UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

HEADWATER RESEARCH LLC, 

 Plaintiff, 

 v. 

T-MOBILE USA, INC. AND SPRINT CORP.,

 Defendants. 

Case No. 2:23-cv-00379-JRG-RSP 

LEAD CASE 

JURY TRIAL DEMANDED 

HEADWATER RESEARCH LLC, 

 Plaintiff, 

 v. 

T-MOBILE USA, INC. AND SPRINT CORP.,

 Defendants. 

Case No. 2:23-cv-00377-JRG-RSP 

JURY TRIAL DEMANDED

PLAINTIFF HEADWATER RESEARCH LLC’S OPPOSITION TO 

DEFENDANTS’ MOTION TO STRIKE AND COMPEL SUPPLEMENTATION 

OF HEADWATER’S AMENDED INFRINGEMENT CONTENTIONS

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TABLE OF CONTENTS 

I. INTRODUCTION ................................................................................................................. 1 

II. BACKGROUND ................................................................................................................... 1 

III. LEGAL STANDARD ........................................................................................................... 4 

IV. ARGUMENT ........................................................................................................................ 5 

A. Headwater’s Infringement Contentions Specifically Identify Accused 

Features and Functionalities Which Span the Accused Devices ..................................5 

1. The ’541 and ’613 Patents ................................................................................. 7 

2. The ’543 and ’042 Patents ................................................................................. 9 

B. Headwater’s Contentions Identify and Accuse Network-Side Functionality ...............9 

1. Headwater Identified the Publicly Known Infringing Instrumentalities and 

Diligently Amended to Specifically Identify Functionality by Name Based on 

T-Mobile’s Confidential Documents ................................................................. 9 

2. Headwater Charted the Accused Instrumentalities .......................................... 10 

C. Headwater’s Dependent Claim Charts Are Not Deficient. .........................................13 

D. Supplementation .........................................................................................................15 

V. CONCLUSION ................................................................................................................... 15 

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TABLE OF AUTHORITIES 

Cases

CardTek Int’l, Inc. v. The Kroger Co., 

Case No. 23-cv-00045-JRG-RSP, D.I. 82 (E.D. Tex Aug. 9, 2024) ...................................... 5, 6 

Eolas Techs. Inc. v. Amazon.com, Inc., 

No. 6:15-cv-01038, 2016 WL 7666160 (E.D. Tex. Dec. 5, 2016) ............................................. 5 

EON Corp. IP Holdings, LLC v. Sensus USA Inc., 

No. 6:09–cv–116, 2010 WL 346218 (E.D. Tex. Jan. 21, 2010) ................................................. 5 

Harris Corp. v. Huawei Device USA, Inc., 

No. 2:18-CV-00439, 2019 WL 4247067 (E.D. Tex. Sept. 6, 2019) ........................................... 5 

Honeywell Int'l Inc. v. Acer Am. Corp., 

655 F. Supp. 2d 650 (E.D. Tex. 2009) ........................................................................................ 5 

Orion IP, LLC v. Staples, Inc., 

407 F. Supp. 2d 815 (E.D. Tex. 2006) .............................................................................. 5, 6, 15 

Team Worldwide Corp. v. Acad., LTD, 

No. 2:19-CV-00092, 2020 WL 4601635 (E.D. Tex. Aug. 11, 2020) ................................... 5, 10 

Traxcell Techs., LLC v. Huawei Techs. USA Inc., 

No. 2:17-cv-00042, 2017 WL 6559256 (E.D. Tex. Dec. 21, 2017) ........................................... 4 

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TABLE OF EXHIBITS 

Ex. No. Description of Exhibit 

A Infringement Contention Chait of Apple Representative Product for U.S. Patent 

8,589,541 

B Infringement Contention Chait of Samsung Representative Product for U.S. Patent 

8,589,541 

C Infringement Contention Chait of Google Representative Product for U.S. Patent 

8,589,541 

D Infringement Contention Chait of Motorola Representative Product for U.S. 

Patent 8,589,541 

E Infringement Contention Chait of Nokia Representative Product for U.S. Patent 

8,589,541 

F Infringement Contention Chait of T-Mobile Representative Product for U.S. 

Patent 8,589,541 

G Infringement Contention Chait for U.S. Patent 8,924,543 

H Infringement Contention Chait for U.S. Patent 9,198,042 

I Infringement Contention Chait of Apple Representative Product for U.S. Patent 

9,215,613 

J Infringement Contention Chait of Samsung Representative Product for U.S. Patent 

9,215,613 

K Infringement Contention Chait of Google Representative Product for U.S. Patent 

9,215,613 

L Infringement Contention Chait of Motorola Representative Product for U.S. 

Patent 9,215,613 

M Infringement Contention Chait of Nokia Representative Product for U.S. Patent 

9,215,613 

N Infringement Contention Chait of T-Mobile Representative Product for U.S. 

Patent 9,215,613 

0 Invalidity Chait for U.S. Patent Number 8,924,543 

p Invalidity Chait for U.S. Patent Number 8,589,541 

Q Invalidity Chait for U.S. Patent Number 9,198,042 

R Invalidity Chait for U.S. Patent Number 9,215,613 

1ll 

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I. INTRODUCTION 

T-Mobile’s motion ignores critical facts and is based upon a careless reading of 

Headwater’s infringement contentions, which provide adequate notice of Headwater’s 

infringement theories. Headwater clearly and specifically alleges infringement of two groups of 

infringing functionalities: (1) device-side features and (2) network-side functionalities. Headwater 

specifically identifies more than 240 device and network-side products in its contentions and 

served 12 detailed claim charts for the four Asserted Patents, providing more than 1,400 pages of 

detail, citing evidence from: 

• T-Mobile’s confidential document production 

• T-Mobile’s own website describing how its network-side functionalities operate 

• Websites of T-Mobile’s device manufacturers (Apple, Samsung, Google, Nokia, 

and T-Mobile) describing device-side features 

• Apple Developer Documentation related to device-side features 

• Android Developer Documentation related to device-side features 

• Third party resources describing how T-Mobile manages devices on its network.1

T-Mobile does not dispute this. 

Instead, after meeting and conferring extensively over 5 months ago with Headwater about 

purported deficiencies in Headwater’s contentions (which Headwater disagreed with, but 

nonetheless amended in good faith)—and after sitting silent for 4 months—T-Mobile now moves 

to strike Headwater’s contentions based on flawed interpretations of Headwater’s charts and 

premature discovery and expert-related issues. Because Headwater’s clear and specific 

infringement contentions comply with the patent local rules, T-Mobile’s motion should be denied. 

II. BACKGROUND 

1 All emphases added unless otherwise noted. 

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On July 28, 2023, Headwater filed two lawsuits, accusing T-Mobile of infringing two 

groups of patents: (1) the ’541 and ’613 Patents, covering aspects of “wireless end-user device[s]” 

and their operation on T-Mobile’s network; and (2) the ’543 and ’042 Patents, covering aspects 

network-side functionality, including “network plan provisioning system[s] communicatively 

coupled to a wireless end-user device” and methods related to “sending configuration information 

to the wireless end-user device.” Mot. at 2. 

On November 20, 2023, Headwater’s served its initial infringement contentions, 

identifying accused devices, features, and functionalities by both name and model number as well 

as by category and description, based on public information available to Headwater. And where 

names and model numbers are not publicly available, Headwater specifically identified “[s]ervers, 

hardware, software, and services leased, owned, supported, and/or operated by T-Mobile 

comprising T-Mobile’s wireless network services functionality,” citing to publicly available 

evidence from T-Mobile.com (and elsewhere). Mot. at 2. Headwater also included a chart for each 

asserted patent. 

On January 16, 2024, T-Mobile produced documentation pursuant to P.R. 3-4—but only 

for device-side functionality. T-Mobile did not produce confidential documentation regarding 

network-side functionality identified in Headwater’s ’543 and ’042 infringement contentions. 

Pursuant to various meet and confers between the parties, Headwater served amended 

infringement contentions on March 19, 2024.2

 These amendments did not change the scope of 

Headwater’s theories of infringement, but rather provided further explanation and clarification 

requested by T-Mobile. In particular, T-Mobile requested that Headwater split apart its ’541 and 

’613 charts into separate representative charts—one for each manufacturer of mobile devices sold 

2 T-Mobile requested clarifications to Headwater’s charts and consented to Headwater’s 

amendments. See, D.I. 61. 

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or used by T-Mobile. Mot. at 3. Headwater disagreed that this was necessary, but in the spirit of 

compromise, provided ten separate charts—one for each manufacturer (Apple, Samsung, Google, 

Nokia, T-Mobile) of devices accused of infringing the patents. Exs. A-F and I-N.3

 

Headwater’s charts identify “Accused Instrumentalities” including “smartphones, basic 

phones, tablets, laptops, and hotspot devices” comprising the Android or Apple operating systems. 

Exs. A-F and I-N at 1-2. (“T-Mobile sells and uses devices described by T-Mobile’s website below 

(e.g., devices made by Samsung, Apple, Motorola, Google, Nokia, etc.).”). And they map features 

and functionalities in each representative device—such as Android’s “‘Data Saver,’ or ‘Power 

Saver,’ ‘Doze Mode,’ ‘App Standby,’ ‘Adaptive Battery,’ and/or ‘JobScheduler’” as well as 

“Apple’s ‘Background App Refresh’ and ‘Low Power Mode’”—to the claim elements of the 

asserted patents. Id. As Headwater’s contentions demonstrate, these features and functionalities 

are found in multiple types of devices (e.g., phones, tablets, wearables, etc.) and across multiple 

versions of software (e.g., Android 7.0 and higher, iOS 7.0+, iPadOS 7.0+, etc.). 

With respect to the ’543 and ’042 Patents covering additional network-side functionality, 

Headwater’s charts allege infringement because “T-Mobile offers telecommunications service 

plans to customers that are provided through various network elements such as 

telecommunications base stations and cell sites, edge servers, and other telecommunications 

servers. T-Mobile provides various network service plans to customers for purchase, including 

through the T-Mobile.com website as well as through T-Mobile -provided services such as its prepaid mobile service category.” Exs. G-H at 1-3. Based on publicly available information, 

Headwater’s infringement charts explain T-Mobile’s infringement, citing to T-Mobile’s website 

(and others), specifically identifying T-Mobile’s “Plan[s]” (such as “Go5G Next,” “Go5G Plus, 

3 T-Mobile submitted all of Headwater’s contention charts as a single PDF (D.I. 69), but Headwater 

has attached them hereto as separate exhibits for ease of reference. 

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“Essentials,” etc.), “Data Pass” and “Binge On” functionality offered by T-Mobile, as well as “QCI 

Data Priority” levels and “PCO values” used by T-Mobile’s network and end-user devices. 

Headwater’s amended contentions further identify T-Mobile network-side functionality by 

name—which Headwater was able to ascertain after a diligent review of T-Mobile-produced 

device-side documents produced less than one month earlier. D.I. 69 at 3-9 (identifying “Servers, 

hardware, software, and services leased, owned, supported, and/or operated by T-Mobile 

comprising T-Mobile’s wireless network services functionality, including but not limited to 

 See, e.g., TMO_HW00018768, 

TMO_HW00031420, TMO_HW00034439.”). 

After remaining silent for five months, T-Mobile sent its June 12, 2024 letter which 

precipitated the filing of the instant Motion.4 T-Mobile’s June letter came as a surprise to 

Headwater, first because of the timing, and second because it complained about purported 

deficiencies never previously identified or discussed during meet and confers. 

In response to T-Mobile’s new complaints and the parties’ meet and confers, Headwater 

served more clarifying amendments on August 7, 2024, providing further, albeit unnecessary, 

explanations of Headwater’s theories of infringement. 

III. LEGAL STANDARD 

Infringement contentions require the plaintiff “to solidify, to the best it can at this stage, 

the theory of how the accused products infringe the asserted claims,” Traxcell Techs., LLC v. 

Huawei Techs. USA Inc., No. 2:17-cv-00042, 2017 WL 6559256, at *4 (E.D. Tex. Dec. 21, 2017), 

and provide notice of the plaintiff’s theories of infringement. Harris Corp. v. Huawei Device USA, 

4 The parties also met and conferred regarding T-Mobile’s ongoing failure to produce networkside documentation pursuant to P.R. 3-4, which is the subject of Headwater’s Motion to Compel. 

D.I. 73. 

------

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Inc., No. 2:18-CV-00439, 2019 WL 4247067, at *3 (E.D. Tex. Sept. 6, 2019). The Local Patent 

Rules “do not require the disclosure of specific evidence nor do they require a plaintiff to prove its 

infringement case.” CardTek Int’l, Inc. v. The Kroger Co., Case No. 23-cv-00045-JRG-RSP, D.I. 

82 at *2 (E.D. Tex Aug. 9, 2024) (“CardTek”) (citing EON Corp. IP Holdings, LLC v. Sensus USA 

Inc., No. 6:09–cv–116, 2010 WL 346218, at *2 (E.D. Tex. Jan. 21, 2010)). “A single chart may 

be used where the various accused products or instrumentalities operate in the same manner with 

respect to the claims of the patent.” Honeywell Int'l Inc. v. Acer Am. Corp., 655 F. Supp. 2d 650, 

657 (E.D. Tex. 2009); Team Worldwide Corp. v. Acad., LTD, No. 2:19-CV-00092, 2020 WL 

4601635, at *3–5 (E.D. Tex. Aug. 11, 2020). 

The Court generally disfavors striking infringement contentions “absent evidence of 

unreasonable delay and prejudice.” Eolas Techs. Inc. v. Amazon.com, Inc., No. 6:15-cv-01038, 

2016 WL 7666160, at *1 (E.D. Tex. Dec. 5, 2016). “Striking [infringement contentions] is an 

extreme decision comparable to determining ‘whether evidence should be excluded for discovery 

violations.’” Id. at *1. A “defendant cannot lay behind the log until late in the case and then claim 

that it lacks notice as to the scope of the case or the infringement contentions.” Orion IP, LLC v. 

Staples, Inc., 407 F. Supp. 2d 815, 818 (E.D. Tex. 2006). 

IV. ARGUMENT 

A. Headwater’s Infringement Contentions Specifically Identify Accused 

Features and Functionalities Which Span the Accused Devices 

Defendants take issue with Headwater’s contention that the six charted devices are 

representative of infringement for devices from the same manufacturer. Headwater’s contentions 

include separate claim charts for each device manufacturer and explain why each such chart is 

representative of that manufacturer’s set of accused products. For example, they allege that the 

charted device from a given device manufacturer (e.g., the iPhone 15 Pro) is representative of the 

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remaining accused products for that manufacturer (here, Apple) because they “run the Apple iOS 

Operating System, which comprise at least Apple’s ‘Background App Refresh’ and ‘Low Power 

Mode’ features.” Ex. J at 8. Indeed, Headwater’s theories of infringement since the outset of the 

case have consistently identified features and functionalities that span multiple types of devices 

(e.g., phones, tablets, and wearables) and multiple versions of software (e.g., Android 7.0 and 

higher, iOS 7.0+, iPadOS 7.0+, etc.). 

And while T-Mobile contends that “Headwater charts only six of the Accused Products 

without alleging how these products are representative of over 240 Accused Products” (Mot. at 5), 

T-Mobile ignores that it requested those six representative charts—one for each manufacturer of 

devices that T-Mobile sells or uses—over four months ago. See supra § II. Headwater promptly 

provided these charts in good faith over four months ago so that “both parties may adequately 

prepare for claim construction and trial.” Orion IP, 407 F. Supp. 2d at 818; see also D.I. 61 at 2-

4. T-Mobile raised no further issues during the last four months of litigation. T-Mobile should not 

now benefit from laying behind the log by claiming it lacks notice based on some alleged failure 

to assert representativeness. Orion IP, 407 F. Supp. 2d at 818. 

In any event, T-Mobile has identified no case law prohibiting Headwater’s approach of 

charting representative products. Nonetheless, it disputes Headwater’s allegation that such 

products are representative and contends that public evidence on the accused features, and their 

support across all devices running the accused versions of the iOS or Android operating systems, 

is insufficient to establish representativeness. As an initial matter, Headwater is not required to 

marshal all of its proof at this stage of the case. CardTek at 2. T-Mobile itself asserts that 

Headwater must obtain confidential discovery before it can determine whether devices function in 

substantially the same way such that they can be representative of other products. Mot. at 5-6 

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(arguing Headwater “cannot rely on [open] source code as being representative for each Android 

manufacturer or across device-types for either operating system” because each may be 

implementation-specific). Whether a specific device or operating system functions in the same 

way (or not) as another device or operating system is the subject of technical discovery and expert 

reports. T-Mobile’s complaint is not an appropriate criticism of infringement contentions. For this 

reason alone, T-Mobile’s motion should be denied. 

1. The ’541 and ’613 Patents 

Headwater’s infringement contentions identify theories of infringement which are 

representative of multiple devices (e.g., phones, tablets, wearables) and multiple versions of 

software. Specifically, Headwater put T-Mobile on notice of accused features and functionalities 

spanning multiple versions of the Android and Apple operating systems, such as Android’s “‘Data 

Saver,’ or ‘Power Saver,’ ‘Doze Mode,’ ‘App Standby,’” as well as “Apple’s ‘Background App 

Refresh’ and ‘Low Power Mode.’” Exs. A-F and I-N. 

As a specific example, Headwater’s chart for Apple-manufactured devices explains: 

For example, Apple’s devices, including the iPhone 15 Pro, run the Apple iOS 

Operating System, which comprise at least Apple’s “Background App Refresh” 

and “Low Power Mode” features include policies which distinguish between 

applications and/or services. 

Amended 613 v. Apple at 6. Headwater’s charts then include citations to evidence for Apple 

phones and tablets which instruct users to “Use Low Power Mode to save battery life on your 

iPhone or iPad.” Ex. J at 8. Headwater’s charts identify Apple’s “Background App Refresh” 

functionality shown in operation on both phones and wearables, such as iPhones and Apple 

Watches. Ex. J at 7 and 14. Furthermore, Headwater’s charts cite to publicly available information 

from Apple’s Developer Documentation indicating that developers can use “to determine whether 

Background App Refresh... is enabled,” and further indicates that “Background App Refresh is 

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disabled automatically when a device is operating in low-power mode.” See Ex. J at 10, 18, 27, 36, 

48, 56, 64 (citing https://developer.apple.com/documentation/uikit/uiapplication/1622994-

backgroundrefreshstatus/). According to Apple’s Developer documentation, this functionality 

applies to multiple types of devices, and versions of Apple’s operating systems, including at least 

“iOS 7.0+” running on phones and “iPadOS 7.0+” running on tablets, as well as others. Id. 

As a further example, Headwater’s charts for Android-based devices demonstrate that the 

accused features span multiple types of devices and software versions as well. Specifically, 

Headwater alleges that “Samsung devices...” (Ex. I at 8), “Google’s devices...” (Ex. L at 3, 15, 

and 25), “Motorola’s devices...” (Ex. K at 3 and 10), “Nokia’s devices...” (Ex. M at 3, 6, and 10), 

and “T-Mobile devices...” (Ex. n at 3 and 10) used or sold by T-Mobile “run the Android 

Operating System.” Id. Certainly, T-Mobile knows that its own devices will include different 

versions of Android over time since T-Mobile sells Android-based devices accused of 

infringement here. See, e.g., D.I. 69 at 4-8 (identifying T-Mobile REVVL devices); see also 

https://www.t-mobile.com/cell-phone/t-mobile-revvl-7-5g. And Headwater’s cited evidence 

makes clear that the features and functionalities Headwater identifies as part of the Android 

Operating system are used across devices and operating systems. For example, Headwater’s charts 

include citations to Data Saver functionality added to “Android 7.0 (API level 24) and higher.” 

See, e.g., Ex. I at 15, 31, 58, 67, 86, 106, 110, and 121 (citing 

https://developer.android.com/training/basics/network-ops/data-saver). As another example, 

Headwater’s charts accuse and cite to evidence regarding Doze Mode and App Standby 

functionality that existed in Android “[s]tarting from Android 6.0 (API level 23).” See, e.g., Ex. I 

at 16, 32, 59, 68, 87, 107 (https://developer.android.com/training/monitoring-device-state/dozeCase 2:23-cv-00379-JRG-RSP Document 119 Filed 12/02/24 Page 12 of 22 PageID

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standby).5 

2. The ’543 and ’042 Patents 

With respect to the ’543 and ’042 Patents, T-Mobile argues that Headwater “does not 

identify any specific end-user device” in those charts. Mot. at 6. This is a thinly veiled attempt to 

artificially construe these patents to cover device-side functionality alone—a tact T-Mobile has 

taken since the outset of this case.6

 However, these patents cover more than device-side 

functionality, which is readily apparent from the language of the claims themselves. 

The ’543 Patent claims “[a] network service plan provisioning system 

communicatively coupled to a wireless end-user device over a wireless access 

network,” and the ’042 Patent claims are directed to a method comprising, among 

other things, “receiving . . . a report from a wireless end-user device” and “sending 

configuration information to the wireless end-user device.” 

Mot. at 2. As will be discussed in further detail below, Headwater properly accuses T-Mobile’s 

network-side functionality in the context of the ’543 and ’042 Patents. T-Mobile is either 

inadvertently misreading Headwater’s contentions, or it is intentionally sticking its head in the 

proverbial sand to avoid producing its confidential, network-side documentation. 

B. Headwater’s Contentions Identify and Accuse Network-Side Functionality 

T-Mobile contends “it remains unclear... what ‘servers, hardware, software, and services’ 

Headwater accuses.” Mot. at 6-7. But even a cursory review of the claims and Headwater’s 

infringement contentions demonstrate that Headwater has specifically accused T-Mobile’s servers 

and network-side functionality of infringement here. See supra § IV.A.2. 

1. Headwater Identified the Publicly Known Infringing 

Instrumentalities and Diligently Amended to Specifically Identify 

Functionality by Name Based on T-Mobile’s Confidential Documents 

T-Mobile argues it “told Headwater in February 2024 that ‘[n]o specific servers or other 

5 Android Developer Documentation confirms Android-based wearables also use App Standby 

and Doze Mode. https://developer.android.com/training/wearables/data/network-communication. 6 See Headwater’s Motion to Compel (D.I. 73). 

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network hardware or software are identified.’” Mot. at 7. But that is not what is required at the 

contentions stage. L.P.R. 3-1. Instead, the Local Patent Rules require “[e]ach product, device, and 

apparatus must be identified by name or model number, if known” or “[e]ach method or process 

must be identified by name, if known.” Id.; see also Team Worldwide, 2020 WL 4601635, at *3–

5. And this is precisely what Headwater did here—relying on the publicly available information 

(e.g., T-Mobile’s website and others) to map infringement by T-Mobile’s network-side 

functionality. Indeed, T-Mobile acknowledges “Headwater accuses ‘[s]ervers, hardware, software, 

and services leased, owned, supported and/or operated by T-Mobile comprising T-Mobile’s 

wireless network services functionality’” (Mot. at 6) as the instrumentalities known to Headwater. 

T-Mobile further acknowledges that “Headwater identified 

 in its amended contentions. Mot. at 7. Incredibly, T-Mobile seeks to 

strike these allegations (Mot. at 14), despite having previously consented to them (D.I. 61) and 

despite providing precisely what T-Mobile asserts is lacking. Mot. at 7 (“what ‘servers, hardware, 

software, and services’ Headwater accuses.”). Notably, Headwater was able to include the specific 

names of apparently network-side functionality (e.g., FOTA), not because T-Mobile produced 

any network-side technical documentation in accordance with L.P.R. 3-4, but instead because 

Headwater diligently reviewed and analyzed T-Mobile’s production of device-side documents to 

ascertain that its devices are in communication with the aforementioned network-side systems. See 

supra § II. Headwater identified the infringing instrumentalities using information available to 

Headwater—first by citations to publicly available information (such as T-Mobile.com), and after 

a diligent review of confidential documents, the specific names of accused functionality. 

2. Headwater Charted the Accused Instrumentalities 

T-Mobile continues to feign ignorance, contending that “T-Mobile does not even know 

what patents these servers allegedly infringe.” Mot. at 7. Yet, Headwater charts for the ’543 and 

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’042 Patents allege that “T-Mobile offers telecommunications service plans to customers that are 

provided through various network elements such as telecommunications base stations and cell 

sites, edge servers, and other telecommunications servers,” and “T-Mobile provides various 

network service plans to customers for purchase, including through the T-Mobile.com website as 

well as through T-Mobile-provided services such as its pre-paid mobile service category.” Exs. GH at 1. 

And T-Mobile’s argument that Headwater discusses only “general network-side 

technologies” “in the most superficial and incomplete manner, without explaining how they meet 

each claim limitation” is again belied by a cursory review of Headwater’s charts. The charts 

identify specific evidence demonstrating T-Mobile’s services and servers implement the claims. 

As an initial example, element 1[a] of the ’042 Patent recites “receiving, over a service 

control link, a report from a wireless end-user device, the report comprising information about a 

device service state.” Ex H at 1. Headwater’s contentions allege this element is met when: 

[T-Mobile’s] network receives service plan information from devices which 

correspond to the subscriber service plan associated with that wireless end-user 

device, which is a report comprising information about a device service state. For 

example, [T-Mobile’s] network receives an attach request, bearer resource 

allocation request, bearer resource modification request, or PDN connectivity 

request from a wireless end-user device (UE), which includes a report comprising 

information about the UE’s service state such as UE network capability, UE status, 

and protocol configuration options (PCO).” 

Id. at 7-10. Notably, counsel understood the scope of Headwater’s infringement allegations such 

that they could commit to “perform a reasonable search for technical documentation relating to 

any network-side technologies described in pages 7–10 of Exhibit H of the amended infringement 

contentions.”7 Mot., Ex. 5. Clearly, it is not the case that Headwater’s charting is “superficial and 

7 To date, T-Mobile has not produced the material it committed to search for more than four months 

ago. 

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incomplete” in light of the fact that counsel can search for documents related to the technology 

discussed in the charts. Any lack in technical detail is a result of T-Mobile’s failure to produce 

documents. In any event, the sufficiency of the evidence is a topic for discovery and experts. 

Despite Headwater’s accusation of the “network receiv[ing] an attach request...which 

includes a report comprising...information about the UE’s service state such as UE network 

capability, UE status, and protocol configuration options (PCO)”, T-Mobile alleges that “attach 

request[s]” and “similar requests” are not mapped in other claim elements. Mot. at 7. This is false. 

As one example, the “protocol configuration options (PCO)” discussed in element [1a] (among 

other values) are mapped in each other element of claim 1. See Ex. H at 11-17. 

Indeed, with respect to element [1b] of the ’042 Patent, Headwater alleges that “[e]xamples 

of such service policy settings on the wireless end-user device include, for example, APN access 

settings and service plan settings stored on the wireless end-user device, including for example in 

an encrypted partition of the device or in an encrypted SIM card” or “Carrier configuration 

information (which is service profile information) on a given wireless end- user device” based on 

citations to evidence regarding PCO values. Ex. H at 11-13. 

And with respect to element [1c] of the ’042 Patent, Headwater’s alleges that “[o]n 

information and belief, the Accused Instrumentalities specifically transmit traffic control-related 

instructions to mobile devices in the wireless access network based on type of traffic, type of 

subscriber plan, and priority levels for types of data and/or subscriber account type based on the 

Accused Instrumentalities’ inspection of traffic to and from the device and the account associated 

with the device” citing evidence regarding PCO values. Ex. H at 13-17. 

Separately, T-Mobile misreads Headwater’s ’543 contentions to argue “Headwater relies 

repeatedly on the mere fact that T-Mobile prioritizes certain data in certain circumstances (through 

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the use of QCI levels and plans with premium data), without explaining how that satisfies the claim 

language.” Mot. at 8. Yet, the ’543 chart explains how T-Mobile satisfies the claim. For example, 

element [1e] describes “process[ing] the first service plan component and the second service plan 

component to create a network provisioning instruction set in accordance with a prioritization of 

the first traffic classification filter over the second traffic classification filter.” Ex. G at 13-18. 

Headwater maps this to components and filters in T-Mobile’s network and servers corresponding 

to “QCI” “Data Priority” levels corresponding to various plans and filters, such as those used to 

prioritize “first responder” traffic over “postpaid priority plans” over “postpaid, prepaid, and 

MVNO plans” over “heavy data users.” Id. (citing https://www.bestphoneplans.net/news/datapriority (identifying “QCI values, used by T-Mobile, Verizon, and AT&T”); 

https://www.bestphoneplans.net/news/data-priority (same); https://www.tmobile.com/responsibility/consumer-info/policies/internet-service). Further, for [1f] and [1g], the 

contentions explain how these priorities and QCI levels are provided to the claimed “network 

traffic inspection system,” and “network policy enforcement system.” Ex. G at 18-26. 

To the extent any deficiencies exist in Headwater’s proof with respect to network-side 

functionality, that is no basis to strike Headwater’s contentions. Headwater satisfied its obligations 

by citing the evidence known to Headwater in accordance with L.P.R. 3-1, including by diligently 

reviewing confidential documents produced by T-Mobile, and amending its contentions to 

specifically identify T-Mobile’s systems which Headwater believes infringe Headwater’s patents. 

C. Headwater’s Dependent Claim Charts Are Not Deficient. 

Though T-Mobile refused to walk through specific deficiencies during the meet and confer 

leading up to this motion, and though it only identifies two examples of alleged deficiencies in its 

Motion, T-Mobile seeks to strike large swaths of Headwater’s dependent claim allegations 

indiscriminately. Mot. at 8-10. But many of the dependent claims contain discrete evidence and 

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explanation where warranted. See, e.g., Exs. A-N. And many cite back to evidence or explanation 

in the earlier claims where there is overlap, such as with T-Mobile’s two purported examples as 

discussed below. 

For its first example, T-Mobile argues that “Headwater’s contentions never accuse 

anything of being a ‘proxy function.’” Mot. at 9 (emphasis in original; asserting deficiencies 

regarding ’541 Patent, Claim 10).8 But this specific detail is not a deficiency in contentions because 

only confidential discovery will reveal whether software underlying the features accused of 

infringement include proxy functions. Nonetheless, T-Mobile’s own documentation, describes 

how “Proxy Settings” are a “Settings and Customization” “Requirement” for T-Mobile. 

TMO_HW00024604. And as discussed above, T-Mobile contends that Headwater needs 

confidential discovery to establish infringement by specific devices. Furthermore, a “proxy” is a 

well-known term of art that can be provided for through an operating system, such as through the 

features and functionality Headwater identified in its chart for claim 1. 

As a second example, T-Mobile asserts the “policy enforcement priority rule” of Claim 5 

of the ’543 Patent is not found in the prior claims. Mot. at 9-10. T-Mobile again ignores that Claim 

5 cites to Claims 1-3 in support. For Claim 1, Headwater alleges “the Accused Instrumentalities 

apply different access priority rules based on the type of subscriber account,” such as different 

QCI Levels for different traffic priorities. Ex. G at 14. For Claim 2, Headwater alleges “[t]he 

Accused Instrumentalities apply different access priority rules based on the type of subscriber 

account, where a first service plan component and a second service plan component may refer to 

the service plans of two different subscriber plans to order subscribers into various priorities, such 

8 It is also false that “Headwater’s contentions never accuse anything of being a ‘proxy function.’” 

Mot. at 9. For example, Headwater’s chart for Claim 12 (which shares a dependency to Claim 9 

with Claim 10) identifies multiple software components that can serve as a proxy. Ex. A at 104-

105. 

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as “top priority” or “QCI” level.” Ex. G at 26. And for Claim 3, Headwater alleges “the Accused 

Instrumentalities apply different access priority rules based on the type of subscriber account, 

where a first service plan component and a second service plan component may refer to the service 

plans of two different subscriber plans into various priorities based on characteristics that match 

certain filters, but not others.” Ex. G at 27. 

And while T-Mobile alleges “Headwater has been on notice of these deficiencies for 

months, before Headwater moved to amend its contentions in April 2024” (Mot. at 10), dependent 

claims were not the subject of the parties’ meet and confers leading up to service of Headwater’s 

amended contentions. Had that been discussed, Headwater could have addressed T-Mobile’s 

concerns long ago and pointed out the hypocrisy of its position, given that its invalidity contentions 

provide no or nearly no additional analysis for dependent claims. E.g., Exs. O, P, Q, R. Instead, TMobile improperly waited until now to raise these issues. Orion IP, 407 F. Supp. 2d at 818. 

D. Supplementation 

Finally, T-Mobile asserts that “Headwater must supplement its deficient contentions as to 

the remaining allegations in its contentions.” Mot. at 10-14. Headwater’s contentions properly link 

evidence to the claims, with explanations and citations mapping to the claims. They do not mix or 

match accused functionality, especially given that the same underlying software functionality and 

code enables the accused features. Even so, Headwater already provided amendments on the day 

T-Mobile filed the instant Motion and is willing to further supplement where appropriate. 

V. CONCLUSION 

T-Mobile’s requested relief should be denied for the reasons stated above. 

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Dated: August 21, 2024 Respectfully submitted, 

/s/ Marc Fenster 

Marc Fenster 

CA State Bar No. 181067 

mfenster@raklaw.com 

Reza Mirzaie 

CA State Bar No. 246953 

rmirzaie@raklaw.com 

Brian Ledahl 

CA State Bar No. 186579 

bledahl@raklaw.com 

Ben Wang 

CA State Bar No. 228712 

bwang@raklaw.com 

Adam Hoffman 

CA State Bar No. 218740 

ahoffman@raklaw.com 

Dale Chang 

CA State Bar No. 248657 

dchang@raklaw.com 

Paul Kroeger 

CA State Bar No. 229074 

pkroeger@raklaw.com 

Neil A. Rubin 

CA State Bar No. 250761 

nrubin@raklaw.com 

Kristopher Davis 

CA State Bar No. 329627 

kdavis@raklaw.com 

James S. Tsuei 

CA State Bar No. 285530 

jtsuei@raklaw.com 

Philip Wang 

CA State Bar No. 262239 

pwang@raklaw.com 

Amy Hayden 

CA State Bar No. 287026 

ahayden@raklaw.com 

Jason M. Wietholter 

CA State Bar No. 337139 

jwietholter@raklaw.com 

Qi Peter Tong 

TX State Bar No. 24119042 

Email: ptong@raklaw.com 

RUSS AUGUST & KABAT 

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12424 Wilshire Blvd. 12th Fl. 

Los Angeles, CA 90025 

Telephone: 310-826-7474 

Andrea L. Fair 

WARD, SMITH & HILL, PLLC 

1507 Bill Owens Parkway 

Longview, Texas 75604 

Telephone: 903-757-6400 

andrea@wsfirm.com 

Attorneys for Plaintiff, 

Headwater Research LLC

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CERTIFICATE OF SERVICE 

I hereby ce1tify that on August 21, 2024, I electrnnically filed the foregoing document with 

the Clerk of the Comt for the Eastern Disti-ict of Texas under seal, and served com1sel of record 

with a copy via electronic email. 

Isl Marc Fenster 

Marc Fenster 

18 

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