IN THE 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

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

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

(Member Case Under -379 Action)

JURY TRIAL DEMANDED

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

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

JURY TRIAL DEMANDED

PLAINTIFF HEADWATER RESEARCH LLC’S

OPENING CLAIM CONSTRUCTION BRIEF

* The parties agreed to consolidate claim construction proceedings (briefing and hearing) in the 

above-captioned cases. Thus, Headwater is filing this brief and supporting materials in the 

T-Mobile -379 case and will file this brief only in the Verizon -352 case.

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TABLE OF CONTENTS

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

II. THE ASSERTED PATENTS............................................................................................. 2

A. Overview of the ’541 Patent ................................................................................... 2

B. Overview of the ’042 Patent ................................................................................... 3

C. Overview of the ’613 Patent ................................................................................... 5

D. Level of Ordinary Skill ........................................................................................... 6

III. DISPUTED TERMS FOR ’541 PATENT ......................................................................... 6

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

network]” (’541 patent, claim 1 and dependents)................................................... 6

B. “service usage activity” (’541 patent, claim 1 and dependents)............................. 9

C. “background activity” (’541 patent, claim 1 and dependents).............................. 12

IV. DISPUTED TERMS FOR ’042 PATENT ....................................................................... 15

A. “device service state” (’042 patent, claim 1 and dependents) .............................. 15

B. “service policy setting” (’042 patent, claim 1 and dependents)............................ 19

C. “protected partition” (’042 patent, claim 1 and dependents)................................ 21

V. DISPUTED TERMS FOR ’613 PATENT ....................................................................... 23

A. “differential traffic control policy” (’613 patent, claim 1 and 

dependents) ........................................................................................................... 23

B. “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 and dependents).................................................................. 24

C. “the user of the device is directly interacting with that application 

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

6) ........................................................................................................................... 26

VI. CONCLUSION................................................................................................................. 29

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ii

TABLE OF AUTHORITIES

Cases

Alexam, Inc. v. Best Buy Co., 

2012 WL 1188406 (E.D. Tex. Apr. 9, 2012)............................................................................ 17

Epistar Corp. v. ITC, 

566 F.3d 1321 (Fed. Cir. 2009)................................................................................................. 21

Home Diagnostics, Inc. v. LifeScan, Inc., 

381 F.3d 1352 (Fed. Cir. 2004)................................................................................................. 19

JVW Enters., Inc. v. Interact Accessories,

424 F.3d 1324 (Fed. Cir. 2005)................................................................................................ 22

Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 

22 F.4th 1369 (Fed. Cir. 2022) ........................................................................................... 15, 16

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)................................................................................................. 22

Renishaw PLC v. Marposs Societa' per Azioni, 

158 F.3d 1243 (Fed. Cir. 1998)................................................................................................. 17

SanDisk Corp. v. Memorex Prods., 

415 F.3d 1278 (Fed. Cir. 2015)................................................................................................. 22

SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc.,

242 F.3d 1337 (Fed. Cir. 2001)................................................................................................ 15

Thorner v. Sony Comp. Ent. Am. LLC,

669 F.3d 1362 (Fed. Cir. 2012)........................................................................................... 21, 23

Vitronics Corp. v. Conceptronic, Inc., 

90 F.3d 1576 (Fed. Cir. 1996)............................................................................................. 20, 24

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TABLE OF EXHIBITS

Ex.* Description Abbreviation

1 U.S. Patent No. 8,589,541 ’541 patent

2 U.S. Patent No. 9,198,042 ’042 patent

3 U.S. Patent No. 9,215,613 ’613 patent

4 T-Mobile’s Patent Rule 4-2 Identification of Claim Constructions

and Extrinsic Evidence, Ex. A (July 19, 2024)

T-Mobile CC 

Disclosure

5 Verizon’s Patent Rule 4-2 Identification of Claim Constructions

and Extrinsic Evidence, Ex. A (Aug. 6, 2024)

Verizon CC 

Disclosure

6 Declaration of Dr. Donald Turnbull for T-Mobile (Aug. 9, 2024) Turnbull Decl.**

7 Declaration of Dr. Donald Turnbull for Verizon (Aug. 24, 2024)

8 Declaration of Dr. Donald Turnbull for AT&T (Sept. 11, 2024)

9 Deposition Transcript of Dr. Donald Turnbull (Aug. 30, 2024) Turnbull Dep.

10

Defendants’ Petition for Inter Partes Review of U.S. Patent No.

8,589,541, Paper 1, IPR2024-00942 (June 7, 2024) ’541 IPR Pet.

11 Defendants’ Petition for Inter Partes Review of U.S. Patent No.

9,198,042, Paper 4, IPR2024-00809 (Apr. 19, 2024) ’042 IPR Pet.

12 Defendants’ Petition for Inter Partes Review of U.S. Patent No. 

9,215,613, Paper 1, IPR2024-00945 (June 7, 2024) ’613 IPR Pet.

13 Claim Construction Order, Dkt. 107, Case 2:22-cv-00422-JRGRPS (E.D. Tex. Feb. 20, 2024) -422 CC Order

* All exhibits attached to the concurrently filed declaration of James S. Tsuei

** Dr. Turnbull submitted substantively identical declarations (Exs. 6–8) in the T-Mobile -

377 and -379 cases, the Verizon -352 case, and the AT&T -397 and -398 cases. The parties have 

agreed that Dr. Turnbull’s Aug. 30, 2024 deposition applies to all declarations and cases.

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I. INTRODUCTION

Headwater and Defendants offer not just competing claim construction proposals but

fundamentally different approaches to claim construction. The Federal Circuit has set forth 

straightforward rules to guide claim construction. For example, where claim terms have a plain

meaning in the field, that meaning almost always controls. And where described embodiments are 

narrower than the claims, features of embodiments should not be imported into the claims unless 

the patentee evinces a clear intent to limit claim scope. 

Defendants ask the Court to recharacterize and burden clear terms with artificial and 

extraneous baggage. Many of their proposals are inconsistent with embodiments taught in the

specification. For other terms, Defendants’ proposals are inconsistent with the claim language 

itself, as well as dependent claims. And across the board, Defendants’ proposals lengthen and 

obfuscate the terms, making it harder for the jury to understand them.

Defendants’ indefiniteness assertions fare no better. They fall far short of proving 

indefiniteness by clear and convincing evidence. The only “evidence” Defendants offer is a 

declaration by its expert, Dr. Turnbull. But even a cursory review of the declaration shows it is 

insufficient. The declaration is conclusory and replete with vague operations. Dr. Turnbull also 

made admissions in deposition that undermine his opinions.

For all terms, Defendants’ constructions are inconsistent with its positions in IPRs. 

Defendants filed multiple IPRs on each of the asserted patents. In those IPRs, Defendants and its 

experts had no problem understanding the claims and mapping it to the prior art, including for the 

terms now alleged to be indefinite. Nor did Defendants propose to the PTAB the constructions it 

now advocates before this district court. Defendants’ shifting-sands approach to claim construction 

is improper and provide further evidence that their constructions should be rejected.

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II. THE ASSERTED PATENTS

The asserted claims in the captioned cases are U.S. Patent Nos. 8,589,541 (“’541 patent”), 

9,198,042 (“’042 patent”), 9,215,613 (“’613 patent”) and 8,924,543 (“’543 patent”). On October 

8, 2024, pursuant to the parties’ agreement, Headwater elected the following asserted claims:

• ’541 patent — claims 41, 42, 45, 47, 55, 57, 79, 83, 120, 170

• ’042 patent — claims 1, 3, 5, 6, 9, 13, 15

• ’613 patent —claims 1, 8, 12, 15, 16, 18, 23

• ’543 patent — claims 1, 8, 44, 47, 61, 88, 98, 120

The parties dispute the constructions of terms certain from the ’541, ’042, and ’613 patents. The 

disputed terms generally appear in independent claim 1 of each patent are repeated in various 

dependent claims. Thus, Headwater’s briefing focuses on claim 1 of each patent.

A. Overview of the ’541 Patent

The ’541 patent is titled “Device-assisted services for protecting network capacity” and 

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

’541 patent states: “[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. In both 

wireless and “wire line” (wired connections) contexts, “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. 

Thus, 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 notes that “if multiple 

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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. To 

address this problem, the ’541 patent explains:

What is needed is intelligent network monitoring to provide real-time traffic 

monitoring network service usage (e.g., at the packet level/layer, network stack 

application interface level/layer, and/or application level/layer) of the wireless 

network (e.g., radio access networks and/or core networks) and to effectively 

manage the network service usage for protecting network capacity (e.g., while still 

For example, intelligent network monitoring of the wireless network to effectively 

manage network service usage for protecting network capacity can include 

differentially controlling over the air software updates and/or performing software 

updates via wired connections only. As another example, intelligent network 

monitoring of the wireless network to effectively manage network service usage 

for protecting network capacity can include differentially controlling various 

applications that demand significant network resources or network capacity.”

Id. at 16:38–17:5.

Claim 1 of the ’541 patent is representative for purposes of claim construction:

1. A non-transitory computer-readable storage medium storing machine-executable 

instructions that, when executed by one or more processors of a wireless end-user 

device, cause the one or more processors to: 

identify a service usage activity of the wireless end-user device, the service usage 

activity being associated with a first software component of a plurality of software 

components on the wireless end-user device, the service usage activity comprising 

one or more prospective or successful communications over a wireless network; 

determine whether the service usage activity comprises a background activity;

determine at least an aspect of a policy based on a user input obtained through a 

user interface of the wireless end-user device or based on information from a 

network element, the policy to be applied if the service usage activity is the 

background activity, the policy at least for controlling the service usage activity;

and if it is determined that the service usage activity is the background activity, 

apply the policy.

B. Overview of the ’042 Patent

The ’042 patent is titled “Security techniques for device assisted services,” and issued on 

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November 24, 2015 from U.S. Appl. No. 13/737,748 filed on January 9, 2013. Like the ’541 patent, 

the inventions of the ’042 patent are presented in the context of increasing overall usage of network 

resources. The ’042 patent is concerned with security on end-user devices—e.g., security to ensure 

that the service monitoring aspects described in the patent are protected from “unauthorized 

modifications to the particular service policy setting.” ’042 patent at Abstract. For example, as the 

patent explains: “In some embodiments, various secure execution environments for device assisted 

services are provided using various hardware partition techniques (e.g., secure memory, secure 

modems, secure memory partition(s) in the CPU/processor).” Id. at 3:4–-46. In other embodiments, 

security is improved through encryption. E.g., id. at 4:32-37 (“the service control link is a secure 

link (e.g., an encrypted communication link)”, 11:25-30 (“For example, the DAS agents on the 

modem can be stored in an encrypted and signed format on non-volatile (NV) memory on the 

modem that is only accessible by the network service control link or by a local secure control link 

from the protected DAS partition to the modem execution partition.”).

Claim 1 of the ‘042 patent is representative for purposes of claim construction:

1. A method comprising:

receiving, over a service control link, a report from a wireless end-user device, the 

report comprising information about a device service state;

determining, based on the report, that a particular service policy setting of the 

wireless end-user device needs to be modified, the particular service policy setting 

being stored in a protected partition of the wireless end-user device, the protected 

partition configured to deter or prevent unauthorized modifications to the particular 

service policy setting, the particular service policy setting being associated with a 

service profile that provides for access by the wireless end-user device to a network 

data service over a wireless access network, the particular service policy setting 

configured to assist in controlling one or more communications associated with the 

wireless end-user device over the wireless access network; and

is in response to determining that the particular service policy setting needs to be 

modified, sending configuration information to the wireless end-user device over 

the service control link, the configuration information configured to assist in 

modifying or allowing modifications to the particular service policy setting.

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C. Overview of the ’613 Patent

The ’613 patent is titled “Wireless end-user device with differential traffic control policy 

list having limited user control,” and it issued on December 15, 2015 from U.S. Application No. 

14/685,511, filed April 13, 2015. The ’613 patent shares a similar specification with the ‘541 patent

and describes the same network resource consumption problems in the prior art as motivating the 

claimed inventions. Compare, e.g., ’541 patent, at 9:22-17:43, with ’613 patent, at 2:61-11:15. 

The ’613 patent claims contain additional limitations beyond the ’541 patent claims, 

including “an interface to allow a user to augment the differential traffic control policy for the first 

one or more applications but not for the second one or more applications and/or services,” the 

requirement of both a WWAN modem and WLAN modem, and selective allowance or denial of 

an Internet service activity based on not only a differential traffic control policy but “any applicable 

user augmentation of the differential traffic control policy.” See ’613 patent, cl. 1.

Claim 1 of the ’613 patent is representative for purposes of claim construction:

1. A wireless end-user device, comprising:

a wireless wide area network (WWAN) modem to communicate data for Internet 

service activities between the device and at least one WWAN, when configured for 

and connected to the WWAN;

a wireless local area network (WLAN) modem to communicate data for Internet 

service activities between the device and at least one WLAN, when configured for 

and connected to the WLAN;

a non-transient memory to store

a differential traffic control policy list distinguishing between a first one or more 

applications resident on the device and a second one or more applications and/or 

services resident on the device, and

a differential traffic control policy applicable to at least some Internet service 

activities by or on behalf of the first one or more applications;

an interface to allow a user to augment the differential traffic control policy for the 

first one or more applications but not for the second one or more applications and/or 

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services; and

one or more processors configured to

classify a wireless network to which the device currently connects in order to 

communicate data for Internet service activities as at least one of a plurality of 

network types that the device can connect with,

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, and

selectively allow or deny one or more Internet service activities by or on behalf of 

the particular application based on whether or not the particular application is one 

of the first one or more applications, the differential traffic control policy, including 

any applicable user augmentation of the differential traffic control policy, and the 

classifications performed by the one or more processors.

D. Level of Ordinary Skill

For the asserted patents, Defendants propose that a POSITA would have “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.” Turnbull Decl. at ¶ 29. For purposes of claim construction, 

Headwater does not dispute this proposed level of ordinary skill.

III. DISPUTED TERMS FOR ’541 PATENT

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

network]” (’541 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

Not indefinite; plain and ordinary meaning Indefinite

Claim 1 of ’541 patent recites identifying a service usage activity of the wireless end-user 

device, “the service usage activity comprising one or more prospective or successful 

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communications over a wireless network.”1 Defendants’ indefiniteness argument focuses on the 

word “prospective.” Within the quoted claim language, Defendants don’t contend that “service 

usage activity” is indefinite. Nor do Defendants contend that “one or more successful 

communications over a wireless network” is indefinite. Rather, Defendants’ entire argument is that 

“the prospective term is ambiguous” allegedly because “there is no indication as to what 

constitutes a ‘prospective’ communication ‘over a wireless network.’” Turnbull Decl. at ¶ 51.

This fails. “Prospective” carries its plain meaning in ordinary English usage. In the context 

of the surrounding claim language, specification, and invention of the ’541 patent, a “prospective” 

communication over a wireless network is simply a potential or eligible communication over a 

wireless network. This understanding follows from the declaration and deposition testimony of 

Defendants’ own expert, Dr. Turnbull. In view of those opinions, the term is not indefinite.

As an initial matter, Dr. Turnbull does not contend that the term “service usage activity” is 

indefinite. Turnbull Dep. at 60:10–61:18 (no opinions that the preceding claim language “the 

service usage activity comprising . . .” is indefinite). Further, Dr. Turnbull affirmatively agrees

that the term “one or more successful communications over a wireless network” is definite. He 

explains that in the context of the claims and specification of the ’541 patent, the scope of a 

successful communication is “sufficiently clear” (Turnbull Decl. ¶¶ 52–53):

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.” 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 

1 All emphasis added unless otherwise noted.

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destination—i.e. a “successful communication over a wireless network.”

Dr. Turnbull confirmed this understanding in deposition. He testified that “a successful 

communication over the wireless network” is clear and means “a communication that successfully 

travels over a wireless network.” Turnbull Dep. at 62:8–64:3.

Given that a “successful” communication is one that successfully travels over a wireless 

network, a “prospective” communication is simply a communication that potentially travels (or is 

eligible to travel) over a wireless network. This matches the plain meaning of “prospective” in 

ordinary English usage. That meaning, as Dr. Turnbull testified, is “potential” or “eligible”:

Q: Have you heard of the word “prospective” before?

A: Sure.

Q: What does “prospective” mean?

A: I guess it refers to something that is eligible. “Potential” maybe is more 

accurate. Just generally ideas like that.

Turnbull Dep. at 64:3–20. Dr. Turnbull’s testimony is consistent with general purpose dictionaries, 

which likewise define “prospective” as “potential.” See https://www.dictionary.com/browse/

prospective (prospective: “potential, likely, or expected: a prospective partner”).

Indeed, understanding a prospective communication as a “potential” communication (that 

may not ultimately travel over the wireless network) is consistent with the claims, specification, 

and overall invention. The ’541 patent is broadly directed to “differential” control of certain 

attempts by applications or services on a device to access a wireless network. See ’541 patent at 

cl. 1, 16:45–57, 15:14–18; see also Turnbull Decl. ¶ 56. And, as Dr. Turnbull acknowledges: “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.” Turnbull Decl. at ¶ 58.

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Thus, a fundamental concept of the ’541 patent is that certain communications are 

permitted access to the wireless network, whereas other communications are, in some way, “not 

permitted to occur.” Id.; see also ’541 patent at cl. 42 (reciting “wherein control the first usage 

activity comprises prevent, restrict, or block the first service usage activity”). The claim language 

“prospective or successful communications” reflects this. The claimed “service usage activity” 

includes both (1) successful communications over a wireless network and (2) potential

communications (e.g., communications that may not be “successful” depending on policy 

application). The term “prospective” clarifies the scope of claim 1 and is consistent with the 

objective and teachings of the ’541 patent.

Defendants’ indefiniteness assertion is also undermined by their IPR on the ’541 patent. In 

that IPR, Defendants and their expert had no problem understanding the “prospective” term and 

mapping it to the Rao prior art reference. Defendants argued that “Rao’s intercepting, inspecting, 

and/or storing packets in queues before communicating them from the queues discloses identifying 

one or more prospective communications.” ’541IPR Pet. at 11 (emphasis in original). This is the 

same understanding of “prospective” as potential communications discussed here. Because the 

packets are formed in queues before they are transmitted over the network, and because certain 

packets may not be transmitted, Defendants say they are “prospective” communications.

B. “service usage activity” (’541 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

No construction necessary; plain and 

ordinary meaning 

“an activity by the first software component that 

requires usage of a wireless network connection”

The term “service usage activity” comprises simple English words with readily 

understandable meanings to a POSITA and jury. It should be given its plain meaning. The claims 

make clear that “service usage activity” in claim 1 is both: (1) “associated with a first software 

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component of a plurality of software components on the wireless end-user device,” and (2) 

“compris[es] one or more prospective or successful communications over a wireless network.”

Defendants’ proposal changes the claim scope in both ways. First, under Defendants’ 

proposal, “service usage activity” is not simply “associated with a first software component” but 

instead must be—directly—“an activity by the first software component.” Their proposal also 

transforms “service usage activity” from being something which “compris[es] one or more

prospective or successful communications over a wireless network” into one which “requires

usage of a wireless network connection.” Defendants’ expert, Dr. Turnbull, offers no opinion or 

analysis to support this attempt to limit the claims. Nor do Defendants’ intrinsic record citations 

establish a basis to do so, such as through lexicography or disclaimer.

At most, Defendants’ citations show that examples of “network service usage activity” 

include activities that may utilize a network connection, and which (consistent with the claim 

language) comprises a wireless network communication. See, e.g., ’541 patent, at 19:8-10 (“In 

some embodiments, a network service usage activity is any activity by the device that includes

wireless network communication.”), 19:15-37 (listing examples of “network service usage 

activity”). And nowhere in the intrinsic record is there any support for Defendants’ proposal that 

“service usage activity” be an “activity by the first software component.” The record plainly does 

not evince the “clear and unmistakable” disclaimer Defendants would require to successfully 

narrow the claims beyond their plain and ordinary meaning.

The specification also discusses network usage activities which do not “require” a wireless 

network connection” but instead may be performed over a wireless or wired connection, which is 

itself discussed by the patentee as a criterion for applying network service policy on an activity.

See, e.g., ’541 patent, at 33:47-55 (“In some embodiments, a QoS service control policy is adapted 

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as a function of the type of network the device is connected to. For example, the QoS traffic control 

policies and/or the QoS service charging policies can be different when the device is connected to 

a wireless network [] than when the device is connected to a wired network []).”); see also id. at

107:2-5 (“The techniques may be applicable to an applicable known or convenient (wired or 

wireless) device for which there is a motivation to control network service usage.”), 107:13-18 

(“Wireless media are known to have more bandwidth constraints, which is why a wireless device 

is an expected use, though the technique may be applicable to wired devices in certain situations.”).

Defendants’ proposed construction should also be rejected because it is inconsistent with 

numerous dependent claims of the patent. For example, multiple dependent claims contradict 

Defendants’ proposal that “service usage activity” be an “activity by the first software component”

rather than being simply “associated with” the first software component” as required in the claims.

First, several claims clearly separate “service usage activity” from “first software 

component” such that Defendants’ proposal (that the activity be “by” the first software component) 

must be incorrect. For example, claim 9 requires the “service usage activity results from 

cooperation between the first software component and at least one other software component, 

application, process, function, activity, or service.” Claim 16 provides that the “service usage 

activity results from cooperation between the first software component and a proxy function.”

Such claims make clear that the “service usage activity” need not be an “activity by the first 

software component” but can be the result of cooperation between multiple software components 

in the claimed device. This is fully consistent with the claim’s explicit requirement that “service 

usage activity” be “associated with a first software component” and establishes that Defendants’ 

proposal improperly limits the claims.

Other dependent claims make clear that neither the “first software component” nor the 

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“service usage activity” are intended to be coextensive or overlapping (such that “service usage 

activity” be always “by” a first software component). For example, claims 28, 29, and 35 specify 

that the “policy” recited in claim 1 can be based on the “first software component” or the “service 

usage activity” (or a combination of both). Because Defendants contend “service usage activity” 

must be “an activity by the first software component,” their proposal inserts both redundancy and 

ambiguity into these and similar dependent claims that require differentiation between “service 

usage activity” and “first software component.”

Further still, other dependent claims provide that for a “second service usage activity” (to 

which the construction of “service usage activity” would apply) that need not be “an activity by 

the first software component” or even “associated with” the first software component at all. Claim 

160 states that there is a “second service usage activity being associated with the first software 

component or with a second software component”—meaning that the claims contemplate a 

“service usage activity” (albeit a “second” one) that contradicts Defendants’ proposal, which 

would rewrite claim 160 and similar claims.

In sum, the evidence shows that “service usage activity” has a plain and ordinary meaning 

that is elucidated by the claims themselves, and Defendants’ proposed rewriting of the claims 

should be rejected as unsupported by and inconsistent with with the intrinsic record.

C. “background activity” (’541 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

Not indefinite; plain and ordinary meaning Indefinite

Claim 1 of the ’541 patent recites determining “whether the service usage activity 

comprises a background activity.” The term “background activity” is a known term in computer 

software and networking, and the ’541 patent uses it in the ordinary sense. See Turnbull Dep. at 

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89:24–9:1 (“Q: Do you offer any opinion that [‘background activity’] is not a term of art? A: No. 

Other than my discussion in trying to make sense of it in the claim, in the patent itself.”). Indeed, 

according to Dr. Turnbull, “the fundamental purpose of the invention described in the ’541 Patent 

[is] to prevent certain ‘background activity’ from accessing a wireless network in certain 

instances.” Turnbull Dec. ¶ 61. In addressing this purpose and proposing solutions, the ’541 patent 

relies on the plain and ordinary meaning of “background activity” in the art. The patent doesn’t

seek to redefine the term—nor does Dr. Turnbull contend that it does. See Turnbull Dep. at 46:16–

20 (“Q: For [the term ‘background activity’] do you offer any opinions regarding lexicography or 

disclaimer? A: Nothing that I see here. No.”).

Consistent with the term’s plain meaning, the specification provides extensive disclosures 

about background activities. The specification explains that even when the user is not directly 

interacting with an application, the application can be running in the background and continuing 

to consume potentially significant network resources (’541 patent at 14:47–15:4):

For example, the types of service activities and/or device behavior that can reduce 

network capacity and/or network resource availability include software updates for 

OS and applications, frequent OS and application background network accesses 

and signaling, frequent network discovery and/or signaling (e.g., EtherType 

messages, ARP messages, and/or other messaging related to network access), cloud 

synchronization services, RSS feeds and/or other background information feeds, 

application (e.g., web browser) or device behavior reporting, background email 

downloads, content subscription service updates and downloads (e.g., music/video 

downloads, news feeds, etc.), text/voice/video chat clients, virus updates, peer to 

peer networking applications, inefficient network access sequences during frequent 

power cycling or power save state cycling, large downloads or other high 

bandwidth accesses, and/or greedy application programs that continually and/or 

frequently access the network with small transmissions or requests for information. 

Various other examples will now be apparent to one of ordinary skill in the art.

The specification further describes a “background class,” which is “generally used for lowest 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/

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functions.” Id. 23:1–5. The patent distinguishes this from higher priority classes, such as the 

“conversational class,” “streaming class,” and “interactive class.” Id. at 22:50–67.

Dr. Turnbull acknowledges that the ’541 patent specification “provides some differential 

between ‘background’ activities and other activities.” Turnbull Decl. ¶ 72 (citing ’541 patent at 

23:1–5, 32:21–26, 18:39–55). But he never explains why these disclosures are insufficient. Nor 

does Dr. Turnbull articulate any genuine ambiguity as to “background activity.” For example, he 

never asserts (much less explain) that a POSITA would be unable to determine whether certain 

service usage activities are “background activities”—because a POSITA can.

Instead, Dr. Turnbull makes vague observations that rest on factual and legal error. For 

example, he asserts that the specification provides limited explanation as to what constitutes a 

“foreground” activity. Turnbull Decl. ¶ 73. But he conceded that the term “foreground activity”—

or the word “foreground”—does not appear in claim 1 of the ’541 patent. See Turnbull Dep. at 

92:1–93:1. Thus, it is unclear how his argument about “foreground” could render claim 1 

indefinite. As another example, Dr. Turnbull asserts that claim 6 of the ’613 patent “compound[s]

the confusion.” Turnbull Dep. at ¶ 74. But claim 6 does not even recite “background activity” or 

“background.” Further, there is no legal basis that a dependent claim from a different patent could 

render claim 1 of the ’541 patent indefinite. See Turnbull Dep. at 94:1597:25 (“Q: Have you ever 

heard of a claim being found indefinite because of a dependent claim of another patent? A: I just 

don’t know the case law related to that.”).

Defendants’ indefiniteness assertion is also undermined by their IPR on the ’541 patent. In 

that IPR, Defendants and their expert had no problem understanding the claim language and 

mapping it to the prior art. Indeed, the IPR petition asserts that “[d]etermining whether an activity 

is a background activity was well known” and “the methodology for making that determination 

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would have been a simple design choice[.]” ’541 IPR Pet. at 12–13. This further demonstrates that 

the term “background activity” is not indefinite.

IV. DISPUTED TERMS FOR ’042 PATENT

A. “device service state” (’042 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

No construction necessary; plain and 

ordinary meaning.

“information about the current status of the device 

required to adequately define the actions needed 

from the service controller to maintain proper 

device-assisted service (DAS) system operation”

The term “device service state” is a plain English term which should be given its plain and 

ordinary meaning absent clear and unmistakable disclaimer. But there is no such disclaimer here. 

Defendants’ proposal appears to be drawn from the following example in the specification:

For example, the information reported from the device and received or derived 

outside the device that is required to adequately define the actions needed from the 

service controller to maintain proper DAS system operation is sometimes referred 

to herein as the “device service state.”

’042 patent, at 18:6-11. Defendants’ proposal thus appears to be based on the argument that the 

patentee specially defined “device service state” in the ’042 patent. But: “The “standards for 

finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must 

“clearly set forth a definition of the disputed claim term,” and “clearly express an intent to define 

the term.” SciMed Life Sys. Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed.

Cir. 2001). The patentee did not do so here. The patent’s passage at 18:6-11 not only describes an 

“example” in the specification, but it also provides that the potential definition is only “sometimes” 

referred to as “device service state.”

The specification’s usage of the phrase “sometimes referred to herein” is insufficient to 

convey lexicographical intent. See, e.g., Kyocera Senco Indus. Tools Inc. v. Int'l Trade Comm'n, 

22 F.4th 1369, 1377-81 (Fed. Cir. 2022). In Kyocera, the Federal Circuit found the term “driven 

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position” in the context of a mechanical driver (for fastening staples, nails, etc.) to be defined 

through the patentee’s description—using “sometimes referred to herein” language—as the 

“bottom-most travel position” of the moving piston. Id. at 1378. This was because there existed 

only a “single position” that would be the “bottom-most travel position,” and that the surrounding 

written description “suggest[ed] the ‘driven position’ must be a single position.” Id. at 1379. But 

where the patentee in Kyocera used identical “sometimes referred to herein” language to describe 

other claim elements, the context of such discussion did not support finding lexicographical intent. 

See id. at 1380-81 (finding no lexicography for “lifter member” where patentee stated aspects of 

embodiments were “sometimes referred to herein as a lifter member”).

Unlike in Kyocera, neither the term “device service state” nor its alleged definition at ‘042 

patent, at 18:6-11 appear in a context where lexicographical intent can be properly found. In 

Kyocera, the Federal Circuit emphasized the patentee’s statements: “Nothing about this statement 

suggests the ‘bottom position’ is merely an example of a driven position.” Kyocera, 22 F.4th at 

1378. In contrast, the ’042 patent’s alleged definitional statement from 18:6-11 is clearly described 

as an “example.” Application of lexicographical intent in Kyocera to “driven position” was 

appropriate also because the specification suggested there could be only a “single” position for the 

piston, and the lexicographical definition in from the patentee (“bottom-most travel position”)

satisfied that understanding. But the ’042 patent’s “device service state” term is not one which can 

readily be reduced to an exemplary description in the specification, unlike in the mechanical arts 

context presented in Kyocera.

Defendants’ proposal is problematic in multiple other respects. First, Defendants’ proposal 

does not faithfully apply the alleged definition it cites in the specification. The ’042 patent states 

that “device service state” is sometimes referred to as “the information reported from the device 

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and received or derived outside the device that is required to adequately define the actions needed 

from the service controller to maintain proper DAS system operation.” ’042 patent, at 18:6-11 

(emphasis added). To the extent the passage from 18:6-11 is arguably lexicographical, Defendants’ 

proposal excises the “and received or derived outside the device” language without any 

explanation or justification.

Second, Defendants’ proposal improperly injects the term “device-assisted service (DAS)” 

into claim 1. But where the patentee intended to invoke the phrase “device-assisted service (DAS)” 

to claim certain patent scope, it did so explicitly, such as in claim 14: “wherein the device service 

state comprises a service profile setting, a service usage policy setting, or a device-assisted services 

(DAS) setting.” 

Third, Defendants’ proposal adds unnecessary ambiguity into the claims. “The purpose of 

claim construction is to clarify ambiguities, not to simply rewrite the claims using different words.”

Alexam, Inc. v. Best Buy Co., 2012 WL 1188406, at *18 (E.D. Tex. Apr. 9, 2012).

“[S]traightforward claim language language [which] presents no ambiguity” should not be 

replaced with “a more complicated phrase.” Id. Yet, under Defendants’ proposal for “device 

service state,” a juror would need to determine what amount and kind of information is “required” 

to “adequately define the actions needed from the service controller.” And their proposal charges 

the jury with determining what is a “proper” DAS system operation. This is an imprecise

construction not suitable for lexicographical application. See Renishaw PLC v. Marposs Societa' 

per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) (“patentee's lexicography must, of course, appear 

‘with reasonable clarity, deliberateness, and precision’ before it can affect the claim”).

Defendants’ proposal presents additional difficulties not easily resolved by a juror. 

Dependent claims 14-17 impose further limitations on the “device service state” of claim 1. For 

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example, claim 14 provides that “the device service state comprises a service profile setting, a 

service usage policy setting, or a device-assisted services (DAS) setting,” and claim 17 provides 

that “the device service state comprises an agent report, a service usage record, a transaction 

record, or an integrity report.” ’042 patent at cls. 14, 17. The jury would be required to consider 

whether such dependent claim limitations on “device service state” are information that is 

“required” to “adequately define the actions needed from the service controller” for “proper” DAS 

system operation, where no such exercise is needed under the term’s plain meaning.

Fourth, Defendant’s proposal results in confusing redundancy, which is illustrated by 

substituting its proposed construction into the claims.

Claim 1 [excerpt] Claim 1 [excerpt with Defendants’ claim 

construction proposal]

1. A method comprising: receiving, over a 

service control link, a report from a wireless 

end-user device, the report comprising 

information about a device service state;

1. A method comprising: receiving, over a 

service control link, a report from a wireless 

end-user device, the report comprising 

information about a [information about the 

current status of the device required to 

adequately define the actions needed from the 

service controller to maintain proper deviceassisted service (DAS) system operation];

As shown here, plugging in Defendants’ proposed construction results in the claim 

requiring a “report from a wireless end-user device” where the report comprises “information 

about a [information about the current status of the device...].” This “information about 

information” redundancy is not simply an issue of grammar easily overlooked by a juror. Though 

the confusion could potentially be resolved by further rewriting the claims to read: “the report 

comprising [information about the current status of the device...]” (i.e., to delete out the 

“information about” language from claim 1), this only illustrates why the proposal is unworkable.

In short, Defendants have not shown for “device service state” enough evidence to 

overcome the “‘heavy presumption’ that claim terms ‘carry their accustomed meaning in the 

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relevant community at the relevant time.’” Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 

1352, 1355 (Fed. Cir. 2004) (citation omitted). Defendants’ proposal injects ambiguity and 

imprecision in the claims where none currently exists. “Device service state” should thus be given 

its plain and ordinary meaning.

B. “service policy setting” (’042 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

“policy setting for a network data service” “rule for governing network service usage that 

can be implemented on the device”

The term “service policy setting” should be construed as “policy setting for a network data 

service.” Headwater’s proposed construction is consistent with the intrinsic evidence, whereas 

Defendants’ proposal would only introduce ambiguity.

Headwater’s proposal simply makes clear that the “service” referred to in the phrase 

“service policy setting” is a network data service. This is consistent with the intrinsic evidence. 

For example, the claim language demonstrates that the “service policy setting” is a setting that 

relates to network data services (e.g., access to a cellular data network provided by a cellular 

carrier). See, e.g., ’042 patent at cl. 1 (“determining, based on the report, that a particular service 

policy setting of the wireless end-user device needs to be modified . . . the particular service policy 

setting being associated with a service profile that provides for access by the wireless end-user 

device to a network data service over a wireless access network, the particular service policy 

setting configured to assist in controlling one or more communications associated with the wireless 

end-user device over the wireless access network”). This is also consistent with the specification’s 

teachings. See, e.g., ’042 patent at 8:26-30 (“a policy control server 154 stores policy settings for 

the various service plans that can be implemented on the device, and communicates the appropriate 

policy settings the appropriate device DAS agents”). 

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Defendants’ proposed construction would not clarify the claim language but would instead

inject confusion. For example, it is unclear why Defendants seek to replace “policy setting” with 

“rule”—nor is it clear what Defendants mean for a rule to be implemented “on the device.”

Notably, dependent claim 2 includes the word “implementing” but doesn’t indicate anything about 

where the service policy setting must be implemented. See ’042 patent at cl. 2 (“wherein the 

particular service policy setting assists in implementing a roaming control, a parental control, or 

an enterprise wireless wide-area network (WWAN) management control”).

Defendants’ construction is also potentially confusing in its use of “can be implemented 

on the device,” making unclear whether this is even a limitation on the claim and, if so, exactly 

what that limitation requires. And it is unclear what Defendants seek to accomplish in their 

proposal of “for governing network service usage.” Claim 1 already specifies that the service 

policy setting is “configured to assist in controlling one or more communications associate with 

the wireless end-user device over the wireless access network.” ’042 patent at cl. 1. It is unclear 

what Defendants believe “governing” means and, if it means the same thing as “controlling,” why 

this portion of Defendants’ construction would not be redundant with the remainder of claim 1.

Defendants’ PR 4-3 disclosure also identifies three sources of extrinsic evidence that 

allegedly support Defendants’ construction. See Dkt. 78-1 (JCCS) at 3-4. But Defendants don’t 

identify any particular disclosure in these sources as relevant to the disputed term here, despite the 

sources spanning 408, 8, and 19 pages, respectively. Nor is Defendants’ proposed construction 

found in any of these sources. Because the intrinsic record is sufficiently clear already, there is no 

need for this Court to resort to Defendants’ extrinsic evidence in any event. See Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).

The term “service policy setting” does not require the rewriting that Defendants propose. 

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Headwater’s much simpler proposal simply clarifies that the recited “service” refers to a network 

data service, which would provide ample clarity to the jury. There is no reason for any further 

construction beyond that, and Defendants’ proposal only introduces ambiguity.

C. “protected partition” (’042 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

No construction necessary; plain and ordinary 

meaning.

“a secure device assisted service execution 

environment”

The term “protected partition” is a simple, two-word phrase that would be readily 

understood by a POSITA and jury. Defendants’ proposed rewriting seeks to narrow all claims of 

the ’042 patent without any legal basis for doing so.

There is a “heavy presumption” that claim terms carry their “full ordinary and customary 

meaning, unless [the accused infringer] can show the patentee expressly relinquished claim scope.” 

Epistar Corp. v. ITC, 566 F.3d 1321, 1334 (Fed. Cir. 2009). There are “only two exceptions” to 

the general rule that claim terms are given their full ordinary and customary meaning: “1) when a 

patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows

the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony 

Comp. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Defendants’ PR 4-3 disclosure of 

supporting evidence does not identify any portion of the file history as relevant, and none of 

Defendants’ specification excerpts could even arguably constitute lexicography. Defendants have 

no basis for departing from the full plain and ordinary meaning and notably did not seek any 

construction of this term in their IPR petition. See ’042 IPR Pet. at 7.

Especially when considered in the context of surrounding claim language, the scope and 

meaning of “protected partition” is already clear. Phillips v. AWH Corp., 415 F.3d 1303, 1314 

(Fed. Cir. 2005) (“the claims themselves provide substantial guidance as to the meaning of [] 

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terms”). For example, claim 1 already makes clear that “the particular service policy setting [is]

stored in a protected partition of the wireless end-user device” and “the protected partition [is] 

configured to deter or prevent unauthorized modifications to the particular service policy setting.” 

’042 patent at cl. 1. Construction of this simple term is unnecessary.

Defendants’ proposal does nothing to simplify this term for the jury in adding the phrase 

“device assisted service execution environment.” Injecting this language is also improper because 

where the patentee intended to limit the claims with “device assisted service” language, it did so 

explicitly. See, e.g., ’042 patent at cl. 14 (“wherein the device service state comprises a service 

profile setting, a service usage policy setting, or a device-assisted services (DAS) setting”).

Defendants seek to limit the claims to exemplary embodiments in the specification, 

apparently to exclude others. This is legal error. See, e.g., JVW Enters., Inc. v. Interact Accessories, 

424 F.3d 1324, 1335 (Fed. Cir. 2005) (without a clear indication that the claims and disclosed 

embodiments are to be “strictly coextensive,” courts “do not import limitations into claims from 

examples or embodiments appearing only in a patent’s written description, even when a 

specification describes very specific embodiments of the invention or even describes only a single 

embodiment.”); SanDisk Corp. v. Memorex Prods., 415 F.3d 1278, 1285-86 (Fed. Cir. 2015)

(constructions that exclude embodiments are “rarely, if ever, correct”). For example, the 

specification uses the phrase “protected DAS [device assisted service(s)] partition” in several 

places and refers to “service execution environment” or “DAS execution environments” in other 

places. See, e.g., 6:23-12:44, 14:62-15:1, 8:47-9:3. But these disclosures consistently are framed 

as being applicable to “some embodiments” of the disclosed inventions. None amounts to 

lexicography or any other limiter on the plain meaning of “protected partition” in claim 1. 

Defendants are simply attempting to import language from the specification into the claims.

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Because “protected partition” already has a clear plain meaning and there is no legal basis 

to depart from that plain meaning and narrow the claim, construction of this term is unnecessary. 

V. DISPUTED TERMS FOR ’613 PATENT

A. “differential traffic control policy” (’613 patent, claim 1 and dependents)

Headwater’s Proposal Defendants’ Proposal

No construction necessary; plain and 

ordinary meaning

“rules for controlling network traffic that 

distinguishes between two or more things”

The term “differential traffic control policy” does not require construction. Especially 

when read in the context of its surrounding claim language, this term already has a clear, plain 

meaning. For example, claim 1 recites in relevant part: 

a differential traffic control policy list distinguishing between a first one or more 

applications resident on the device and a second one or more applications and/or 

services resident on the device, and

a differential traffic control policy applicable to at least some Internet service 

activities by or on behalf of the first one or more applications

’613 patent at cl. 1. It is apparent from the claim language that the differential traffic control policy 

list distinguishes between applications and/or services, and the differential traffic control policy 

applies to Internet service activities. That is readily understandable to a POSITA and jury. And it 

is unclear why Defendants believe their proposed inclusion of “distinguishes between two or more 

things” would not be redundant of the claim’s existing recitation of distinguishing between 

applications and/or services, unless they intend for “things” to refer to something else.

Nor is there any legal basis for departing from the plain meaning of this term. As with the 

prior term, Defendants’ PR 4-3 disclosure of supporting evidence doesn’t identify any portion of 

the file history as relevant, and none of Defendants’ specification excerpts come close to 

lexicography. See Thorner, 669 F.3d at 1365 (recognizing that lexicography and disclaimer are the 

“only two exceptions” to the general rule that a term’s plain meaning governs). Tellingly, 

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Defendants didn’t seek construction of this term in their IPR petition. See ’613 IPR Pet. at 3.

Defendants’ PR 4-3 disclosure also identifies three sources of extrinsic evidence that 

allegedly support their construction. See Dkt. 78-1 (JCCS) at 5-6. But Defendants don’t identify 

any particular disclosure in these sources as relevant to the disputed term here, despite the sources 

spanning 408, 8, and 19 pages, respectively. Nor is Defendants’ proposed construction found in 

any of these sources. Because the intrinsic record is sufficiently clear already, there is no need for 

this Court to resort to Defendants’ extrinsic evidence in any event. See Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).

Because “differential traffic control policy” already has a clear plain meaning and there is 

no legal basis to depart from it and narrow the claim, construction of this term is unnecessary.

B. “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 and dependents)

Headwater’s Proposal Defendants’ Proposal

Not indefinite; plain and ordinary meaning Indefinite

This term can be divided into two parts. The middle portion of the term is a noun. It 

describes “a particular application” that is “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.” The remainder of the term is a verb. It 

describes “classify[ing] whether” that application “is interacting with the user in the device user 

foreground.” Defendants fail to show that either part of the term is indefinite.

As to the noun part (“a particular application . . .”), both the claims and specification 

provide substantial guidance. The specification describes applications that can significantly tie up 

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network resources, including, for example, “conference meeting services, video streaming, content 

update, software update, and/or other or similar application behavior.” ’641 patent at 8:15–18. The 

specification then states: “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.” Id. at 8:18–22. It then provides examples, 

such as “software updates” and “background email downloads,” of such activities. Id. 8:23-45.

This illustrates that many applications are capable of background Internet service activities (e.g., 

a “software update”) even when not interacting with the user in the device user interface 

foreground. A POSITA would readily understand which applications meet the claim.

Defendants cannot credibly dispute that the specification provides clear descriptions of

applications that can interact with the user and that are also capable of Internet activity even when 

not interacting with the user. Further, the Court recently considered the same specification 

disclosure in construing a dependent claim of a related Headwater patent with similar language. -

422 CC Order at 10 (citing ’701 patent at 8:4-56). The Court noted that “the cited portion of the 

specification provides a clear description of what would be considered background in the 

foreground/background determination” and “background downloads such as emails, messages, or 

music would fall into the background activity category[.]” Id.

Based on the claim language, and the guidance and examples of the specification, the term 

“a particular application capable of . . .” is not indefinite. Despite repeated questions, Dr. Turnbull 

could not give a straight answer or explain why a POSITA would be unable to understand this. See

Turnbull 114:20–119:5. Dr. Turnbull’s evasive and non-responsive testimony spanning five pages 

of transcript is improper and warrants striking his opinions. 

In any event, Defendants’ IPR petition on the ’613 patent confirms that an “application 

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capable of . . .” In the IPR, Defendants and their experts had no problem understanding the claimed 

application and mapping it to the prior art. See ’613 Pet. at 26–27 (arguing that the Rao and Freund 

references disclose applications that are “capable of interacting with the user in the foreground” 

and are “also capable of internet service activities (e.g., sending and receiving network packets) 

when not interacting in the device display with the user”).

As to the verb part of the term (“classify whether a particular application . . . is interacting 

with the user in the device user interface foreground”), there is likewise no evidence that the verb 

is indefinite. The classification is discussed in the specification. See ’613 patent at Fig. 27, 101:16–

39. And Dr. Turnbull provides no evidence or explanation that a POSITA would be unable to 

ascertain the scope of this term with reasonable certainty. Again, Defendants’ IPR on the ’613 

patent undermines their assertion. In the IPR, Defendants and their experts had no problem arguing 

that the prior taught teaches the claimed classification. See ’613 Pet. at 27 (“Both Rao and Freund 

teach that it is advantageous to classify whether a particular application (and its associated internet 

use) is interacting with the user in the device interface foreground.”).

C. “the user of the device is directly interacting with that application or 

perceiving any benefit from that application” (’613 patent, claim 6)

Headwater’s Proposal Defendants’ Proposal

Not indefinite; plain and ordinary meaning Indefinite

This term has a plain meaning and requires no construction. The Court recently considered 

the same or nearly identical claim language of dependent claim 6 of the ’613 patent in construing 

various dependent claims of related Headwater patents that also recite the “directly interacting 

with that application or perceiving any benefit from that application” language. -422 CC Order 

(construing claim 2 of U.S. Patent No. 9,137,701, as well as claim 2 of U.S. Patent No. 9,271,184).

The Court should reject the indefiniteness argument here for the same reasons and based 

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on the same specification disclosures that the Court relied upon in rejecting the indefiniteness 

argument in the -422 case. Id. at 8-11 (citing ’701 patent at 8:4-56). The same disclosure appears 

in the ’613 patent at 8:4-56 and confirms that this term is not subjective and is sufficiently definite. 

Indeed, based on the same disclosures, the Court found that claim language like that appearing in 

claim 6 here “is not subjective and is sufficiently definite.” Id. at 8. The Court noted that “the cited 

portion of the specification provides a clear description of what would be considered background 

in the foreground/background determination under the ‘directly interacting with’ and ‘perceiving 

any benefit’ inquiry” and “[i]n particular, the specification provides that background downloads 

such as emails, messages, or music would fall into the background activity category under the 

‘directly interacting with’ and ‘perceiving any benefit’ inquiry. This cabins what a POSITA would 

understand ‘benefit’ to cover.” Id.

Further, the independent claim provides clear context for the dependent claim and confirms 

that claim 6 is not subjective. The independent claim requires classifying whether an application 

is interacting with the user or is not interacting with the user. The dependent claim further specifies 

that what would be considered “interacting with the user” includes both when the user is “directly 

interacting with” the application and when the user is “perceiving any benefit” from the 

application. As the Court previously noted, this context “guides a POSITA’s understanding of the 

inquiry away from a question of preference and towards a question of use.” -422 CC Order at 10..

And the use of “‘perceive’ focuses a POSITA’s understanding of ‘benefit’ to what is actively 

perceptible by the user rather than unnoticeable processes. This is distinct from determining if an 

application is providing a benefit to the user as Defendant’s indefiniteness argument effectively 

requires. In other words, the emphasis of that phrase is on ‘perceiving’ whatever the ‘benefits’ of 

the application may be, rather than on whether the user perceives the operation as beneficial.” Id. 

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It is clear in light of the specification at 8:4-42 that the claim language is not asking what is 

beneficial in an abstract sense, but whether the application is engaging in an imperceptible process 

such that the user is not actively perceiving any benefit from the application. Id.

Dr. Turnbull’s indefiniteness opinions for this term are entirely conclusory and insufficient.

His primary argument is that claim 6 allegedly “relies on a user’s subjective experience.” Turnbull 

Decl. at ¶ 82. This assertion is part of two paragraphs of vague observations that lack any 

supporting evidence. The assertion is also wrong and was refuted by the Court’s findings discussed 

above. Dr. Turnbull failed to address these findings in either his declaration or deposition. At his 

deposition, Dr. Turnbull testified that he reviewed the -422 CC Order because he was asked to by 

counsel. See Turnbull Dep. at 30:3–31:7 (reviewed the order “relatively recently” in preparing for 

the deposition), 105:10–11 (“Q: You were asked by counsel to look at it? A: Yeah.”).

When questioned about the order, Dr. Turnbull’s only purported distinction was that 

Samsung declined to submit an expert declaration. Id. at 102:5–31. Dr. Turnbull did not—and 

could not—identify any other disagreements with the Court’s findings or reasoning. See id. at 

103:14:–21 (“Q: were there disagreements with Judge Payne’s order that you had or his findings 

or reasoning? A: I don’t think I Have anything else to say that I already haven’t. Again, the lack 

of an expert . . . .”), 129:10–17 (“Q: . . . is there anything that you want to say about [the -422 CC 

Order]? A: I don’t think I have anything to add beyond what I’ve already said.”).

Dr. Turnbull’s deposition occurred on August 30, 2024. And about two weeks later (on 

September 11, 2024), Dr. Turnbull submitted another declaration in the AT&T case asserting 

indefiniteness of claim 6 based on the same arguments. Again, his September 11 declaration failed 

to address or even mention the Court’s findings and analysis in the -422 CC Order. This confirms 

that Dr. Turnbull has no substantive response and claim 6 is not indefinite.

Case 2:23-cv-00352-JRG-RSP Document 92 Filed 10/08/24 Page 32 of 35 PageID #: 6212
29

VI. CONCLUSION

For the foregoing reasons, the Court should (a) reject Defendants’ indefiniteness assertions 

and projected constructions, and (b) adopt Headwater’s proposed constructions.

Dated: October 8, 2024 Respectfully submitted,

/s/ Marc Fenster

Marc Fenster

CA State Bar No. 181067

mfenster@raklaw.com

Reza Mirzaie

CA State Bar No. 246953

rmirzaie@raklaw.com

Brian Ledahl

CA State Bar No. 186579

bledahl@raklaw.com

Ben Wang

CA State Bar No. 228712

bwang@raklaw.com

Dale Chang

CA State Bar No. 248657

dchang@raklaw.com

Paul Kroeger

CA State Bar No. 229074

pkroeger@raklaw.com

Neil A. Rubin

CA State Bar No. 250761

nrubin@raklaw.com

Kristopher Davis

CA State Bar No. 329627

kdavis@raklaw.com

James S. Tsuei

CA State Bar No. 285530

jtsuei@raklaw.com

Philip Wang

CA State Bar No. 262239

pwang@raklaw.com

Amy Hayden

CA State Bar No. 287026

ahayden@raklaw.com

Jason M. Wietholter

CA State Bar No. 337139

Case 2:23-cv-00352-JRG-RSP Document 92 Filed 10/08/24 Page 33 of 35 PageID #: 6213
30

jwietholter@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Fl.

Los Angeles, CA 90025

Telephone: 310-826-7474

Andrea L. Fair

MILLER FAIR HENRY PLLC

1507 Bill Owens Parkway 

Longview, Texas 75604 

Telephone: 903-757-6400 

andrea@millerfairhenry.com

Attorneys for Plaintiff 

Headwater Research LLC

Case 2:23-cv-00352-JRG-RSP Document 92 Filed 10/08/24 Page 34 of 35 PageID #: 6214
CERTIFICATE OF SERVICE

I hereby certify that counsel of record who to have consented to electronic service are being 

served on October 8, 2024, with a copy of this document via the Court’s CM/ECF system.

/s/ Marc Fenster

Marc Fenster

Case 2:23-cv-00352-JRG-RSP Document 92 Filed 10/08/24 Page 35 of 35 PageID #: 6215