1

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.

JOINT PROPOSED MOTION TO FOCUS

ASSERTED PATENT CLAIMS AND PRIOR ART

Plaintiff Headwater Partners II LLC (“Headwater”) and Defendants AT&T Services, Inc., 

AT&T Mobility LLC and AT&T Corp. (collectively, “AT&T”) (all together, the “Parties”), hereby 

jointly request that the Court enter the proposed Motion to Focus Asserted Patent Claims and Prior 

Art.

Pursuant to the Court’s Order in Headwater Research LLC, v. Verizon Communications, Inc. 

et al, 2-23-cv-00352 (Dkt No. 68) focusing the number of patent claims and prior art, the Parties have 

agreed to abide by the same terms in the above-captioned cases. Accordingly, the Parties request that 

the Court Order as follows:

Case 2:23-cv-00397-JRG-RSP Document 60 Filed 05/31/24 Page 1 of 5 PageID #: 1125
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1. This Order supplements all other discovery rules and orders. It streamlines the issues 

in this case to promote a “just, speedy, and inexpensive determination” of this action, as provided by 

Federal Rule of Civil Procedure0F

1

.

2. By the date set for the Plaintiff to serve its opening claim construction brief pursuant 

to P.R. 4-5(a), Plaintiff shall serve a Preliminary Election of Asserted Claims, which shall assert no 

more than ten claims from each patent and not more than a total of 32 claims. Not later than 14 days 

after service of the Preliminary Election of Asserted Claims, Defendant 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.1F

2

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

of proof on an issue, Plaintiff shall serve a Final Election of Asserted Claims, which shall identify no 

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

more than a total of 16 claims. By the date set for the service of expert reports by the party with the 

burden of proof on an issue, Defendant 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 a total of 20 references.2 F

3

 

For purposes of this Final Election of Asserted Prior Art, each obviousness combination counts as a 

separate prior art reference. 

4. Subject to Court approval, the parties may modify this Order by agreement, but should 

endeavor to limit the asserted claims and prior art references to the greatest extent possible. Absent 

 1 For purposes of this Order, a prior art instrumentality (such as a device or process) and associated references that 

describe that instrumentality shall count as one reference, as shall the closely related work of a single prior artist.

2 This final election of Asserted Claims is separate from and in addition to the patent claimant’s final pre-trial election 

of Asserted Claims as required by the Docket Control Order, which is set to occur 10 days before jury selection. (Dkt. 

No. 41 at 1.)

3 This final election of Asserted Prior Art is separate from and in addition to the patent claimant’s final pre-trial election 

of Asserted Prior Art as required by the Docket Control Order, which is set to occur 7 days before jury selection. (Dkt. 

No. 41 at 1.)

Case 2:23-cv-00397-JRG-RSP Document 60 Filed 05/31/24 Page 2 of 5 PageID #: 1126
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agreement, post-entry motions to modify this Order’s numerical limits on asserted claims and prior 

art references must demonstrate good cause warranting the modification. Motions to modify other 

portions of this Order are committed to the sound discretion of the Court.3F

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In light of the Parties’ agreement to adopt the aforementioned claim reduction terms, the 

Parties further agree that AT&T’s Motion to Focus Patent Claims (Dkt No. 53) shall be moot in the 

event the Court enters this joint proposed order.

Dated: May 31, 2024

/s/ Nicholas Mathews

Nicholas Mathews

Texas State Bar No. 24085457 

nmathews@McKoolSmith.com Texas 

State Bar No. 24078867 

Erik Fountain 

efountain@McKoolSmith.com Texas 

State Bar No. 24097701 

MCKOOL SMITH, P.C.

300 Crescent Court Suite 1500

Dallas, TX 75201

Telephone: (214) 978-4000

Telecopier: (214) 978-4044

ATTORNEYS FOR AT&T

SERVICES, INC., AT&T

MOBILITY LLC AND AT&T 

CORP.

/s/ Marc Fenster _____________

Marc Fenster

CA State Bar No. 181067 

Email: mfenster@raklaw.com

Reza Mirzaie

CA State Bar No. 246953 

Email: rmirzaie@raklaw.com

Brian Ledahl

CA State Bar No. 186579 

Email: bledahl@raklaw.com

Ben Wang

CA State Bar No. 228712 

Email: bwang@raklaw.com

Dale Chang

CA State Bar No. 248657 

Email: dchang@raklaw.com

Paul Kroeger

CA State Bar No. 229074 

Email: pkroeger@raklaw.com 

Neil A. Rubin

CA State Bar No. 250761 

Email: nrubin@raklaw.com 

Kristopher Davis

CA State Bar No. 329627 

Email: kdavis@raklaw.com 

James S. Tsuei

 4 This Order contemplates that the parties and the Court may further narrow the issues during pretrial proceedings in 

order to present a manageable case at trial.

Case 2:23-cv-00397-JRG-RSP Document 60 Filed 05/31/24 Page 3 of 5 PageID #: 1127
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CA State Bar No. 285530 

Email: jtsuei@raklaw.com 

Philip Wang

CA State Bar No. 262239 

Email: pwang@raklaw.com

Amy Hayden

CA State Bar No. 287026 

Email: ahayden@raklaw.com

Jason M. Wietholter

CA State Bar No. 337139 Email:

jwietholter@raklaw.com James 

N. Pickens

CA State Bar No. 307474 

Email: jpickens@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor Los 

Angeles, CA 90025 Telephone: 310-

826-7474

Attorneys for Plaintiff Headwater Partners II LLC

Case 2:23-cv-00397-JRG-RSP Document 60 Filed 05/31/24 Page 4 of 5 PageID #: 1128
CERTIFICATE OF SERVICE

Pursuant to the Federal Rules of Civil Procedure and Local Rule CV-5, I hereby certify 

that, on May 31, 2024, a copy of the foregoing was served electronically through the U.S. District 

Court, Eastern District of Texas ECF system to all counsel of record whom are Filing Users of the 

Court’s Electronic Filing System.

/s/ Nicholas Matthews 

Nicholas Matthews

CERTIFICATE OF CONFERNECE

I certify that the Parties have met and conferred in compliance with Local Rule CV 7(h) 

regarding this Motion, and this Motion is agreed.

/s/ Nicholas Matthews 

Nicholas Matthews

Case 2:23-cv-00397-JRG-RSP Document 60 Filed 05/31/24 Page 5 of 5 PageID #: 1129