IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

Civil Action No. 2:23-cv-00379-JRG-RSP

HEADWATER RESEARCH LLC,

Plaintiff,

v.

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

Defendants.

Civil Action No. 2:23-cv-00377-JRG-RSP

DEFENDANTS’ MOTION FOR ENTRY OF AN ORDER FOCUSING ASSERTED 

PATENT CLAIM AND PRIOR ART

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TABLE OF CONTENTS

1. INTRODUCTION................................................................................................................... 1

2. BACKGROUND..................................................................................................................... 2

3. LEGAL STANDARD ............................................................................................................. 3

4. ARGUMENT........................................................................................................................... 4

A. Claim Narrowing Is Needed Now Due to Headwater’s Extreme Number of Claims and 

Accused Products........................................................................................................................ 4

B. Headwater is Uniquely Positioned to Engage in Claim Narrowing Now............................ 5

C. T-Mobile’s Proposal Appropriately Balances the Needs of the Case.................................. 7

5. CONCLUSION ....................................................................................................................... 8

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TABLE OF AUTHORITIES

Cases

Allergan, Inc. v. Teva Pharms. USA,

No. 2:15-CV-1455-WCB, 2017 WL 373462 (E.D. Tex. Jan. 26, 2017)...................................3

Headwater Research LLC v. Samsung Electronics Co., Ltd. et al.,

No. 2:22-CV-00422 (E.D. Tex.) (filed Oct. 26, 2022) ..............................................................6

Headwater Research LLC v. Samsung Electronics Co., Ltd. et al.,

No. 2:22-CV-00467 (E.D. Tex.) (filed Dec. 06, 2022)..............................................................6

Headwater Research LLC v. Samsung Electronics Co., Ltd. et al.,

No. 2:23-CV-00103 (E.D. Tex.) (filed Mar. 10, 2023) .............................................................6

Headwater Research LLC v. Samsung Electronics Co., Ltd. et al.,

No. 2:23-CV-00641 (E.D. Tex.)................................................................................................6

In re Katz Interactive Call Processing Patent Litig.,

639 F.3d 1303 (Fed. Cir. 2011)..................................................................................................3

Oasis Rsch., LLC v. Adrive, LLC,

No. 4:10-CV-00435, 2011 WL 7272473 (E.D. Tex. Sept. 13, 2011)........................................3

Rockstar Consortium U.S. LP v. ASUSTeK Computer, Inc.,

No. 2:13-CV-894-JRG, 2014 WL 3735831 (E.D. Tex. Jul. 28, 2014)......................................4

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

No. 4:11-CV-332, 2012 WL 8017390 (E.D. Tex. Mar. 26, 2012) ............................................3

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TABLE OF EXHIBITS

Exhibit Description

1 Headwater’s Nov. 11, 2023 Disclosure of Asserted Claims and Infringement 

Contentions 

2 Headwater’s Mar. 19, 2023 Amended Disclosure of Asserted Claims and 

Infringement Contentions 

3 Feb. 2, 2024 Letter from K. Dominguez to Marc Fenster 

4 Mar. 4, 2024 Email Chain regarding Claim Narrowing

5 Excerpt of Ex. A to Headwater’s Mar. 19, 2023 Amended Disclosure of Asserted 

Claims and Infringement Contentions 

6 Excerpt of Ex. C to Headwater’s Mar. 19, 2023 Amended Disclosure of Asserted 

Claims and Infringement Contentions 

7 Excerpt of Ex. D to Headwater’s Mar. 19, 2023 Amended Disclosure of Asserted 

Claims and Infringement Contentions 

8 Headwater’s Mar. 3, 2024 Objections and Responses to T-Mobile’s First Set of 

Interrogatories 

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1. INTRODUCTION

T-Mobile respectfully requests entry of an order requiring the parties to narrow the asserted 

patent claims and prior art, to put this case into a manageable posture for fact discovery and claim 

construction. Early claim narrowing in this case is necessary and appropriate because of the 

unusually large number of claims Headwater has asserted (for most of which Headwater provides 

no specific infringement allegations), as well as Headwater’s already-extensive knowledge of the 

subject matter that informs claim narrowing, due to its related litigation.

Headwater currently asserts 281 claims across just four patents and accuses hundreds of 

separate products from a variety of T-Mobile’s suppliers. For well over 200 of the asserted claims, 

Headwater’s contentions say nothing about how the claim is infringed, and instead simply state: 

“See, for example, the disclosures identified for” earlier claims. Headwater’s failure to elect to 

sue on any reasonable subset of these claims renders it virtually impossible for T-Mobile to 

efficiently conduct discovery and prepare for the claim construction process. 

This sheer number of asserted claims would alone warrant an early narrowing by 

Headwater. But narrowing is further warranted here because Headwater is uniquely positioned—

relative to the typical patent plaintiff—to narrow the claims it intends to pursue at trial. In its 

parallel litigations against Samsung, Headwater has asserted closely related patents against many 

of the same Samsung devices, accusing the same functionalities of the Android operating system

in those devices that it accuses in this litigation. And Headwater has already litigated those cases 

for over a year, including recently serving an expert report on infringement on those overlapping 

products and functionalities. Any prejudice to Headwater from the imposition of early claim 

narrowing will thus largely be averted. 

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Despite these unique circumstances, Headwater has consistently refused to narrow its 

claims in any meaningful way. Thus, T-Mobile requests entry of an expedited and somewhat more 

expansive version of the Court’s Model Order Focusing Patent Claims and Prior Art: 

● Headwater shall immediately narrow to no more than 10 claims from each patent and not 

more than a total of 32 claims. 

● 28 days afterwards, T-Mobile shall narrow to no more than twelve prior art references 

against each patent and not more than a total of 40 references. 

● By 28 days before the service of opening expert reports, Headwater shall narrow to no 

more than five asserted claims per patent and no more than a total of 16 claims. 

● By the date for opening expert reports, T-Mobile shall narrow to no more than six asserted 

prior art references per patent and no more than 20 total references. 

T-Mobile’s proposed claim narrowing is necessary in light of the extreme number of asserted 

claims and accused products. And it is justified because Headwater has ample information—

now—to meaningfully reduce its number of asserted claims without facing any credible prejudice. 

2. BACKGROUND

On August 23, 2023, Plaintiff Headwater Research LLC (“Headwater”) Headwater filed 

suit accusing Defendants T-Mobile USA, Inc. and Sprint LLC (collectively, “T-Mobile”) of 

infringing U.S. Patent Nos. 8,589,541 (the “’541 Patent”), 8,924,543 (the “’543 Patent”), 

9,198,042 (the “’042 Patent”), and 9,215,613 (the “’613 Patent”) (collectively, the “Asserted 

Patents”). On November 20, 2023, Headwater served infringement contentions identifying 281 

asserted claims across the four Asserted Patents—174 claims from the ’541 Patent, 68 claims from 

the ’543 Patent, 15 claims from the ’042 Patent, and 24 claims from the ’613 Patent. Ex. 1 at 2. 

On March 19, 2024, in response to T-Mobile’s complaints regarding the deficiencies in 

Headwater’s contentions, Headwater served amended infringement contentions, continuing to 

assert 281 claims. Ex. 2 at 2. 

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On February 2, 2024, T-Mobile requested claim narrowing. Ex. 3. On February 22, 

following a meet and confer, Headwater provided a counter-offer to narrow to 192 total asserted 

claims across all patents by 21 days before the P.R. 4-1 exchange of proposed terms for 

construction with a second narrowing to 128 asserted claims more than two months after that. 

Ex. 4 (K. Davis 2/22/24 email) at 2. Headwater’s proposal would allow it to retain six times as 

many claims as the Court’s Model Order in its Preliminary Election of Asserted Claims and to 

continue to assert 128 claims throughout the entirety of fact discovery. As T-Mobile explained to 

Headwater, this offer “[did] not realistically address[] the concerns Defendants raised,” and left 

T-Mobile with “no guidance” to proceed into discovery. Id. (C. Sim 3/01/2024 email) at 1. 

On March 1, T-Mobile provided an alternate proposal, which was rejected by Headwater 

without a counterproposal. Id. (K. Davis 3/4/24 email) at 1. 

3. LEGAL STANDARD

Courts in this District routinely require narrowing of asserted claims in patent infringement 

cases. Allergan, Inc. v. Teva Pharms. USA, No. 2:15-CV-1455-WCB, 2017 WL 373462, at *1 

(E.D. Tex. Jan. 26, 2017) (collecting cases); In re Katz Interactive Call Processing Patent Litig., 

639 F.3d 1303, 1313 (Fed. Cir. 2011). In so doing, Courts have emphasized the particular need 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) (ordering narrowing to 

“thirty-one (31) total claims across all four (4) patents-at-issue” prior to filing of parties joint claim 

construction statement); Round Rock Rsch., LLC v. Dell Inc., No. 4:11-CV-332, 2012 WL 

8017390, at *2 (E.D. Tex. Mar. 26, 2012) (ordering narrowing to “forty (40) total claims across 

all ten (10) patents-at-issue” prior to exchange of proposed claim constructions).

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4. ARGUMENT 

Meaningful claim narrowing is necessary at this time in order for discovery to proceed in 

a manageable way and to prevent undue burden to T-Mobile in providing relevant discovery and 

investigating its defenses. T-Mobile’s proposal provides for the same number of asserted claims 

for the initial narrowing as in the Court’s model order, but at an earlier stage, and thus strikes an 

appropriate balance to allow for effective case management while not unduly limiting Headwater. 

A. Claim Narrowing Is Needed Now Due to Headwater’s Extreme Number of 

Claims and Accused Products

Absent meaningful narrowing in the near term, T-Mobile will be severely prejudiced in its 

ability to conduct discovery and investigate its defenses for the Asserted Claims. Emblematic of 

the uncommon complexity of the case is U.S. Patent No. 8,589,541, the specification of which 

covers over 125 columns—nearly seven of which are directed to the incorporation by reference of 

allegedly related patent applications and publications—and which accounts for 174 of the 281 

asserted claims. Headwater asserts all 281 claims against hundreds of different products from a 

variety of T-Mobile’s vendors, including Apple, Samsung, Google, Motorola, and Nokia. Some 

of these products run Apple’s iOS operating system, whereas others run manufacturer-specific 

implementations of the Android operating system. See Rockstar Consortium U.S. LP v. ASUSTeK 

Computer, Inc., No. 2:13-CV-894-JRG, 2014 WL 3735831, at *4 (E.D. Tex. Jul. 28, 2014) 

(“[E]ach defendant mobile phone manufacturer modifies and customizes the Android system to its 

own particular purpose[.]”), vacated on other grounds, 588 F. App’x 988 (Fed. Cir. 2014). 

Exacerbating the prejudice to T-Mobile is the fact that, for more than 200 of the Asserted Claims, 

Headwater’s Infringement Contentions contain no unique allegations of infringement, leaving 

T-Mobile without guidance regarding Headwater’s infringement theories to direct discovery. 

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Under these circumstances, early claim narrowing is necessary and appropriate to allow discovery 

to proceed in a fair and manageable way. 

Narrowing is especially warranted now because of Headwater’s general failure to provide 

meaningful information in discovery. For instance, Headwater’s production under Patent Rule 3-2 

included only eight documents—the four asserted patents, and their file histories. Then, on 

February 2, 2024, T-Mobile served seventeen interrogatories on topics including inducement and 

willfulness allegations made in Headwater’s Complaints. But Headwater failed to provide even a 

single meaningful response, and instead repeatedly stated only that it would produce documents 

relevant to T-Mobile’s requests on some undefined future date. See Ex. 8. To date, Headwater 

has provided no supplement. 

Headwater’s “kitchen sink” approach to its asserted claims, if not addressed through early 

claim narrowing, forces T-Mobile to guess on which claims to focus its claim construction efforts. 

Because Headwater provides no specific infringement allegations for over 200 claims, it is unclear 

whether Headwater believes these claims (having different terms and limitations) are simply 

duplicative, or what, if any, limitations of these claims are unique. Absent significant narrowing 

of the claims, T-Mobile will have the onerous task of briefing claim construction across over 200 

claims across just 30 pages, while Headwater can ignore claims it already knows or should know 

it will not assert. This resulting prejudice from this information asymmetry, brought about by 

Headwater’s own failure to assert a reasonable number of claims, confirms the necessity of 

narrowing in the near term—in advance of the parties’ exchange of terms for construction, 

currently set to occur on June 28, 2024. See Dkt. 42 at 4. 

B. Headwater is Uniquely Positioned to Engage in Claim Narrowing Now

Despite having done less work to focus its infringement allegations than is expected of a 

plaintiff in the ordinary course, Headwater is actually better positioned than the typical plaintiff to 

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understand its theories and focus its case at this stage. That is because Headwater has, since 

October 2022, been engaged in a campaign of related patent litigations against Samsung, in which 

it has asserted close family members of the patents asserted in this case, including some identical 

specifications and overlapping subject matter among the claims.1 

Given the overlap in subject matter between the patents and an overlap of some accused 

products, Headwater accuses many of the same or related device functionalities here as in the 

Samsung cases. Indeed, based on the public infringement contentions in the Samsung cases, 

Headwater accuses identical Android OS functionalities of infringement for the Samsung devices

in its cases against Samsung and T-Mobile. Moreover, even though each Android manufacturer 

may have its own unique implementation of the Android OS functionality, Headwater’s 

infringement contentions in this case make no attempt to differentiate the accused Android OS 

functionalities across the different device manufacturers. See, e.g., Ex. 5 (accusing Android OS 

functionalities for Samsung devices); Ex. 6 (accusing Android OS functionalities for Google 

devices); Ex. 7 (accusing Android OS functionalities for Motorola devices). Furthermore, 

Headwater has already had over a year to develop its infringement theories for these functionalities

for the Samsung devices and has already served its expert report on infringement in Headwater’s 

first set of consolidated cases against Samsung. Thus, Headwater’s experience with many of the 

accused devices, including the same functionalities in this case put it in a better position to 

understand and focus its allegations than in the typical patent case. 

1 E.g. Headwater Research LLC v. Samsung Electronics Co., Ltd. et al., No. 2:22-CV-00422 (E.D. 

Tex.) (filed Oct. 26, 2022); Headwater Research LLC v. Samsung Electronics Co., Ltd. et al., No. 

2:22-CV-00467 (E.D. Tex.) (filed Dec. 06, 2022); Headwater Research LLC v. Samsung 

Electronics Co., Ltd. et al., No. 2:23-CV-00103 (E.D. Tex.) (filed Mar. 10, 2023); Headwater 

Research LLC v. Samsung Electronics Co., Ltd. et al., No. 2:23-CV-00641 (E.D. Tex.).

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Headwater is therefore in a substantially better position than a typical patent plaintiff to 

select a reasonable number of claims on which to move forward with discovery. 

C. T-Mobile’s Proposal Appropriately Balances the Needs of the Case

In order to enable manageable discovery without unduly limiting Headwater’s case at an 

early stage, T-Mobile proposes entry of a modified version of the Court’s Model Order which 

requires Headwater to commit to initial narrowing at an earlier stage of the case: 

● Headwater shall immediately serve a Preliminary Election of Asserted Claims which shall 

assert no more than 10 claims from each patent and not more than a total of 32 claims. 

● 28 days after Headwater serves is Preliminary Election of Asserted Claims, T-Mobile shall 

serve a Preliminary Election of Asserted Prior Art, which shall assert no more than twelve 

prior art references against each patent and not more than a total of 40 references.

● No later than 28 days before the service of expert reports by the party with the burden of 

proof on an issue, Headwater shall serve a Final Election of Asserted Claims which shall 

asserted no more than five asserted claims per patent from among the ten previously 

identified claims and no more than a total of 16 claims.

● No later than the date set for the service of expert reports by the party with the burden of 

proof on an issue, T-Mobile shall serve a Final Election of Asserted Prior Art, which shall 

identify no more than six asserted prior art references per patent from among the twelve 

prior art references previously identified for that particular patent, and no more than 20 

total references. 

T-Mobile’s proposal would achieve meaningful narrowing in the near-term, to be followed by 

more focused narrowing after the close of fact discovery. 

Headwater’s offer to “narrow” to 192 asserted claims months down the road and to 

continue to assert 128 claims throughout the entirety of fact discovery would have no material 

effect on case management. Indeed, Headwater’s proposal is so far in excess of the Model Order 

that it would permit Headwater to continue to assert four times as many claims throughout the 

claim construction process. This would only permit Headwater to continue to obfuscate its 

infringement theories—and the claims on which it intends to proceed at trial—throughout the 

entirety of discovery. Given Headwater will ultimately present only a tiny fraction of its 281 

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asserted claims at trial, its insistence on conducting discovery on hundreds of claims is unduly 

burdensome and unreasonable. 

Application of the unmodified Model Order also fails to solve the case management 

problems caused by Headwater’s unreasonable litigation tactics. In this case, the Markman hearing 

date is set to occur only one month before the close of fact discovery. Because the Model Order 

is keyed-off the Markman date, the first round of narrowing would not occur until September 6, 

2024, after most of the fact discovery period would have already elapsed. Forcing T-Mobile to 

wait until the final few months of fact discovery to start meaningfully investigating the claims 

Headwater will actually assert at trial puts unnecessary expense on T-Mobile and unfairly enables 

Headwater to continue to obfuscate what actually matters in this case. Accordingly, material claim 

narrowing is necessary and appropriate now.2 

5. CONCLUSION

For the foregoing reasons, T-Mobile respectfully requests that the Court enter T-Mobile’s 

proposed schedule for narrowing Headwater’s asserted claims and T-Mobile’s asserted prior art.

2 T-Mobile is amenable to any modifications to this proposed schedule that still accomplish the 

goal of material reduction in the number of asserted claims in time to proceed with discovery and 

claim construction in a manageable way. 

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Dated: April 30, 2024 Respectfully Submitted,

/s/ Katherine Q. Dominguez

Katherine Q. Dominguez

kdominguez@gibsondunn.com

Josh A. Krevitt

jkrevitt@gibsondunn.com

Brian Rosenthal

brosenthal@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193

Telephone: (212) 351-4000

Fax: (212) 351-4035

 Robert Vincent

 rvincent@gibsondunn.com

 GIBSON, DUNN & CRUTCHER LLP

 2001 Ross Avenue, Suite 2100

 Dallas, Texas 75201-2923

 Telephone: (214) 698-3100

 Fax: (214) 571-2900 

 Andrew Robb

arobb@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

310 University Ave

Palo Alto, CA 94301

Telephone: (650) 849-5334

Fax: (650) 849-5034

Melissa R. Smith

melissa@gillamsmithlaw.com

GILLIAM & SMITH, LLP

303 South Washington Avenue

Marshall, TX 75670

Telephone: (903) 934-8450

Fax: (903) 934-9257

Attorneys for Defendants 

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CERTIFICATE OF SERVICE

I hereby certify that on April 30, 2024, I caused the foregoing to be electronically filed 

with the Clerk of the Court using CM/ECF, which will send notification of such filing to all 

registered participants.

/s/ Melissa R. Smith

Melissa R. Smith

CERTIFICATE OF CONFERENCE

Pursuant to Local Rule CV-7(h), lead and local counsel for the parties meet and conferred 

regarding this motion on February 22, 2024. Headwater indicated that it opposes this motion. 

/s/ Melissa R. Smith

Melissa R. Smith 

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