solution/s,” and/or “ItsOn 

application” practiced the Asserted Patents. Headwater represents that products, purportedly 

including Samsung devices operating on the Sprint network, implementing the “ItsOn software,” 

“ItsOn solution/s,” and/or “ItsOn application” were sold and/or offered for sale at least between 

2013 and 2017. Those products allegedly included at least the Samsung Grand Prime, the Samsung 

GS5 Sport, the Samsung GS5, the Samsung Note 4, Samsung Galaxy S3, Samsung Galaxy S4, 

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Samsung Galaxy S5 Sport, Samsung Galaxy S3 T, Samsung Galaxy Tab 4, Samsung Galaxy Tab 

S, and Samsung Note Edge, among others. According to Dr. Gregory Raleigh, phones 

implementing the “ItsOn software,” “ItsOn solution/s,” and/or “ItsOn application” on the Sprint 

network were sold in that same time period. Ex. A (Raleigh Tr.) at 237:14-238:2. 

Headwater has failed to satisfy the marking requirement per 35 U.S.C. §287(a) with respect 

to at least Samsung devices (or any devices operating on the Sprint network) allegedly containing 

“ItsOn software,” “ItsOn solution/s,” and/or “ItsOn application,” including those specifically 

identified above. Headwater alleges that it satisfied its marking requirement because the ItsOn 

application allegedly included a link to http://www.itsoninc.com/patent-notices, which Headwater 

claims would have provided notice of Headwater’s patents. Headwater alleges that this virtual 

patent marking page fulfilled ItsOn’s contractual requirement to mark ItsOn articles with the patent 

numbers of Headwater’s issued patents. This position is incorrect for several reasons. 

First, the following Asserted Patents never appeared on the “virtual patent marking page”: 

U.S. Patent No. 9,277,433, U.S. Patent No. 9,277,445, U.S. Patent No. 9,521,578, U.S. Patent No. 

10,237,773, and U.S. Patent No. 11,405,224. 

Second, between 2013 and 2017 (during which Headwater represents that products 

implementing the “ItsOn software,” “ItsOn solution/s,” and/or “ItsOn application” were sold), the 

following Asserted Patents did not appear on the “virtual patent marking page” until well after 

they issued, creating (at a minimum) gaps in required marking: U.S. Patent No. 9,137,701, U.S. 

Patent No. 9,143,976, U.S. Patent No. 9,271,184, and U.S. Patent No. 9,609,544. 

Third, even if all the Asserted Patents had been timely posted on the “virtual patent marking 

page,” the alleged notice provided on the “virtual patent marking page” was insufficient. Notice 

must “associate[ ] the patented article with the number of the patent.” 35 U.S.C. § 287(a). “Thus, 

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a mere direction to an Internet website that simply lists patents—without mentioning [or] 

associating any patent with a specific patented article—does not satisfy the marking obligation as 

a matter of law.” VLSI Tech. LLC v. Intel Corp., No. 1:19-CV-977-ADA, 2021 WL 2773013, at 

*3 (W.D. Tex. Apr. 12, 2021) (citing Mfg. Resources Int’l Inc. v. Civiq Smartscapes LLC, 397 F. 

Supp. 3d 560, 578 (D. Del. 2019)). ItsOn’s virtual patent marking page was a website that simply 

listed patents “without mentioning [or] associating any patent with a specific patented article.” Id. 

Fourth, even if the Asserted Patents had been timely posted on the “virtual patent marking 

page,” and even if the “virtual patent marking page” was sufficient, on information and belief, 

mobile phones operating on the Sprint network implementing the “ItsOn software,” “ItsOn 

solution/s,” and/or “ItsOn application” and that were sold to the public (including those Samsung 

phones specifically identified above) did not include a link to ItsOn’s “virtual patent marking 

page” that was accessible by the public. 

Notice. Headwater did not provide actual or constructive notice of (1) the specifically 

Asserted Patent numbers (in writing or orally) or (2) any purported infringement of the Asserted 

Patents (in writing or orally) to Samsung prior to the filing of the Complaints in this litigation. See

Ex. B (Headwater Resp. to RFA 2); Ex. A (Raleigh Tr.) at 157:15-19, 187:10-190:5; Ex. C (Harris 

Tr.) at 134:13-135:10. 

SIXTH ADDITIONAL DEFENSE 

(Covenant Not to Sue, License, and/or Estoppel) 

Headwater’s claims are barred to the extent the alleged infringement is licensed, either 

expressly or impliedly, or otherwise authorized. Moreover, Headwater’s claims are barred because 

it entered an agreement providing Samsung the protection of a covenant not to sue, a license 

(express or implied), and/or agreement (contractual or otherwise) that legally estops Headwater 

from bringing this lawsuit against Samsung. 

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SEVENTH ADDITIONAL DEFENSE 

(Failure to State a Claim) 

Headwater’s Complaint fails to state a claim upon which relief can be granted. 

EIGHTH ADDITIONAL DEFENSE 

(Inequitable Conduct / Infectious Unenforceability) 

The Asserted Patents are unenforceable due to the doctrines of inequitable conduct and 

infectious unenforceability because the patent applicant(s) knowingly and intentionally failed to 

disclose known bases for invalidity under pre-AIA 35 U.S.C. § 102 and/or 103. See Eon Corp. IP 

Holdings, LLC v. T-Mobile USA, Inc., No. 6:10-CV-379-LED-JDL, 2011 WL 13134896, at *6 

(E.D. Tex. Dec. 13, 2011) (“inequitable conduct in the prosecution of a parent application may 

render the parent and its progeny unenforceable” (i.e., “infectious unenforceability”)), report and 

recommendation adopted, No. 6:10-CV-379-LED-JDL, 2012 WL 12893881 (E.D. Tex. Jan. 18, 

2012); Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288-89 (Fed. Cir. 2011) 

(“[T]he taint of a finding of inequitable conduct can spread from a single patent to render 

unenforceable other related patents and applications in the same technology family.”). 

Headwater’s deliberate omissions were material to patentability, made with the intent to deceive 

the patent examiner, and were justifiably relied upon by the examiner in ultimately issuing the 

Asserted Patents. 

Prior to both the January 28, 2009 filing date of U.S. Patent Application No. 61/206,354 

(“the ’354 Application”) and the May 25, 2010 filing date of U.S. Patent Application No. 

61/348,022, (“the ’022 Application”) from which all of the Asserted Patents allegedly claim 

priority, a version of the Android mobile device operating system (“Android OS”) was released 

on September 23, 2008. Subsequently Android OS Version 1.1 was released on February 9, 2009, 

Android OS Version 1.5, also known as Cupcake, was released on April 27, 2009, Android OS 

Version 1.6, also known as “Donut,” was released on September 15, 2009, Android OS Versions 

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2.0, 2.0.1, and 2.1, collectively known as “Éclair,” were released on October 27, 2009, December 

3, 2009, and January 11, 2010 (respectively), and Android OS Version 2.2, also known as “Froyo,” 

was released on May 20, 2010. Each of these versions of the Android OS were publicly distributed 

and widely disseminated before the filing of the ’354 and/or ’022 Applications. This material 

system art, and its corresponding devices/documentation (including both patent and non-patent 

publications), is prior art under at least pre-AIA 35 U.S.C. § 102 (a) and (b). 

As explained in more detail below, the Android OS, and material pertaining to the Android 

OS, was material to the later prosecution and examination of all Asserted Patents because it would 

have anticipated and/or rendered obvious all of the asserted claims. In addition, Headwater, the 

inventors of the Asserted Patents, and the Asserted Patents’ prosecuting agent(s) knew about 

Android OS, and its related documentation, but failed to disclose this material prior art to the 

USPTO. Based on these facts, the most reasonable inference is that Headwater’s failure to disclose 

such material prior art during prosecution was an intentional fraud on the USPTO. 

Each person involved in the prosecution of the ’354 Application, the ’022 Application, and 

the Asserted Patents, including at least inventors Gregory Raleigh, Alireza Raissinia, and James 

Lavine, as well as their patent prosecution counsel, including at least James Harris, owed a duty 

of candor to the Examiner during the prosecutions of the ’354 Application, the ’022 Application, 

and the applications that ultimately issued as the Asserted Patents. On information and belief, each 

person involved in the prosecution of the ’354 Application, the ’022 Application, and the Asserted 

Patents knew of the Android OS, and related patent and non-patent literature, at the times of filing 

of the ’354 Application, the ’022 Application, and each of the Asserted Patents. For example: 

Gregory Raleigh. Gregory Raleigh is the first named inventor on all 9 Asserted Patents, as 

well as the founder and Lead Director of the Board of Directors for Plaintiff Headwater Research 

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LLC. On information and belief, Gregory Raleigh was acutely familiar with the Android OS both 

before and during prosecution of the ’354 Application, the ’022 Application, and the applications 

that led to the issuance of the Asserted Patents, and recognized the material nature of the Android 

OS (and any related literature) as prior art. Indeed, Gregory Raleigh admitted to “

” See, e.g., Ex. A (Raleigh Tr.) at 26:12-27:4. 

Such research included “ ” 

Id. According to Gregory Raleigh, he was “

” Id. 

at 115:18-22. 

Gregory Raleigh admitted under oath that before and during prosecution of the applications 

that led to the Asserted Patents, he: (1) knew about the Android OS; (2) researched how it 

controlled applications (i.e., the subject matter of the Asserted Patents) along with co-inventor 

Alireza Raissinia; and (3) hired a team of Android OS software engineers in his role as CEO of 

ItsOn, Inc. to develop the ItsOn product and to explain to him how the Android OS did and did not 

function. Ex. A (Raleigh Tr.) at 257:10-13 (“I had a pretty good understanding of what Android 

did and didn’t do in general 

), 119:18-24 (“

”), 120:6-13 (“

”), 257:20-258:2 

(“

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), 113:18-114:9 

), 120:18-122:9 

). 

Gregory Raleigh was fluent in a number of programming languages and developed his 

knowledge of the Android OS, whose source code was open to the public (e.g., the Android Open 

Source Project), via his own personal research into how the Android OS functions and via his team 

of Android OS software engineers, both before and during the prosecutions of the ’354 

Application, the ’022 Application, and the applications that led to the Asserted Patents. Ex. A 

(Raleigh Tr.) at 29:8-30:3 (“Q. What program languages were you fluent in? A. Okay. Fortran, 

CPlusPlus, Basic, Visual Basic, assembly language, a little bit of work with Python here and there 

... Q. When was the last time you coded? A. I still code a little bit in MATLAB[.]”), 117:9-17 

(“Q. I’ll rephrase. By 2010 were you familiar with the Android operating system? . . . THE 

WITNESS: You know, okay, generally familiar. I’m not sure what familiar means. I was certainly 

aware of Android. I knew of some of the features. 

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.”), 118:23-119:3 (“

”). 

Gregory Raleigh also testified that he was aware that Android non-patent literature 

constituted “ ” that would “ ,” and thus was material 

to validity. E.g., Ex. A (Raleigh Tr.) at 250:15-258:4 (testifying that exemplary piece of Android 

non-patent literature was “ ”). 

Gregory Raleigh further understood that he had a duty to disclose to the Patent Office all 

information which is relevant in assessing patentability of the invention which is the subject of the 

patent applications he was filing. See id. at 25:22-26:7. 

Despite Gregory Raleigh’s extensive prior knowledge of the Android OS before the alleged 

priority dates of the Asserted Patents and belief that art related to the Android OS was relevant to 

the patentability of the applications that eventually led to the Asserted Patents—because such art 

was related to the claimed technology—he chose not to disclose any Android literature to the 

Patent Office when filing the ’354 Application, the ’022 Application, or the applications that led 

to the following Asserted Patents: U.S. Patent Nos. 9,137,701, 9,143,976, 9,271,184, 9,277,433, 

9,277,445, 9,512,578, 9,609,544. The remaining two Asserted Patents, U.S. Patent Nos. 

10,237,773 and 11,405,224, relate to and claim priority through U.S. Patent Nos. 9,137,701, 

9,143,976, 9,271,184, 9,277,433, 9,277,445, 9,512,578, and 9,609,544, and are thus similarly 

infected by such inequitable conduct. 

Finally, after being extensively questioned during his deposition about his knowledge of 

the Android OS, Gregory Raleigh admitted to improperly speaking to counsel during a break in 

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his deposition about the Android OS, and further improperly refused to answer questions 

concerning his mid-deposition discussions with counsel about the Android OS: 

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Ex. A (Raleigh Tr.) at 122:10-124:22 (admitting to discussing Android with counsel during a break 

after being questioned about Android immediately prior to the break). Gregory Raleigh’s 

conference with counsel about a main topic of his testimony during a break in his deposition was 

improper. See ReedHycalog UK, Ltd. V. Diamond Innovations Inc., No. 6:08-CV-325, 2010 WL 

3238312, at *7 (E.D. Tex. Aug. 12, 2010) (finding counsel’s conference with a witness “during a 

break in his deposition” and counsel’s refusal to allow that witness to “answer questions about the 

discussion with counsel” to be both improper and an example of “litigation misconduct”). 

Based on all the foregoing, the single most reasonable inference able to be drawn is that 

Gregory Raleigh acted with the specific intent to deceive the Patent Office and that his failure to 

disclose such material prior art during prosecution was an intentional fraud on the USPTO. Eon 

Corp., 2011 WL 13134896, at *3 (“[T]he specific intent to deceive must be ‘the single most 

reasonable inference able to be drawn.’” (quoting Therasense, 649 F.3d at 1290)). Any conclusory 

assertions that Gregory Raleigh never intended to withhold such material prior art are entitled to 

no weight. See Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1317 (Fed. Cir. 2008) (finding 

conclusory statements that prosecuting attorney never “intentionally misled the United States 

Patent Office” and “did not knowingly withhold any information from the Patent and Trademark 

Office” to be “entitled to no weight”). 

James Harris: James Harris, who previously served as Headwater’s General Counsel, 

Acting CEO, and patent prosecution counsel of record for eight of the nine Asserted Patents, was 

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also very familiar with Android OS both before and during the prosecution of the applications that 

led to the issuance of the Asserted Patents, recognized that the Android OS (and related literature) 

was both material and non-cumulative prior art, and was familiar with the duty to disclose such 

material prior art to the Patent Office but failed to do so. 

During his November 27, 2023 deposition, James Harris testified that: (1) he was aware 

that parts of Android’s source code are open source; (2) he had knowledge of multiple 

programming languages (and thus would have understood Android’s open source code); and (3) 

during his time at Headwater (in which time he prosecuted the first 8 of 9 Asserted Patents), he 

was “ .” Ex. 

C (Harris Tr.) at 146:19-21; see also id. at 150:7-11 (“Q. Were you aware that Android’s source 

code was open to the public?... A. I am aware that parts of Android’s source code are open 

source.”), 19:5-17 (“Q. Do you have any knowledge of programming languages? A. Yes. Q. 

Which ones are you fluent in? A. I don’t know that I’m fluent in any of them anymore. I’m certainly 

most fluent in C, and C++, but there are a number of languages that I understand well, but not well 

enough that I code in them every day, but I can read them. Q. Can you list those languages? A. 

Well, back in the day, Fortran, Ada. Also you know, more recent Java, similar – similar languages 

to that, but probably mostly Java.”). Indeed, according to Mr. Harris, the aspects that he was most 

familiar with included “ ,” id.

at 147:7-8, which indisputably relate to the subject matter of all 9 Asserted Patents (e.g., 

differentiated network access, policy-based aggregation of network activity, protecting network 

capacity, wireless network access policies, etc.). 

When prosecuting U.S. Patent No. 10,237,773 (“the ’773 Patent”), the last Asserted Patent 

Mr. Harris worked on and which was first filed for on May 11, 2018, Mr. Harris included a citation 

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to “Android Cupcake excerpts, The Android Open Source Project, Feb. 10, 2009.” Ex. D (’773 

Patent) at p. 13. Though he failed to disclose this Android OS reference with respect to the first 7 

Asserted Patents he prosecuted on behalf of Headwater, Mr. Harris testified that he disclosed this 

reference—predating all 9 Asserted Patents and the ’022 Application to which they allegedly claim 

priority—for the ’773 Patent because it was potentially material and noncumulative: 

Q. For the record, this is US patent number 10,237,773. If we turn to page 13, and 

we look about two-thirds of the way down the right column, there’s a reference to 

Android cupcake excerpts. Let me know when you see that. 

A. Yes. 

Q. It states, “Android Cupcake Excerpts, the Android Open Source Project, 

February 10, 2009.” Do you see that? 

A. Yes. 

Ex. C (Harris Tr.) at 167:2-168:16. 

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Despite Mr. Harris admitting to being “

” id. at 146:19-21, and conceding the materiality and noncumulative nature of Android OS-related literature as prior art to the Asserted Patents, he admitted 

that the word “Android” was never included in the “references cited” section of any of the 7 

previously-filed Asserted Patents, on which Mr. Harris was the prosecuting attorney of record for 

Headwater: 

Q. Okay. I want to flip back to Harris Exhibit 5 [U.S. Patent No. 9,137,701]. If you 

take a look at the references cited in this patent, do any of the references cited refer 

to “Android”? 

. . . 

Q. Is the word “Android” mentioned in the references cited? 

... 

A. I mean, unless one of the inventors is named “Android,” no. 

... 

Q. I’m going to introduce Harris Exhibit 7. For the record this is US Patent Number 

9,143,976. Above the abstract do you see, again, that you are listed as the attorney 

of record? 

A. Yes. 

... 

Q. If you turn to the references cited for the ’976 Patent, is the word “Android” ever 

mentioned in the references cited section? 

... 

A. Unless I overlooked it, I don’t see it. 

Q. Okay. I’m going to introduce Harris Exhibit 8. For the record, this is US Patent 

Number 9,271,184. 

... 

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Q. In the references cited section for this patent, is the word Android ever 

mentioned in the References Cited? 

... 

A. I don’t see the word Android... 

Q. I’m going to introduce Harris Exhibit 9. For the record, this is US Patent 

Number 9,277,433. Do you see on this page you are listed as the attorney of record 

again? 

A. Yes. 

... 

Q. All right. I’m going to ask the same question about the references cited, and 

whether there’s any mention of the word “Android”? 

... 

A. I don’t see any. 

Q. All right. I will introduce as Harris Exhibit 10 US Patent Number 9,277,445. 

Q. Do you see on the first page above the Abstract that you are listed as the attorney 

of record? 

A. Yes. 

... 

Q. If you turn to the References Cited section for the ’445 patent, do you see any 

mention of the word “Android”? 

... 

A. No. I don’t see it. 

Q. I’m going to introduce as Exhibit Harris 11 US Patent Number 9,521,578. 

Q. On the cover page of this patent, the ’578 patent, do you see that you are listed 

as the attorney of record. 

A. Yes. 

... 

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Q. If you take a look at the References Cited section of the ’578 patent, is the word 

“Android” ever mentioned? 

... 

A. I don’t see it. 

Q. I will introduce to the record Harris Exhibit 12. 

Q. Do you see on the cover page of the ’544 patent that you are listed as the attorney 

of record? 

A. Yes. 

... 

Q. If you take a look at the References Cited section, do you see any mention of 

the word “Android”? 

... 

A. I don’t see it. 

Id. at 168:17-174:11. 

Mr. Harris failed to disclose any Android OS literature to the Examiner when prosecuting 

U.S. Patent Nos. 9,137,701, 9,143,976, 9,271,184, 9,277,433, 9,277,445, 9,512,578, 9,609,544, 

despite: (1) being familiar with aspects of Android that were related to Headwater’s inventions; 

(2) believing that Android OS literature was material and noncumulative of the art cited in the 

aforementioned Asserted Patents; and (3) admitting that he “

” Id. at 159:2-3. Based on all the foregoing, the single 

most reasonable inference able to be drawn is that James Harris similarly acted with the specific 

intent to deceive the Patent Office and that his failure to disclose such material prior art during 

prosecution was an intentional fraud on the USPTO. See Eon Corp., 2011 WL 13134896, at *3. 

Any conclusory assertions that James Harris never intended to withhold such material prior art are 

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entitled to no weight. See Praxair, 543 F.3d at 1317 (finding conclusory statements that 

prosecuting attorney never “intentionally misled the United States Patent Office” and “did not 

knowingly withhold any information from the Patent and Trademark Office” to be “entitled to no 

weight”). 

Samsung has identified the specific claim limitations to which such withheld Android OS 

prior art is relevant, and wherein the Android OS material information can be found in its 

September 6, 2023 Amended Invalidity Contentions, attached hereto as Exhibits E-N. As indicated 

therein, the following Android OS Versions (and publications relating to them) were publicly 

available, and widely known across the industry,2

 before the filing of the ’354 and/or ’022 

Applications to which all 9 Asserted Patents attempt to claim priority: 

- Android 1.0 (released September 2008) 

- Android 1.1 (released February 2009) 

- Android Cupcake (1.5) (released April 2009) 

- Android Donut (1.6) (released September 2009) 

- Android Éclair (2.0, 2.0.2, 2.1) (released October 2009 – January 2010) 

- Android Froyo (2.2) (released May 20, 2010) 

As also indicated in Exhibits E-N, the Examiner would have recognized that Android OS versions 

predating the Asserted Patents’ alleged priority dates included files such as ConnectivityManager, 

NetworkInfo, NetworkStateTracker, ThrottleManager, TrafficStats, 

ConnectivityManagerMobileTest, Socket, SocketTest, Power, PowerManager, 

PowerManagerTest, BatteryManager, and BatteryStats, which each disclose one or more claim 

2

 Indeed, Mr. Harris expressly testified that “throughout the smartphone era there has been 

Blackberry, Android, and iOS.” Ex. C (Harris Tr.) at 193:3-5. 

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limitations of the Asserted Patents.3 Taken as a whole, the Android OS, and patent and non-patent 

literature describing the functionality of the Android OS, constitutes material prior art to the 

Asserted Patents because but for Headwater withholding it from the Patent Office, the Asserted 

Patents would not have issued. 

Because of this fraud on the Patent Office, which is only exemplified by the above citations, 

Samsung respectfully requests that the Court render all Asserted Patents unenforceable due to 

inequitable conduct and/or infectious unenforceability. 

NINTH ADDITIONAL DEFENSE 

(No Standing) 

Headwater’s claims are barred because Headwater lacks standing to bring this suit. 

Specifically, Headwater cannot prove that it is the rightful owner of the Asserted Patents. 

TENTH ADDITIONAL DEFENSE 

(Prosecution Laches) 

Headwater’s Asserted Patents issued after an unreasonable, inexcusable, and prejudicial 

delay amounting to an egregious misuse of the statutory patent system under the totality of the 

circumstances. Thus, the Asserted Patents are unenforceable under the doctrine of prosecution 

laches. 

The Federal Circuit has explained that “the doctrine of prosecution laches places an 

additional, equitable restriction on patent prosecution conduct beyond those imposed by statute or 

PTO regulation,” and that “[a]n applicant must therefore not only comply with the statutory 

requirements and PTO regulations but must also prosecute its applications in an equitable way that 

3

 Remarkably, Headwater continues to accuse certain of these features in Android’s open source 

code, which have been around since before the alleged priority dates of the Asserted Patents and 

thus throughout these prosecutions, of infringing the asserted claims. 

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avoids unreasonable, unexplained delay that prejudices others.” Hyatt v. Hirshfield, 998 F.3d 1347, 

1366 (Fed. Cir. 2021). 

Headwater chose to pursue a shoot first, aim later strategy in prosecuting each of the 

Asserted Patents as well as dozens of related patents. Headwater filed the provisional application 

from which the Asserted Patents allegedly claim priority, U.S. Patent Application No. 61/206,354 

(“the ’354 Application”), on January 28, 2009, but it did not file applications for the Asserted 

Patents until many years later. The specific delays for each Asserted Patent are listed below 

- U.S. Patent No. 9,137,701: 1/28/2009 – 3/31/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,143,976: 1/28/2009 – 4/01/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,271,184: 1/28/2009 – 4/16/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,277,433: 1/28/2009 – 4/16/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,277,445: 1/28/2009 – 4/10/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,521,578: 1/28/2009 – 4/17/2015 = Over 6 years, 2 months 

- U.S. Patent No. 9,609,544: 1/28/2009 – 11/15/2013 = Over 4 years, 9 months 

- U.S. Patent No. 10,237,773: 1/28/2009 – 5/11/2018 = Over 9 years, 3 months 

- U.S. Patent No. 11,405,224: 1/28/2009 – 8/13/20204

 = Over 11 years, 6 months 

In fact, Headwater filed the ’773 and ’224 Patents well after it had allegedly brought the claimed 

inventions (via ItsOn) to market. See Headwater Second Amended Complaint at ¶¶ 19-27. 

 Headwater’s unreasonable delays are inexcusable. Headwater’s former General Counsel 

and the prosecuting attorney of record for eight of the nine Asserted Patents alluded to such a shoot 

first, aim later strategy, in his November 27, 2023 deposition, explaining that Headwater would 

4

 Note that the asserted claims of the ’224 Patent were not added until February 28, 2022, 

amounting to a delay of 13 years and 1 month from the claimed priority date. 

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disclose many inventions and then wait to draw claims to them. “

” Ex. C (Harris Tr.) at 157:10-17. The Federal Circuit has recognized 

that such unreasonable, inexcusable delay to claim inventions “is not what is contemplated by the 

patent statute when it provides for continuation and continuation-in-part applications.” Hyatt, 998 

F.3d 1347 at 1361. “That an invention may have been lurking between the lines of an earlier 

application does not excuse a delay in presenting claims on it.” Sonos, Inc. v. Google LLC, No. C 

20-06754 WHA, No. C 21-07559 WHA, 2023 WL 6542320 at *17 (N.D. Cal. Oct. 6, 2023). 

 Samsung has been prejudiced insofar as it has invested in, worked with, and used the 

technology that is now being accused of infringing the Asserted Patents during the time in which 

Headwater delayed its prosecution. All features accused of infringing the Asserted Patents are part 

of the Android operating system (“Android OS”) employed by Samsung’s accused products. 

While Samsung was investing significant time and expense integrating the Android OS into its 

mobile devices, Headwater was serially prosecuting the claims it now asserts. 

RESERVATION OF ADDITIONAL DEFENSES 

Samsung reserves the right to assert additional defenses that may surface through discovery 

in this action. 

DEMAND FOR JURY TRIAL 

Defendants demand a jury trial on all issues that may be so tried. 

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PRAYER FOR RELIEF 

WHEREFORE, Samsung respectfully prays that this Court enter judgment in Samsung’s 

favor against Headwater and requests the following relief. 

A. A complete denial of Headwater’s requests for damages, costs, expenses, 

injunction, and any other form of relief; 

B. Dismissal with prejudice of all claims in Headwater’s Complaint against Samsung; 

C. A permanent injunction restraining Headwater and its respective officers, partners, 

employees, agents, parents, subsidiaries, and affiliates, and any other persons acting 

on its behalf or in concert with it, from charging, suing or threatening, orally or in 

writing, that any of the Asserted Patents have been infringed by Samsung under 

any subsection of 35 U.S.C. §§ 271 or 281; 

D. A declaration that this is an exceptional case under 35 U.S.C. § 285 and awarding 

to Samsung its reasonable costs and expenses of litigation, including but not limited 

to attorneys’ fees and expert witness fees; 

E. An award to Samsung of its costs and disbursements in defending in this action 

brought by Headwater; and 

F. An award to Samsung of any and all further relief as this Court may deem just and 

proper. 

Dated: December 1, 2023 Respectfully submitted, 

By: /s/ Thad C. Kodish 

 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 

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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 

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 

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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 

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

The undersigned hereby certifies that counsel of record who are deemed to have consented 

to electronic services are being served with a copy of this document via the Court’s CM/ECF 

system per Local Rule CV-5(a)(3) on December 1, 2023 

/s/ Thad C. Kodish 

Thad C. Kodish 

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. 

/s/ Thad C. Kodish 

Thad C. Kodish 

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