Exhibit A

(Order Denying Motion to 

Compel in Samsung -422 Case)

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IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff, 

v. 

SAMSUNG ELECTRONICS CO., LTD. 

and SAMSUNG ELECTRONICS 

AMERICA, INC., 

Defendants.

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CASE NO. 2:22-CV-00422-JRG-RSP

MEMORANDUM ORDER

On April 24, 2024, the Court held a hearing on the parties’ discovery motions at Dkt. 

Nos. 88, 96, 99, 100, 113, 116, 136, and 137 and Samsung’s Motion to Compel Regarding 

Krista Jacobsen filed in the related proceeding 2:24-mc-0003. At the hearing, the Court made 

various rulings on the above listed motions and carried several issues. This order addresses 

those carried issues and memorializes the Court’s rulings provided orally at the hearing.

Samsung’s Motion to Compel Regarding Krista Jacobsen. (2:24-mc-0003.) For the 

reasons provided orally, the Court ORDERED counsel for Ms. Jacobsen to amend the 

privilege log to expressly indicate that a withheld document represents a “communication,” 

and to the author and recipient. The Court otherwise DENIED Samsung’s motion. 

Samsung’s Motion to Compel Production of Documents Regarding Headwater’s 

Patent Portfolio Sale Negotiations With Third Parties (Dkt. No. 88.) For the reasons 

provided orally, the Court ORDERED Headwater to produce documents related to 

Headwater’s valuation of the proposed InterDigital deal or to provide a sworn declaration that 

no such documents exist, within one week of the hearing. The Court carried the issue whether 

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there was common legal interest to support a finding of an exception to waiver of privilege as 

to the communications between Headwater and InterDigital regarding the proposed 

InterDigital deal. 

The Court now finds that a sufficient common legal interest exists between Headwater 

and InterDigital and otherwise DENIES Samsung’s motion. Headwater claims it had a 

common interest with InterDigital, as a potential acquirer, in the validity and enforceability of 

Headwater’s patents. (Dkt. No. 120 at 11-12.) Samsung contends the contract between 

InterDigital and Headwater only provides for a one-way common interest. (Dkt. No. 123 at 2.) 

The Court finds that here InterDigital as a potential acquirer of Headwater’s patents for the 

purpose of asserting them, has a common interest with Headwater as to the validity and 

enforceability of the patents. See Autobytel, Inc. v. Dealix Corp., 455 F.Sup. 2d 569 at 576 

(2006) (Davis, J.) (finding an acquirer and target “had a natural and common interest in 

consulting about a potential infringement suit because the suit might impact the merger of the 

companies.”) Further, the contractual provision cited by Samsung specifically provides it “is 

not intended to, and is not understood to, void, waive or compromise in any respect any 

applicable privilege...” (Dkt. No. 120 at 12.) Applying this provision to limit a privilege 

would be improper. 

Samsung’s Motion to Compel Withheld Responsive ESI (Dkt. No. 96.) At the 

hearing the parties agreed Headwater will not withhold as irrelevant any documents generated 

by the keyword search that fall within the following categories:

1. Documents concerning the ItsOn technology referenced in Headwater’s Complaint

2. Documents concerning ItsOn’s relationship with Samsung

3. Documents discussing valuations of Headwater Patents

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4. Documents concerning the accused features in Headwater’s infringement contentions

5. Documents concerning Sprint and patent marking obligations

6. Documents concerning Qualcomm

7. Emails about ItsOn and Headwater patents, and

8. Emails about problems with ItsOn software (which Headwater contends to have

practiced the asserted patents).

Headwater’s Motion to Compel Analysis of Battery Savings Benefits (Dkt. No. 

99.) The Parties represented this motion had been resolved by the parties further meet and 

confer and is therefore MOOT. 

Samsung’s Motion to Compel Production of Documents Withheld under 

Improper Assertion of Privilege, Work Product, and Common Interest and for 

Headwater to Cure its Deficient Privilege Log (Dkt. No. 100.) The parties represented this 

motion relates to three different sets of communications 1) with InterDigital; 2) with ItsOn; 3) 

with Verizon. At the hearing, the Court carried these disputes to review the claims of common 

interest privilege. 

The Court DENIES Samsung’s motion as to communications with InterDigital, finding 

common interest as provided above. 

The Court DENIES Samsung’s motion as to communications with ItsOn. Headwater 

points to a license agreement between itself and ItsOn as well as a close relationship where 

Headwater provided “consulting services to develop and implement a product development 

strategy” for ItsOn. (Dkt. No. 120 at 13.) Indeed, at the Hearing the parties agreed that ItsOn 

and Headwater shared many of the same employees, board members, and office space and on 

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occasion certain individuals would do Headwater business from ItsOn email addresses 

inadvertently. Samsung contends this does not disclose a particular legal interest and does not 

address when such an interest existed as the relationship soured sometime broadly around 

2017. (Dkt. No. 123 at 3-4.) While a mere non-exclusive license generally is insufficient to 

establish a common legal interest between arms-length entities, the Court finds there is 

substantially more here. Headwater and ItsOn are not arms-length entities, rather they are the 

opposite. As such, the Court finds that Headwater and ItsOn had a common legal interest in at 

least issues regarding the patents subject to the license agreements, such that the 

communications at issue did not waive privilege. 

The Court DENIES Samsung’s motion as to communications with Verizon. Headwater 

contends that Verizon was a board member of both Headwater and ItsOn and thus is not a third 

party that might waive privilege. (Dkt. No. 120 at 10.) Samsung argues there is no evidence 

substantiating Verizon’s presence of Headwater’s board, only ItsOn’s and thus Headwater’s 

contention is unsupportable. (Dkt. No. 123 at 5.) At the Hearing, Headwater pointed the Court 

to Dkt. No. 134-2 at 4 as demonstrating Verizon’s presence on Headwater’s board. That 

document is a “Schedule of Exceptions” that includes a section titled “Obligation to Related 

Parties” that references an “Observer Rights Letter ... by and between the Company 

[(Headwater)] and Verizon Investments, Inc.” (Dkt. No. 134-2 at 4.) While this record is 

limited, the Court finds it is sufficient to support Headwater’s claim of privilege extending to 

Verizon’s presence on its Board.

Headwater’s Motion to Compel Battery Testing Evidence (Dkt. No. 113.) The 

Parties represented this motion had been resolved by the parties further meet and confer, and is 

therefore MOOT. 

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Samsung’s Motion to Compel Re-Production of Clawed Back Document and to 

Order that Headwater Waived Privilege as to its Pre-Suit Communications with Counsel 

re Suing Samsung. (Dkt. No 116.) Prior to the hearing, the Parties resolved the clawed-back 

document issue. Further, for the reasons stated at the hearing, the Court DENIES the 

remainder of Samsung’s motion. 

Samsung’s Motion to compel Documents, Discovery Responses (Dkt. No. 136) At 

the hearing, Samsung requested Headwater be required to provide narrative responses to 

interrogatories Nos. 18-21, 28, 30-32, and 38-39. For the reasons provided orally at the 

hearing, the Court GRANTED Samsung’s motion as to interrogatories nos. 18, 20, 21, and 39, 

DENIED Samsung’s motion as to interrogatories nos. 31-32 and 38, and ORDERED 

Headwater supplement its response to interrogatory no. 19 with pin cites to the deposition 

testimony. Samsung withdrew the motion as to interrogatory no. 30. 

Further, the Court carried Samsung’s motion as to interrogatory no. 28 as it related to 

Headwater’s claim of privilege under a common interest theory with InterDigital. The Court 

now DENIES the Motion as to interrogatory no. 28, finding there is a common interest as 

explained above. 

Samsung’s Motion to Compel re Late Produced Redacted Document (Dkt. No. 

137.) The Court carried this motion as to Headwater’s claim of privilege under a common 

interest theory with InterDigital. The Court now DENIES the Motion, finding there is a 

common interest as explained above.

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ROY S. PAYNE

UNITED STATES MAGISTRATE JUDGE SIGNED this 3rd day of January, 2012. SIGNED this 25th day of April, 2024.

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