Case Background

Headwater Research LLC, founded by wireless pioneer Dr. Gregory Raleigh, developed and patented several innovations in mobile communications. These inventions improved wireless data efficiency, reduced power consumption, and enhanced device-user interaction. Dr. Raleigh previously co-founded Clarity Wireless and Airgo Networks, companies later acquired by Cisco and Qualcomm. He played a key role in advancing MIMO technology, now central to 4G and 5G systems.

In 2008, Dr. Raleigh founded Headwater and ItsOn Inc. to further commercialize these technologies. Through ItsOn, Headwater collaborated with Sprint and Samsung to integrate patented solutions into mobile devices. These included features such as background data controls, application-specific network policies, and device-assisted network management.

Cause

The dispute emerged from collaboration gone sour. Between 2013 and 2016, Headwater, through ItsOn, worked closely with Sprint and Samsung under non-disclosure agreements (NDAs). They shared proprietary software and granted deep access to Samsung engineers. Samsung incorporated the ItsOn application, which embodied Headwater’s patented technologies, into multiple device models.

But in October 2015, Samsung Korea abruptly took over negotiations. Shortly after requesting confidential source code for Headwater’s roaming control technology, Samsung cut off the project. Sprint terminated ItsOn’s service agreement days later. Despite this, Samsung released new devices with similar features, allegedly derived from the Headwater software. Headwater viewed this as misappropriation of its innovations.

Injury

Headwater claimed Samsung used its patented technologies without authorization. The company alleged that Samsung continued developing and selling devices based on Headwater’s ideas after severing ties. These devices reportedly offered features identical to those developed during the partnership. Headwater asserted that Samsung not only copied the technology but did so with full knowledge of its patent protections.

Damages

Headwater sought damages under U.S. patent law for each of the nine asserted patents. These included reasonable royalties for unauthorized use and ongoing infringement. The complaint alleged willful infringement, potentially increasing the damages owed. The company also emphasized reputational harm and loss of exclusive licensing opportunities.

Key Arguments and Proceedings

Legal Representation

• Plaintiff: Headwater Research LLC

• Counsel for Plaintiff: Adam S. Hoffman | Andrea Leigh Fair | Benjamin T. Wang | Brian D. Ledahl | James A. Milkey | James N. Pickens | James Shrin Tsuei | Jason Wietholter | Kristopher Ryan Davis | Marc A. Fenster | Neil Alan Rubin | Paul Anthony Kroeger | Philip X. Wang | Reza Mirzaie | Andrea Leigh Fair

• Defendants: Samsung Electronics America, Inc. | Samsung Electronics Co., Ltd.

• Counsel for Defendants: Ruffin B. Cordell (Lead Counsel) | Andria R. Crisler | Benjamin K. Thompson | Christopher O. Green | Jared Hartzman | John W. Thornburgh | John-Paul Robert Fryckman | Katherine Reardon | Leonard Davis | Meghana Thadani | Michael J. McKeon | Nicholas Gallo | Noah C. Graubart | Sara Christina Fish | Steffen Lake | Thad C. Kodish | Thomas H. Reger II 

Claims

The lawsuit included nine counts of patent infringement, covering the following patents:

1. ’701 Patent – Differentiated network access for background and foreground apps

2. ’184 Patent – Per-application data limits and traffic controls

3. ’578 Patent – Application programming interfaces for network policy access

4. ’445 Patent – Differential traffic control policies

5. ’224 Patent – Device-assisted services to protect network capacity

6. ’976 Patent – Network access status by application type

7. ’433 Patent – Policy-based aggregation of app network activity

8. ’544 Patent – Network capacity protection via device services

9. ’773 Patent – Similar device-assisted network protection services

Each count alleged direct, induced, and contributory infringement. Headwater emphasized Samsung’s prior knowledge of the patents and argued the acts were willful. The case sought a jury trial in the Eastern District of Texas.

Defense

Samsung denied all allegations of patent infringement brought by Headwater Research LLC and asserted several affirmative defenses. First, Samsung claimed non-infringement, asserting that it has not violated any valid and enforceable claims of the asserted patents, either directly or indirectly. Second, Samsung argued that the patents are invalid under multiple provisions of U.S. patent law, including §§ 101 (subject matter eligibility), 102 (novelty), 103 (obviousness), and 112 (specification requirements). Third, Samsung raised equitable defenses, including laches, estoppel, waiver, and unclean hands, suggesting that Headwater’s enforcement actions are barred due to its own conduct or delay.

Additionally, Samsung invoked prosecution history estoppel and disclaimer, contending that Headwater’s statements during patent prosecution limit the scope of its claims. It also asserted defenses related to lack of notice, failure to mark, and statutory time limits on damages. Further, Samsung contended that it may have protection via a covenant not to sue, a license, or legal estoppel. Finally, Samsung argued that the complaint fails to state a claim upon which relief can be granted. Samsung reserved the right to assert additional defenses as discovery proceeds.

Jury Verdict

In the case of Headwater Research LLC v. Samsung Electronics Co., Ltd. et al., the jury found in favor of the defendants, Samsung. The jury concluded that Headwater had not proven by a preponderance of the evidence that Samsung infringed any of the asserted claims (Claims 1, 8, 9, and 12) of U.S. Patent No. 9,143,976. As a result, the jury did not proceed to questions on patent validity or damages, and no compensation was awarded to Headwater. The unanimous verdict was entered and signed by the jury foreperson, resolving the case in Samsung’s favor.

Court Documents

Court documents are available for purchase upon request from Jurimatic@exlitem.com