IN THE 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 MOTION TO COMPEL 

CORE TECHNICAL DOCUMENTS REQUIRED UNDER PATENT L.R. 3-4(a) 

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TABLE OF CONTENTS 

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

II. FACTUAL BACKGROUND ............................................................................................... 2

III. ARGUMENT ........................................................................................................................ 4

A. Headwater’s P.R. 3-1 Contentions Accuse T-Mobile Network Servers 

and Server-Side Functionality of Infringement ........................................................... 4

1. March 2024: Headwater, at T-Mobile’s Request, Provided 

Additional Information About the T-Mobile Server-Side 

Functionalities it Accused of Infringement ........................................................ 5

2. March 2024 – June 2024: T-Mobile Identifies No Problems 

With Headwater’s March 2024 Amended Infringement 

Contentions ........................................................................................................ 6

B. T-Mobile’s Failure to Produce the Required Technical Information 

and Source Code is Prejudicial and Without Justification ........................................... 9

IV. CONCLUSION ................................................................................................................... 10

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TABLE OF AUTHORITIES 

Cases

Orion IP, LLC v. Staples, Inc., 

407 F. Supp. 2d 815 (E.D. Tex. 2006) ........................................................................................ 7 

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I. INTRODUCTION 

T-Mobile is represented by the same trial counsel who represent the Verizon defendants in 

2-23-cv-00352 (E.D. Tex.) (lead case). The Asserted Patents in this case are the same as in the -

00352 case. Like Verizon, T-Mobile has refused to produce non-public technical documents, 

including source code, in violation of its obligation under P.R. 3-4(a). Headwater’s Complaint, 

and P.R. 3-1(c) charts and infringement contentions, accuse T-Mobile servers and mobile devices 

retailed by T-Mobile of infringing certain claims of U.S. Patent Nos. 8,589,541 (“’541 patent”), 

8,924,543 (‘’543 patent”), 9,198,042 (“’042 patent”), and 9,215,613 (“’613 patent”) (together, the 

“Asserted Patents”). The Accused Products include not only phones and tablets specifically 

identified in Headwater’s infringement contentions, but Headwater’s infringement claim charts 

also explain how those products perform certain claim elements in conjunction with T-Mobile’s 

servers, which configure the accused phones and tablets with telecommunications service and 

Internet connectivity. T-Mobile’s servers are specifically identified as Accused Products. 

Despite its servers clearly being accused in Headwater’s contentions, T-Mobile has limited 

the scope of its technical document to only what it has referred to as “device-side” (as opposed to 

server-side) functionality. As for source code, it has refused to produce anything all. As 

justification, T-Mobile explains that Headwater’s infringement contentions do not adequately 

describe the involvement of T-Mobile’s servers in the alleged infringement of the Asserted 

Patents—the same arguments that Verizon has made. And T-Mobile, like Verizon, recently filed 

a motion to strike Headwater’s identification of specific T-Mobile server-side functionality to 

which it had, earlier in the case, consented to be included in the case. 

T-Mobile cannot fairly dispute that non-public technical documentation and source code is 

relevant to infringement here and should be produced. This District’s P.R. 3-4(a) requires the 

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alleged infringer to produce any and all documents showing “the operation of any aspects of or 

elements of an Accused Instrumentality.” Headwater has repeatedly asked T-Mobile to produce 

this material. Because T-Mobile has continually refused to do so, Headwater respectfully requests 

from the Court an order requiring T-Mobile to produce all relevant documentation and source code 

for the server-side devices and functionalities identified in Headwater’s infringement contentions. 

II. FACTUAL BACKGROUND 

On August 23, 2023, Headwater filed this lawsuit, accusing T-Mobile of infringing, among 

other patents, the ’543 and ’042 Patents, which 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.” See Dkt. 1. 

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). 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 patent infringement 

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

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infringement contentions on March 19, 2024. These amendments did not change the scope of 

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

requested by T-Mobile. 

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.” See Dkt. 68-1, at 250 (’543 patent infringement claim chart). 

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, 

“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 from March 2024 identify further specific network-side 

functionality by name—which Headwater was able to ascertain after a diligent review of TMobile-produced device-side documents produced less than one month earlier. Dkt. 69, at 4-5 

(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”). 

Throughout this case , the parties have met and conferred and exchanged correspondence 

regarding T-Mobile’s document and source code production in the ordinary course. For example, 

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on February 16, 2024, Headwater sent a letter to T-Mobile identifying various deficiencies in TMobile’s P.R. 3-4(a) document production. After Headwater served (at T-Mobile’s request) its 

amended March 2024-dated infringement contentions, T-Mobile has apparently continued to 

refuse to produce any source code or technical documentation specifically relating to the serverside functionality at issue for the ’543 and ’042 patents. On June 12, 2024, T-Mobile sent a letter 

that complained about new supposed deficiencies in Headwater’s infringement contentions—this 

time asserting, without explanation and for the first time, that though Headwater had identified 

specific server-side functionality, “none of these newly accused elements appears anywhere in 

Headwater’s claim charts.” Dkt. 68-3, at 3. The parties held a lead-and-local meet and confer on 

T-Mobile’s continuing refusal to do so on and arrived at an impasse. 

III. ARGUMENT 

A. Headwater’s P.R. 3-1 Contentions Accuse T-Mobile Network Servers 

and Server-Side Functionality of Infringement 

Both of Headwater’s ’543 and ’042 patents claim inventions in the telecommunications 

space that specifically involve limitations and steps practiced by network system used in the 

provision of telecommunications service to mobile devices like cell phones. 

For example, claim 1 of the ’543 patent claims a “network service plan provisioning system 

communicatively coupled to a wireless end-user device over a wireless access network,” where 

such network service plan provisioning system is required to perform steps such as: (1) “obtain 

and store a first service plan component and a second service plan component,” where the two 

service plan components respectively comprise first and second “traffic classification filters,” and 

then (2) “process 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.” ’543 patent, cl. 1. 

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Similarly, in the ’042 patent, claim 1 requires a method comprising, among other steps, 

“receiving, over a service control link, a report from a wireless end-user device” and “sending 

configuration information to the wireless end-user device over the service control link.” Neither 

’543 or ’042 patent are, as T-Mobile suggests, patents that are limited to the “device side” of how 

end user mobile devices are provisioned by servers providing connectivity over a 

telecommunication network. The ’543 and ’042 patents are directed specifically to network-side 

functionality and how and what those networks communicate with and to end-user devices. 

1. March 2024: Headwater, at T-Mobile’s Request, Provided 

Additional Information About the T-Mobile Server-Side 

Functionalities it Accused of Infringement 

T-Mobile has no excuse for refusing to produce documents and source code for the serverside functionality at issue here. Earlier in this case, T-Mobile specifically asked Headwater to 

provide, under P.R. 3-1, more detail about what Headwater meant when it identified, in its 

September 29, 2023 infringement contentions, T-Mobile “[s]ervers, hardware, software, and 

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

network services functionality.” Dkt. 68-2, at 1-2 (Feb. 1, 2024 Ltr. from T-Mobile to Headwater). 

T-Mobile asserted that “[n]o specific servers or other network hardware or software are identified” 

and “nor are any network elements mentioned or depicted in the charts.” Id. 

In response, Headwater—at T-Mobile’s request and with its express consent—served 

amended infringement contentions on March 19, 2024. In those amended contentions, Headwater 

identified, by model or function name, and citations to T-Mobile confidential technical document 

production, certain servers and server-related functionality it was believed was relevant to TMobile’s infringement. See Dkt. 68-4 (filed under seal at Dk. 69) at 4-7 (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 

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 See, e.g., TMO_HW00018768, 

TMO_HW00031420, TMO_HW00034439”). 

2. March 2024 – June 2024: T-Mobile Identifies No Problems With 

Headwater’s March 2024 Amended Infringement Contentions 

When Headwater served its Amended Infringement Contentions on March 19, 2024 

(again, specifically at T-Mobile’s request), Headwater understood that to be the end of the matter. 

The case progressed for months, during which the parties served and responded to discovery 

requests and produced relevant documents. Notably, on April 15, 2024, Headwater filed an 

unopposed motion to for leave to amend its infringement contentions, in order to ensure that its 

March 19, 2024 contentions were its operative P.R. 3-1 contentions. By this point, the last time TMobile had complained about Headwater’s contentions in any substantive way was in February 1, 

2024 (see Dkt. 68-2), which Headwater, with T-Mobile’s express assent, cured with its March 19, 

2024-dated amended contentions. 

Then, June 12, 2024, T-Mobile sent a letter that complained about new supposed 

deficiencies in Headwater’s infringement contentions. See Dkt. Dkt. 68-3. In its letter, T-Mobile 

acknowledged that Headwater’s March 19, 2024 contentions had accused were “newly accused 

elements” responsive to T-Mobile’s earlier complaints about how Headwater had mapped the 

Asserted Patents’ server-side limitations. Nonetheless, T-Mobile continued, those server-side 

limitations were outside the scope of the case because “none of these newly accused elements 

appears anywhere in Headwater’s claim charts.” Id. at 3. And, in its recently-filed pending motion 

to strike Headwater’s infringement contentions, T-Mobile says Headwater’s contentions map only 

“general network-side technologies” in a “superficial and incomplete manner, without explaining 

how they meet each claim limitation.” Dkt. 68, at 12. 

First, as an initial matter, T-Mobile’s current argument cannot be reconciled with its past 

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assent to Headwater’s March 19, 2024 amended contentions and its months of silence following 

the service of those contentions. 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). T-Mobile should not be 

allowed to feign ignorance as a basis to continue to refuse to produce any of its server-side source 

code and documentation – this is classic litigation-by-ambush prohibited by the Rules. 

Second, T-Mobile’s current argument cannot be reconciled with Headwater’s infringement 

claim charts. That Headwater plainly disclosed and identified the use by T-Mobile of its servers in 

providing the server-side limitations of the ’543 and ’042 patents cannot be reasonably disputed. 

For example, Headwater asserts in its ’042 patent claim chart, for claim 1[c], that: 

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 

Ex. 1, at 13-17. This is a clear identification of classic server-side device management 

functionality—if T-Mobile can comprehend that it possesses servers and performs server-side 

functionality that involves “transmit[ting] traffic control-related instructions to mobile devices” 

based on things like “type of traffic, type of subscriber plan, and priority levels for types of data” 

and “subscriber account type,” it is required under the Patent Rules to produce source code and 

technical documentation relating to those servers and functionalities. 

And, for the ’543 patent, Headwater mapped claim limitation 1[e], which requires 

“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,” to how T-Mobile is able to offer 

different levels of telecommunications service on a per-subscriber basis—i.e., a given subscriber 

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plan can have one particular priority level, entitling it priority to network access and high-speed 

data; another subscriber can have a lower priority level; yet another subscriber might purchase a 

“data boost” feature, which temporarily increases speed and data allotment for that subscriber’s 

access to the T-Mobile network. See, e.g., Ex. 2, at 13-18 (“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”). Headwater’s claim charts provide an 

extremely detailed description of the server-side features and functionality it believed were 

involved in infringement: 

The Accused Instrumentalities, such as T-Mobile’s network (e.g., servers, 

hardware, software, and services leased, owned, supported, and/or operated by [TMobile] comprising [T-Mobile’s] wireless network services functionality, 

including but not limited to See, 

e.g., TMO_HW00018768, TMO_HW00031420, TMO_HW00034439), process 

service plan components to create a network provisioning instruction set in 

accordance with a prioritization of a first traffic classification filter over a second 

traffic classification filter. 

As one example, the Accused Instrumentalities process various service plan 

components for a particular service plan for a subscriber, including the claimed first 

and second service plan components, to create network provisioning instructions 

defined by logic for prioritizing one traffic classification filter over another. For 

example, the Accused Instrumentalities utilize traffic inspection and other 

techniques to determine whether a user of a device connected to the wireless access 

network is requesting additional data to use on the wireless access network, and to 

further prioritize such data traffic as a part of the network provisioning instructions 

and to enforce their priority by, for example, specifically configuring the device to 

access the wireless access network for the purpose of purchasing additional data to 

use on the wireless access network. Another example of traffic classification filters 

which result in the network policy enforcement system causing policies to be 

applied to the user device would be the Accused Instrumentalities’ traffic 

classification filters for inspecting traffic and detecting traffic related to video 

streaming and HD video streaming, which results in the network policy 

enforcement system implementing policies to for setting maximum bandwidth for 

a particular traffic stream based on whether the subscriber account is configured by 

the Accused Instrumentalities as being allowed to stream HD video or not; if HD 

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video streaming is permitted (e.g., the subscriber account has paid for a “HD 

Streaming Pass” add-on functionality), the traffic classification filter for detecting 

data traffic for HD streaming video is prioritized. As another example, 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. As 

another example, a traffic classification filter for inspecting and detecting hotspot 

data is used to enforce the relatively lower levels of service priority that carriers, 

including T-Mobile, accord to hotspot data over other more data such as data used 

by accounts determined by the Accused Instrumentalities to be for “first responder” 

use. 

Ex. 2, at 13-14; id. at 14-19 (screenshots of materials illustrating T-Mobile’s alleged infringement). 

This is not a generic mapping of “general network-side technologies” in a “superficial and 

incomplete manner.” Headwater provided specific identification of the infringing features, 

including by name and with a fulsome narrative description. 

B. T-Mobile’s Failure to Produce the Required Technical Information 

and Source Code is Prejudicial and Without Justification 

Having identified T-Mobile’s infringement through performance of these claim elements, 

Headwater is entitled to take discovery of technical documents and source code detailing the 

specific operations within the accused systems that perform the elements. T-Mobile has not 

meaningfully produced technical documentation relating to T-Mobile’s server-side features, 

including the ones specifically identified by name by Headwater in its contentions. Until its June 

12, 2024 letter, T-Mobile raised no issues with Headwater’s March 19, 2024 amended 

infringement contentions with respect to the ’543 and ’042 patents. 

Neither has T-Mobile has articulated any burden it might believe it would have if forced to 

produce relevant source code and technical documentation. The features and functions Headwater 

accuses are a finite set. T-Mobile has already collected and produced relevant documentation for 

the device-side of the infringement theory, which is how Headwater was able to identify in the first 

place certain names of the server-side features it believed are involved in infringement. 

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The rules do not permit T-Mobile to curate its evidence. The Patent Rules require fulsome 

and unedited discovery of technical documentation and source code so that Headwater can build, 

evaluate, and prove its case. T-Mobile’s failure to produce the information in question violates the 

requirements of the patent local rules and this Court’s Docket Control Order, Discovery Order, 

and local Patent Rules. T-Mobile’s failure to produce has substantially prejudiced Headwater in 

discovery and development of its case, including because months of the discovery period have 

already expired. 

IV. CONCLUSION 

Headwater thus respectfully requests that the Court compel T-Mobile to immediately 

produce non-public technical documentation, including source code, for the accused server-side 

functionalities identified in Headwater’s March 19, 2024 Infringement Contentions. 

 

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 

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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 

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 

CERTIFICATE OF CONFERENCE 

On August 1, 2024, counsel for Headwater, including Marc Fenster as lead com1sel and 

Andrea Fair as local counsel, met and confened with counsel for T-Mobile, including Kate 

Dominguez as lead com1sel and Deron Dacus as local counsel. This followed a prior conference 

in which counsel for Headwater discussed the issues set fo1th in this motion with T-Mobile. The 

paities were unable to reach agreement and have reached an impasse, leaving ai1 open issue for the 

Comt to resolve. This motion is opposed by T-Mobile. 

Isl Marc Fenster 

Mai·c Fenster 

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