IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff, 

vs. 

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 

MEMBER CASE

JURY TRIAL

HEADWATER RESEARCH LLC,

Plaintiff, 

vs. 

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

LLC AND AT&T CORP., 

Defendants.

DEFENDANTS’ REPLY IN SUPPORT OF THEIR MOTION TO FOCUS 

PATENT CLAIMS

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TABLE OF CONTENTS

I. AT&T’S MOTION IS NOT PREMATURE AND PLAINTIFF WOULD NOT BE 

PREJUDICED BY CLAIM NARROWING AT THIS STAGE.........................................1

II. AT&T’S MOTION IS CONSISTENT WITH THE COURT’S MODEL ORDER............3

III. THE CASES CITED BY PLAINTIFF SUPPORT CLAIM NARROWING......................4

IV. CONCLUSION....................................................................................................................5

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TABLE OF AUTHORITIES

Page(s) 

CASES

Allergan, Inc. v. Teva Pharms. USA, 

No. 2:15-CV-1455-WCB, 2017 WL 373462 (E.D. Tex. Jan. 26, 2017) ...............................2, 4 

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

No. 2:23-CV-00160-JRG, Dkt. 62 (E.D. Tex. Oct. 6, 2023) ...............................................4

Hy-Ko Products Co. LLC v. The Hillman Group, Inc., 

No. 2:21-cv-00197-JRG, Dkt. 61 (E.D. Tex. Dec. 9, 2021) ................................................5

In re Katz Interactive Call Processing Patent Litig., 

639 F.3d 1303 (Fed. Cir. 2011)..............................................................................................2, 4 

Intellectual Ventures II LLC v. FedEx Corp., 

No. 2:16-CV-00980-JRG, 2017 WL 65591693 (E.D. Tex. Dec. 22, 2017) ........................4

Oasis Rsch., LLC v. Adrive, LLC, 

No. 4:10-CV-00435, 2011 WL 7272473 (E.D. Tex. Sept. 13, 2011) ........................................5

Round Rock Rsch., LLC v. Dell Inc., 

No. 4:11-CV-332, 2012 WL 8017390 (E.D. Tex. Mar. 26, 2012) ............................................5

TQ Delta, LLC v. CommScope Holding Company, Inc., 

No. 2:21-cv-00310-JRG, Dkt. 128 (E.D. Tex. May 2, 2022) ..............................................5

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Headwater is asserting 281 claims against more than 200 products, and shows no 

willingness to reduce claims at all for another 5 months. This will generate a huge amount of work 

over the next few months for the parties and the Court addressing redundant claims. Indeed, 98%

(i.e., 277) of the asserted claims are dependent claims, which are of no use to Headwater beyond 

the independent claims unless needed to avoid prior art. But, AT&T served its invalidity 

contentions 3 months ago. Headwater has everything that it needs to evaluate the prior art and 

identify a reasonable subset of dependent claims to maintain for validity purposes. So there is no 

reasonable explanation for keeping all 277 dependent claims alive at this stage of the case.

Moreover, despite Headwater’s claims that this motion is “premature,” AT&T has been

more than patient on claim reduction. AT&T first raised the issue during the exchange of case 

management orders back in 2023, before ultimately accepting Headwater’s proposal to revisit 

claim reduction “after the new year.” In the new year, AT&T tried to engage with Headwater on a 

reasonable plan for claim narrowing, but was met with an absolute refusal to narrow any claims 

until 5 months from now, just 3 months before the close of fact discovery. That is simply too late 

to do any good. The time is now—after a full disclosure of invalidity positions—to streamline this 

case from an unwieldy 281 claims to something more manageable. 

I. AT&T’S MOTION IS NOT PREMATURE AND PLAINTIFF WOULD NOT BE 

PREJUDICED BY CLAIM NARROWING AT THIS STAGE

AT&T’s narrowing request is not “premature” (Opp. at 3) and is timed to ensure that the 

Court and the parties focus resources and argument on the claims (from among the hundreds 

Headwater is currently asserting) that Headwater is most likely to bring to trial. AT&T’s proposal

merely seeks to reduce the claims and prior art1 to a reasonable, manageable number to ensure that 

the Court’s and parties’ resources are not wasted.

 1 AT&T would agree to narrow its asserted prior art references as part of any case narrowing order.

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Contrary to Headwater’s statement that Federal Circuit law “mandates” that “claim 

reduction should not be ordered ‘too early in the discovery process,’” Opp. at 1 (citing In re Katz, 

639 F.3d 1303, 1309 (Fed. Cir. 2011)), the Federal Circuit has sanctioned claim reduction far 

earlier than where the current case stands. See, e.g., In re Katz, 639 F.3d at 1309-11 (affirming 

court’s reduction of claims prior to any discovery and any disclosure of prior art references). While 

Headwater is correct that “the Court’s Model Order does not require a reduction until ‘the date set 

for completion of claim construction discovery,’” Opp. at 1, AT&T’s request is not premature 

given the exceedingly large number of asserted claims and accused products in this case, coupled 

with the fact that Markman is scheduled at the very end of a long fact discovery period. 

Headwater’s arguments on timing also ignore the fact that Headwater asserts the same 

patent claims against, largely, the same accused products in a case against Verizon that was filed 

more than 9 months ago. Mot. at 8-9. That Headwater has allegedly dragged its feet in discovery 

there (Opp. at 8) is of no moment here, is Headwater’s own choice, and it only further proves the 

point that Headwater simply does not need to continue asserting so many claims against AT&T.

Finally, Headwater’s claim that it would somehow be prejudiced by claim narrowing at 

this stage, Opp. at 3-4, is undermined by its admission that “discovery will overlap for more than 

70% of the claims.” Opp. at 7. As a result, narrowing now will not “deny the patentee the 

‘opportunity to determine whether particular claims might raise separate issues of infringement or 

invalidity in light of the defendants’ accused products and proposed defenses’” because Headwater 

already has AT&T’s invalidity theories. Allergan, Inc. v. Teva Pharms. USA, No. 2:15-CV-1455-

WCB, 2017 WL 373462, at *2 (E.D. Tex. Jan. 26, 2017) (quoting In re Katz, 639 F.3d at 1309). 

The only prejudiced party is AT&T, which is currently in the dark about which of the 281 asserted 

claims will be included in the small handful that Headwater will eventually take to trial. 

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II. AT&T’S MOTION IS CONSISTENT WITH THE COURT’S MODEL ORDER

Headwater next argues that AT&T’s request to narrow is “extreme.” Opp. at 3. Far from 

being “extreme,” AT&T’s request is consistent with the Court’s Model Order. The Model Order 

specifically encourages claim narrowing “based on case-specific factors such as commonality 

among asserted patents, the number and diversity of accused products, the complexity of the 

technology, the complexity of the patent claims, and the complexity and number of other issues in 

the case that will be presented to the judge and/or jury.” Model Order, 1. Here, there is significant 

commonality among the asserted patents and claims as evidenced by the large number of 

dependent claims and a huge number of different accused products across 10+ different vendors, 

which makes this case ripe for claim narrowing. And while the Model Order does not typically 

require a reduction until “the date set for completion of claim construction discovery,” id., the 

Court’s Model Order is merely a model that can and should be crafted to fit the specifics of a given 

case. And here, the Markman hearing is set to occur very late in the schedule, i.e., more than 90% 

of the way through the fact discovery window. Thus, the Court should order Headwater to limit its 

claims now because waiting until the conclusion of claim construction discovery would cause the 

parties and the Court to waste valuable resources litigating hundreds of claims—nearly all of which 

will be dropped—right up to the precipice of expert reports. 

Headwater claims that AT&T’s argument regarding the timing of the Markman hearing 

and claim reduction “makes no sense,” Opp. at 5, but Headwater simply cannot dispute that 

valuable resources will be wasted by the Court and parties if claim reduction does not occur until 

the date set for completion of claim construction discovery. Just the Markman process alone will 

be wasteful and unmanageable because both parties will be required to identify proposed claim 

terms across hundreds of claims, even though Headwater admits that in substance its claims are

largely overlapping. Opp. at 7. Further, claim narrowing at this stage is not “contrary to law,” Opp. 

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at 5, as the Federal Circuit has endorsed claim narrowing early in cases, including earlier in the 

discovery process than this case. See In re Katz, 639 F.3d at 1309-11. 

III. THE CASES CITED BY PLAINTIFF SUPPORT CLAIM NARROWING

Headwater cites several cases that actually support granting AT&T’s claim narrowing 

request. Headwater cites the Court’s denial of a claim narrowing request in CogniPower LLC v. 

Samsung Electronics Co., Ltd., No. 2:23-CV-00160-JRG, Dkt. 62 at 1 (E.D. Tex. Oct. 6, 2023)

and argues that “there still has not been sufficient discovery to allow Headwater to determine 

which of its asserted claims will be impacted by AT&T’s noninfringement and invalidity 

positions.” Opp. at 4. But CogniPower involved almost 100 fewer asserted claims than this case, 

and the Defendant there had not served invalidity contentions and had received an extension on 

serving contentions prior to its narrowing request. CogniPower, Dkt. 62 at 1-2. By contrast, 

Headwater has now had AT&T’s invalidity contentions for 3 months.

Headwater also relies on Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV-00980-

JRG, 2017 WL 6559169 (E.D. Tex. Dec. 22, 2017). Opp. at 5. But that case involved significantly 

fewer asserted claims and the claim narrowing request occurred at a much later stage in the 

litigation, when the parties were seeking to narrow in preparation for trial. Intellectual Ventures II, 

2017 WL 6559169, at *1. Further, the Court specifically stated that “the Model Order may, in 

appropriate circumstances, provide useful guideposts at the outset of litigation in reducing claims,” 

id. at *2, which supports AT&T’s request in this case. 

The Allergan case cited by Headwater, Opp. at 6, also supports AT&T, as the Plaintiff, at 

the Court’s urging, did reduce the number of asserted claims at the outset of the case. Allergan, 

2017 WL 373462, at *1. While the Court ultimately denied a later claim narrowing request, the 

number of asserted claims in that case was significantly less than the number of asserted claims in 

this case. Id. at *1-2. Further, the Court noted that “Courts in this district, in appropriate 

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circumstances, have required patentees to reduce the number of asserted claims, both before and 

after the issuance of the Order Focusing Patent Claims.” Id. at *1. 

Headwater also states that in TQ Delta, LLC v. CommScope Holding Company, Inc., No. 

2:21-cv-00310-JRG, Dkt. 128 (E.D. Tex. May 2, 2022), the Court “ordered claim narrowing after 

the claim construction proceedings had begun.” Opp. at 6. But the Court in that case actually 

granted Defendants’ request to enter the Model Order. TQ Delta, Dkt. 128 at 1. Simply because 

the Court entered the order after the claim construction process does not mean that the Court should 

wait to enter the order in this case, especially given the large number of overlapping (and mostly 

dependent) claims here. Headwater’s citation to Hy-Ko Products Co. LLC v. The Hillman Group, 

Inc., No. 2:21-cv-00197-JRG, Dkt. 61 (E.D. Tex. Dec. 9, 2021), Opp. at 6, is similarly unavailing, 

as the Court simply entered the Model Order and did not address claim narrowing issues related 

to the assertion of hundreds of claims. Hy-Ko, Dkt. 61 at 1. 

Finally, Headwater points out that the Oasis and Round Rock cases were decided by a 

different judge in conjunction with motions to compel, Opp. at 6. But these facts do not impact 

this Court’s ability to “limit the number of asserted claims in cases for patent infringement when 

the number of claims is so large as to make the case inefficient and unmanageable.” Oasis Rsch., 

LLC v. Adrive, LLC, No. 4:10-CV-00435, 2011 WL 7272473, at *2 (E.D. Tex. Sept. 13, 2011); 

Round Rock Rsch., LLC v. Dell Inc., No. 4:11-CV-332, 2012 WL 8017390, at *2 (E.D. Tex. Mar. 

26, 2012) (same). Consistent with this practice, the Court should require Headwater to limit the 

number of asserted claims now. 

IV. CONCLUSION

AT&T respectfully requests that the Court either order Headwater to drop to 32 claims 

immediately or initiate any other phased reduction the Court deems appropriate.

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Dated: May 3, 2024 Respectfully submitted,

/s/ Nicholas Mathews

Nicholas Mathews (Lead Counsel) 

Texas State Bar No. 24085457 

nmathews@McKoolSmith.com 

Erik B. Fountain 

Texas State Bar No. 24097701 

efountain@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 

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 MOBILITY LLC, 

AND AT&T SERVICES INC.

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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 May 3, 2024. 

/s/ Nicholas Mathews

Nicholas Mathews

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