EXHIBIT E

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

vs.

AT&T SERVICES, INC., AT&T MOBILITY, 

LLC AND AT&T CORP.,

Defendants.

Civil Action No. 2:23-cv-00397

LEAD CASE

JURY TRIAL

Civil Action No. 2:23-cv-00398

MEMBER CASE

JURY TRIAL

HEADWATER RESEARCH LLC,

Plaintiff,

vs.

AT&T SERVICES, INC., AT&T MOBILITY, 

LLC AND AT&T CORP.,

Defendants.

DECLARATION OF DR. DONALD TURNBULL

I, Don Turnbull, hereby declare: 

1. OVERVIEW

1. I am over the age of 18 and am competent to make this Declaration. I am a citizen 

of the United States and a resident of the State of Texas. 

2. I make this Declaration at the request of AT&T Corp., AT&T Mobility, LLC, and 

AT&T Services, Inc. (“Defendants”) in connection with a claim construction proceeding in the 

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above-captioned case. 1 Specifically, I have been asked to share my opinions regarding the 

meaning of certain terms of U.S. Patent Nos. 8,589,541 (the “’541 Patent”) and 9,215,613 (the 

“’613 Patent) (collectively, the “Asserted Patents”), as understood by a person having ordinary 

skill in the art at the time of those patents (“POSITA”). I have been told the Defendants intend to 

submit this declaration to the Court in support of their arguments regarding the proper construction 

of these terms. My opinions and bases for my opinions are set forth below. 

3. I am being compensated at my standard consulting rate of $875 per hour for my 

time spent in connection with preparing this declaration. My compensation is not dependent on 

my testimony or the outcome of this proceeding.

4. In reaching the conclusions stated in this declaration, I have relied upon my own 

personal knowledge and experience. 

2. QUALIFICATIONS

5. A full description of my educational background, professional achievements,

qualifications, and publications in the past 30+ years are set forth more fully in my curriculum 

vitae, which is attached to this Declaration as Exhibit A. Here, I provide a brief summary of my 

background and qualifications.

6. I am an accomplished researcher and creator of innovative, patented and tradesecreted technologies related to information retrieval, e-commerce, personalization, mobile 

interfaces, behavioral modeling, content organization, and analytics. I am also the author of 

numerous academic publications, including: a textbook on Web-based information seeking (i.e.,

how people search and browse the Internet) and knowledge work (i.e., how technology enables

people to work on complex tasks); mobile systems and mobile application design; articles on 

1 I reserve the right to offer rebuttal and/or additional opinions regarding claim construction or other issues on behalf 

of the Defendants for this matter.

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human-computer interaction design, personalization for Web information retrieval and 

recommender systems; and numerous definitive works on information architecture methodologies, 

software interface design, and software development.

7. My experience includes helping software companies, from small startups to large

corporations, create new technologies and applications. To advise these companies, I research and

monitor academic and industry technology developments to keep up-to-date regarding advances

in the field. I am also aware of the history of software development from my professional and

academic experience over the past 30 years.

8. I also have experience and knowledge working with user interfaces, such as on

mobile apps, and their integration into assisting users in their environment. I have also taught a 

number of software design and development courses at the graduate level including mobile 

systems, networked multimedia, interaction design, the semantic web and data analytics among 

others. In particular, I have been heavily involved with computing systems that collect data on 

user behavior (such as selecting content in an interactive computing environment). I have talked 

at industry and academic conferences on mobile, pervasive computing, and personalization,

including on collection and evaluation of user interactions and content analysis.

9. I received my undergraduate degree at the University of Texas at Arlington in 1988,

with an emphasis in computer science. Upon graduating, I took a position at a small software

company in Dallas that developed expert systems software that automated the processing and

optimizing the digital documents for either print or screen based on sets of rules and heuristics.

10. In 1991, I moved to Atlanta to work in an emerging, exciting area of software called

CASE (Computer Aided Software Engineering). I designed and built software that helped other

programmers build their own software applications. Since I had researched and built documentCase 2:23-cv-00397-JRG-RSP Document 78-5 Filed 11/06/24 Page 4 of 31 PageID #: 3173
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oriented applications, and understood hypermedia and hypertext, I also worked on specific

applications that helped people build more modern graphical user interface (GUI) applications that

could run on Windows or Macintosh systems, and still connect to corporate computer systems. I

also designed document authoring and editing applications to compile interactive, multimedia

hypertext systems within the GUI operating systems. These systems gave KnowledgeWare

software users an interactive, pop-up help in a graphical browser window that included hyperlinks

and a search function, much like the emerging Web browser applications and interfaces. As part

of my work, I used and prototyped applications in the first World Wide Web browser on the NeXT

Computer. The NeXT Web browser resembled modern Web browsers, and displayed documents

as their authors wanted them, with fonts and links to other documents hosted all over the world

accessible via the internet.

11. I returned to graduate school in 1994 at the Georgia Institute of Technology

(“Georgia Tech”) in a new graduate-only research department that focused on Internet technologies. 

This was when the Internet had started to become very popular, and my own work with hypertext, 

graphical interactive Web browsers and application programming had already prepared me to 

move in this research direction. As a graduate student at Georgia Tech, I worked on several 

projects that focused on hypermedia design and the Internet. In late 1994, I configured and ran a 

very early Web site (approximately the 8500th site on the Web). This early Web site featured an 

interactive survey, which utilized a database system and email-processing application working in 

concert with the interactive Web browser. I also worked on a new kind of automated Internet search 

tool, which (while not ready for commercial use) illustrated many ideas related to smarter Internet 

searching and understanding user preferences to present recommended resources. In early 1995, 

I also worked with a research team at Georgia Tech that developed a modified NCSA Mosaic Web 

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browser that offered a Graphic History View of browsing history in a separate window, which 

featured a tree-like structure of the links followed on Web pages, including thumbnail graphics of 

each Web page in the background.

12. My master’s thesis at Georgia Tech focused on automatically generating large

interactive hypermedia Web sites (large sets of Web pages, focused on a topic) through stored

multimedia Web content in a database, which could be used to “publish” a subset of pages onto

the Web, based on an author’s filtering criteria. In 1995, I earned an M.S. in Information Design

and Technology from the Georgia Institute of Technology with my thesis, entitled “ObjectOriented Information Development: A Methodology and System for Large-Scale Hypertext

Documents.”

13. After Georgia Tech, I went to IBM’s first U.S. Internet group, where I was a Lead

Technical Architect and worked on a number of related projects that dealt with graphical user

interfaces and networked systems using Internet technology. I also contributed to designs and

advised on numerous other ongoing Internet-focused projects at IBM, including Web site

development tools for eCommerce small business Web sites, large enterprise (intranet) Web sites

including portals, as well as the foundations for a Web site usability practice at IBM to evaluate

Web use of IBM software and server-based applications.

14. In 1996, pursuant to my doctoral studies at the University of Toronto, I researched

Internet technologies including Web browser functionality, protocols, and interfaces that are still

used today on desktop computers, but also in mobile devices and other inter-networked hardware

and software. I developed a client application called WebTracker that worked as a usage history

data collection agent in deep concert with Web browsers to collect a user’s Web browser activity

including the application functionality of the Web browser itself (e.g. opening a bookmark or

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searching a Web page, etc.) and the history of Web services accessed (e.g. using a Web-based

application or interacting with a Web server, etc.). I also researched user-interaction design as well 

as the underlying algorithms to predict and recommend user information needs assistance.

15. In 2002, at the University of Toronto, I finished my doctoral dissertation, entitled

“Knowledge Discovery in Databases of Web Use: A Search for Informetric and Behavioral Models

of Web Information Seeking.” A large component of my research was collecting and analyzing

very large-scale network access datasets (gigabytes) and develop models that showed how users

and their client computers were using the internet and Web as a platform with application usage

and information services.

16. Later that year, I returned to Texas and accepted a faculty position at the University

of Texas at Austin. As an assistant professor, I continued to pursue my research and taught graduate 

students on advances in subjects such as Web Information Retrieval Evaluation & Design (search), 

Information Architecture (including the history of hypertext and multimedia systems), Interaction 

Design & Human Computer Interaction (HCI), Web Analytics, the Semantic Web, and Knowledge 

Management systems. All of my courses focused on using interactive computer systems in 

networked environments to empower people to use information and interact with their computing 

environments.

17. During my time at the University of Texas, I conducted a variety of research

projects, published numerous academic papers, and presented at academic and industry

conferences. The projects included analyzing network traffic data, developing mobile device

applications and interfaces, as well as qualitative and quantitative user behavior data collection

and analytics. In addition to my work on campus, I also provided consulting advice on system

design to companies outside the university, including small technology startups as well as large

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corporations such as Microsoft and Motorola. Part of this industry work was focused on mobile

devices, interfaces and applications ranging from PDAs, early smartphones and the iOS and

Android platforms. Throughout these early days of mobile devices, I have been a research,

designer and developer for these platforms and operating systems and this continues to today.

18. I currently work with various software companies—from small startups to large

corporations—to create new technologies and applications. In this role, I continue to monitor

academic and industry advances in information systems. In over 30 years as a developer, professor, 

researcher, and software architect, I have read, and become familiar with, a large part of the rich 

history of development and design work in the field of computer science. As a software developer 

and designer, I personally witnessed and contributed to the early development of personal 

computers with graphical user interfaces, Web-based systems, and Web site development, as well 

as the growth of mobile networked computing. I have designed and built applications and systems 

for research and commercial uses, with a focus on practical, business-oriented tools. My work has 

used data in novel and transformative ways to move commerce from the real world to the Internet, 

thereby aiding the growth of e-commerce systems for finding, recommending, and sharing items 

to purchase.

19. In sum, I have extensive experience—as a developer and researcher—relating to

computing devices and network-based systems. I have developed tools to collect, organize, and

store user interaction data, and implement systems that can leverage user data to make using

computing devices smarter and easier.

20. In addition, I have analyzed the following materials in addition to the other 

materials I cite throughout this Declaration: 

• U.S. Patent No. 8,589,541 (“the ’541 Patent”) and its file history;

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• U.S. Patent No. 8,924,543 (“the ’543 Patent”) and its file history;

• U.S. Patent No. 9,198,042 (“the ’042 Patent”) and its file history;

• U.S. Patent No. 9,215,613 (“the ’613 Patent”) and its file history;

• Petition for inter partes review in IPR2024-00942 and accompanying papers;

• Petition for inter partes review in IPR2024-00943 and accompanying papers;

• Petition for inter partes review in IPR2024-00944 and accompanying papers;

• Petition for inter partes review in IPR2024-00945 and accompanying papers;

• Defendants’ Disclosure of Proposed Claim Constructions;

• Plaintiff’s Disclosure of Proposed Claim Constructions;

• Defendants’ P.R. 4-2 Exchange of Preliminary Proposed Claim Constructions 

and Extrinsic Evidence; and

• Plaintiff’s P.R. 4-2 Exchange of Preliminary Proposed Claim Constructions and 

Extrinsic Evidence.

3. LEGAL PRINCIPLES

21. I have been informed and understand that claim construction is the process by 

which the Court determines the proper meaning and scope of the claims.

22. I am not a lawyer, but Defendants’ counsel has informed me about the legal 

principles that apply in construing patent claims. As a general matter, I understand that the words 

of a claim are generally understood to have their plain and ordinary meanings as those words would 

have been understood by a POSITA based upon that person reading the claim terms themselves, 

the terms in the context of the claim in which they appear, the entire patent specification, including 

the figures, and the file history of the patent and related patents. I also understand that terms must 

be construed based upon a complete understanding of what the inventor actually invented and 

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intended to be covered (as evidenced in the patent and file history) by the claim in which the terms 

appear.

23. I also understand that an inventor can use terms in a manner other than in their plain 

and ordinary meaning by clearly, deliberately, and precisely defining those terms in the patent 

specification or in the file history. This is referred to as acting as a “lexicographer.” It is my 

understanding that if the specification reveals a special definition given to a claim term by the 

patentee that differs from the ordinary and customary definition of that term, then the patentee’s 

definition applies. In such cases, the specification acts as a dictionary that defines terms used in 

the claims.

24. I also understand that the “intrinsic evidence,” which includes the claims, the 

specification, and the file history, including post-grant proceedings before the United States Patent 

and Trademark Office (“PTO”), are the most important tools for determining the meaning of a 

claim term, but that “extrinsic evidence,” such as dictionaries, textbooks, and other publications, 

may also provide guidance about the meaning of a claim term.

25. I also understand that if a claim term, read in light of the specification and the 

prosecution history, fails to inform a POSITA with reasonable certainty about the scope of the 

invention, then the claim term is indefinite. My understanding is that a claim is considered 

indefinite if it does not allow a POSITA to understand with reasonable certainty the scope of the 

invention when read in light of the specification. To meet the definiteness requirement, a claim 

must be sufficiently precise to permit a potential competitor to determine whether they are 

infringing.

26. I further understand that if a claim contains an element that is indefinite, then the 

claim is invalid.

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4. PERSON OF ORDINARY SKILL IN THE ART

27. I understand that the terms in the Asserted Patents must be read as they would have 

been understood by a POSITA at the time of the invention. 

28. I have also been advised that a POSITA is a hypothetical person to whom the

claimed subject matter pertains with the capability of understanding the scientific and engineering

principles applicable to the pertinent art. I understand that the following factors may be considered

in determining the level of ordinary skill: type of problems encountered in the art; prior art

solutions to those problems; speed with which innovations are made; sophistication of the

technology; and educational level of active workers in the field. I also understand that not every

factor may be present and that one or more factors may predominate.

29. I understand that Defendants have previously identified a POSITA to be a person 

with at least a bachelor’s degree in computer science, computer engineering, or a similar field, and 

approximately two years of industry or academic experience in a field related to computer software 

development and/or computer networking. Based on my knowledge and experience, the materials 

and information I have reviewed, and my experience in the technical areas relevant to the ’541 

and ’613 Patents, I do not disagree with this definition. 

5. OVERVIEW OF THE PATENTS AT ISSUE

30. I understand that the Plaintiff has asserted infringement of four patents in the abovecaptioned case. 

31. I have been asked to address the disputed claim terms in the ’541 and ’613 Patents, 

and specifically with respect to whether certain disputed claim terms are indefinite. 

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A. Overview of the ’541 Patent 

32. The ’541 Patent is titled “Device-assisted services for protecting network capacity.” 

It issued on November 19, 2013 from U.S. Application No. 13/134,028, filed May 25, 2011. 

33. The ’541 Patent claims priority to or claims to be a continuation or continuationin-part of over eight columns of “Related Applications.” I have been informed by Defendants’ 

counsel that Plaintiff asserts that all claims of the ’541 Patent have a priority date of January 28, 

2009. For the purposes of preparing this declaration, I have been asked to assume that all claims 

of the ’541 Patent are, in fact, entitled to a priority date of January 28, 2009. 

34. As its title suggests, the ’541 Patent discloses means of involving a wireless device 

in the process of controlling usage of network resources. The specification explains that “[w]ith 

the advent of mass market digital communications, applications and content distribution, many 

access networks such as wireless networks, cable networks and Digital Subscriber Line (DSL) 

networks are pressed for user capacity.” ’541 Patent at 1:34–37. This strain on user capacity is 

described as arising, at least in part, from the fact that “user service consumption habits are trending 

toward very high bandwidth applications and content that can quickly consume the available 

capacity and degrade overall network service experience.” Id. at 1:50–58. Accordingly, the 

specification explains that “managing the wireless access connection capacity and network access 

connection resources is important to maintain network performance as network resources/capacity 

demand increases.” Id. at 10:5–8.

35. The ’541 Patent specifically identifies an issue in this context where, “if multiple 

and/or all devices allow all applications to indiscriminately access or attempt to access network 

resources or transmit/receive traffic, then the network can generally become overloaded.” Id. at 

10:35–43. This results in “poor network performance.” Id. at 10:43–51. Contributing to this issue 

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is the fact that “[d]evice OEMs have recently created wireless devices that are designed more like 

standard Internet devices and not fully optimized to preserve network capacity and resources”—

e.g. smartphones—which “are not as frugal or sparing with wireless network access bandwidth” 

as traditional wireless devices. Id. at 11:28–34.

36. The specification acknowledges that “[n]etwork carriers have typically attempted 

to manage network capacity using various purely central/core network based approaches.” Id. at 

15:52–56. The specification points out several purported limitations of these “[p]urely centralized 

network solutions with no assistance from a device based software agent.” See id. at 15:52–16:12. 

For instance, “for some device applications, OS functions or other service usage activities, if the 

activity is blocked somewhere in the network behind the base station after over the air (OTA) 

spectrum bandwidth is consumed to open or begin to open a communication socket, then there can 

still be an appreciable amount of network capacity or resources consumed even though the data 

transfer is not allowed to complete.” Id. Additionally, “purely centralized network solutions” may 

have “no mechanisms or support to link to a device user interface (UI) to inform the user what is 

happening and why it is happening.” Id. 

37. To purportedly address this issue, the ’541 Patent thus discloses “[u]sing Device 

Assisted Services (DAS) techniques, and in some cases, network assisted/based techniques, to 

provide for network service usage monitoring of devices.” Id. at 16:45–57. Specifically, the 

specification discloses means of “differentially controlling these types of network service usage 

activities in various ways depending on the type of service activity requesting network access 

and/or requesting transactions with network resources.” Id. at 15:13–18. For instance, the 

“differential” control of different “service usage activities,” such as applications on a wireless 

device, may involve “classifying one or more network service activities associated with an 

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application or OS function to a background service class, while other network service activities 

associated with that application or OS function are classified to other service classes (e.g., or to 

different background service class priority levels).” See id. at 18:39–55.

38. The claims of the ’541 Patent recite computer-readable storage media that include 

instructions for controlling data usage by applications on a wireless device. The ’541 Patent 

specifically discloses “differentially” controlling “service usage activities” based on its “type” 

when it “request[s] network access.” ’541 Patent at 15:13–18. A “service usage activity” 

comprises a “prospective or successful communication over a wireless network.” Id., cl. 1. This 

is accomplished through the use of a “policy” for “controlling the service usage activity” to 

“protect network capacity.” Id. at 18:8–19:58. This “policy” is applied to the “service usage 

activity” if that activity is determined to “comprise[] a background activity.” Id., cl. 1. 

39. Figure 14 discloses an illustrative embodiment of the steps recited in the 

independent claim of the ’541 Patent for controlling network usage by a particular “service usage 

activity.” Figure 14 is described in the ’541 Patent as “a flow diagram for device assisted services 

(DAS) for protecting network capacity in accordance with some embodiments.” 

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40. At steps 1404 and 1406, a “service usage activity,” such as a “wireless network 

communication,” is “monitor[ed]” and it is “determined” whether the “service usage activity” 

constitutes a “network capacity controlled service.” ’541 Patent at 69:5–38. At step 1410, if the 

“service usage activity” is determined to be a “network capacity controlled service,” it is 

“classified ... for differential network access control for protecting network capacity.” Id. At step 

1414, “differential traffic controls” are “implement[ed]” for the “service usage activity.” Id.

41. Figure 18 discloses a similar process “for device assisted services (DAS) for 

protecting network capacity.” Id. at 70:57–59. 

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42. Similar to Figure 14, a “network service usage activity” is “monitor[ed]” and 

subsequently “associate[ed] ... with a service usage control policy (e.g., a network capacity 

controlled services policy) based on a classification of the network service usage activity” at steps 

1804 and 1806 respectively. Id. at 70:60–71:1. In the embodiment of Figure 18, the classification 

results in “a user notification based on the service usage control policy.” Id. at 71:2–3. This 

notification may provide the user with information that the particular service usage activity is 

currently being differentially controlled, a warning that a particular service usage activity may 

exceed a user’s data limit if permitted, an option to “allow” or “block” the particular service usage 

activity, or other such options. See id. at 71:4–42.

B. Prosecution History of the ’541 Patent

43. I have reviewed the prosecution history of the ’541 Patent. 

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44. During the prosecution of the ’541 Patent, the Applicant first filed a pair of nonsubstantive preliminary amendments before the application was found subject to an 

election/restriction requirement. ’541 Patent FH, 8/17/2011 Remarks; 07/09/2012 Remarks; 

09/06/2012 OA. After the Applicant’s election, the Examiner found that all of the elected claims 

were not allowable. Specifically, the Examiner found that all claims were rendered obvious by 

U.S. Patent No. 7,228,354 (“Chambliss”). 12/26/2012 Non-Final Rejection at 3. The Applicant 

amended the claims in response, largely rewriting the independent claim 53 as follows: 

06/11/2013 Remarks. The claims were subsequently allowed. 

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C. Overview of the ’613 Patent

45. The ’613 Patent is titled “Wireless end-user device with differential traffic control 

policy list having limited user control.” It issued on December 15, 2015 from U.S. Application 

No. 14/685,511, filed April 13, 2015. 

46. The ’613 Patent is a continuation of the U.S. Application No. 14/082,040, which is 

a divisional of the ’541 Patent. Accordingly, the ’541 and ’613 Patents share an identical 

specification. Additionally, like the ’541 Patent, the ’613 Patent claims priority to many separate 

provisional and non-provisional applications, and I have been informed by Defendants’ counsel 

that Plaintiff asserts that all claims of the ’613 Patent have a priority date of January 28, 2009. For 

the purposes of preparing this declaration, I have been asked to assume that all claims of the ’613

Patent are, in fact, entitled to a priority date of January 28, 2009. 

47. The sole independent claim of the ’613 Patent recites a “wireless end-user device” 

which includes “non-transient memory” to store a “differential traffic control policy” and a 

“differential traffic control policy list.” ’613 Patent, cl. 1. A “processor” is then “configured” to, 

among other things, “classify a wireless network” and classify whether “a particular application ... 

is interacting with the user in the device user interface foreground.” Id. 

D. Prosecution History of the ’613 Patent

48. I have reviewed the prosecution history of the ’613 Patent. 

49. During the prosecution of the ’613 Patent, the Applicant filed a preliminary 

amendment and an additional non-substantive amendment following an Ex Parte Quayle action. 

04/14/2015 Preliminary Amendment; 08/24/2015 Response after Ex Parte Quayle action. The 

claims were subsequently allowed. 

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6. ANALYSIS OF CERTAIN DISPUTED CLAIM TERMS

A. “one or more prospective . . . communications [over a wireless network]”

(’541 Patent, Claim 1)

50. I have reviewed the parties’ proposed constructions for the term “one or more 

prospective ... communications [over a wireless network]” (the “prospective term”). I understand 

that Defendants propose that this term is indefinite, and I understand that Plaintiffs contend that 

this term is not indefinite and should be accorded its “plain and ordinary meaning.” 

51. I agree with Defendants that the prospective term is indefinite. As I discuss below, 

the prospective term is ambiguous and fails to inform a POSITA as to the scope of the claims 

because there is no indication as to what constitutes a “prospective” communication “over a 

wireless network.” 

52. Claim 1 (and all dependent claims) of the ’541 Patent recite that the “service usage 

activity compris[es] one or more prospective or successful communications over a wireless 

network.” ’541 Patent, cl. 1. This claim language establishes two possible types of a “service 

usage activity,” namely either a “prospective communication over a wireless network,” or a 

“successful communication over a wireless network.” 

53. In the context of claims and specification of the ’541 Patent, the scope of a 

“successful communication over a wireless network” is sufficiently clear to me. The specification 

explains that “a network service usage activity is any activity by the device that includes wireless 

network communication.” ’541 Patent at 19:8–10. It goes without saying that the purpose of a 

wireless network communication is to have information in that communication successfully travel 

over a wireless network to its intended destination—i.e. a “successful communication over a 

wireless network.” To this end, the specification discloses a large array of “[e]xamples of a 

network service usage activity” which uniformly refer to a “connection.” E.g. id. at 19:12–37

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(“Examples of a network service usage activity include the following: a voice connection (e.g., 

coded voice connection or voice over IP (VoIP) connection), a device application or widget 

connection, a device OS function connection, an email text connection, an email download 

connection, a file download connection, a streaming media connection, a location service 

connection, a map services connection ...”). 

54. The specification likewise consistently describes these “connections” as referring 

to the means for which a communication is delivered over a wireless network. For instance, the 

specification explains that “in wireless networks, managing the wireless access connection 

capacity and network access connection resources is important to maintain network performance 

as network resources/capacity demand increases.” ’541 Patent at 10:5–8. The specification also 

refers to “establishing, servicing, conducting, maintaining, and/or closing the necessary network 

service connections” that are “required to conduct a service activity.” Id. at 13:3–12. The reference 

to a “connection” implies that a communication pathway from the device, through the wireless 

network, and to the destination exists, meaning that this communication would be “successful.” 

55. By contrast, there is no guidance in the specification as to what constitutes a 

“prospective communication over a wireless network.” From my review, the term “prospective 

communication”—or even “prospective”—does not appear anywhere in the specification or 

prosecution history. 

56. Nor is there a single definition of what constitutes a “prospective communication” 

in the relevant field. As I discuss above, the ’541 Patent is broadly directed to “differential” control 

of certain attempts by applications or services on a device to access a wireless network. In the 

context of claim 1, these applications or services are referred to as “software component[s],” and 

a particular service usage activity may be “associated with a first software component.” ’541 

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Patent, cl. 1. Therefore, claim 1 presumptively refers to an instance where, e.g., an application 

(the “first software component”) sends a communication (the “service usage activity”) over the 

wireless network. However, based on my experience and given the lack of clarity in the claim 

language, there is no single point in this process in which I could identify a “prospective 

communication” to the exclusion of other possibilities. A POSITA would not know with 

reasonable certainty whether a communication should be considered “prospective” based on the 

perspective of the application, the device operating system, the device modem, the network, etc.

57. To illustrate through an example, a wireless device may include a media streaming 

application through which a user may access audio or video files that are either stored locally or 

obtained over the internet. If that application is capable of communicating over a wireless network 

to obtain media for streaming, that capability itself (even if not currently in use) could be 

considered a “prospective communication over a wireless network” because that application may 

perform a communication at some point in the future. Alternatively, it may be the case that an 

action by this application only becomes a “prospective communication” once a process within that 

application has determined that a communication over the wireless network must be made. This 

may be, for example, in an instance where a user has requested a media file which is not stored 

locally, and the application thus determines that the media must be retrieved from the Internet 

before it can be provided to the user. 

58. Additionally, it may be the case that this request only becomes a “prospective 

communication” when this application makes a request to the device operating system (“OS”) to 

access the wireless network. For instance, if it is necessary in a particular implementation for a 

particular application to request permission from the OS prior to access a wireless network prior 

to doing so, then a POSITA may understand this request to constitute a “prospective 

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communication.” Alternatively, a “prospective communication” may only exist when the 

application actually sends the content of the communication to the OS for routing over the wireless 

network itself. The ’541 Patent includes extensive disclosures regarding how particular “service 

usage activities” may be initiated but are subsequently “block[ed],” “throttled,” or otherwise not 

permitted to occur. E.g. ’541 Patent at 16:13–25; 19:38–58; 31:51–32:31. 

59. Finally, even if a communication from an application is sent over a wireless 

network, there is no guarantee that it would reach its destination and thus become a “successful 

communication over a wireless network.” For instance, the ’541 Patent acknowledges 

circumstances where “the activity is blocked somewhere in the network behind the base station” 

or are “controlled, blocked, throttled, and/or delayed by central network equipment.” Id. at 16:13–

19. But if this communication is not “successful,” the question remains whether the 

communication nonetheless only becomes a “prospective” communication once it is sent “over the 

wireless network.” 

60. Ultimately, the use of “prospective” in the claims introduces a term of degree for 

which a POSITA could attribute a wide array of meanings. Compounding this issue is the absence 

of any guidance in the specification regarding what constitutes a “prospective communication over 

a wireless network,” and specifically at what point a communication may be considered 

“prospective” or “successful.” 

61. Furthermore, nothing in the claim language itself provides a basis for distinguishing 

between a “communication,” a “prospective communication,” and a “successful communication.” 

In particular, claim 1 (from which all other claims depend) recites a determination that a service 

usage activity “comprises a background activity.” ’541 Patent, cl. 1. The “policy” recited in the 

claims is then only “applied if the service usage activity is the background activity.” Id. As I 

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discuss above, this is the fundamental purpose of the invention described in the ’541 Patent, 

namely to prevent certain “background activity” from accessing a wireless network in certain 

instances.

62. In my opinion, this raises the question of why the claims recite a “successful 

communication” at all. Presumptively, if a communication is “successful,” it has already been sent 

“over the wireless network” that and thus the “policy” (on the device) can have no impact on it 

whatsoever. The claims nonetheless appear to permit the situation where a “successful 

communication over a wireless network” nonetheless is somehow determined to be a “background 

activity” and have a “policy” applied to it. In many embodiments, the application of this policy 

would have the illogical result of the “successful communication over a wireless network” from 

being “block[ed]” from leaving the device at all. E.g. ’541 Patent at 32:21–31; 62:21–25; 71:27–

30. It is therefore unclear to me whether, in this circumstance that is clearly permitted by the 

claims, this “successful communication” would nonetheless be considered a “prospective 

communication.” 

63. It is therefore my opinion that “prospective communication ... over a wireless 

network” is indefinite. 

B. “background activity” (’541 Patent, Claim 1) / “classify whether a particular 

application capable of both interacting with the user in a user interface 

foreground of the device, and at least some Internet service activities when 

not interacting with the user in the device user interface foreground, is 

interacting with the user in the device user interface foreground” (’613 

Patent, Claim 1) / “the user of the device is directly interacting with that 

application or perceiving any benefit from that application” (’613 Patent, 

Claim 6)

64. I have reviewed the parties’ proposed constructions for the term “background 

activity” in the ’541 Patent and the terms “classify whether a particular application capable of both 

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interacting with the user in a user interface foreground of the device, and at least some Internet 

service activities when not interacting with the user in the device user interface foreground, is 

interacting with the user in the device user interface foreground” and “the user of the device is 

directly interacting with that application or perceiving any benefit from that application” in 

the ’613 Patent. 

65. I understand that Defendants propose that each of these terms is indefinite, and I 

understand that Plaintiffs contend that each of these terms should be accorded its “plain and 

ordinary meaning.” 

66. I agree with Defendants that each of these terms is indefinite. As I discuss below, 

each of these terms is ambiguous and fails to inform a POSITA as to the scope of the claims in 

those patents because there is no disclosure to reasonably establish what constitutes the 

“foreground” or the “background.” 

67. As I note above, the ’541 and ’613 Patents share an identical specification and 

the ’613 Patent is a continuation of a divisional application from the ’541 Patent. Accordingly, 

apart from the language of the claims themselves, the ’541 and ’613 Patents share identical 

disclosures regarding what is in the “background” and what is in the “foreground.” 

68. Wireless devices are capable of executing multiple user-facing (and other) 

applications simultaneously. Users of these devices may interact with these applications through 

various media, for instance through the touch-screen on current-generation mobile devices such as 

those manufactured by Apple, Google, and Samsung. 

69. However, while the ’541 and ’613 Patents recite “background” and “foreground,” 

the disclosures in those patents do not allow a POSITA to identify or differentiate between the two. 

To begin, the ’613 Patent claims specifically refer to the “user interface foreground of the 

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device.” ’613 Patent, cl. 1. Based on my experience, it is not clear to me whether this refers to 

the particular application, the OS, or the device hardware itself. For instance, user applications 

typically have an interface through which the user may interact with the application, such as to 

select a particular song on a media application. Additionally, the OS of the device will likewise 

have an interface through which a user may interact with, among other things, the various 

applications on the device, such as an interface to open or close applications or toggle between 

them. Finally, the device itself may not be understood to have an “interface” at all, given that a 

user cannot interact with the hardware device itself without the intermediary of some application 

or the device OS itself. 

70. This is not a trivial distinction, as a POSITA would understand the “foreground” of 

each of these three different types of “interface” to comprise different things. If the claim language 

refers to an application interface, then a POSITA may understand that the interface is the part of 

application that is currently visible to the user in the “foreground.” Alternatively, the OS interface 

of a device is functionally always in the “foreground” in the sense that a user is never inhibited 

from interacting with OS functionalities regardless of whether a particular application is currently 

in the foreground. 

71. Regardless, the ’541 Patent simply states that a service usage activity may 

constitute a “background activity.” The ’613 Patent provides somewhat more color by reciting an 

“application” that is capable of both (1) “interacting with the user in a user interface foreground of 

the device,” and (2) “at least some Internet service activities when not interacting with the user in 

the device user interface foreground.” In short, presuming that the claims refer to an application 

interface, an application is only in the “foreground” specifically when it is “interacting with the 

user.” 

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72. The specification provides some differentiation between “background” activities 

and other activities. The specification refers to a “background class” which is “generally used for 

lowest priority service usages (e.g., typically used for e-mail with and without 

downloads/attachments, application software updates, OS software updates, and/or other similar 

applications/functions).” ’541 Patent at 23:1–5; see also id. at 32:21–26 (“In some embodiments, 

higher QoS level traffic cannot be throttled in such circumstances, such as VOIP traffic where realtime guaranteed bit rate is important to meet user service needs or expectations, while lower 

priority traffic such as interactive browsing and/or background download are throttled and/or 

blocked.”).2 The specification further discloses “classifying network service activities associated 

with one or more applications or OS functions to a background service class and differentially 

controlling the background service class traffic.” Id. at 18:39–55. 

73. However, the specification provides essentially no explanation as to what 

constitutes a “foreground” activity. The sole reference to differentiation between “foreground” 

and “background” activities is disclosed in a single sentence in connection to Figure 27, which

states: 

The network service usage classification engine 2708 can categorize the 

traffic stored in the application behavior datastore 2706 based on, e.g., 

network type, time of day, connection cost, whether home or roaming, 

network busy state, QoS, and whether the particular service usage 

activity is in foreground of user interaction or in the background of 

user interaction, or other characteristics that are obtained from network 

service usage analysis or through other means.

’541 Patent at 107:49–57. The only other references to “foreground” in the specification provide 

no further clarity at all. See id. at 78:32–35 (“In some embodiments, DAS for protecting network 

capacity includes differentially accounting and/or differentially charging for network capacity 

2 Because the ’541 and ’613 Patents share a specification, I cite to the ’541 Patent specification throughout this section 

for ease of reference. 

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controlled services and foreground services.”); 96:17–22 (“In some embodiments, the network 

capacity controlled services list includes network capacity controlled services, non-network 

capacity controlled services (e.g., foreground services or services based on various possibly 

dynamic criteria are not classified as network capacity controlled services.)”). Based on these 

scant disclosures, I am unable to even infer the boundaries of the “foreground” (or “background”) 

as that term is used in the claims. 

74. Compounding this confusion, claim 6 of the ’613 Patent recites that “the particular 

application is interacting with the user in the device user interface foreground when the user of 

the device is directly interacting with that application or perceiving any benefit from that 

application.” ’613 Patent, cl. 6. I have been informed that, through a doctrine called claim 

differentiation, independent claims are assumed to have a broader scope than the dependent claims. 

However, the scope of claim 6 would eclipse everything a POSITA would understand to comprise 

“interacting with the user” as it is recited in independent claim 1. For instance, this suggests there 

is some other way a user can be indirectly interacting with an application without the user 

perceiving a benefit from that application. But there is no guidance on what that could be, and a 

POSITA would not know with reasonable certainty the bounds of “interacting with the user” as 

recited in independent claim 1.

75. Indeed, one of the few disclosures in the specification that actually distinguishes 

between foreground and background interaction (albeit implicitly) still refers to the user “directly 

interacting” with the application: “For example, even when the user is not directly interacting with 

or benefiting from this type of application, the application can be running in the background and 

continuing to consume potentially significant network resources.” ’541 Patent at 14:47–51. 

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76. Likewise, except for the “background class” I discuss above, all other “classes” of 

applications similarly require direct interaction with the user. The specification defines a 

“conversational class” of applications which “is typically used for Voice Over IP (VOIP) and video 

telephony, in which users of such services benefit from the short delay features of the 

conversational class.” Id. at 22:50–56. The “conversation class” plainly requires direct user 

interaction, i.e. a user speaking over the VOIP or video connection. The specification also defines 

an “interactive class” of applications which “is generally intended for traffic that allows delay 

variation while requiring reasonably low response time (e.g., web browsing or other applications 

in which the channel can be unused for long periods of time but when a user makes a request for 

a new page/data, the response time should be reasonably low).” Id. at 22:56–63. Likewise, the 

“interactive class” also requires direct user interaction because the “user makes a request for a new 

page/data.” Id. at 22:63–23:1. 

77. Put simply, there is nothing left to be captured by the “user interaction” recited in 

claim 1 of the ’613 Patent given what is recited by claim 6. Claim 6 already captures any 

circumstance where a user is “directly interacting” with an application, which is in the abstract the 

scope I would accord to “interacting with the user” as that phrase is used in claim 1. 

78. Additionally, however, Claim 6 also includes, in the scope of “interacting with the 

user,” any instance where the user is “perceiving any benefit” from a given application. In my 

opinion, this exceeds the scope I would accord even to “interacting with the user in the user device 

interface foreground” as that phrase is used in claim 1. This is because there are instances where 

a user may perceive a benefit from the application that is not in the “foreground” under any 

reasonable definition of that term. For instance, if a user is currently playing a song from a media 

application on their device, but the user has toggled that application to the “background” and is 

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currently checking their email inbox on the screen of their device, that user is undoubtedly 

“perceiving a benefit” (the song) from that application while it is in the background. 

79. Accordingly, the scope of claim 6 further prevents me from determining the 

boundaries of claim 1 for the additional reason that the scope of claim 6 appears to exceed any 

reasonable scope of the term “interacting with the user in the device user interface foreground” in 

claim 1, from which claim 6 depends. 

80. Thus, the claim language read in light of the specification fails to inform a POSITA 

with reasonable certainty about the scope of “interacting with the user” as recited in claim 1. In 

light of the apparent scope of claim 6 of the ’613 Patent, it is my opinion that the element of claim 

1 that recites “classify whether a particular application capable of both interacting with the user in 

a user interface foreground of the device, and at least some Internet service activities when not 

interacting with the user in the device user interface foreground, is interacting with the user in the 

device user interface foreground” is indefinite. 

81. For the same reason, the “background activity” recited in claim 1 of the ’541 Patent 

is also, in my opinion, indefinite. The ’541 and ’613 Patents share a specification and thus share 

the same disclosures defining the difference between the “foreground” and the “background.” 

Because a POSITA would not be able to determine what constitutes a “foreground” activity in light 

of these disclosures, neither would a POSITA be able to determine what constitutes a “background 

activity.” 

82. Finally, claim 6 of the ’613 Patent is, in my opinion, indefinite because it relies on 

a user’s subjective experience. Specifically, each of the three “classes” of application I discuss 

above—i.e. the “conversational class,” “interactive class,” and “background class”—all plainly 

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provide a “benefit” to the user. For instance, the specification discloses that the “background class” 

includes “email,” which is undoubtedly a benefit to a user of the wireless device. 

83. However, I am unable to determine the scope of “perceives any benefit” as recited 

in claim 6 because it relies on a user’s own perception of the benefits that each of these “classes” 

of applications provides, and neither the claim language nor the specification provide guidance on 

what the boundaries of a “benefit” entails. A POSITA would not know with reasonable certainty 

the boundaries of what a “benefit” entails to a user nor how to determine when a user “perceives” 

that benefit. For instance, it is not clear to me whether a user “perceives any benefit” from an 

update to their email application (a “background class” activity) if the user has not yet checked 

their updated inbox for any new emails. Likewise, it is not clear to me whether a user “perceives 

any benefit” from a VOIP call during a time when the user has walked away from their device to 

answer their front door. Put simply, whether a user “perceives” “any benefit” from a particular 

application on their device is determined wholly by their own subjective awareness of and actions 

on that device. 

84. Therefore, it is my opinion that claim 6 of the ’613 Patent, which recites that “the 

user of the device is directly interacting with that application or perceiving any benefit from that 

application,” is indefinite. 

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85. This declaration and my opinions herein are made to the best of my knowledge and

understanding, and based on the material available to me, at the time of signing this declaration. I

reserve the right to amend or supplement my opinions based on new information, including any

claim construction arguments or expert opinions that Headwater offers in this case and/or any other

information I deem relevant to my analysis. I declare under penalty of perjury that the foregoing

is true and correct.

Executed this 11th day of September, 2024 in Vancouver, BC.

_____________________

Don Turnbull, Ph.D. 

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