IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

CELLCO PARTNERSHIP D/B/A VERIZON 

WIRELESS and VERIZON CORPORATE 

SERVICES GROUP INC., 

Defendants,

CIVIL ACTION NO. 2:23-cv-00352

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION

TO STAY PENDING RESOLUTION OF INTER PARTES REVIEWAND

THE RELATED MANUFACTURER CASES

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TABLE OF CONTENTS

1. VERIZON’S IPRS ARE LIKELY TO SIMPLIFY THE ISSUES IN THIS CASE...........1

2. RESOLUTION OF THE CO-PENDING CASES AGAINST SAMSUNG AND 

THE OTHER MANUFACTURERS WILL SIMPLIFY THE ISSUES IN THIS 

CASE............................................................................................................................3

3. THE REMAINING FACTORS FAVOR STAY. ............................................................5

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TABLE OF AUTHORITIES

Page(s)

Cases

Global Equity Management (SA) Pty. Ltd. v. Ericsson, Inc.,

No. 2:16-cv-00618, 2017 WL 365398 (E.D. Tex. Jan. 25, 2017)...........................................3

Motorola Mobility, Inc. v. TiVo, Inc.,

No. 5:11-cv-53, 2011 WL 13196554 (E.D. Tex. July 6, 2011)..............................................3

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

2015 WL 1069111 (E.D. Tex. Mar. 11, 2015)......................................................................5

Veraseal LLC v. Costco Wholesale Corp.,

2018 WL 4524122 (E.D. Tex. May 17, 2018) ......................................................................4

XY, LLC v. Trans Ova Genetics, LC.,

968 F.3d 1323 (Fed. Cir. 2020)............................................................................................4

Treatises

Federal Practice and Procedure § 4463 ......................................................................................3

Federal Practice and Procedure § 4463 ......................................................................................4

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TABLE OF ABBREVIATIONS

Abbreviation Term

Headwater or 

Plaintiff

Plaintiff Headwater Research LLC 

Verizon Defendants Cellco Partnership d/b/a Verizon Wireless and 

Verizon Corporate Services Group, Inc. 

Asserted Patents U.S. Patent Nos. 8,589,541, 8,924,543, 9,198,042 and 9,215,613 

’541 Patent U.S. Patent No. 8,589,541

’543 Patent U.S. Patent No. 8,924,543

’042 Patent U.S. Patent No. 9,198,042 

’613 Patent U.S. Patent No. 9,215,613

P.R. Local Patent Rule

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

IPR Inter partes review 

Board or PTAB Patent Trial and Appeal Board

Samsung I Headwater Research LLC v. Samsung Elecs. Co., No. 2:22-cv00422-JRG-RSP (E.D. Tex.)

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TABLE OF EXHIBITS

Ex. Description

1 Raleigh Patent Family Tree

2 U.S. Patent No. 9,609,544 (the “’544 Patent”)

3 PTAB Trial Statistics, FY23 End of Year Outcome Roundup IPR, 

PGR 

4 Samsung I Infringement Chart

5 Android System Art Chart

6 Decision Granting Institution of Inter Partes Review, IPR No. 

2014-00809 (October 23, 2024)

7 Excerpt of Exhibit G to Headwater’s Infringement Contentions

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Verizon’s Motion identified unique, concrete reasons for why a stay is particularly 

appropriate in this case. Headwater’s Opposition fails to rebut any of these—indeed, as discussed 

below, some of Headwater’s arguments affirmatively support Verizon’s position, and Headwater 

simply ignores many of Verizon’s other arguments. Beyond that, recent events further support 

Verizon’s argument. Most notably, on October 23, 2024, the PTAB instituted inter partes review

on the ’042 Patent. This further confirms that a stay will likely simplify the issues.

1. VERIZON’S IPRS ARE LIKELY TO SIMPLIFY THE ISSUES IN THIS CASE.

Verizon’s Motion explained that Verizon has filed IPRs against every asserted claim of 

every asserted patent, and Verizon explained how those IPRs are very likely to simplify the issues 

in the case, including because institution of the Samsung IPR provides a strong guide that 

institution will happen here, Headwater’s own conduct confirms the case will be simplified 

regardless of the outcome of the IPRs, and resolution of merely some of the IPRs in Verizon’s 

favor will eliminate entire technologies from this case. Headwater fails to rebut any of these points.

Likelihood of Institution: As Verizon explained, a prior institution decision in the Samsung 

IPR (challenging the ’544 Patent) provides strong guidance that the IPRs will be instituted here. 

See Mot. at 7–8. In response, Headwater notes that only two of the four asserted patents here (the 

’541 and ’613 Patents, but not the ’042 or ’543 Patents) share striking similarities with the ’544 

Patent. Opp. at 5 (“As an initial matter, Defendants do not even mention or attempt to analogize 

the ’042 and ’543 Asserted Patents here to any IPR proceedings.”). Headwater omits the fact that 

the PTAB instituted the IPR on the ’042 Patent the day before Headwater filed its opposition. Ex. 

6. As for the ’541 and ’613 Patents, Headwater’s primary argument is to note that that the ’544 

Patent has an additional limitation not present in the ’541 and ’613 Patents. Opp. at 5–6 (noting 

the additional “power control state” requirement). This is a bad fact for Headwater. Prior art that 

invalidates narrower claims would also invalidate broader claims in a related patent covering the 

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same subject matter without the narrowing limitation. Thus, it is more likely that the PTAB will 

institute on the ’541 and ’613 Patents. Headwater also argues that there are some minor differences 

in the prior art references relied upon by Samsung and Verizon. Id. Headwater fails to explain 

how swapping out a few secondary references impacts the analysis in Headwater’s favor. Id.

Simplification of Issues Regardless of Ultimate Outcome: As Verizon explained, 

Headwater’s conduct in this case and the related cases confirms the IPRs will simplify issues in 

the case regardless of the ultimate outcome. In particular, Headwater has demonstrated a pattern 

of abandoning claims or dropping entire patents simply to avoid institution of an IPR and/or to 

avoid a Final Written Decision. Mot. at 9. Headwater does not address this point. Opp. at 6–7. 

Headwater generally notes that the case will “naturally narrow” as it progresses, id., but ignores 

the fact that, in Samsung I, it dropped entire patents from the district court proceeding in an effort 

to moot the IPRs, and here, it voluntarily abandoned 48 out of 50 claims in a gambit to overcome 

institution. Mot. at 9. On the issue of the IPRs potentially informing claim construction, 

Headwater notes that Verizon did not seek claim construction in the IPRs, while ignoring that 

claim construction issues might arise later in the IPR process, such as disclaimers Headwater 

makes in advance of the Final Written Decisions. Compare Mot. at 8–9 with Opp. at 6–7.

Partial Resolution Will Simplify the Case: As Verizon explained, this is not a case where 

all four patents cover the same general technology, such that any one patent surviving means the 

case is essentially the same. For example, it is only for the ’042 Patent that Headwater identifies 

attach requests, bearer requests, and similar 3GPP technologies in its contentions. Ex. 7 at 10. 

Even if the PTAB does not institute on any other patents (which is highly unlikely), staying the 

case would still eliminate an entire technology group (these 3GPP technologies) from the case. 

Headwater has no response on this point. It simply ignores it. See generally Opp. at 4–7.

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2. RESOLUTION OF THE CO-PENDING CASES AGAINST SAMSUNG AND THE 

OTHER MANUFACTURERS WILL SIMPLIFY THE ISSUES IN THIS CASE.

Additionally, the manufacturer lawsuits will significantly simplify the issues in this case, 

based on various doctrines including patent exhaustion, implied licensing, claim preclusion, the 

bar against claim splitting, Kessler doctrine, and issue preclusion. Mot. at 10–13. None of 

Headwater’s arguments to the contrary have merit. Headwater’s opposition does not even mention

patent exhaustion or implied licensing. Opp. at 7–10. And, regarding claim preclusion, Headwater 

contends that it requires “identity of parties” but again ignores the cases identified by Verizon 

stating that strict identicality of parties is not a requirement. Mot. at 12; see also Federal Practice 

and Procedure § 4463 (discussing exceptions to traditional mutuality requirement).

Headwater also argues that many of the other doctrines identified by Verizon require a final 

judgment before applying. Opp. at 7–8. While true, it would be wasteful to litigate this case while 

the Samsung I case proceeds final judgment, only to then, on the eve of trial in this case, finally 

apply the doctrine and narrow the case. This is precisely why Verizon asks the Court to stay the 

case for now, and then the parties can assess the final impact of those doctrines and how they 

simplify the case after final judgment is reached. Motorola Mobility, Inc. v. TiVo, Inc., No. 5:11-

cv-53, 2011 WL 13196554, at *4 (E.D. Tex. July 6, 2011) (granting a motion to stay pending 

resolution of an earlier filed case where “[d]ecisions made...will likely streamline or simplify 

certain issues” in the later case); Global Equity Management (SA) Pty. Ltd. v. Ericsson, Inc., No. 

2:16-cv-00618, 2017 WL 365398 (E.D. Tex. Jan. 25, 2017) (same).

Headwater next argues Verizon has failed to prove the cases present “essentially the same” 

issues, such that the above-mentioned doctrines would apply. Opp. at 8–9. As Headwater 

recognizes, however, this inquiry focuses on whether “the asserted patents and the accused 

activity” are “essentially the same.” Opp. at 8. On the identity of patents, Headwater concedes, 

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that the patents do not need to be literally the same for the doctrines apply. Rather, related patents, 

with overlapping claim language, can trigger these doctrines. Opp. at 8 (quoting XY, LLC v. Trans 

Ova Genetics, LC., 968 F.3d 1323, 1333 (Fed. Cir. 2020). Tellingly, in response to Verizon’s 

showing that the asserted patents in the cases are “essentially the same,” Headwater does not 

identify a single difference between the patents. Opp. at 9. On the overlap of products, Headwater 

does not dispute that, for the Samsung devices accused in both cases, they are the same. Id. 

Headwater’s failure to dispute this point, coupled with its failure to identify any substantive 

differences between the claims, should end the inquiry. Headwater instead notes that devices sold 

by other manufacturers are also accused. Id. That is true, but that is not the inquiry. The inquiry 

is “whether a stay will simplify the issues,” not whether it will resolve the case in its entirety. 

Veraseal LLC v. Costco Wholesale Corp., 2018 WL 4524122, at *1 (E.D. Tex. May 17, 2018).

Headwater’s remaining arguments are without merit. Headwater notes that the damages 

analyses in the cases will be different. Opp. at 10. As stated above, this is not the test—the 

question is whether the stay will simplify the issues, and it should be beyond dispute that removing 

entire product lines from the case will simplify the case, regardless of potential differences in the 

damages. Headwater also complains that Defendants assert these defenses, but they refuse to be

bound by them. Id. This is because patent exhaustion, implied licensing, claim preclusion, and 

the Kessler doctrine are not asserted against defendants, and issue preclusion is widely accepted 

to be non-mutual. See Federal Practice and Procedure § 4464 (“Mutuality Abandoned – Issue 

Preclusion”). Headwater also argues that Verizon has failed to satisfy its burden of proof of 

proving the applicability of these defenses. Opp. at 8, fn. 4. That misses the point. This is not a 

summary judgment motion seeking to establish the precise metes and bounds of those defenses to 

this case; it is a stay motion, with the relevant inquiry being whether those doctrines are “likely” 

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to simplify the issues. NFC Tech. LLC v. HTC Am., Inc., 2015 WL 1069111, at *1 (E.D. Tex. 

Mar. 11, 2015). Finally, Headwater addresses the requirements of the customer suit exception

(Opp. at 11–12) but Verizon did not move for a stay under that doctrine. 

3. THE REMAINING FACTORS FAVOR STAY.

Stage of the Case: Headwater does not dispute that no fact depositions have occurred in 

this case, and that expert discovery, pre-trial, and trial are months away, and that the claim 

construction hearing has not yet occurred. Opp. at 12–13. Verizon provides one further update: 

on October 18 (after Verizon filed this motion to stay), Headwater indicated its intention to depose 

21 current and former Verizon employees, including Verizon’s former General Counsel and a 

current Verizon C-Suite executive, with just over six weeks left in fact discovery. Headwater has 

not requested dates for any of the depositions, and Verizon expects motion practice will be 

necessary if Headwater refuses to narrow its list of deponents.

Headwater Is Not Prejudiced: Verizon’s motion identified two unique facts that 

demonstrate Headwater is not prejudiced by a stay. Headwater’s responses to these arguments are 

unconvincing. First, as Verizon explained, Headwater alleges it learned of Verizon’s supposed 

use of Headwater’s technology a decade ago, yet Headwater waited until last year before filing 

suit. Mot. at 15. Headwater’s response—that Headwater is a small company and pre-suit 

investigations take “substantial time and resources”—is not credible. Plaintiff’s counsel has the 

resources to litigate this case, and the infringement contentions attached to the Complaint did not 

take ten years to draft. Second, Headwater consented to staying its case against Motorola pending 

institution decisions for related patents. Mot. at 15. Headwater’s response—that in the Northern 

District of California, stays are routinely granted—supports Verizon’s point. If Headwater had a 

special reason for why it was prejudiced by a stay, it would have raised that issue. But Headwater 

failed to do so, and here, Headwater only identifies formulaic reasons about purported prejudice.

Case 2:23-cv-00352-JRG-RSP Document 105 Filed 11/01/24 Page 10 of 13 PageID #: 8228
Dated: November 1, 2024 By: /s/ Katherine Q. Dominguez

Katherine Q. Dominguez (Lead Attorney)

kdominguez@gibsondunn.com

Josh A. Krevitt 

jkrevitt@gibsondunn.com

Brian A. Rosenthal 

brosenthal@gibsondunn.com 

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193 

Telephone: 212.351.4000

Facsimile: 212.351.4035 

Robert Vincent

rvincent@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

2001 Ross Avenue, Suite 2100

Dallas, TX 75201

Telephone: 214.698.3112

Facsimile: 214.571.2910

Andrew W. Robb (CA Bar No. 291438)

arobb@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

310 University Avenue

Palo Alto, CA 94301

Telephone: 650.849.5334

Facsimile: 650.849.5034

Michelle Zhu

mzhu@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1700 M Street, N.W.

Washington, D.C. 20036

Telephone: 202.777.9413

Fax: 202.831.6063

Celine Crowson (D.C. Bar No. 0436549A)

HOGAN LOVELLS LLP

555 13th St NW, 

Washington, DC 20004

Telephone: 202-637-5600

celine.crowson@hoganlovells.com

Tej Singh (California Bar No. 286547)

Case 2:23-cv-00352-JRG-RSP Document 105 Filed 11/01/24 Page 11 of 13 PageID #: 8229
Yi Zhang (California Bar No. 342823)

Kyle Xu (California Bar No. 344100)

HOGAN LOVELLS LLP

4 Embarcadero Center Suite 3500

San Francisco CA, 94111

Telephone: 415-374-2300

tej.singh@hoganlovells.com

yi.zhang@hoganlovells.com

kyle.xu@hoganlovells.com

Deron R. Dacus 

ddacus@dacusfirm.com

THE DACUS FIRM, P.C.

821 ESE Loop 323, Suite 430

Tyler, TX 75701

Phone: 903.705.1117

Attorneys for Verizon

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CERTIFICATE OF SERVICE

I hereby certify that on November 1, 2024, the foregoing was served upon all counsel of 

record who have consented to electronic service.

/s/ Katherine Q. Dominguez

Katherine Q. Dominguez

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