UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

LLC AND AT&T CORP.,

Defendants.

Case No. 2:23-cv-00397-JRG-RSP

LEAD CASE

JURY TRIAL DEMANDED

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

LLC AND AT&T CORP.,

Defendants.

Case No. 2:23-cv-00398-JRG-RSP

JURY TRIAL DEMANDED

PLAINTIFF HEADWATER RESEARCH LLC’S OPPOSITION TO 

DEFENDANTS’ MOTION TO FOCUS PATENT CLAIMS

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TABLE OF CONTENTS

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

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

III. ARGUMENT......................................................................................................................... 3

IV. CONCLUSION...................................................................................................................... 8

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TABLE OF AUTHORITIES

Cases

Allergan, Inc. v. Teva Pharms. USA, 

No. 2:15-CV-1455-WCB, 2017 WL 373462 (E.D. Tex. Jan. 26, 2017)............................ 4, 5, 6

CogniPower LLC v. Samsung Electronics Co., Ltd.,

No. 2:23-CV-00160-JRG Dkt. 62 (E.D. Tex. Oct. 6, 2023)...................................................... 4

Hy-Ko Products Co. LLC v. The Hillman Group, Inc., 

No. 2:21-cv-00197-JRG, Dkt. 61 (E.D. Tex. Dec. 9, 2021)....................................................... 6

In re Katz, 

639 F.3d 1303 (Fed. Cir. 2011)............................................................................................... 1, 4

Intellectual Ventures II LLC v. FedEx Corp., 

No. 2:16-CV-00980-JRG, Dkt. 206 (E.D Tex. Dec. 22, 2017) .................................................. 5

TQ Delta, LLC v. CommScope Holding Company, Inc.,

No. 2:21-cv-00310-JRG, Dkt. 128 (E.D. Tex. May 2, 2022).................................................... 6

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I. INTRODUCTION

AT&T’s motion to focus patent claims is premature and should be denied. AT&T requests 

the Court to “immediately require Headwater to limit its assertions to 32 claims across all patents, 

and no more than 10 claims from any individual patent, in accordance with the parameters of the 

Model Order.” Mot. at 2. But the Court’s Model Order does not require a reduction until “the date 

set for completion of claim construction discovery,” which in this case is several months away in 

October 2024. The trial is more than a year away in June 2025. Forcing Headwater to drastically 

reduce the number of asserted claims so early in the case, where little discovery has occurred and 

where Headwater has not had sufficient opportunity to determine which of its asserted claims will 

be impacted by AT&T’s non-infringement and invalidity positions, is highly prejudicial to 

Headwater’s patent rights and contrary to Federal Circuit law, which mandates that “claim 

reduction should not be ordered ‘too early in the discovery process.’” In re Katz, 639 F.3d 1303, 

1309 (Fed. Cir. 2011).

While Headwater is certainly amenable to reducing the number of asserted claims and prior 

art in this case—and proposed such a mutual reduction to AT&T months ago—AT&T’s request 

is unreasonable given the stage of the case. The motion should be denied.

II. BACKGROUND

Headwater filed the complaints in these consolidated cases in September 2023. There are 

four total asserted patents, each of which generally relate to wireless communications technology. 

The complaints identify the accused AT&T products as mobile electronic devices, including 

mobile phones and tablets, as well as well as cellular networks, servers, and services. -397 case, 

Dkt. 1 ¶ 15; -398 case, Dkt. 1 ¶ 15.

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On November 20, 2023, Headwater served its preliminary infringement contentions 

identifying the asserted claims and accused instrumentalities. Dkt. 53-2. Headwater identified 281 

claims across the four asserted patents (averaging approximately 70 claims per patent). Id. And 

while Headwater specifically identified several different models of accused instrumentalities, they 

all fall into the same general categories of mobile phones, tablets, laptops, wearables, and hotspot 

devices that utilize Apple or Android software implementing the patented wireless 

communications technology. See id. AT&T served invalidity contentions on February 2, 2024. 

AT&T first initiated conversation regarding Headwater narrowing its asserted claims in 

December 2023. Given the nascent stage of the case, Headwater simply informed AT&T that it 

would “start the case narrowing conversation early next year [2024].” Dkt. 53-4 (emphasis 

added). On January 12, 2024, AT&T sent a proposal whereby Headwater would narrow its claims 

to “no more than ten claims from each patent and not more than a total of 32 claims, 30 days after 

AT&T serves its Initial Invalidity Contentions.” Dkt. 53-5 at 1. Under AT&T’s proposal, 

Headwater would serve a final election of asserted claims “no more than five asserted claims per 

patent ... and no more than a total of 16 claims no later than 28 days before the service of expert 

reports.” Id. at 1. 

Headwater responded soon thereafter with a counterproposal, offering a multi-stage mutual 

narrowing process with the first milestone being Headwater narrowing to no more than 128 total 

claims by 14 days after submission of the Joint Claim Construction Statement (i.e., by September 

27, 2024). Dkt. 53-8. In other words, Headwater’s proposed compromise offered a reduction in 

the number of asserted claims by over 50% (from 281 to 128, across all four asserted patents) to 

be made nearly six weeks before the November 6, 2024 deadline for AT&T’s responsive claim 

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construction brief. Notably, AT&T did not respond to Headwater’s proposed compromise, with a 

counter-offer or otherwise, before filing its motion. 

Headwater was and continues to be amenable to narrowing the asserted claims in this case

before the DCO’s built-in deadline for claim narrowing and as part of the natural narrowing of 

claims and defenses over time. But AT&T’s proposal was premature and unreasonable relative to 

the stage of the case. At that point, the Court had only recently entered a docket control order, and 

parties had conducted almost no discovery. The same remains true today. Neither party has even 

noticed any depositions. Claim construction is several months away. The parties are not due to 

exchange proposed claim terms until August 2, 2024; the deadline to complete claim construction 

discovery is October 7, 2024; and the Markman hearing is scheduled for December 6, 2024. Dkt. 

41. 

The fact discovery deadline is January 10, 2025. Opening expert reports are due on January 

15, 2025. Dispositive motions are due in February 2025. And the jury trial is set for June 2, 2025—

more than a year from now. Id. Again, Headwater remains amenable to significantly narrowing its 

case well before the DCO’s built-in deadline for claim narrowing (such as in accordance with its 

counterproposal outlined on page 4 of AT&T’s motion), but not under the extreme schedule 

proposed by AT&T.

III. ARGUMENT

AT&T’s proposal for the narrowing of asserted patent claims in this case is premature and 

should be denied. While the Court is within its discretion to limit the number of claims to be tried 

in this case, the Federal Circuit has made clear that “claim reduction should not be ordered ‘too 

early in the discovery process’ because doing so would deny the patentee ‘the opportunity to 

determine whether particular claims might raise separate issues of infringement or invalidity in 

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light of the defendants’ accused products and proposed defenses.’” Allergan, Inc. v. Teva Pharms. 

USA, No. 2:15-CV-1455-WCB, 2017 WL 373462, at *2 (E.D. Tex. Jan. 26, 2017) (quoting In re 

Katz, 639 F.3d 1303, 1309 (Fed. Cir. 2011)) (emphasis added). “A court must exercise the 

authority to order a reduction in the number of asserted claims with care not to prejudice the 

patentee, particularly in light of the fact that each of the claims of a patent embodies a property 

right.” Id.

For example, in CogniPower LLC v. Samsung Electronics Co., Ltd., No. 2:23-CV-00160-

JRG, Samsung filed a Motion for Entry of a Claim Focusing Order requesting that the Court enter 

its Model Patent Order “due to the expansive nature of the case,” wherein plaintiff asserted 193 

claims across five patents. CogniPower, Dkt. 62 at 1 (E.D. Tex. Oct. 6, 2023). The Court denied 

the motion as “premature” because Samsung had “not yet produced adequate discovery” to allow 

plaintiff the “opportunity to determine which of its 193 asserted claims may raise separate issues 

of infringement and invalidity.” Id. at 1–2.

The same reasoning applies here. It is far too early in the case to require Headwater to 

narrow its claims as drastically as AT&T proposes. There is still nine months of fact discovery 

left. Claim construction discovery closes in October, and the Markman hearing is on December 6, 

2024—more than seven months away. While it is true that, unlike in CogniPower, AT&T has 

served its invalidity contentions, there still has not been sufficient discovery to allow Headwater 

to determine which of its asserted claims will be impacted by AT&T’s noninfringement and 

invalidity positions. AT&T’s demand that Headwater “drop to 32 claims immediately” (Mot. at 

10) is unreasonable and would severely prejudice Headwater’s patent rights. The Court’s Model 

Order does not even contemplate such drastic narrowing so early in the case. Under the Model 

Order, the patentee is to narrow its case to no more than 32 claims “[b]y the date set for completion 

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of claim construction discovery.” Model Order Focusing Patent Claims and Prior Art ¶ 2. The 

claim construction discovery deadline is still nearly six months away. 

AT&T attempts to justify this departure from the Court’s Model Order by arguing that “the 

Markman hearing is set to occur very late in the case schedule—i.e., more than 90% of the way 

through the fact discovery window.” Mot. at 7. This makes no sense. Contrary to AT&T’s

suggestions, there is nothing unusual about the schedule in this case. The Court’s DCO adopts the 

schedule that was jointly proposed by both parties and tracks closely with the Court’s Sample 

Docket Control Order for Patent Cases.1 Dkt. 38-1, Dkt. 41. The Model Order Focusing Patent 

Claims and Prior Art is also consistent with the Federal Circuit’s mandate that “claim reduction 

should not be ordered too early in the discovery process.” Katz, 639 F.3d at 1309. Thus, AT&T’s 

assertion that it is entitled to claim reduction early in the fact discovery period is contrary to law. 

Indeed, in Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-JRG, the Court denied 

the defendants’ Motion for Entry of a Model Order Focusing Patent Claims at an even later stage 

of the case, after claim construction was already complete and fact discovery was “essentially 

closed.” Intellectual Ventures, Dkt. 206 at 3 (E.D. Tex. Dec. 22, 2017). Though the case “span[ned]

five patents, numerous claims, and at least two-dozen products,” the Court explained that “[b]oth 

of these events will only accelerate the natural narrowing of claims that occurs at this stage of the 

trial process.” Id. Accordingly, Headwater should not be forced to drop its property rights in its 

patent claims before it has had an opportunity conduct a sufficient investigation into those claims.

None of the cases cited by AT&T support its proposal. For example, in Allergan, the Court 

denied the defendants’ Motion to Limit the Number of Asserted Patent Claims and approved the 

1https://www.txed.uscourts.gov/sites/default/files/judgeFiles/Patent%20Model%20Docket%20C

ontrol%20Order_Updated.docx. 

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plaintiff’s proposal to reduce the number of asserted claims to 25 one week after receiving the 

defendants’ final non-infringement and invalidity contentions, and to 15 asserted claims within 

two weeks of the close of expert discovery. Allergan, 2017 WL 373462, at *1. The Court’s order 

also came after claim construction was already completed.2 AT&T seeks a similar reduction much 

earlier in the case, well before claim construction has even begun. In TQ Delta, the Court ordered 

claim narrowing after the claim construction proceedings had begun. TQ Delta, LLC v. 

CommScope Holding Company, Inc., No. 2:21-cv-00310-JRG, Dkt. 128 (E.D. Tex. May 2, 2022). 

In Hy-Ko, the Court granted the defendant’s motion to implement the Court’s Model Order 

Focusing Patent Claims and Prior Art, which required plaintiff to reduce to no more than 32 claims 

“[b]y the date set for completion of claim construction discovery.” Hy-Ko Products Co. LLC v. 

The Hillman Group, Inc., No. 2:21-cv-00197-JRG, Dkt. 61 (E.D. Tex. Dec. 9, 2021). And the 

Oasis and Round Rock cases were both decided by Judge Mazzant and in conjunction with orders 

granting the plaintiffs’ Motion to Compel Non-Infringement Contentions from Defendants. 

AT&T’s cited cases are thus easily distinguishable.

AT&T also complains about purported deficiencies in Headwater’sinterrogatory responses

and infringement contentions, which purportedly “do not provide Defendants with sufficient 

information to understand the specific accused features and components and Headwater’s theories 

for numerous limitations in each patent.” Mot. at 7–8. Headwater disagrees and believes that its 

responses and contentions comply with all applicable rules. But to the extent that AT&T truly 

believes that the Headwater’s responses and contentions are deficient and is unable to understand 

Headwater’s infringement theories, the proper course of action would be to meet and confer and 

2 In Allergan, the Court issued its claim construction order on December 13, 2016 (Dkt. 214), and 

the order regarding the reduction of patent claims on January 26, 2017.

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then ultimately file a motion to compel—not force Headwater to drop nearly 90% of asserted 

claims at the outset of discovery.

AT&T’s assertion that discovery will be unduly burdensome due to the high number of 

asserted claims and accused products also fails. AT&T readily admits that “[f]or most of the 

asserted claims, Headwater’s infringement charts simply reference other similar claims such that 

in substance Headwater’s theories almost entirely overlap,” and that “[f]or more than 200 of the 

Asserted Claims, Headwater’s contentions make no unique allegations of infringement.” Mot. at 

3, 8. In other words, discovery will overlap for more than 70% of the asserted claims. AT&T also 

fails to mention that the vast majority of accused products are simply variations of the same 

phones, tablets, laptops, wearables, and hotspot devices that utilize Apple or Android software 

implementing the patented wireless communications technology. For example, some of the 

accused products include the iPhone 5C, iPhone 5S, iPhone 6, iPhone 6 Plus, iPhone 6S, etc. The 

discovery for these lines of products will also overlap significantly. And regardless, dropping the 

number of asserted claims will have little if any impact on the number of accused products that the 

parties will have to investigate in discovery. 

Finally, AT&T’s assertion that “that the asserted patents are uniquely unwieldy—e.g., the 

claims of U.S. Patent No. 8,589,541 alone make up more than 8,000 words, while its specification 

spans over 125 columns, nearly seven of which are directed to the incorporation by reference of 

allegedly related patent applications and publications” (Mot. at 1) is nonsensical. AT&T fails to 

explain how the number of words and columns in the specification bears any relation to the number 

of asserted claims—because they do not. 

To be clear, Headwater has every intention of significantly reducing the number of asserted 

claims as the case progresses, including before claim construction and opening expert reports are 

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due. And while Headwater remains amenable to continuing its discussions with AT&T regarding 

a meaningful reduction in asserted claims and prior art, AT&T’s current proposal is unreasonable

and premature given the current stage of the case. The fact that Headwater has filed similar claims 

against similar products in other cases is inconsequential. Those cases are similarly situated, as the 

parties have conducted little discovery and claim construction likewise has not begun.3

IV. CONCLUSION

For the foregoing reasons, AT&T’s motion should be denied. If the Court is inclined to 

order case narrowing at this time, Headwater respectfully requests that its counterproposal offered 

to AT&T in February 2024 (see Dkt. 53-8) be ordered, rather than AT&T’s request.

Dated: April 25, 2024 Respectfully submitted,

 /s/ Marc Fenster

Marc Fenster

CA State Bar No. 181067

Email: mfenster@raklaw.com

Reza Mirzaie

CA State Bar No. 246953

Email: rmirzaie@raklaw.com

Brian Ledahl

CA State Bar No. 186579

Email: bledahl@raklaw.com

Ben Wang

CA State Bar No. 228712

Email: bwang@raklaw.com

Dale Chang

CA State Bar No. 248657

Email: dchang@raklaw.com

Paul Kroeger

CA State Bar No. 229074

Email: pkroeger@raklaw.com

Neil A. Rubin

CA State Bar No. 250761

3 For example, in Case No. 23-cv-00352, the claim construction hearing is set for November 19, 

2024—less than three weeks before the claim construction hearing in this case. The claim 

construction hearing in the T-Mobile cases is not much earlier on November 1, 2024.

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Email: nrubin@raklaw.com

Kristopher Davis

CA State Bar No. 329627

Email: kdavis@raklaw.com

James S. Tsuei

CA State Bar No. 285530

Email: jtsuei@raklaw.com

Philip Wang

CA State Bar No. 262239

Email: pwang@raklaw.com

Amy Hayden

CA State Bar No. 287026

Email: ahayden@raklaw.com

Jason M. Wietholter

CA State Bar No. 337139

Email: jwietholter@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Telephone: 310-826-7474

Attorneys for Plaintiff Headwater 

Research LLC

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CERTIFICATE OF SERVICE

I hereby certify that on April 25, 2024, I electronically filed the foregoing document with 

the Clerk of the Court for the Eastern District of Texas using the ECF System which will send 

notification to the registered participants of the ECF System as listed on the Court’s Notice of 

Electronic Filing.

/s/ Marc Fenster

Marc Fenster

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