UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

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

LEAD CASE

JURY TRIAL DEMANDED

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

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

JURY TRIAL DEMANDED

PLAINTIFF HEADWATER RESEARCH LLC’S OPPOSITION TO 

DEFENDANTS’ MOTION FOR ENTRY OF AN ORDER FOCUSING

PATENT CLAIMS AND PRIOR ART

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TABLE OF CONTENTS

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

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

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

A. T-Mobile’s Proposal Is Unreasonable and Unwarranted by the Facts of the Case ...... 4

B. Headwater’s Cases Against Samsung, Which Involve Different Patents and Different 

Accused Products, Do Not Support T-Mobile’s Proposal for Claim Reduction.......... 8

C. T-Mobile’s Proposal Is Contrary to This Court’s Model Order and Federal Circuit 

Precedent....................................................................................................................... 8

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

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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).................................... 5

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

No. 2:23-CV-00160-JRG, Dkt. 62 (E.D. Tex. Oct. 6, 2023)...................................................... 5

In re Katz,

639 F.3d 1303 (Fed. Cir. 2011).......................................................................................... 1, 5, 9

Intellectual Ventures II LLC v. FedEx Corp., 

No. 2:16-CV-00980-JRG, Dkt. 206 (E.D. Tex. Dec. 22, 2017) ................................................. 9

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I. INTRODUCTION

T-Mobile’s request for an order focusing patent claims is unreasonable and should be 

denied. Under T-Mobile’s proposal, “Headwater shall immediately serve a Preliminary Election 

of Asserted Claims which shall assert no more than 10 claims from each patent and not more than 

a total of 32 claims” Mot. at 2. According to T-Mobile, its proposal is merely a “modified version 

of the Court’s Model Order.” Id. at 7. 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 September 2024. The trial is a year away in May 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 T-Mobile’s non-infringement and invalidity positions, is 

highly prejudicial to Headwater’s patent rights and contrary to Federal Circuit law, which provides

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 T-Mobile months ago—T-Mobile’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 August 2023. There are four 

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

complaints identify the accused products as mobile electronic devices, including mobile phones 

and tablets, as well as well as cellular networks, servers, and services. -379 case, Dkt. 1; -377 case, 

Dkt. 1.

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

identifying the asserted claims and accused instrumentalities. Dkt. 58-1. 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. 

On March 19, 2024, Headwater served amended infringement contentions to address 

certain concerns raised by T-Mobile. Dkt. 59-1; Dkt. 56 (Motion to Amend Infringement 

Contentions). At T-Mobile’s request, Headwater provided six different charts for the ’541 patent 

to separately address Samsung, Apple, Motorola, Google, Nokia, and T-Mobile products. 

Headwater did the same for the ’613 patent. In total, Headwater provided 14 detailed claim charts 

for the four asserted patents. 

T-Mobile served invalidity contentions on January 16, 2024. On February 5, 2024, TMobile met and conferred with Headwater regarding amending their invalidity contentions to add 

new prior art references. T-Mobile filed an unopposed motion to amend its contentions on March 

4, 2024 (Dkt. 52), which the Court granted on April 4, 2024 (Dkt. 55).

On February 2, 2024, T-Mobile sent a letter to Headwater with a proposal for narrowing 

the asserted claims and prior art. Dkt. 58-2. T-Mobile proposed, inter alia, that “[b]y February 23, 

2024, Headwater shall serve a Preliminary Election of Asserted Claims which shall assert no more 

than ten claims from each patent and not more than a total of 32 claims.” Id. at 2. Under T-Mobile’s 

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

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

of expert reports. Id.

The parties had conducted essentially zero discovery at that point aside from exchanging 

initial disclosures. After meeting and conferring telephonically, Headwater sent 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 August 23, 2024). Dkt. 58-3 at 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 six weeks before the October 4, 2024 deadline 

for T-Mobile’s responsive claim construction brief. 

The parties continued to meet and confer, and in an effort to further compromise, 

Headwater sent another proposal for claim narrowing on February 22, 2024. Dkt. 58-3 at 3. Under 

that proposal, Headwater would narrow to no more than 192 total claims across all patents no later 

than 21 days before the parties’ exchange of proposed terms for claim construction (i.e., by June 

7, 2024). Headwater would narrow to no more than 128 total claims no later than 14 days after 

submission of the parties’ Joint Claim Construction Statement (i.e., by August 23, 2024), and no 

more than 64 total claims no later than 28 days before the service of opening expert reports (i.e., 

by November 21, 2024). Id.

On March 1, 2024, T-Mobile responded with a counterproposal under which Headwater 

would serve a First Election of Asserted Claims identifying no more than 24 asserted claims per 

patent and no more than 96 claims across all patents by March 15, 2024, and a Final Election of 

Asserted Claims identifying no more than five asserted claims per patent and no more than a total 

of 16 claims across all patents no later than 28 days before the service of opening expert reports. 

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Id. at 2. Given the early stage of the case, Headwater declined T-Mobile’s proposal, but reiterated 

its “agree[ment] that the parties should work together throughout the case to narrow issues for 

trial.” Id. T-Mobile filed the instant motion requesting entry of an order focusing patent claims and 

prior art nearly two months later.

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

before the DCO’s built-in deadline for plaintiff to disclose its final election of asserted claims (set 

for 10 days before jury selection) and as part of the natural narrowing of claims and defenses over 

time. But T-Mobile’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 the 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 deadline to complete claim 

construction discovery is September 6, 2024, and the Markman hearing is scheduled for November

1, 2024. Dkt. 42. 

The fact discovery deadline is December 13, 2024. Opening expert reports are due on 

December 19, 2024. Dispositive motions are due in February 2025. And the jury trial is a year out, 

currently set for May 19, 2025. 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 provided on February 22 (Dkt. 58-3 at 3)), but not under the extreme schedule 

proposed by T-Mobile. 

III. ARGUMENT

A. T-Mobile’s Proposal Is Unreasonable and Unwarranted by the Facts of 

the Case

T-Mobile’s proposal for the narrowing of asserted patent claims in this case is unreasonable 

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

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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 

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 T-Mobile proposes. There is still seven months of fact discovery 

left. Claim construction discovery closes in September, and the Markman hearing is on November

1, 2024—nearly six months away. While it is true that, unlike in CogniPower, T-Mobile has served 

its invalidity contentions (which they recently amended to add additional prior art references), 

there still has not been sufficient discovery to allow Headwater to determine which of its asserted 

claims will be impacted by T-Mobile’s noninfringement and invalidity positions. T-Mobile’s 

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demand that Headwater drop to 32 claims immediately (Mot. at 7) 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 of claim construction discovery.” 

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

is not for another four months.

T-Mobile’s assertion that it will be “severely prejudiced in its ability to conduct discovery 

and investigate its defenses” due to the number of asserted claims and accused products (Mot. at 

4) fails. Indeed, T-Mobile also contends that “for more than 200 of the Asserted Claims, 

Headwater’s Infringement Contentions contain no unique allegations of infringement.” Id. Thus, 

by T-Mobile’s own admission, discovery will overlap for more than 70% of the asserted claims. 

T-Mobile 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. In fact, when T-Mobile 

initially complained about Headwater’s first set of infringement contentions, T-Mobile requested 

that Headwater provide separate claim charts for each manufacturer (e.g., Apple, Samsung, 

Google, etc.)—not for each individual product model—showing that T-Mobile recognizes this 

overlap and further undermining T-Mobile’s complaints about its discovery burden. 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. 

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T-Mobile’s assertion that the patents in this case present “uncommon complexity” simply 

because an asserted patent has a lengthy specification of “over 125 columns” and incorporates 

other patents (Mot. at 4) is nonsensical. T-Mobile fails to explain how the number of columns in 

the specification bears any relation to the number of asserted claims—because it does not. 

T-Mobile also complains about purported deficiencies in Headwater’s discovery responses 

and infringement contentions, “leaving T-Mobile without guidance regarding Headwater’s 

infringement theories to direct discovery.” Mot. at 4. Headwater disagrees and believes that its 

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

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

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

confer and then, if needed, file a motion to compel—not force Headwater to drop nearly 90% of 

asserted claims at the outset of discovery.

Finally, T-Mobile’s claim that it will have the “onerous task of briefing claim construction 

across over 200 claims across just 30 pages” (Mot. at 5) is simply not true. Under Headwater’s 

most recent proposal, Headwater would narrow to no more than 192 total claims across all patents 

no later than 21 days before the parties’ exchange of proposed terms for claim construction, and 

to no more than 128 total claims no later than 14 days after submission of the parties’ Joint Claim 

Construction Statement—a reduction of over 50% six weeks before the deadline for T-Mobile’s 

responsive claim construction brief. T-Mobile rejected this proposal. Further, T-Mobile has 

provided no indication that it actually intends to propose constructions for terms from every single 

asserted claim, which is highly unlikely. In the event that the number of proposed terms becomes 

too unwieldy for 30 pages of briefing, the parties can meet and confer to address those concerns. 

There is no legal basis for forcing Headwater to drop down to 32 claims before the parties even 

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exchange proposed claim terms. The Model Order does not require such a reduction until after 

claim construction discovery is complete.

B. Headwater’s Cases Against Samsung, Which Involve Different Patents 

and Different Accused Products, Do Not Support T-Mobile’s Proposal 

for Claim Reduction

T-Mobile’s argument that Headwater is “better positioned than the typical plaintiff” to 

engage in claim narrowing now because it has been litigating related patents against Samsung 

since October 2022 (Mot. at 5–6) is without merit. The Samsung cases involve different patents

and different products. For example, in Case No. 23-cv-103, Headwater accuses various Samsung 

Galaxy and television products which implement Samsung Knox, Tizen, and/or push messaging 

functionality not at issue here. And in Case No. 22-cv-422, Headwater accuses various Samsung 

Galaxy products of infringing patents not asserted here. No Apple, Motorola, Google, Nokia, or 

T-Mobile products are accused in the Samsung cases. While there may be some general overlap 

in certain subject matter and some common accused Samsung products, this minimal overlap does 

not somehow justify early claim reduction here. The Samsung cases do not provide any insight 

into T-Mobile’s noninfringement and invalidity positions for the asserted patents in this case.

C. T-Mobile’s Proposal Is Contrary to This Court’s Model Order and 

Federal Circuit Precedent

T-Mobile’s assertion that its proposal is simply a “modified version of the Court’s Model 

Order” (Mot. at 7) is a gross exaggeration. As discussed above, the Model Order provides for the 

first phase of claim reduction to occur after claim construction discovery. T-Mobile demanded the 

same reduction back in February—many months before the close of claim construction discovery, 

and before the parties even exchange proposed claim terms. T-Mobile provides no authority to 

support such drastic claim reduction at this stage of the case. In addition, the Model Order 

specifically mandates that any “proposed modifications” to its terms must be submitted “by the 

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deadline for submission of proposed docket control or discovery orders, but in no event later than 

the deadline for service of initial disclosures.” T-Mobile’s request to modify the Model Order is 

therefore untimely.

T-Mobile’s suggestion that the Model Order provides for claim reduction too late into fact 

discovery makes no sense, as 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 is nearly identical to the 

Court’s Sample Docket Control Order for Patent Cases.1 Dkt. 40-1. Thus, the schedule in this case 

is consistent with the timing for claim reduction contemplated by the Court’s Model Order. TMobile’s assertion that it is entitled to claim reduction early in the fact discovery period is thus 

contrary to law. Katz, 639 F.3d at 1309 (“claim reduction should not be ordered too early in the 

discovery process”). 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. 

Headwater’s counterproposal for narrowing the asserted claims and prior art is more than 

reasonable and provides for more than 50% reduction in asserted claims well before T-Mobile’s 

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

ontrol%20Order_Updated.docx. 

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responsive claim construction brief is due. The asserted claims will continue to narrow naturally 

as fact discovery and claim construction progresses. And while Headwater remains amenable to 

continuing its discussions with T-Mobile regarding a meaningful reduction in asserted claims and 

prior art, T-Mobile’s current proposal is unreasonable and premature given the current stage of the 

case. 

IV. CONCLUSION

For the foregoing reasons, T-Mobile’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 T-Mobile on February 22, 2024 (see Dkt. 58-3 at 3) be ordered in place of T-Mobile’s proposal.

Dated: May 14, 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

Email: nrubin@raklaw.com

Kristopher Davis

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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 May 14, 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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