1 

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff, 

vs. 

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

MOBILITY, LLC AND AT&T CORP., 

Defendants.

Civil Action No. 2:23-cv-00397 

LEAD CASE

JURY TRIAL

Civil Action No. 2:23-cv-00398 

JURY TRIAL

HEADWATER RESEARCH LLC,

Plaintiff, 

vs. 

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

MOBILITY, LLC AND AT&T CORP., 

Defendants.

AT&T’S ANSWER

Defendants AT&T Services, Inc., AT&T Mobility, LLC, and AT&T Corp., (collectively 

“AT&T’ or “Defendants”)0F

1

, by and through counsel, hereby submit this Answer to Plaintiff 

Headwater Research LLC’s (“Plaintiff”) complaint (Dkt. 1) as follows:

GENERAL DENIAL

Except as expressly admitted below, AT&T denies each and every allegation set forth in 

the Complaint. Any factual allegation admitted below is admitted only as to the specific admitted 

 

1 Plaintiff’s Complaint also included claims against AT&T Inc. The parties have, however, filed a 

joint stipulation pursuant to Fed. R. Civ. P. 41(a) dismissing that entity. As used herein, the terms 

“AT&T” and “Defendants” does not include AT&T Inc. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 1 of 18 PageID #: 305
2

facts, and not as to any purported conclusions, characterizations, or implications that might follow 

from the admitted facts. 

RESPONSES TO NUMBERED PARAGRAPHS IN THE COMPLAINT

BACKGROUND

1. AT&T denies the allegations of Paragraph 1 of the Complaint.

2. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of the allegations contained in Paragraph 2 of the Complaint, and therefore denies these 

allegations. 

3. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 3 of the Complaint, and therefore denies these 

allegations. 

4. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 4 of the Complaint, and therefore denies these 

allegations. 

5. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 5 of the Complaint, and therefore denies these 

allegations. 

6. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 6 of the Complaint, and therefore denies these 

allegations. 

7. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 7 of the Complaint, and therefore denies these 

allegations. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 2 of 18 PageID #: 306
3

8. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 8 of the Complaint, and therefore denies these 

allegations. 

9. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 9 of the Complaint, and therefore denies these 

allegations. 

10. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 10 of the Complaint, and therefore denies these 

allegations. 

11. AT&T admits that smartphones and other mobile devices are widely used and may 

be used for various activities. AT&T also admits that it is possible to exchange data over the 

Internet using wireless and cellular networks. Except as expressly admitted, AT&T denies these 

allegations. 

12. AT&T admits that overall data consumption by mobile devices has increased since 

2011. Except as expressly admitted, AT&T does not have knowledge or information sufficient to 

form a belief as to the truth of the remaining allegations contained in Paragraph 12 of the 

Complaint, and therefore denies these allegations. 

13. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 13 of the Complaint, and therefore denies these 

allegations. 

14. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in paragraph 14 of the Complaint, and therefore denies these 

allegations. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 3 of 18 PageID #: 307
4

15. AT&T denies the allegations of Paragraph 15 of the Complaint.

NOTICE OF THE ASSERTED PATENTS

16. AT&T denies the allegations of Paragraph 16 of the Complaint.

17. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 17 of the Complaint, and on that basis denies them. 

18. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 18 of the Complaint, and on that basis denies them. 

19. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 19 of the Complaint, and on that basis denies them. 

20. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 20 of the Complaint, and on that basis denies them. 

21. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 21 of the Complaint, and on that basis denies them. 

22. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 22 of the Complaint, and on that basis denies them. 

23. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 23 of the Complaint, and on that basis denies them. 

24. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 24 of the Complaint, and on that basis denies them.

25. AT&T denies the allegations of Paragraph 25 of the Complaint. 

26. AT&T denies the allegations of Paragraph 26 of the Complaint.

27. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 27 of the Complaint, and on that basis denies them. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 4 of 18 PageID #: 308
5

28. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 28 of the Complaint, and on that basis denies them. 

29. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 29 of the Complaint, and on that basis denies them. 

30. AT&T lacks knowledge or information sufficient to form a belief as to the truth of 

the allegations of Paragraph 30 of the Complaint, and on that basis denies them. 

31. AT&T denies the allegations of Paragraph 31 of the Complaint.

PLAINTIFF HEADWATER AND THE PATENTS-IN-SUIT

32. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 32 of the Complaint, and therefore denies these 

allegations.

33. AT&T admits that Exhibit 1 of the Complaint purports to be a copy of U.S. Patent 

No. 8,589,541, entitled “Device-assisted services for protecting network capacity.” Except as 

expressly admitted, AT&T does not have knowledge or information sufficient to form a belief as 

to the truth of allegations contained in Paragraph 33 of the Complaint, and therefore denies these 

allegations.

34. AT&T admits that Exhibit 2 of the Complaint purports to be a copy of U.S. Patent 

No. 9,215,613, entitled “Wireless end-user device with differential traffic control policy list having 

limited user control.” Except as expressly admitted, AT&T does not have knowledge or 

information sufficient to form a belief as to the truth of allegations contained in Paragraph 34 of 

the Complaint, and therefore denies these allegations.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 5 of 18 PageID #: 309
6

DEFENDANTS AND THE ACCUSED INSTRUMENTALITIES

35. Plaintiff has voluntarily dismissed AT&T Inc. from this lawsuit. No response is 

required to the allegations in Paragraph 35 of the Complaint because AT&T Inc. is no longer a 

party to this action. 

36. AT&T admits the allegations of Paragraph 36 of the Complaint.

37. AT&T admits the allegations of Paragraph 37 of the Complaint.

38. AT&T admits the allegations of Paragraph 38 of the Complaint.

39. AT&T admits that the Complaint purports to accuse mobile electronic devices, 

mobile phones, tablets, cellular networks, servers, and services of patent infringement. Except as 

expressly admitted, AT&T denies the remaining allegations of Paragraph 39 of the Complaint. 

JURISDICTION AND VENUE

40. AT&T admits that the Complaint purports to allege patent infringement under Title 

35 of the United States Code. AT&T denies that it infringes any asserted patent.

41. The allegations of Paragraph 41 of the Complaint contain legal conclusions to 

which no response is required. To the extent a response is deemed to be required, AT&T 

specifically denies the legal sufficiency of the claims and allegations asserted in the Complaint, 

and further denies that Plaintiff has any viable claim thereunder. To the extent Plaintiff does not 

have substantially all rights in the Asserted Patents, AT&T specifically denies that Plaintiff has 

standing to bring this lawsuit, and thus denies that this Court has subject matter jurisdiction over 

the dispute. 

42. The allegations of Paragraph 42 of the Complaint contain legal conclusions to 

which no response is required. To the extent a response is deemed to be required, for purposes of 

this action only, AT&T does not contest that this Court has personal jurisdiction over the named 

defendants. AT&T specifically denies the legal sufficiency of the claims and allegations asserted 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 6 of 18 PageID #: 310
7 

in the Complaint, and further denies that Plaintiff has any viable claim thereunder. To the extent 

Plaintiff does not have substantially all rights in the Asserted Patents, AT&T specifically denies 

that Plaintiff has standing to bring this lawsuit, and thus denies that this Court has subject matter 

jurisdiction over the dispute. Except as expressly admitted, AT&T denies the remaining allegations 

of Paragraph 42 of the Complaint. 

43. AT&T denies the allegations of paragraph 43 of the Complaint. 

44. The allegations of Paragraph 44 of the Complaint contain legal conclusions to 

which no response is required. To the extent a response is deemed required, AT&T denies the 

allegations of Paragraph 44 of the Complaint. 

45. AT&T admits that the Complaint purports to reference the webpage 

https://www.att.com/maps/wireless-coverage.html. Except as expressly admitted, AT&T denies 

the remaining allegations of Paragraph 45 of the Complaint. 

46. AT&T admits that the Complaint purports to reference data from the webpage 

https://investors.att.com/~/media/Files/A/ATT-IR-V2/financial-reports/quarterlyearnings/2022/1Q22/ATT_1Q22_8K.pdf. Except as expressly admitted, AT&T denies the 

remaining allegations of Paragraph 46 of the Complaint. 

47. AT&T admits that the Complaint purports to identify authorized AT&T retailers in 

Texas purportedly referenced at the webpage https://www.att.com/maps/wireless-coverage.html. 

Except as expressly admitted, AT&T denies the remaining allegations of Paragraph 47 of the 

Complaint.

48. AT&T admits that the Complaint purports to reference the webpage 

https://about.att.com/story/2018/plano_foundry.html. Except as expressly admitted, AT&T denies 

the remaining allegations of Paragraph 48 of the Complaint. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 7 of 18 PageID #: 311
8

COUNT I – CLAIM FOR (ALLEGED) INFRINGEMENT OF THE ’541 PATENT

49. AT&T incorporates by reference its responses to each of the preceding Paragraphs 

of the Complaint. 

50. AT&T admits that Exhibit 1 of the Complaint purports to be a copy of U.S. Patent 

No. 8,589,541, which is titled “Device-assisted services for protecting network capacity” and 

which purports to have issued on November 19, 2013. Except as expressly admitted, AT&T does 

not have knowledge or information sufficient to form a belief as to the truth of allegations 

contained in Paragraph 50 of the Complaint, and therefore denies these allegations.

51. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 51 of the Complaint, and therefore denies these 

allegations.

52. The allegations of Paragraph 52 contain legal conclusions to which no response is 

required. To the extent a response is deemed required, AT&T denies the allegations in Paragraph 

52 of the Complaint.

53. The allegations of paragraph 53 contain legal conclusions to which no response is 

required. To the extent a response is deemed required, AT&T denies the allegations in Paragraph 

53 of the Complaint.

54. AT&T denies the allegations of Paragraph 54 of the Complaint.

55. AT&T denies the allegations of Paragraph 55 of the Complaint.

56. AT&T admits that Exhibit 3 to the Complaint is a chart that purports to include 

Plaintiff’s allegations regarding infringement of claim 1 of the ’541 Patent. AT&T denies that it 

infringes the ’541 Patent and denies the remaining allegations in Paragraph 56 of the Complaint.

57. AT&T denies the allegations of Paragraph 57 of the Complaint.

58. AT&T denies the allegations of Paragraph 58 of the Complaint.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 8 of 18 PageID #: 312
9

59. AT&T denies the allegations of Paragraph 59 of the Complaint.

60. AT&T denies the allegations of Paragraph 60 of the Complaint.

61. AT&T denies the allegations of Paragraph 61 of the Complaint.

62. AT&T denies the allegations of Paragraph 62 of the Complaint. 

COUNT 2 – CLAIM FOR (ALLEGED) INFRINGEMENT OF THE ’613 PATENT

63. AT&T incorporates by reference its responses to each of the preceding Paragraphs 

of the Complaint. 

64. AT&T admits that Exhibit 2 of the Complaint purports to be a copy of U.S. Patent 

No. 9,215,613, which is titled “Wireless end-user device with differential traffic control policy list 

having limited user control” and which purports to have issued on December 15, 2015. Except as 

expressly admitted, AT&T does not have knowledge or information sufficient to form a belief as 

to the truth of allegations contained in Paragraph 64 of the Complaint, and therefore denies these 

allegations.

65. AT&T does not have knowledge or information sufficient to form a belief as to the 

truth of allegations contained in Paragraph 65 of the Complaint, and therefore denies these 

allegations.

66. The allegations of Paragraph 66 contain legal conclusions to which no response is 

required. To the extent a response is deemed required, AT&T denies the allegations in Paragraph 

66 of the Complaint.

67. The allegations of Paragraph 67 contain legal conclusions to which no response is 

required. To the extent a response is deemed required, AT&T denies the allegations in Paragraph 

67 of the Complaint.

68. AT&T denies the allegations of Paragraph 68 of the Complaint.

69. AT&T denies the allegations of Paragraph 69 of the Complaint.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 9 of 18 PageID #: 313
10

70. AT&T admits that Exhibit 4 to the Complaint is a chart that purports to include 

Plaintiff’s allegations regarding infringement of claim 1 of the ’613. AT&T denies that it infringes 

the ’613 Patent and denies the remaining allegations in Paragraph 70 of the Complaint.

71. AT&T denies the allegations of Paragraph 71 of the Complaint.

72. AT&T denies the allegations of Paragraph 72 of the Complaint.

73. AT&T denies the allegations of Paragraph 73 of the Complaint.

74. AT&T denies the allegations of Paragraph 74 of the Complaint.

75. AT&T denies the allegations of Paragraph 75 of the Complaint.

76. AT&T denies the allegations of Paragraph 76 of the Complaint.

RESPONSE TO PLAINTIFF’S JURY DEMAND

77. To the extent that a response is deemed required, AT&T demands a jury trial

pursuant to Fed. R. Civ. P. 38.

RESPONSE TO PLAINTIFF’S RELIEF REQUESTED

AT&T denies that Plaintiff is entitled to any relief, including without limitation the relief 

sought by Plaintiff under Paragraphs A-G of the Complaint. 

AT&T’S AFFIRMATIVE AND OTHER DEFENSES

FIRST DEFENSE

(Failure to State a Claim)

The Complaint fails to state a claim upon which relief can be granted.

SECOND DEFENSE

(Non-Infringement)

AT&T has not infringed and does not infringe any valid and enforceable claim of the 

Asserted Patents, directly, indirectly, contributorily, or by inducement. Further, Headwater is 

precluded under the doctrines of disclaimer and prosecution history estoppel from asserting a scope 

for any claim of the Asserted Patents that would encompass any AT&T product or service.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 10 of 18 PageID #: 314
11

THIRD DEFENSE

(No Willful Infringement)

Headwater is not entitled to enhanced damages under 35 U.S.C. § 284 because Headwater

has failed to meet, and cannot meet as a matter of law, the requirements for willful infringement.

FOURTH DEFENSE

(Invalidity / Ineligibility)

Each claim of the Asserted Patents is invalid for failure to satisfy one or more of the 

requirements of the Patent Act, 35 U.S.C. § 1 et seq., but not limited to, the conditions of 

patentability set forth in 35 U.S.C. § § 101, 102, 103, and 112. For example, each claim is invalid 

in view of the references cited by the Examiner and arguments made by the Applicants during 

prosecution of the application that issued as the Asserted Patents.

FIFTH DEFENSE

(License, Exhaustion, or Failure to Mark)

Headwater’s claims are barred, or its damages limited, in whole or in part by one or more 

of the following: express or implied license (including any licenses executed by prior owners of 

the Asserted Patents), doctrine of patent exhaustion, failure to mark pursuant to the requirements 

of 35 U.S.C. § 287(a), and the single recovery rule.

SIXTH DEFENSE

(Lack of Standing)

To the extent that Headwater was not the sole and total owner of all substantial rights in 

any of the Asserted Patents as of the filing date of the Complaint, Headwater lacks standing to 

bring one or more claims in this lawsuit. Headwater does not have the right to file suit for 

infringement as a “patentee” under Title 35 of the patent statute. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 11 of 18 PageID #: 315
12

SEVENTH DEFENSE

(Equitable Bars)

Headwater’s claims are barred in whole or in part by the doctrine of waiver, estoppel, 

prosecution laches, and/or other equitable doctrines, including inequitable conduct during 

prosecution of the Asserted Patents before the U.S. Patent and Trademark Office.

EIGHTH DEFENSE

(Statute of Limitations)

Any claim by Headwater for damages is limited by 35 U.S.C. §§ 252, 286, 287, or 307. 

Headwater is barred by 35 U.S.C. § 288 from recovering costs associated with this action.

NINTH DEFENSE

(Statutory Limitation)

To the extent certain equipment accused of infringing the Asserted Patents are used by 

and/or manufactured for the United States Government, Headwater’s claims involving AT&T with 

respect to such equipment may not be pursued in this Court and are subject to other limitations 

pursuant to 28 U.S.C. § 1498.

TENTH DEFENSE

(No Injunctive Relief)

Headwater’s claims are barred in whole or in part because Headwater is not entitled to 

injunctive relief. Any alleged injury to Headwater is not immediate or irreparable and Headwater 

has an adequate remedy at law.

ELEVENTH DEFENSE

(Patent Ownership)

Headwater has failed to adequately plead ownership of the patents asserted in the 

Complaint.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 12 of 18 PageID #: 316
13

TWELFTH DEFENSE

(No Exceptional Case)

Headwater cannot prove that this is an exceptional case justifying award of attorney fees 

against AT&T pursuant to 35 U.S.C. § 285.

THIRTEENTH DEFENSE

(Ensnarement)

Headwater cannot assert the claims of the Asserted Patents under the doctrine of 

equivalents to cover the accused products because such an asserted scope of equivalency would 

encompass or ensnare the prior art.

PRAYER FOR RELIEF

WHEREFORE, AT&T asks this Court to enter judgment in favor of AT&T and against 

Plaintiff by granting the following relief:

A. A dismissal of all claims in Plaintiff’s Complaint with prejudice and a complete 

denial of Plaintiff’s requests for damages, injunctive relief, interests, costs, 

expenses, accounting, attorneys’ fees, and any other form of relief, and

B. An award to AT&T of their reasonable attorneys’ fees, costs, and all interest 

(including without limitation any attorney fee award based on 35 U.S.C. § 285) and 

any such other and further relief as the Court finds just and proper. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 13 of 18 PageID #: 317
14 

COUNTERCLAIMS

Defendants and Counterclaim-Plaintiffs AT&T Services, Inc., AT&T Mobility, LLC, and 

AT&T Corp., (collectively “AT&T” or “Counterclaimants”) bring the following counterclaims 

against Plaintiff and Counterclaim-Defendant Headwater Research LLC “Headwater” or 

“Counterclaim-Defendant”). 

THE PARTIES

1. Defendant and Counterclaim-Plaintiff AT&T Services, Inc. is a corporation 

organized under the State of Delaware, with its principal place of business in Dallas, Texas. 

2. Defendant and Counterclaim-Plaintiff AT&T Mobility, LLC is a limited liability 

company organized under the laws of the State of Delaware, with its principal place of business in 

Atlanta, Georgia.

3. Defendant and Counterclaim-Plaintiff AT&T Corp. is a corporation organized 

under the laws of the State of New York, with its principal place of business in Bedminster, New 

Jersey. 

4. Upon information and belief, and based on paragraph 32 of the Complaint as 

pleaded by Counterclaim-Defendant, Headwater Research LLC is a Texas limited liability 

company with its headquarters at 110 North College Avenue, Suite 1116, Tyler, Texas 75702. 

JURISDICTION AND VENUE

5. This court has jurisdiction over these counterclaims pursuant to the Federal Patent 

Act, 28 U.S.C. §§ 1331 and 1338(a).

6. Counterclaim-Defendant has subjected itself to personal jurisdiction by 

maintaining its lawsuit against AT&T in this judicial district.

7. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 14 of 18 PageID #: 318
15 

8. Counterclaim-Defendant has sued AT&T for alleged infringement of the ’541 

Patent and the ’613 Patent. AT&T denies infringement and denies that the claims of the asserted 

patents are valid. There is therefore a substantial, actual, and continuing controversy between 

Counterclaim-Defendants and AT&T as to the validity and infringement of the asserted patents.

COUNT I 

(Declaratory Judgment of Invalidity of the ’541 Patent) 

9. AT&T repeats and realleges the allegations in each of the foregoing Counterclaim 

paragraphs as if fully set forth herein. 

10. The ’541 Patent claims are invalid and/or patent ineligible for failing to meet one 

or more of the requisite statutory and decisional requirements and/or conditions for patentability 

and/or patent eligibility under Title 35 of the United States Code, including, without limitation, §§ 

101, 102, 103 and/or 112. 

11. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from uncertainty and controversy that Counterclaim-Defendant’s allegations have 

created, AT&T is entitled to a declaratory judgment that the ’541 Patent is invalid and/or patentineligible. 

COUNT II

(Declaratory Judgment of Invalidity of the ’613 Patent) 

12. AT&T repeats and realleges the allegations in each of the foregoing Counterclaim 

Paragraphs as if fully set forth herein.

13. The ’613 Patent claims are invalid and/or patent ineligible for failing to meet one 

or more of the requisite statutory and decisional requirements and/or conditions for patentability 

and/or patent eligibility under Title 35 of the United States Code, including, without limitation, §§ 

101, 102, 103 and/or 112. 

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 15 of 18 PageID #: 319
16

14. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from uncertainty and controversy that Counterclaim-Defendant’s allegations have 

created, AT&T is entitled to a declaratory judgment that the ’613 Patent is invalid and/or patentineligible. 

JURY DEMAND

15. AT&T hereby demands trial by jury in this action on all issues so triable. 

EXCEPTIONAL CASE

16. This case is an exceptional case entitling AT&T to an award of its reasonable 

attorneys’ fees incurred in connection with this action pursuant to 35 U.S.C. § 285, as a result of,

inter alia, Counterclaim-Defendant’s assertion of its Asserted Patents against AT&T with the 

knowledge that they are not infringed, invalid, and/or unenforceable.

PRAYER FOR RELIEF

WHEREFORE, AT&T respectfully requests that this Court:

A. Enter judgment against Counterclaim-Defendant and dismiss the claims filed by 

Counterclaim-Defendant against AT&T with prejudice;

B. Determine and declare that the claims of the asserted patents are invalid and/or 

patent-ineligible;

C. Award AT&T their costs, disbursements, and reasonable attorneys’ fees incurred 

in this action; and, 

D. Grant such other and further relief as the Court may deem just and proper.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 16 of 18 PageID #: 320
17 

Dated: November 13, 2023 Respectfully submitted,

/s/ Nicholas Mathews

Nicholas Mathews (Lead Counsel)

Texas State Bar No. 24085457 

nmathews@McKoolSmith.com 

Alexander J. Chern 

Texas State Bar No. 24109718 

achern@McKoolSmith.com 

Clare Churchman

Texas State Bar No. 24132041 

cchurchman@mckoolsmith.com 

MCKOOL SMITH, P.C.

300 Crescent Court Suite 1500 

Dallas, TX 75201 

Telephone: (214) 978-4000 

Telecopier: (214) 978-4044 

Kevin Hess

Texas State Bar No. 

khess@mckoolsmith.com 

MCKOOL SMITH, P.C.

303 Colorado Street, Suite 2100 

Austin, TX 78701 

Telephone: (512) 692-8752 

Kaylee E. Hoffner

Texas State Bar No. 24127036 

khoffner@McKoolSmith.com 

MCKOOL SMITH, P.C.

600 Travis Street Suite 7000 

Houston, TX 77002 

Telephone: (713) 485-7300 

Telecopier: (713) 485-7344 

Deron R. Dacus 

State Bar No. 00790553 

ddacus@dacusfirm.com 

THE DACUS FIRM, PC

821 ESE Loop 323, Suite 430 

Tyler, TX 75701 

Telephone: (903)705-1117 

Facsimile: (903) 581-2543 

AT&T CORP., AT&T INC., AT&T 

MOBILITY LLC, AND AT&T 

SERVICES INC.

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 17 of 18 PageID #: 321
18 

CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has been 

served on all counsel of record via the Court’s ECF system on November 13, 2023. 

/s/ Nicholas Mathews

Nicholas Mathews

Case 2:23-cv-00397-JRG-RSP Document 28 Filed 11/13/23 Page 18 of 18 PageID #: 322