DCT

2:24-cv-00228

Headwater Research LLC v. Samsung Electronics Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00228, E.D. Tex., 04/03/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Samsung conducts substantial business in the district, has committed acts of infringement there, and Defendant Samsung Electronics America, Inc. maintains regular and established places of business in Richardson and Plano, Texas.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile electronic devices, including phones and tablets, infringe three patents related to automated device credentialing, service provisioning, and security for device-assisted services.
  • Technical Context: The technology at issue addresses the management of mobile device services, data usage, and security in an environment of rapidly increasing mobile data consumption by consumers.
  • Key Procedural History: The complaint alleges a prior business relationship between 2013 and 2016 involving Samsung, Sprint, and ItsOn Inc.—a company founded by the patents’ inventor that licensed Plaintiff’s intellectual property. This relationship, which allegedly included software integration and disclosure of patented technology under non-disclosure agreements, forms the basis for Plaintiff’s allegations of pre-suit knowledge and willful infringement.

Case Timeline

Date Event
2009-01-28 Earliest Priority Date for ’055 and ’429 Patents
2010-04-01 ItsOn Inc. allegedly enters into an NDA with Sprint
2011-01-01 Headwater Research LLC was formed
2013-03-14 Earliest Priority Date for ’510 Patent
2013-01-01 ItsOn and Sprint allegedly begin implementing Headwater's technologies
2013-2016 ItsOn, Sprint, and Samsung allegedly collaborated under NDA
2015-10-27 Sprint allegedly purported to terminate its agreement with ItsOn
2017-03-28 U.S. Patent No. 9,609,510 Issues
2021-08-17 U.S. Patent No. 11,096,055 Issues
2022-08-02 U.S. Patent No. 11,405,429 Issues
2024-04-03 Complaint Filed

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

U.S. Patent No. 9,609,510 - “Automated Credential Porting For Mobile Devices”

The Invention Explained

  • Problem Addressed: The patent’s background describes the process of porting a phone number from one service provider to another as one that can take a significant amount of time and may require manual intervention by the user to program credentials into the new device (’510 Patent, col. 6:1-30).
  • The Patented Solution: The invention claims a method for automating the updating of device credentials. An agent on the mobile device detects a "network-provisioning state change," determines that the device's current credential (e.g., phone number) does not match a target credential, and automatically initiates a "programming session" with a network element to obtain and store the updated credential (’510 Patent, Abstract; Fig. 3).
  • Technical Importance: This automation is intended to create a more seamless user experience when switching devices or carriers, potentially reducing user error and the need for customer support intervention (’510 Patent, col. 7:7-14).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶67).
  • The essential elements of independent claim 1 include:
    • Obtaining a user request to replace a particular credential with a target credential.
    • Detecting a network-provisioning state change.
    • Based on the detection, automatically determining that the particular credential does not match the target credential.
    • Initiating a programming session with a network element.
    • Obtaining an updated credential from the network element.
    • Assisting in storing the updated credential as the particular credential.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’510 Patent.

U.S. Patent No. 11,096,055 - “Automated device provisioning and activation”

The Invention Explained

  • Problem Addressed: The patent background discusses the increasing strain on wireless network capacity due to growing digital demand and notes the need for a communication system that enables "flexible service plan and efficient management of network user services" (’055 Patent, col. 5:58-63).
  • The Patented Solution: The invention describes a "wireless end-user device" architecture that includes a "service processor" on the device to manage network services. This processor stores multiple service profiles with associated policies and uses an "adaptive policy control agent" to enforce these policies, including selecting between a first wireless service (e.g., WWAN) and a second wireless service (e.g., a different WWAN or WLAN) based on the stored profiles and policies (’055 Patent, Abstract; Fig. 16).
  • Technical Importance: This device-assisted service control architecture allows network operators to manage data consumption more granularly and offer more flexible, policy-driven service plans to consumers (’055 Patent, col. 6:8-14).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶81).
  • The essential elements of independent claim 1 include:
    • A wireless end-user device comprising a Wireless Wide Area Network (WWAN) modem and memory.
    • The memory is configured to store a first service profile with policies for a first wireless service accessible through the WWAN modem, and a second service profile with policies for a second wireless network.
    • A connection manager selects an access network connection based on the service profiles.
    • An adaptive policy control agent enforces the service policies associated with the selected profile.
  • The complaint does not explicitly reserve the right to assert dependent claims for the ’055 Patent.

U.S. Patent No. 11,405,429 - “Security techniques for device assisted services”

The Invention Explained

  • The patent describes security techniques for device-assisted services that manage a device's use of a wireless network. The invention proposes executing a service profile within a "secure execution environment" on the device's processor to monitor and verify the use of the service, thereby protecting service measurement and policy enforcement functions from malware or tampering (’429 Patent, Abstract; col. 2:40-54).

Key Claims at a Glance

  • Asserted Claims: The complaint asserts independent claim 1 (Compl. ¶95).
  • Accused Features: The complaint alleges that Samsung's mobile devices implement a secure execution environment to protect and verify service policies related to wireless network usage (Compl. ¶91-92).

III. The Accused Instrumentality

Product Identification

  • The Accused Instrumentalities are "mobile electronic devices, including mobile phones and tablets," with specific examples including "Samsung Galaxy tablets and phones" (Compl. ¶1, ¶46, ¶68).

Functionality and Market Context

  • The complaint alleges that the Accused Instrumentalities are designed to operate in an environment of rapidly growing mobile data traffic, which has increased substantially since 2011 (Compl. ¶12). The complaint includes a line graph titled "Mobile data traffic" and two pie charts from an "Ericsson Mobility Calculator" to visually represent the scale of this data growth and the composition of mobile data usage (Compl. p. 6). The accused functionalities are those that help manage this data consumption, reduce power use, and maintain connectivity, features which Plaintiff alleges Samsung developed after its collaboration with ItsOn (Compl. ¶34).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not provided with the filed document. Accordingly, the narrative infringement theories are summarized below in prose.

U.S. Patent No. 9,609,510 Infringement Theory

The complaint alleges that the normal and customary use of Samsung's mobile devices infringes claim 1 of the ’510 Patent (Compl. ¶67). The infringement theory appears to center on the functionality used when a consumer changes their phone number, such as by porting a number from a previous carrier. The complaint alleges that the accused devices perform the claimed method of automatically detecting a "network-provisioning state change," determining that the on-device credential does not match the new target credential, and initiating a "programming session" with a network server to obtain and store the new phone number and associated credentials (Compl. ¶64, ¶67).

U.S. Patent No. 11,096,055 Infringement Theory

The complaint alleges that the normal and customary use of Samsung's mobile devices infringes claim 1 of the ’055 Patent (Compl. ¶81). The infringement theory appears to be based on the device's architecture for managing connections to wireless networks. The complaint alleges the accused devices contain a WWAN modem, memory for storing different service profiles with associated policies (e.g., for cellular vs. Wi-Fi), a connection manager for selecting a network, and an "adaptive policy control agent" for enforcing the policies of the selected network, thereby meeting the elements of the claim (Compl. ¶78, ¶81).

Identified Points of Contention

  • Scope Questions: For the ’510 Patent, a point of contention may be whether the standard software process for updating a phone number on an Android device constitutes the specific "network-provisioning state change" detection and "programming session" initiation as claimed. For the ’055 Patent, a central question may be whether the software components in Samsung's devices that manage data usage and network selection collectively function as the claimed "adaptive policy control agent," or if the claim requires a more specific, singular software architecture.
  • Technical Questions: A key evidentiary question will be what proof demonstrates that the accused devices perform the functions as claimed. The complaint relies on "information and belief" and the historical relationship with ItsOn (Compl. ¶34), but the court will require technical evidence detailing the actual operation of the software and hardware in the accused Samsung devices to determine if they meet the specific limitations of the asserted claims.

V. Key Claim Terms for Construction

"network-provisioning state change" ('510 Patent, Claim 1)

  • Context and Importance: This term defines the event that triggers the claimed automated credential-porting method. Its construction will be critical to determining the scope of infringement, as it dictates whether the claim covers only specific carrier-initiated events or also encompasses user-initiated actions or standard OS-level changes. Practitioners may focus on this term because its breadth will determine what evidence of device behavior is relevant to infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is not explicitly limited to a specific type of provisioning change, which may support an interpretation covering any update to the device's network service status.
    • Evidence for a Narrower Interpretation: The patent’s detailed description and figures primarily focus on the context of number porting when changing service providers (’510 Patent, Abstract; Fig. 15). This context could be cited to argue for a narrower construction limited to events directly related to carrier-level service changes.

"adaptive policy control agent" ('055 Patent, Claim 1)

  • Context and Importance: This term describes the core software element that allegedly performs the claimed policy enforcement. Whether Samsung's data management and connectivity software constitutes this "agent" will be a central issue. Practitioners may focus on this term because its construction will determine whether infringement requires a single, discrete software module or can be met by the distributed functionality of the operating system.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes the agent's functions, such as enforcing network service policies, in a way that is not necessarily tied to a single structural implementation, which could support a broader, more functional definition (’055 Patent, col. 48:32-49:52).
    • Evidence for a Narrower Interpretation: Figure 16 of the patent depicts a "Policy Control Agent (1692)" as a distinct block within a larger "Service Processor (115)" architecture. This specific embodiment could be used to argue that the term requires a discrete, identifiable software agent rather than a collection of disparate OS functions (’055 Patent, Fig. 16).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement based on Samsung actively encouraging and instructing customers on the use of the accused devices, knowing that such normal and customary use would result in direct infringement of the asserted patents (Compl. ¶66, ¶69, ¶80, ¶94).

Willful Infringement

Willfulness allegations are based on alleged pre-suit knowledge of the patents-in-suit. The complaint alleges that Samsung gained knowledge of the patented technology through its 2013-2016 collaboration with Sprint and ItsOn Inc. It is alleged that ItsOn's software, which was installed on Samsung devices, contained a patent marking notice listing patents in the same family as the asserted patents, and that the technology was discussed in meetings attended by Samsung personnel (Compl. ¶65, ¶79, ¶93).

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

  • A primary issue will be one of causation and proof: can Plaintiff establish a clear technical lineage from the patented technology allegedly disclosed by ItsOn to Samsung between 2013-2016 to the specific functionalities implemented in the current generation of accused Samsung mobile devices? The strength of this connection will likely be pivotal for both the infringement and willfulness claims.
  • The case will also turn on a question of definitional scope: will claim terms such as "network-provisioning state change" (’510 patent) and "adaptive policy control agent" (’055 patent) be construed broadly enough to read on the standard, multifaceted software functions of a modern mobile operating system, or will they be limited to the more specific architectures and embodiments described in the patents?
  • A central evidentiary question will be one of technical implementation: beyond high-level functional descriptions, what specific code, hardware architecture, and operational data will demonstrate that Samsung’s devices actually perform the patented methods, particularly with respect to the security functions claimed in the ’429 patent’s "secure execution environment"?