Samsung Electronics Co., Ltd. v. Headwater Research LLC

This case, IPR2024-01407, involves [Samsung Electronics Co., Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%2C%20Ltd.) ("Samsung") challenging the validity of U.S. Patent No. 9,179,359 owned by Headwater Research LLC ("Headwater") before the Patent Trial and Appeal Board (PTAB) of the USPTO. Samsung is a multinational electronics company, a global leader in consumer electronics, mobile phones, televisions, home appliances, and semiconductors. Headwater Research, founded in 2008 and headquartered in Tyler, TX, is described as a patent assertion entity (PAE) or non-practicing entity (NPE) that focuses on inventing and developing technological breakthroughs, particularly in mobile and wireless technology, and then licensing or commercializing these technologies. Headwater's business model involves identifying market problems, creating technology concepts, and then either forming new companies to commercialize the technology or licensing it to established industrial and commercial partners.

The patent at issue, U.S. Patent No. 9,179,359, generally relates to wireless communication, specifically methods for a user equipment (UE) to dynamically adjust transmit power based on estimated reflected power at an antenna to optimize radiated power. The accused products or technology in a related district court case involved Samsung's smartphones, tablets, and laptops, which Headwater alleged infringed on patents covering wireless communication improvements such as faster Wi-Fi speeds, lower power consumption, reduced data usage, and better connectivity. While the specific accused product for this IPR is not explicitly detailed in the available information, it is highly likely to be related to Samsung's mobile electronic devices and their wireless communication capabilities, given the associated district court litigation.

This IPR proceeding is currently "Pending - Instituted" before the PTAB, meaning the Board has found a reasonable likelihood that at least one challenged claim is unpatentable and has authorized a trial to commence. The PTAB is an administrative body within the USPTO that reviews the patentability of claims in an issued patent. The choice of this venue is significant as IPRs are a common strategy for accused infringers like Samsung to challenge patent validity outside of district court litigation, often leading to a stay of the parallel district court case. This IPR is notable due to its linkage to a significant prior patent infringement lawsuit between Headwater and Samsung in the Eastern District of Texas (Marshall Division), where a jury in April 2025 awarded Headwater $278.8 million in damages against Samsung for infringement of wireless communication patents.. Although that specific case, involving U.S. Patent No. 9,609,510, was later dismissed with prejudice in September 2025 due to a confidential settlement, the ongoing IPR concerning the '359 patent highlights Headwater's continued assertion of its wireless technology portfolio against major tech companies, and Samsung's ongoing efforts to invalidate these patents. The IPR also faced a Director Review request from Headwater regarding the institution decision based on Fintiv factors, which consider the proximity of a parallel district court trial, though the institution was ultimately maintained.

This summary addresses the key legal developments for the patent at issue, U.S. Patent No. 9,179,359, in both a district court patent infringement litigation and a related inter partes review (IPR) proceeding.

I. District Court Patent Infringement Litigation

Headwater Research LLC initiated a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the U.S. District Court for the Eastern District of Texas, which included U.S. Patent No. 9,179,359. This case is identified as Headwater Research LLC v. Samsung Electronics Co Ltd, Case No. 2:23-cv-00641.

• Filing: Headwater Research LLC filed the lawsuit against Samsung Electronics. While the exact filing date for 2:23-cv-00641 is not explicitly stated in the provided snippets, Headwater generally initiated its campaign against Samsung in the Eastern District of Texas in 2022.
• Outcome: The case, specifically mentioning U.S. Patent No. 9,179,359, was dismissed with prejudice on September 30, 2025, by District Judge Rodney Gilstrap. A dismissal with prejudice typically indicates a confidential settlement or licensing agreement between the parties, resolving the dispute permanently in that forum.

It is important to note that Headwater Research LLC was involved in a broader patent enforcement campaign against Samsung, which included other patents and multiple lawsuits in the Eastern District of Texas. For instance, in April 2025, a jury awarded Headwater $278.8 million in damages against Samsung for infringement of U.S. Patent Nos. 9,198,117 and 8,406,733. This broader dispute also concluded with a confidential settlement in September 2025. Another case, 2:24-cv-00228 (E.D. Texas), involving different patents (US 9,609,510, 11,096,055, 11,405,429), was also dismissed with prejudice after a joint motion to dismiss by May 15, 2026.

II. Parallel PTAB IPR Proceeding (IPR2024-01407)

Samsung Electronics Co., Ltd. filed an Inter Partes Review (IPR) petition challenging the validity of U.S. Patent No. 9,179,359, owned by Headwater Research LLC.

• Filing of Petition: Samsung Electronics Co., Ltd. filed the IPR petition, IPR2024-01407, on September 6, 2024.
• Institution Decision (Initial): The Patent Trial and Appeal Board (PTAB) initially granted institution of the IPR.
• Director Review and Denial of Institution: On July 17, 2025, Headwater Research LLC filed a request for Director Review of the decision granting institution. The Director Review Executive subsequently issued an order granting the review, vacating the initial decision to institute trial, and ultimately denying institution of the inter partes review for IPR2024-01407.
  • The denial was based on an application of the Fintiv factors, which consider the efficiency and integrity of the patent system in the presence of parallel district court litigation. Specifically, the Director Review found that the Board erred in its weighing of factor 2 (proximity of the trial date in the parallel proceeding to the projected deadline for a final written decision) and that the merits of the petition did not outweigh other factors. The trial date in the parallel district court proceeding for U.S. Patent No. 9,179,359 was set for approximately five months before the Board's projected final written decision in the IPR.
• Current Status: As of July 17, 2025, the IPR proceeding, IPR2024-01407, is not instituted, following the Director Review's decision to vacate the initial institution and deny the petition.

Samsung Electronics Co., Ltd. is represented by a team of attorneys from several law firms, along with in-house counsel.

Outside Counsel:

• Sheppard, Mullin, Richter & Hampton LLP
  • James L. Davis, Jr. (Lead Counsel) - Menlo Park, CA. Davis has experience in patent litigation before the PTAB and has represented Samsung in other IPR proceedings.
  • Alexander Middleton - New York, NY. Middleton also represents Samsung in PTAB matters.
  • Fan (Frances) Zhang - Washington, DC. Zhang is also listed as counsel for Samsung in PTAB proceedings.

While not explicitly listed in the immediately available IPR docket information for IPR2024-01407, other related patent litigation and IPRs involving Samsung and Headwater Research indicate that Samsung frequently works with other prominent IP firms for its patent defense. For example:

• Oblon, McClelland, Maier & Neustadt L.L.P. - This firm, headquartered in Alexandria, Virginia, with an affiliate office in Tokyo, Japan, is known for its extensive intellectual property practice, including patent prosecution, litigation, and post-grant proceedings before the PTAB. Oblon has been counsel in well over 200 AIA trial proceedings since their introduction.
• Finnegan, Henderson, Farabow, Garrett & Dunner LLP - A global intellectual property law firm with over 250 patent trial litigators, Finnegan has a strong track record in complex patent litigation before the PTAB, district, and federal courts. They have a deep bench of technically sophisticated attorneys and frequently represent innovative technology companies.
• Kirkland & Ellis - This firm successfully represented Samsung in a Federal Circuit appeal affirming the invalidity of a semiconductor patent that originated from a PTAB challenge.
• Fish & Richardson - Represented Samsung in a patent infringement case brought by Headwater Research, LLC where a jury found Samsung did not infringe.

In-house Counsel (Samsung Electronics):

• Matthew Bathon (Principal Legal Counsel) - Bathon's responsibilities at Samsung Electronics include coordinating Samsung's International Trade Commission (ITC) and district court dockets. He previously focused on litigating Section 337 investigations before the ITC and IP disputes in district courts as a partner at Steptoe LLP.
• Tim Jezek (Principal Legal Counsel) - Jezek, at Samsung Electronics America, focuses on IP litigation and related policy issues, bringing over two decades of litigation and intellectual property counseling experience from both in-house and law firm settings.
• Phillip Lee (Principal Legal Counsel, Samsung Electronics US IP Center) - Lee is a veteran litigator with experience in patent litigation, patent prosecution, and licensing across various technologies. He manages a docket of patent cases with outside counsel firms, negotiates settlements, and advises on IP issues impacting the company.
• Ken Korea (Former Senior Vice President, Silicon Valley IP Office) - While no longer in-house, Korea previously built and led a team at Samsung Electronics handling patent litigation, licensing, acquisition, and policy matters, specializing in technology transactions and patent licensing.

Headwater Research LLC, the defendant (Patent Owner) in IPR2024-01407, is represented by legal teams who have successfully litigated on its behalf in significant patent infringement cases, including against Samsung. While specific individual attorney appearances in the IPR docket are not detailed in the provided search results, the following firms and attorneys have prominently represented Headwater in closely related patent litigation.

Russ August & Kabat

• Firm: Russ August & Kabat

• Office Location: Los Angeles, CA (general firm location)

• Relevant Experience: This firm has a strong track record of representing Headwater Research LLC in patent litigation. A trial team from Russ August & Kabat secured a $278.8 million verdict against Samsung for Headwater in April 2025, concerning other wireless communication patents. They also achieved a $175 million jury verdict for Headwater against Verizon Communications in July 2025.

  • Marc Fenster (Lead Counsel)
    • Noted as part of the Russ August & Kabat trial team that secured significant verdicts for Headwater.
  • Reza Mirzaie (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Brian Ledahl (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Ben Wang (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Dale Chang (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Kris Davis (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Adam Hoffman (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Minna Jay (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Mackenzie Paladino (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • James Pickens (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • James Tsuei (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Philip Wang (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.
  • Jason Wietholter (Counsel)
    • Part of the Russ August & Kabat trial team for Headwater.

Miller Fair Henry PLLC

• Firm: Miller Fair Henry PLLC

• Office Location: Longview, TX

• Relevant Experience: This Longview-based firm represented Headwater Research in the federal jury trial against Samsung in the Eastern District of Texas, which resulted in a $278.8 million award for Headwater. They were also part of the trial team in the Verizon case.

  • Andrea Fair (Local Counsel)
    • A partner at Miller Fair Henry PLLC, she served as local counsel for Headwater in the patent infringement case against Samsung in the Eastern District of Texas. She was also part of the trial team that secured the $175 million verdict against Verizon.

Eisenführ Speiser

• Firm: Eisenführ Speiser

• Office Location: Germany (general firm location, e.g., Hamburg, Munich, Berlin)

• Relevant Experience: Attorneys from Eisenführ Speiser have advised Headwater Research in Unitary Patent Court (UPC) disputes against Samsung Electronics, Apple, and Motorola, as well as in national nullity suits.

  • Michael Schneider (Counsel/Partner)
    • Has experience in patent litigation, particularly in mobile communications, and has advised Headwater Research in UPC disputes and national nullity suits.
  • Philipp Neels (Counsel/Partner)
    • Brings experience in patent litigation for clients in the medical devices and telecommunications sector, including advising Headwater Research in UPC disputes.

While the search results confirm these firms' extensive involvement with Headwater in patent litigation, the specific attorneys designated as "counsel of record" in IPR2024-01407 are not explicitly itemized in the provided snippets from PTAB filings. The references to "counsel of record for the Patent Owner" in IPR2024-01407 indicate that Headwater has engaged legal representation for this specific IPR.