UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION 

HEADWATER RESEARCH LLC, 

Plaintiff, 

V. 

CELLCO PARTNERSHIP D/B/ A VERIZON 

WIRELESS AND VERIZON CORPORATE 

SERVICES GROUP, INC., 

Defendants. 

Case No. 2:23-cv-00352-JRG-RSP 

JURY TRIAL DEMANDED 

PLAINTIFF HEADWATER RESEARCH LLC'S SUR-REPLY TO 

DEFENDANTS' MOTION TO STRIKE AND COMPEL SUPPLEMENTATION 

OF HEADWATER'S AMENDED INFRINGEMENT CONTENTIONS 

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TABLE OF CONTENTS 

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

A. Defendants Admit They Laid Behind the Log, Yet Still Demand 

Headwater’s Contentions Be Stricken .....................................................................1

B. Defendants’ Complaints Regarding Representativeness Raise Evidentiary 

Concerns, Not Deficiencies in Headwater’s Infringement Contentions ..................2

C. Defendants Seek to Strike the Very Names of Network-Side Components 

They Themselves Requested and Strike Theories Defendants 

Acknowledge Are Alleged in Headwater’s Charts ..................................................3

D. Headwater’s Contentions Properly Accuse Multiple Infringing 

Functionalities ..........................................................................................................4

E. Defendants Sat Silent for Months Regarding Headwater’s Dependent 

Claims After Headwater Served Its Amended Contentions ....................................5

II. CONCLUSION ..................................................................................................................... 5

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TABLE OF AUTHORITIES 

Cases

CardTek Int’l, Inc. v. The Kroger Co., 

Case No. 23-cv-00045-JRG-RSP, D.I. 82 (E.D. Tex Aug. 9, 2024) .......................................... 3 

Orion IP, LLC v. Staples, Inc., 

2:04-cv-00297-LED (E.D. Tex. 2006) ................................................................................ 1, 2, 5 

Orion IP, LLC v. Staples, Inc., 

407 F. Supp. 2d 815 (E.D. Tex. 2006) .................................................................................... 2, 5 

UltimatePointer, LLC v. Nintendo Co., 

No. 6:11-CV-496, 2013 WL 12140173 (E.D. Tex. May 28, 2013) .................................... 2, 3, 5 

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TABLE OF EXHIBITS 

Ex. No. Description of Exhibit 

A Infringement Contention Chart of Apple Representative Product for U.S. Patent 

8,589,541 

B Infringement Contention Chart of Samsung Representative Product for U.S. Patent 

8,589,541 

C Infringement Contention Chrui of Google Representative Product for U.S. Patent 

8,589,541 

D Infringement Contention Chart of Motorola Representative Product for U.S. 

Patent 8,589,541 

E Infringement Contention Chart of Kyocera Representative Product for U.S. Patent 

8,589,541 

F Infringement Contention Chart for U.S. Patent 8,924,543 

G Infringement Contention Chart for U.S. Patent 9,198,042 

H Infringement Contention Chart of Apple Representative Product for U.S. Patent 

9,215,613 

I Infringement Contention Chart of Samsung Representative Product for U.S. Patent 

9,215,613 

J Infringement Contention Chart of Google Representative Product for U.S. Patent 

9,215,613 

K Infringement Contention Chart of Motorola Representative Product for U.S. 

Patent 9,215,613 

L Infringement Contention Chrui of Kyocera Representative Product for U.S. Patent 

9,215,613 

M Invalidity Chart for U.S. Patent Number 8,589,541 

N Invalidity Chart for U.S. Patent Number 8,924,543 

0 Invalidity Chart for U.S. Patent Number 9,198,042 

p Invalidity Chart for U.S. Patent Number 9,215,613 

lll 

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I. INTRODUCTION 

Verizon continues to ignore the substance of Headwater’s contentions, arguing instead 

about purported insufficiencies in Headwater’s proof, which has nothing to do with the heart of 

the issue—the scope of Headwater’s infringement contentions. And even though Headwater has 

repeatedly attempted to resolve these disputes informally by meeting and conferring and providing 

amended contentions in good faith, Defendants instead choose to press on with this Motion to 

Strike. Yet, Headwater’s contentions plainly place Defendants on notice of the scope of 

Headwater’s infringement theories. Defendants’ Motion should therefore be denied. 

A. Defendants Admit They Laid Behind the Log, Yet Still Demand Headwater’s 

Contentions Be Stricken 

Defendants acknowledge that the only issue they raised after the parties’ numerous 

correspondence and meet-and-confers, and after Headwater’s January 12, 2024, amended 

contentions was a purported failure to specifically chart Defendants’ network-side functionality.1

Reply at 1-2. But there is no failure here. Headwater’s contentions accuse the functionality known 

to Headwater. Opp. (D.I. 76) at 9-10. Yet, Defendants still seek to strike almost every accused 

product, all network-side components, and large swaths of dependent claims they have been silent 

about for months. 

Additionally, Defendants claim that they “followed precisely those steps” from Orion in 

seeking their relief here. Reply at 2. This is plainly incorrect. First, Headwater has repeatedly 

undertaken good-faith efforts to informally resolve these disputes with Defendants. Yet, 

Defendants were intent on filing the instant Motion and seeking Court intervention without further 

working with Headwater to resolve these disputes. Opp. at 1-2, 14-15. Second, Headwater has not 

1 This issue is the subject of Headwater’s pending motion to Compel Defendants to produce core 

technical documents and source code sufficient to show the operation of Defendants’ accused 

network-side functionalities. D.I. 74. 

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“refused” to address these issues as Defendants claim. Reply at 2. Indeed, Headwater has 

repeatedly sought to address any purported lack of clarity through frequent meet and confers and 

amended charts. Reply at 1-2. Further, Headwater offered to work through these issues with 

Defendants before they filed the instant Motion. Opp. at 1-2, 14-15. And even after Defendants 

filed their Motion, Defendants acknowledge that “Headwater served further supplemental 

contentions the day after Defendants filed this motion.” Reply at 1. Moreover, Headwater agreed 

to provide further supplementation. Opp. at 15. Headwater has not “refused” to further clarify its 

charts. And third, while Defendants assert that they “fil[ed] this motion” like the court counseled 

in Orion, the Orion court indicated that seeking clarification was the proper course. Yet, contrary 

to this guidance, Defendants seek to strike much of Headwater’s contentions, just like the motion 

to strike which was denied in Orion, in part because defendants there “opted to wait to clarify the 

issue” until the party could claim prejudice and move to strike. Orion IP, LLC v. Staples, Inc., 

2:04-cv-00297-LED (E.D. Tex. 2006), D.I. 298 at 10 (seeking to “strike Orion’s newly asserted 

infringement contentions”); Orion IP, LLC v. Staples, Inc., 407 F. Supp. 2d 815 (E.D. Tex. 2006). 

B. Defendants’ Complaints Regarding Representativeness Raise Evidentiary 

Concerns, Not Deficiencies in Headwater’s Infringement Contentions 

Headwater’s infringement contentions clearly establish the scope of its infringement 

theories, accusing and charting features included in multiple versions of operating system 

software, and demonstrating the “technical and functional identity” of those accused features. 

UltimatePointer, LLC v. Nintendo Co., No. 6:11-CV-496, 2013 WL 12140173, at *3 (E.D. Tex. 

May 28, 2013) (“UltimatePointer”). For example, Apple’s WatchOS and iOS both include the 

“Background App Refresh” and “Low Power Mode” features, as demonstrated by Headwater’s 

infringement contentions. See D.I. 77-1 and 77-4. As a further example, Android’s “Data Saver” 

(and other features) are found in various versions of Android (including Android OS and WearOS) 

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as demonstrated by Headwater’s infringement contentions. See, e.g., D.I. 76-1 and 76-5. This is 

sufficient to put Defendants on notice of the scope of the infringing features. And while Defendants 

rely on UltimatePointer, the court there found it relevant that plaintiff made “previous arguments 

that the Nintendo Wii games include different calibration functions,” such that one game was not 

representative of another. UltimatePointer at *2 (emphasis added). Yet, no such evidence or 

argument exists here. Instead, the evidence here indicates the features are the same. 

And to the extent the operating systems or functionality do not operate in precisely the 

same way, this is an issue regarding proof that Headwater will obtain in discovery and is not a 

proper criticism of the scope of Headwater’s infringement contentions. Opp. at 4-8 (discussing 

CardTek Int’l, Inc. v. The Kroger Co., Case No. 23-cv-00045-JRG-RSP, D.I. 82 at *2 (E.D. Tex 

Aug. 9, 2024)). Indeed, Defendants argue that Headwater must obtain confidential discovery to 

prove its case. Mot. at 5-6, n.4.2 And while Headwater is diligently seeking this discovery through 

its Motion to Compel and other discovery measures, this does not raise a deficiency with respect 

to Headwater’s infringement contentions. 

C. Defendants Seek to Strike the Very Names of Network-Side Components 

They Themselves Requested and Strike Theories Defendants Acknowledge 

Are Alleged in Headwater’s Charts 

Defendants claim that Headwater’s charts are “insufficient to guide discovery” (Reply at 

3), even though those charts accuse specific functionality and identify instrumentalities by name. 

Headwater’s charts identified numerous infringing functionalities, such as “attach request,” 

“bearer resource allocation,” “bearer resource modification,” “PDN connectivity,” “PCO” values, 

“QCI” levels, etc. See, e.g., Opp. at 10-13. Despite these clear allegations in Headwater’s charts, 

2 The Discovery Order requires that the parties confer in good faith about the feasibility of a 

stipulation covering representative products. While Headwater has requested this conference, 

Defendants have thus far refused to engage in such discussion, choosing instead to file the instant 

Motion. D.I. 43. 

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Defendants assert that “Headwater’s network-side allegations exceed far beyond the limited scope 

described above,” purportedly because “Headwater’s QCI theory was first articulated in its 

opposition brief.” Reply at 4. But this contrived assertion is belied by Headwater’s infringement 

contentions, which delineate this theory and cite supporting evidence. Opp. at 12-15. Indeed, 

Defendants acknowledge that these accusations are contained in Headwater’s infringement charts, 

and that they apparently have been searching for and collecting documents related to these 

functionalities for months. Reply at 4, n.3. Even so, Defendants have failed to produce these core 

technical documents in contravention of their P.R. 3-4 duties. See D.I. 74. And while Defendants 

claim that Headwater “received documents related to these issues” “months” ago, (Reply at 3), the 

documents Defendants produced are device requirements, not documents which describe their 

network-side functionalities. See, e.g., Opp. at 2; D.I. 74 at 3. Indeed, the produced documents do 

not describe or explain the operation of “attach,” “bearer resource allocation,” “bearer resource 

modification,” and “PDN connectivity.” Nor do the documents reveal anything about PCO values, 

QCI levels, priority rules, or filters—functionalities which are identified, described, and accused 

in Headwater’s infringement contentions. Reply at 3-5. 

Defendants also complain that “Headwater Has Not Identified Which Network-Side 

Components it Accuses,” but then admit Headwater’s contentions include allegations against 

 Reply at 4. Even so, 

Defendants seek to strike the very identification by name they sought in the first place. Mot. at 14. 

D. Headwater’s Contentions Properly Accuse Multiple Infringing 

Functionalities 

Headwater accuses multiple different features (as Defendants acknowledge), explaining 

that similar underlying code supports their functionality. Reply at 5. Headwater’s contentions do 

not improperly “mix and match” functionalities. Opp. at 5-13. And even though Defendants filed 

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the instant Motion, Headwater nonetheless served further amended infringement contentions 

providing further explanation. Reply at 1. Despite this, Defendants are apparently content with 

ignoring Headwater’s amendments, choosing to charge ahead with the Motion here rather than 

resolve disputes informally so that “both parties may adequately prepare for claim construction 

and trial” as recommended by the court in Orion. Orion IP, 407 F. Supp. 2d at 818. 

E. Defendants Sat Silent for Months Regarding Headwater’s Dependent Claims 

After Headwater Served Its Amended Contentions 

Defendants acknowledge that the last time they raised potential deficiencies regarding 

dependent claims was “more than a month before Headwater served its operative infringement 

contentions.” Reply at 5. Based on Defendants’ silence, Headwater understood its operative 

infringement contentions to have resolved the issues. Even so, Headwater was willing to address 

purported deficiencies during the meet-and-confer process leading up to the instant Motion. Opp. 

at 13-15. And when Defendants refused, choosing instead to file their Motion, Headwater 

demonstrated that Defendants only two examples of purported deficiencies were not deficiencies 

at all based in part on overlap in claims and evidence, as well as Headwater’s narrative allegations.3

Nevertheless, if the Court believes Headwater’s dependent claim charts should include 

additional detail, Headwater respectfully requests the opportunity to provide supplemental 

contentions—a course of action consistent with Orion and UltimatePointer. Orion at 818 (refusing 

to strike contentions where the complaining party “laid behind the log”); UltimatePointer at *3 

(ordering plaintiff to supplement its contentions). 

II. CONCLUSION 

For the reasons above and in the Opposition (D.I. 76), Verizon’s motion should be denied.

3 By contrast, Defendants’ claim charts fail to provide narrative allegations and instead merely 

parrot claim language. E.g., Exs. D.I. 76-15 through 18. 

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Dated: September 6, 2024 Respectfully submitted, 

/s/ Marc Fenster 

Marc Fenster 

CA State Bar No. 181067 

Reza Mirzaie 

CA State Bar No. 246953 

Brian Ledahl 

CA State Bar No. 186579 

Ben Wang 

CA State Bar No. 228712 

Adam Hoffman 

CA State Bar No. 218740 

Paul Kroeger 

CA State Bar No. 229074 

Neil A. Rubin 

CA State Bar No. 250761 

Kristopher Davis 

CA State Bar No. 329627 

James S. Tsuei 

CA State Bar No. 285530 

Philip Wang 

CA State Bar No. 262239 

Amy Hayden 

CA State Bar No. 287026 

James Milkey 

CA State Bar No. 281283 

Jason M. Wietholter 

CA State Bar No. 337139 

James N. Pickens 

CA State Bar No. 307474 

Qi (Peter) Tong 

TX State Bar No. 24119042 

RUSS AUGUST & KABAT 

12424 Wilshire Blvd. 12th Floor 

Los Angeles, CA 90025 

Telephone: 310-826-7474 

headwater@raklaw.com 

Andrea L. Fair 

WARD, SMITH & HILL, PLLC 

1507 Bill Owens Parkway 

Longview, Texas 75604 

Telephone: 903-757-6400 

andrea@wsfirm.com 

ATTORNEYS FOR PLAINTIFF, 

Headwater Research LLC

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CERTIFICATE OF SERVICE 

I hereby certify that on September 6, 2024, I electronically filed the foregoing document 

with the Clerk of the Court for the Eastern District of Texas under seal, and seived counsel of 

record with a copy via electronic email. 

Isl Marc Fenster 

Marc Fenster 

7 

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