DCT

2:23-cv-00641

Headwater Research LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:23-cv-00641, E.D. Tex., 12/29/2023
  • Venue Allegations: Plaintiff alleges venue is proper for Samsung Electronics America, Inc. based on its maintenance of a regular and established place of business in the district. Venue is alleged as proper for the foreign defendant, Samsung Electronics Co., Ltd., in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile electronic devices, including phones and tablets, infringe four U.S. patents related to device-assisted management of wireless data usage, automated device provisioning, and differentiated network access for applications.
  • Technical Context: The technology addresses the management of rapidly increasing mobile data consumption by providing device-based methods for monitoring and controlling network services, intended to improve network efficiency and enable more flexible service plans.
  • Key Procedural History: The complaint alleges a prior business relationship between 2013 and 2016 involving Plaintiff's licensee (ItsOn Inc.), network carrier Sprint, and Defendant Samsung. This relationship allegedly included the integration of ItsOn software, which implemented the patented technology and provided patent marking notice, onto Samsung devices. Plaintiff alleges that its patents were disclosed to Samsung during this period, which forms the basis for its allegations of pre-suit knowledge and willful infringement.

Case Timeline

Date Event
2009-01-28 Earliest Priority Date for ’811 and ’359 Patents
2009-02-04 Earliest Priority Date for ’110 and ’918 Patents
2010-04-01 ItsOn (Plaintiff's licensee) and Sprint enter into an NDA
2011-01-01 Plaintiff Headwater was formed
2013-01-01 ItsOn and Sprint begin implementing Headwater's technologies
2013-11-19 U.S. Patent No. 8,588,110 Issues
2014-01-28 U.S. Patent No. 8,639,811 Issues
2015-10-01 Sprint allegedly indicates Samsung plans to implement technology in its own software
2015-10-09 Samsung USA allegedly announces Samsung Korea will take over negotiations
2015-10-20 Samsung personnel allegedly request ItsOn's source code for "roaming control policy"
2015-10-27 Sprint purports to terminate its agreement with ItsOn
2015-11-03 U.S. Patent No. 9,179,359 Issues
2017-05-09 U.S. Patent No. 9,647,918 Issues
2023-12-29 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,588,110 - Verifiable device assisted service usage billing with integrated accounting, mediation accounting, and multi-account

  • Issued: November 19, 2013

The Invention Explained

  • Problem Addressed: The patent’s background describes the strain on wireless network capacity due to increasing demand for data-intensive applications on mobile devices. It notes that managing this demand solely from the network core is inefficient and can negatively impact both user experience and provider profitability. (’110 Patent, col. 5:61-6:18).
  • The Patented Solution: The invention proposes a system architecture that moves monitoring and policy enforcement capabilities onto the end-user device itself. A "service processor" on the device communicates with a network "service controller" to implement granular service policies, monitor usage, and provide verifiable data for billing. (’110 Patent, Abstract; col. 7:16-24). This device-assisted approach allows for different policies to be applied depending on the network being used (e.g., a first policy for a cellular network and a second for a Wi-Fi network). (’110 Patent, col. 9:8-23; Fig. 16).
  • Technical Importance: This approach enabled more dynamic and efficient management of network resources by placing intelligence at the network edge, which was significant as "dumb pipes" became increasingly congested with smartphone traffic. (Compl. ¶15).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶67).
  • The essential elements of independent claim 1 include:
    • A wireless device comprising at least two wireless modems for communicating with at least a first wireless network and a second wireless network.
    • A memory configured to store a first service policy associated with the first network and a second service policy associated with the second network.
    • A user interface configured to obtain user input specifying at least an aspect of the first service policy.
    • One or more processors configured to identify a data communication associated with a first service activity.
    • The processors are also configured to control the first service activity based on the first service policy when the device is connected to the first wireless network, and to control it based on the second service policy when connected to the second network.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 8,639,811 - Automated device provisioning and activation

  • Issued: January 28, 2014

The Invention Explained

  • Problem Addressed: Traditional device activation processes can be cumbersome for the user and inflexible for service providers, creating a barrier to immediate device use and hindering the offering of temporary or specialized service plans. (’811 Patent, col. 132:25-50).
  • The Patented Solution: The patent describes a wireless device that can obtain and store a control policy that governs its access to a wireless network for different applications. Based on user input, the device can control a first application's access to a first wireless network by applying a first aspect of the control policy, while controlling a second application's access using a second aspect of the policy. (’811 Patent, Abstract). This allows for automated and differentiated provisioning of services directly on the device, enabling features like pre-activated "ambient services." (’811 Patent, col. 120:38-54).
  • Technical Importance: This technology facilitated new business models for carriers and device manufacturers, such as "out-of-the-box" connectivity for certain applications and more flexible service plan offerings, improving the user onboarding experience. (Compl. ¶14).

Key Claims at a Glance

  • The complaint asserts independent claim 1. (Compl. ¶81).
  • The essential elements of independent claim 1 include:
    • A wireless device comprising a memory and one or more processors.
    • The memory is configured to store a control policy associated with a first application.
    • The processors are configured to execute one or more instructions to:
    • Obtain, through a user interface, at least an aspect of the control policy based on user input.
    • Prevent the first application from accessing a first wireless network when the application is executing.
    • Control access to the first wireless network for a second application, thereby assisting in preventing the first application from accessing the network.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 9,179,359 - Wireless end-user device with differentiated network access status for different device applications

  • Issued: November 3, 2015

Technology Synopsis

The patent addresses the challenge of managing data consumption on a device with multiple network interfaces, such as cellular (WWAN) and Wi-Fi (WLAN). The invention describes a system where an Application Program Interface (API) on the device can indicate to specific applications that a particular network (e.g., the cellular network) is unavailable, even if it is physically connected, thereby compelling those applications to use an alternative network or no network at all to conserve data or manage costs. (’359 Patent, Abstract).

Asserted Claims

Independent Claim 1. (Compl. ¶95).

Accused Features

The complaint alleges Samsung's devices incorporate features that manage and differentiate network access for various applications, such as by restricting certain apps to Wi-Fi, which allegedly infringes the ’359 Patent. (Compl. ¶¶90, 92).

U.S. Patent No. 9,647,918 - Mobile device and method attributing media services network usage to requesting application

  • Issued: May 9, 2017

Technology Synopsis

This invention provides a method for accurately attributing network data usage to the specific application that initiates a request for media services, particularly when a separate, general-purpose media player or manager handles the actual data transfer. The system uses APIs to link the data flows from the media service back to the original requesting application, ensuring that policies and billing are applied correctly. (’918 Patent, Abstract).

Asserted Claims

Independent Claim 1. (Compl. ¶109).

Accused Features

Plaintiff alleges that Samsung’s mobile devices contain functionality to track and attribute data consumed by media services to the specific applications that requested the media, thereby infringing the ’918 Patent. (Compl. ¶¶104, 106).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Samsung's mobile electronic devices, including "Samsung Galaxy tablets and phones." (Compl. ¶¶48, 63, 68).

Functionality and Market Context

The complaint alleges these devices incorporate software at the operating system and kernel levels that provides functionalities for managing data consumption and network access. (Compl. ¶¶15, 22). These features are positioned as solutions to the problem of exponential growth in mobile data traffic, a trend which the complaint illustrates with a graph from an Ericsson mobility report showing projected data consumption rising from under 100 exabytes per month in 2022 to nearly 300 by 2027. (Compl. p. 5). The complaint alleges these features "help device manufacturers, wireless carriers, and customers reduce data usage and network congestion, extend battery life by decreasing power consumption, and enable users to stay connected." (Compl. ¶15, ¶39).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that are not provided with the filing (Exhibits 5-8). The infringement summaries below are based on the narrative allegations in the complaint.

U.S. Patent No. 8,588,110 Infringement Allegations

The complaint alleges that the normal use of Samsung’s mobile devices infringes at least claim 1 of the ’110 Patent. (Compl. ¶67). The infringement theory suggests that software on the accused devices functions as the claimed "service processor" to apply different "service policies" for managing data usage depending on whether the device is connected to a cellular network or a Wi-Fi network, in accordance with user input. (Compl. ¶¶62, 64).

  • Identified Points of Contention:
    • Scope Questions: A central question may be whether the general network management settings in Samsung's Android-based OS constitute the specifically claimed "first service policy" and "second service policy," which the patent describes as being part of a coordinated system with a network "service controller."
    • Technical Questions: What evidence does the complaint provide that the accused devices’ software architecture includes distinct, stored "policies" that are applied by the processor in the specific manner recited by the claim, as opposed to implementing more general rules for network preference?

U.S. Patent No. 8,639,811 Infringement Allegations

The complaint alleges that the normal use of Samsung's mobile devices infringes at least claim 1 of the ’811 Patent. (Compl. ¶81). The narrative suggests that the initial device setup and activation process on accused devices constitutes the claimed method. It alleges that during setup, the device obtains a "control policy" and receives user input regarding service aspects, and then uses that policy to control network access for different applications. (Compl. ¶¶76, 78).

  • Identified Points of Contention:
    • Scope Questions: The dispute may focus on whether a user's agreement to terms of service or selection of initial settings during the device setup process qualifies as providing "at least an aspect of the control policy" as that term is used in the patent.
    • Technical Questions: A key technical question will be whether the accused devices' software functionality for managing application permissions performs the specific claim step of "preventing the first access to the first wireless network by the first application" based on a stored "control policy," or whether it operates through a different mechanism.

V. Key Claim Terms for Construction

"a first service policy associated with a first wireless network" (’110 Patent, Claim 1)

  • Context and Importance: The infringement theory for the ’110 Patent depends on identifying distinct software-defined "policies" on the accused device that correspond to different networks (e.g., cellular vs. Wi-Fi). Practitioners may focus on this term because its construction will determine whether general network preference settings can be considered a "service policy" or if a more specific, structured data object is required.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a "service policy" as potentially including a wide range of functions, such as "billing, simplified activation... access control, network access control, network service usage monitoring," and more. (’110 Patent, col. 15:56-65). This language may support an interpretation that covers a broad set of rules or settings.
    • Evidence for a Narrower Interpretation: The detailed description and figures illustrate the "service policy" as being implemented by specific on-device software modules, such as a "Policy Control Agent" and "Policy Implementation Agent," which receive instructions from a network "Service Controller." (’110 Patent, Fig. 16; col. 47:57-48:22). This may support a narrower construction requiring a specific architectural implementation.

"obtaining... at least an aspect of the control policy based on the user input" (’811 Patent, Claim 1)

  • Context and Importance: This term is critical because the infringement allegation for the ’811 Patent appears to equate the user's interaction during device setup with the claimed step of obtaining policy input. The scope of "aspect of the control policy" will be decisive.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes a user selecting a "service plan, billing info and CRM info" during an activation sequence, which are all aspects of a service control policy. (’811 Patent, Fig. 44A, step 4406). This could support reading the term broadly to include choices made during initial setup.
    • Evidence for a Narrower Interpretation: The specification describes "control policy" in the context of specific technical functions like "access control for ambient activation services" and "control for error handling or service control for tamper prevention." (’811 Patent, col. 71:40-44). This might suggest that the "user input" must relate to these more specific control functions rather than general user agreement to terms.

VI. Other Allegations

Indirect Infringement

The complaint alleges that Samsung had knowledge of the asserted patents due to its prior relationship and communications with Plaintiff's licensee, ItsOn, between 2013-2016. (Compl. ¶¶65, 79, 93, 107). Inducement is alleged based on Samsung providing its devices to customers with instructions for use, allegedly knowing and intending that such use would constitute infringement. (Compl. ¶¶66, 80, 94, 108).

Willful Infringement

The willfulness allegations are predicated on the same alleged pre-suit knowledge from the ItsOn relationship. The complaint specifically alleges that ItsOn software installed on Samsung devices included a patent marking notice listing the '110 and '811 patents, that the patents and related applications were discussed in meetings, and that Samsung later cited the patents' specifications in its own patent filings. (Compl. ¶¶65, 68, 79, 82, 96, 110).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of historical knowledge: what was the specific content of the communications and software provided to Samsung during its relationship with ItsOn from 2013-2016? The outcome of the indirect and willful infringement claims will likely depend on whether this evidence can establish that Samsung had the requisite knowledge of the patents and intent to infringe.
  • A key evidentiary question will be one of architectural correspondence: do the general data management and activation features integrated into Samsung's standard Android-based operating systems map onto the specific, structured "service processor," "control policy," and "agent" architectures described and claimed in the patents, or is there a fundamental mismatch in their technical operation and design?