IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

HEADWATER RESEARCH LLC 

Plaintiff, 

v. 

SAMSUNG ELECTRONIC CO., LTD and 

SAMSUNG ELECTRONICS AMERICA, 

INC., 

Defendants. 

Case No. 2:23-cv-00641-JRG-RSP 

JURY TRIAL DEMANDED 

SAMSUNG ELECTRONIC CO., LTD AND SAMSUNG ELECTRONICS 

AMERICA, INC.’S ANSWER AND DEFENSES TO PLAINTIFF 

HEADWATER RESEARCH LLC’S COMPLAINT FOR PATENT INFRINGEMENT 

Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America, Inc. 

(“SEA”) (collectively “Defendants” or “Samsung”) respectfully submit this Answer to Headwater 

Research LLC’s (“Headwater”) Complaint for Patent Infringement (“Complaint”) filed on 

December 29, 2023. Samsung denies the allegations and characterizations in Headwater’s 

Complaint unless expressly admitted in the following paragraphs, which correspond to the 

numbered paragraphs in the Complaint. 

BACKGROUND1

1. Samsung admits that Headwater purports to bring a patent infringement action for 

alleged infringement of United States Patent Nos. 8,588,110 (“the ’110 patent”), 8,639,811 (“the 

1

 Samsung repeats the headings set forth in the Complaint to simplify comparison of the Complaint 

and this response. In doing so, Samsung makes no admissions regarding the substance of the 

headings or any other allegations of the Complaint. Unless otherwise stated, to the extent that a 

particular heading can be construed as an allegation, Samsung specifically denies all such 

allegations. 

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’811 patent”), 9,179,359 (“the ’359 patent”), and 9,647,918 (“the ’918 patent”) (collectively, the 

“Asserted Patents”). Samsung denies any remaining allegations contained in Paragraph 1 of the 

Complaint. 

2. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 2 of the Complaint and therefore denies them. 

3. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 3 of the Complaint and therefore denies them. 

4. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 4 of the Complaint and therefore denies them. 

5. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 5 of the Complaint and therefore denies them. 

6. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 6 of the Complaint and therefore denies them. 

7. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 7 of the Complaint and therefore denies them. 

8. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 8 of the Complaint and therefore denies them. 

9. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 9 of the Complaint and therefore denies them. 

10. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 10 of the Complaint and therefore denies them. 

11. To the extent Paragraph 11 recites and implicates legal conclusions, no response is 

required. Samsung admits that certain mobile devices can be used for communication and 

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entertainment and can exchange data via wireless and cellular networks. Samsung denies any 

remaining allegations. 

12. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 12 of the Complaint and therefore denies them. 

13. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 13 of the Complaint and therefore denies them. 

14. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 14 of the Complaint and therefore denies them. 

15. Denied. 

NOTICE OF THE ASSERTED PATENTS 

16. Denied. 

17. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 17 of the Complaint and therefore denies them. 

18. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 18 of the Complaint and therefore denies them. 

19. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 19 of the Complaint and therefore denies them. 

20. Samsung admits that between 2013-2016, SEA worked with Sprint. Samsung 

further admits that in instances during 2013-2016, SEA interacted with ItsOn in relation to SEA’s 

work with Sprint. Samsung is without knowledge or information sufficient to form a belief about 

the allegations concerning work between Sprint and ItsOn and on that basis denies them. To the 

extent that Paragraph 20 alleges the Asserted Patents are valid, Samsung denies any such 

allegation. Samsung denies the remaining allegations in Paragraph 20 of the Complaint. 

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21. Samsung admits that certain ItsOn software was installed on certain end user 

Samsung wireless devices sold by Sprint. To the extent that Paragraph 21 alleges the Asserted 

Patents are valid, Samsung denies any such allegation. Samsung denies the remaining allegations 

in Paragraph 21 of the Complaint. 

22. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 22 of the Complaint and therefore denies them. 

23. Samsung admits that in instances, SEA employees interacted with ItsOn employees 

concerning bugs in ItsOn technology. Samsung is without knowledge or information sufficient to 

form a belief about the truth of the remaining allegations in Paragraph 23 of the Complaint and 

therefore denies them. 

24. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 24 of the Complaint and therefore denies them. 

25. Samsung admits that in instances, SEA employees interacted with ItsOn employees 

concerning bugs in ItsOn technology. Samsung is without knowledge or information sufficient to 

form a belief about the truth of the remaining allegations in Paragraph 25 of the Complaint and 

therefore denies them. 

26. To the extent that Paragraph 26 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 26 of the Complaint and therefore 

denies them. 

27. To the extent that Paragraph 27 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

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belief about the truth of any remaining allegations in Paragraph 27 of the Complaint and therefore 

denies them. 

28. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 28 of the Complaint and therefore denies them. 

29. To the extent Paragraph 29 is purely argumentative and/or asserts legal conclusions, 

no response is required. Samsung denies any remaining allegations. 

30. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 30 of the Complaint and therefore denies them. 

31. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 31 of the Complaint and therefore denies them. 

32. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 32 of the Complaint and therefore denies them. 

33. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 33 of the Complaint and therefore denies them. 

34. To the extent that Paragraph 34 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 34 of the Complaint and therefore 

denies them. 

35. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 35 of the Complaint and therefore denies them. 

36. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 36 of the Complaint and therefore denies them. 

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37. To the extent that Paragraph 37 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 37 of the Complaint and therefore 

denies them. 

38. To the extent that Paragraph 38 alleges the Asserted Patents are valid, Samsung 

denies any such allegation. Samsung is without knowledge or information sufficient to form a 

belief about the truth of any remaining allegations in Paragraph 38 of the Complaint and therefore 

denies them. 

39. Samsung admits that it has released various devices since 2016 having beneficial 

features. Samsung denies all remaining allegations in Paragraph 39 of the Complaint. 

PLAINTIFF HEADWATER AND THE PATENTS-IN-SUIT 

40. Samsung is without knowledge or information sufficient to form a belief about the 

truth of the allegations in Paragraph 40 of the Complaint and therefore denies them. 

41. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

8,588,110. Samsung admits that a purported copy of the ’110 patent is attached to the Complaint 

as Exhibit 1. Samsung admits that Exhibit 1 bears the title “Verifiable device assisted service 

usage billing with integrated accounting, mediation accounting, and multi-account” and a “Date 

of Patent” of November 19, 2013. Samsung denies any remaining allegations in Paragraph 41 of 

the Complaint. 

42. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

8,639,811. Samsung admits that a purported copy of the ’811 patent is attached to the Complaint 

as Exhibit 2. Samsung admits that Exhibit 2 bears the title “Automated device provisioning and 

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activation” and a “Date of Patent” of January 28, 2014. Samsung denies any remaining allegations 

in Paragraph 42 of the Complaint. 

43. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,179,359. Samsung admits that a purported copy of the ’359 patent is attached to the Complaint 

as Exhibit 3. Samsung admits that Exhibit 3 bears the title “Wireless end-user device with 

differentiated network access status for different device applications” and a “Date of Patent” of 

November 3, 2015. Samsung denies any remaining allegations in Paragraph 43 of the Complaint. 

44. Samsung admits that Headwater purports to be the owner of U.S. Patent No. 

9,647,918. Samsung admits that a purported copy of the ’918 patent is attached to the Complaint 

as Exhibit 4. Samsung admits that Exhibit 4 bears the title “Mobile device and method attributing 

media services network usage to requesting application.” Samsung denies that the “Date of Patent” 

is May 5, 2017. Samsung further denies any remaining allegations of Paragraph 44 of the 

Complaint. 

DEFENDANTS AND THE ACCUSED INSTRUMENTALITIES 

45. Samsung admits that SEC is a corporation organized under the laws of the Republic 

of Korea with its principal place of business at 129 Samsung-Ro, Yeongtong-gu, Suwon-si, 

Gyeonggi-do, 443-742, Republic of Korea. Samsung denies any remaining allegations in 

Paragraph 45 of the Complaint. 

46. Samsung admits that SEA is a corporation organized under the laws of the State of 

New York, with its principal place of business at 85 Challenger Road, Ridgefield Park, New Jersey 

07660. Samsung admits that SEA is a wholly owned subsidiary of SEC. Samsung admits that 

SEA distributes certain Samsung consumer electronics products in the United States. Samsung 

denies any remaining allegations in Paragraph 46 of the Complaint. 

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47. Samsung admits that SEA has corporate offices at 6625 Excellence Way, Plano, 

Texas 75023. Samsung further admits that SEA may be served through CT Corporation System, 

1999 Bryan Street, Suite 900, Dallas, Texas 75201-3136. Samsung denies any remaining 

allegations in Paragraph 47 of the Complaint. 

48. Samsung admits that Headwater, through its Complaint, accuses various Samsung 

mobile electronic devices of allegedly infringing the Asserted Patents. Samsung denies any 

alleged infringement. Samsung denies the remaining allegations in Paragraph 48 of the Complaint. 

JURISDICTION AND VENUE 

49. Samsung admits that the Complaint purports to set forth a claim for patent 

infringement arising under the patent laws of the United States, Title 35 of the United States Code. 

Samsung denies any allegations of infringement. 

50. Samsung admits that this Court has subject matter jurisdiction over actions for 

patent infringement under 28 U.S.C. §§ 1331 and 1338(a). Samsung denies that Headwater is 

entitled to any relief for its allegations of patent infringement, whether by award of damages, 

injunction, or otherwise. Samsung further denies any allegations of infringement. 

51. Samsung does not contest, solely for the purpose of the present litigation, whether 

personal jurisdiction properly lies in this District. SEA admits that it engages in offering and 

selling certain products to customers in Texas. However, Samsung denies that it has committed 

acts of infringement in the Eastern District of Texas or elsewhere, or that it has committed any act, 

directly or indirectly, that would give rise to any cause of action under the Complaint. Samsung 

denies any remaining allegations in Paragraph 51 of the Complaint. 

52. Denied. 

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53. Samsung does not contest, solely for the purposes of the present action, whether 

venue over them properly lies in this District. However, Samsung denies that venue in this District 

is convenient. Samsung admits that SEA has transacted business in this District but denies that 

Samsung has committed acts of infringement in this District or elsewhere in the State of Texas, or 

that it has committed any act, directly or indirectly, that would give rise to any cause of action 

under the Complaint in Paragraph 53. 

54. Samsung admits that SEA has a place of business at 6625 Excellence Way, Plano, 

Texas 75023. Samsung denies the remaining allegations in Paragraph 54 of the Complaint. 

55. Samsung admits that SEC is a foreign corporation and that for purposes of this 

action only, and without waiving any defense of improper venue in connection with any other 

cause of action or claim, Samsung admits that the Complaint’s alleged venue as to SEC is proper 

under 28 U.S.C. § 1391(c). Samsung denies any remaining allegations in Paragraph 55 of the 

Complaint.

56. Samsung admits that in certain prior cases, based on the specific and unique facts 

of those cases, Samsung has either admitted or not contested proper venue in this District. 

Samsung denies any suggestion that this is a convenient forum to resolve this dispute. Samsung 

denies any remaining allegations in Paragraph 56 of the Complaint. 

COUNT 1 – CLAIM FOR INFRINGEMENT OF THE ’110 PATENT 

57. Samsung incorporates by reference its responses in the preceding paragraphs as if 

fully stated herein. 

58. Samsung admits that Exhibit 1 bears the title “Verifiable device assisted service 

usage billing with integrated accounting, mediation accounting, and multi-account” and a “Date 

of Patent” of November 19, 2013. Samsung denies any remaining allegations in Paragraph 58 of 

the Complaint. 

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59. Samsung admits that Headwater purports to be the owner of the ’110 patent. 

Samsung denies any remaining allegations in Paragraph 59 of the Complaint. 

60. To the extent paragraph 60 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 60 of the Complaint. 

61. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 61 of the Complaint and therefore denies them. 

62. Denied. 

63. Denied. 

64. Samsung admits Headwater attaches an Exhibit 5 to its Complaint that purports to 

show alleged infringement of the ’110 patent. Samsung denies any alleged infringement. 

Samsung denies all remaining allegations in Paragraph 64 of the Complaint. 

65. Denied. 

66. Denied. 

67. Denied. 

68. Denied. 

69. Denied. 

70. Denied. 

COUNT 2 – CLAIM FOR INFRINGEMENT OF THE ’811 PATENT 

71. Samsung incorporates by reference its responses in the preceding paragraphs as if 

fully stated herein. 

72. Samsung admits that Exhibit 2 bears the title “Automated device provisioning and 

activation” and a “Date of Patent” of January 28, 2014. Samsung denies any remaining allegations 

in Paragraph 72 of the Complaint. 

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73. Samsung admits that Headwater purports to be the owner of the ’811 patent. 

Samsung denies any remaining allegations in Paragraph 73 of the Complaint. 

74. To the extent Paragraph 74 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 74 of the Complaint. 

75. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 75 of the Complaint and therefore denies them. 

76. Denied. 

77. Denied. 

78. Samsung admits Headwater attaches an Exhibit 6 to its Complaint that purports to 

show alleged infringement of the ’811 patent. Samsung denies any alleged infringement. 

Samsung further denies all remaining allegations in Paragraph 78 of the Complaint. 

79. Denied. 

80. Denied. 

81. Denied. 

82. Denied. 

83. Denied. 

84. Denied. 

COUNT 3 – CLAIM FOR INFRINGEMENT OF THE ’359 PATENT 

85. Samsung incorporates by reference its responses in the preceding paragraphs as if 

fully stated herein. 

86. Samsung admits that Exhibit 3 bears the title “Wireless end-user device with 

differentiated network access status for different device applications” and a “Date of Patent” of 

November 3, 2015. Samsung denies any remaining allegations in Paragraph 86 of the Complaint. 

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87. Samsung admits that Headwater purports to be the owner of the ’359 patent. 

Samsung denies any remaining allegations in Paragraph 87 of the Complaint. 

88. To the extent paragraph 88 recites and implicates legal conclusions, no response is 

required. Samsung denies all remaining allegations in Paragraph 88 of the Complaint. 

89. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 89 of the Complaint and therefore denies them. 

90. Denied. 

91. Denied. 

92. Samsung admits Headwater attaches an Exhibit 7 to its Complaint that purports to 

show alleged infringement of the ’359 patent. Samsung denies any alleged infringement. 

Samsung further denies all remaining allegations in Paragraph 92 of the Complaint. 

93. Denied. 

94. Denied. 

95. Denied. 

96. Denied. 

97. Denied. 

98. Denied. 

COUNT 4 – CLAIM FOR INFRINGEMENT OF THE ’918 PATENT 

99. Samsung incorporates by reference its responses in the preceding paragraphs as if 

fully stated herein. 

100. Samsung admits that Exhibit 4 bears the title “Mobile device and method attributing 

media services network usage to requesting application” and a “Date of Patent” of May 9, 2017. 

Samsung denies any remaining allegations in Paragraph 100 of the Complaint. 

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101. Samsung admits that Headwater purports to be the owner of the ’918 patent. 

Samsung denies any remaining allegations in Paragraph 101 of the Complaint. 

102. To the extent Paragraph 102 recites and implicates legal conclusions, no response 

is required. Samsung denies all remaining allegations in Paragraph 102 of the Complaint. 

103. Samsung denies any alleged infringement and denies that Headwater is entitled to 

damages. Samsung is without knowledge or information sufficient to form a belief about the truth 

of the remaining allegations in Paragraph 103 of the Complaint and therefore denies them. 

104. Denied. 

105. Denied. 

106. Samsung admits Headwater attaches an Exhibit 8 to its Complaint that purports to 

show alleged infringement of the ’918 patent. Samsung denies any alleged infringement. 

Samsung further denies all remaining allegations in Paragraph 106 of the Complaint. 

107. Denied. 

108. Denied. 

109. Denied. 

110. Denied. 

111. Denied. 

112. Denied. 

JURY DEMAND 

113. Samsung is not required to provide a response to Headwater’s request for a trial by 

jury. 

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RELIEF REQUESTED 

Samsung denies that Headwater is entitled to any relief it seeks in its Complaint. 

GENERAL DENIAL 

To the extent that any allegations of the Complaint have not been previously specifically 

admitted or denied, Samsung denies them. 

**** 

SAMSUNG’S ADDITIONAL DEFENSES 

Pursuant to Federal Rule of Civil Procedure 8(c), Samsung, without waiver, limitation, or 

prejudice, hereby asserts the additional defenses listed below. Samsung reserves the right to 

amend this Answer to add additional defenses, including allegations of inequitable conduct, and/or 

any other defenses currently unknown to Samsung, as they become known throughout the course 

of discovery in this action. Assertion of a defense is not a concession that Samsung has the burden 

of proving the matter asserted. 

FIRST ADDITIONAL DEFENSE 

(Non-Infringement) 

Samsung does not and has not infringed, under any theory of infringement, (including 

directly (whether individually or jointly) or indirectly (whether contributorily or by inducement)), 

any valid and enforceable claim of the Asserted Patents, either literally or under the Doctrine of 

Equivalents, and has not committed any acts in violation of 35 U.S.C. § 271. 

SECOND ADDITIONAL DEFENSE 

(Invalidity) 

Each asserted claim of the Asserted Patents is invalid for failure to comply with one or 

more of the requirements of United States Code, Title 35, including without limitation, 35 U.S.C. 

§§ 101, 102, 103, and 112, and the rules, regulations, and laws pertaining thereto. 

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One or more claims of the ’110 patent fail to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’811 patent fail to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’359 patent fail to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

One or more claims of the ’918 patent fail to meet the conditions of patentability and/or 

otherwise comply with one or more provisions of 35 U.S.C. §§ 101, et seq., including §§ 101, 102, 

103, and/or 112. 

THIRD ADDITIONAL DEFENSE 

(Laches, Equitable Estoppel, Waiver, and/or Unclean Hands) 

Headwater’s attempted enforcement of the Asserted Patents against Samsung is barred by 

laches, equitable estoppel, waiver, acquiescence, and/or unclean hands. 

FOURTH ADDITIONAL DEFENSE 

(Prosecution History Estoppel and/or Disclaimer) 

Headwater’s claims are barred by the doctrine(s) of prosecution history estoppel and/or 

disclaimer based on statements, representations, and admissions made during prosecution of the 

patent applications resulting in the Asserted Patents. 

FIFTH ADDITIONAL DEFENSE 

(Notice, Damages, Marking, and Costs) 

Headwater’s claims for damages are statutorily limited or wholly barred under 35 U.S.C. 

§§ 286 and 287. 

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SIXTH ADDITIONAL DEFENSE 

(Covenant Not to Sue, License, and/or Estoppel) 

Headwater’s claims are barred to the extent the alleged infringement is licensed, either 

expressly or impliedly, or otherwise authorized. Moreover, Headwater’s claims are barred because 

it entered an agreement providing Samsung the protection of a covenant not to sue, a license 

(express or implied), and/or agreement (contractual or otherwise) that legally estops Headwater 

from bringing this lawsuit against Samsung. 

SEVENTH ADDITIONAL DEFENSE 

(Failure to State a Claim) 

Headwater’s Complaint fails to state a claim upon which relief can be granted. 

EIGHTH ADDITIONAL DEFENSE 

(Inequitable Conduct / Infectious Unenforceability) 

The Asserted Patents are unenforceable due to the doctrines of inequitable conduct and 

infectious unenforceability because the patent applicant(s) knowingly and intentionally failed to 

disclose known bases for invalidity under pre-AIA 35 U.S.C. § 102 and/or 103. See, e.g.,

Samsung’s Amended Answer and Defenses to Plaintiff Headwater Research LLC’s Second 

Amended Complaint for Patent Infringement in Headwater Research LLC v. Samsung Electronics 

Co., Ltd, et al., No. 2:22-cv-00422-JRD-RSP, Dkt. No. 81 at 28-41 (E.D. Tex. Dec. 8, 2023) 

(“Headwater I”), a copy of which is attached hereto as Exhibit A. As detailed in Exhibit A, the 

Asserted Patents are unenforceable at least because a named inventor and prosecuting attorney 

committed inequitable conduct in connection with the prosecution of the asserted patents in 

Headwater I by knowingly and intentionally failing to disclose known bases for invalidity under 

pre-AIA 35 U.S.C. § 102 and/or § 103, with the intent to deceive the patent office. Id. 

The inequitable conduct in connection with the prosecution of the asserted patents in 

Headwater I renders the Asserted Patents in this case unenforceable under the doctrine of 

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infectious unenforceability. See Eon Corp. IP Holdings, LLC v. T-Mobile USA, Inc., No. 6:10-

CV-379-LED-JDL, 2011 WL 13134896, at *6 (E.D. Tex. Dec. 13, 2011) (“[I]nequitable conduct 

in the prosecution of a parent application may render the parent and its progeny unenforceable” 

(i.e., “infectious unenforceability”), report and recommendation adopted, No. 6:10-CV-379-LEDJDL, 2012 WL 12893881 (E.D. Tex. Jan. 18, 2012)); Therasense, Inc. v. Becton, Dickinson & Co., 

649 F.3d 1276, 1288–89 (Fed. Cir. 2011) (“[T]he taint of a finding of inequitable conduct can 

spread from a single patent to render unenforceable other related patents and applications in the 

same technology family.”). An immediate and necessary relationship exists here between the 

enforcement of the claims of the Asserted Patents in this case and the asserted patents in Headwater 

I that were obtained via inequitable conduct. For example, all of the asserted patents in both cases

allegedly claim priority to, inter alia, four provisional patent applications, i.e., provisional 

application No. 61/206,354, filed on January, 28, 2009; provisional application No. 61/206,944, 

filed on February 4, 2009; provisional application No. 61/207,393, filed on February 10, 2009; and 

provisional application No. 61/207,739, filed on February 13, 2009.

NINTH ADDITIONAL DEFENSE 

(No Standing) 

 Headwater’s claims are barred because Headwater lacks standing to bring this suit. 

Specifically, Headwater cannot prove that it is the rightful owner of the Asserted Patents. 

TENTH ADDITIONAL DEFENSE 

(Prosecution Laches) 

Headwater’s Asserted Patents issued after an unreasonable, inexcusable, and prejudicial 

delay amounting to an egregious misuse of the statutory patent system under the totality of the 

circumstances. Thus, the Asserted Patents are unenforceable under the doctrine of prosecution 

laches. 

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The Federal Circuit has explained that “the doctrine of prosecution laches places an 

additional, equitable restriction on patent prosecution conduct beyond those imposed by statute or 

PTO regulation,” and that “[a]n applicant must therefore not only comply with the statutory 

requirements and PTO regulations but must also prosecute its applications in an equitable way that 

avoids unreasonable, unexplained delay that prejudices others.” Hyatt v. Hirshfield, 998 F.3d 

1347, 1366 (Fed. Cir. 2021). 

Headwater chose to pursue a “shoot first, aim later” strategy in prosecuting each of the 

Asserted Patents as well as dozens of related patents. Headwater filed the provisional application 

from which the Asserted Patents allegedly claim priority, U.S. Patent Application No. 61/206,354 

(“the ’354 Application”), on January 28, 2009, but it did not file applications for the Asserted 

Patents until many years later, ranging from more than three years to more than seven years of 

delay. 

Headwater’s unreasonable delays are inexcusable. Samsung has been prejudiced insofar 

as it has invested in, worked with, and used the technology that is now being accused of infringing 

the Asserted Patents during the time in which Headwater delayed its prosecution. The features 

accused of infringing the Asserted Patents are primarily part of the Android operating system 

(“Android OS”) employed by Samsung’s accused products. While Samsung was investing 

significant time and expense integrating the Android OS into its mobile devices, Headwater was 

serially prosecuting the claims it now asserts. 

RESERVATION OF ADDITIONAL DEFENSES 

Samsung reserves the right to assert additional defenses that may surface through discovery 

in this action. 

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DEMAND FOR JURY TRIAL 

Defendants demand a jury trial on all issues that may be so tried. 

PRAYER FOR RELIEF 

WHEREFORE, Samsung respectfully prays that this Court enter judgment in Samsung’s 

favor against Headwater and requests the following relief. 

A. A complete denial of Headwater’s requests for damages, costs, expenses, 

injunction, and any other form of relief; 

B. Dismissal with prejudice of all claims in Headwater’s Complaint against Samsung; 

C. A permanent injunction restraining Headwater and its respective officers, partners, 

employees, agents, parents, subsidiaries, and affiliates, and any other persons acting 

on its behalf or in concert with it, from charging, suing or threatening, orally or in 

writing, that any of the Asserted Patents have been infringed by Samsung under 

any subsection of 35 U.S.C. §§ 271 or 281; 

D. A declaration that this is an exceptional case under 35 U.S.C. § 285 and awarding 

to Samsung its reasonable costs and expenses of litigation, including but not limited 

to attorneys’ fees and expert witness fees; 

E. An award to Samsung of its costs and disbursements in defending in this action 

brought by Headwater; and 

F. An award to Samsung of any and all further relief as this Court may deem just and 

proper. 

Dated: April 22, 2024 Respectfully submitted, 

By: /s/ Thad C. Kodish 

 Ruffin B. Cordell 

TX Bar No. 04820550 

rbc@fr.com 

Case 2:23-cv-00641-JRG-RSP Document 25 Filed 04/22/24 Page 19 of 21 PageID #: 834
20 

Michael J. McKeon 

DC Bar No. 459780 

mckeon@fr.com 

FISH & RICHARDSON P.C. 

1000 Maine Avenue, SW, Ste 1000 

Washington, D.C. 20024 

Telephone: (202) 783-5070 

Facsimile: (202) 783-2331 

Thad C. Kodish 

GA Bar No. 427603 

tkodish@fr.com 

Christopher O. Green 

GA Bar No. 037617 

cgreen@fr.com 

Sara C. Fish 

GA Bar No. 873853 

sfish@fr.com 

FISH & RICHARDSON P.C. 

1180 Peachtree St. NE, Fl. 21 

Atlanta, GA 30309 

Telephone: (404) 892-5005 

Facsimile: (404) 892-5002 

Melissa R. Smith 

State Bar No. 24001351 

melissa@gillamsmithlaw.com 

GILLAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, Texas 75670 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

Andrew Thompson (“Tom”) Gorham 

State Bar No. 24012715 

tom@gillamsmithlaw.com 

GILLAM & SMITH, LLP 

102 N. College, Ste. 800 

Tyler, Texas 75702 

Telephone: (903) 934-8450 

Facsimile: (903) 934-9257 

ATTORNEYS FOR DEFENDANTS

SAMSUNG ELECTRONICS CO., LTD. AND

SAMSUNG ELECTRONICS AMERICA, INC. 

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that counsel of record who are deemed to have consented 

to electronic services are being served with a copy of this document via the Court’s CM/ECF 

system per Local Rule CV-5(a)(3) on April 22, 2024. 

/s/ Thad C. Kodish 

Thad C. Kodish 

Case 2:23-cv-00641-JRG-RSP Document 25 Filed 04/22/24 Page 21 of 21 PageID #: 836