Unified Patents PTAB Data v. Headwater Research LLC

This Inter Partes Review (IPR) case, IPR2024-01397, involves Unified Patents PTAB Data challenging US Patent No. 9,647,918, owned by Headwater Research LLC. Unified Patents PTAB Data is a membership-based organization focused on deterring Non-Practicing Entities (NPEs) by challenging the validity of patents they assert, particularly in specific technology sectors, through administrative proceedings like IPRs. Headwater Research LLC, on the other hand, is a self-identified NPE that develops technological breakthroughs and licenses its extensive patent portfolio, primarily in mobile device and wireless connectivity technologies. Headwater Research has a history of aggressive patent assertion campaigns, securing substantial jury verdicts against companies like Samsung ($278 million) and Verizon ($175 million), and settling cases with others like Apple.

The patent at issue, US9647918, is titled "Mobile device and method attributing media services network usage to requesting application." It broadly covers technologies for managing and attributing network usage by various applications on mobile devices, potentially encompassing aspects of traffic and flow control, and quality of service within data networks. While there is no "accused product" in an IPR in the same sense as an infringement lawsuit, Unified Patents' challenge aimed to invalidate this patent, which is part of Headwater Research's broader portfolio relating to mobile operating systems, cloud technology, and mobile data policy management that has been asserted against numerous companies.

The case's procedural posture is notable as it was handled by the Patent Trial and Appeal Board (PTAB) and ultimately resulted in a "Not Instituted - Procedural" decision. This means the PTAB declined to initiate a full review of the patent's validity, likely due to procedural grounds rather than a substantive evaluation of the invalidity arguments presented. This outcome aligns with recent trends at the PTAB, where institution rates against NPEs have been comparatively low (24.6% in Q1 2026), and a surge in discretionary denials has been observed. The PTAB venue is significant because it offers a potentially faster and more cost-effective alternative to district court litigation for challenging patent validity. The case is notable for reflecting Unified Patents' ongoing strategy of combating NPE assertions through IPRs and highlights the increasing difficulty petitioners face in getting IPRs instituted, particularly with recent policy changes from the USPTO Director that have limited IPR availability and often result in summary notices for institution decisions.

This Inter Partes Review (IPR) case, IPR2024-01397, involves Unified Patents PTAB Data as the Petitioner and Headwater Research LLC as the Patent Owner, challenging U.S. Patent No. 9,647,918. The case concluded with a "Not Instituted - Procedural" status.

Key Legal Developments and Outcome:

• Filing & Institution Decision:

  • While the specific filing date for the IPR petition by Unified Patents PTAB Data for IPR2024-01397 is not readily available through public search, an "Institution Decision" for IPR2024-01397 concerning US9647918 was issued on April 1, 2025. Consistent with the "Not Instituted - Procedural" status, this decision was a denial of institution.
  • The procedural denial of institution for IPRs involving Headwater Research LLC patents, particularly by Director Review, has frequently stemmed from the application of the Fintiv factors, which consider the status of parallel district court litigation.

• Parallel PTAB IPR Proceedings (Context for Procedural Denials):

  • Headwater Research LLC has faced multiple IPR challenges to its patents, particularly from Samsung Electronics Co. Ltd.
  • For instance, in IPR2024-01396 (also challenging US9647918) and IPR2024-01407 (challenging US9,179,359 B2), both filed by Samsung Electronics Co. Ltd. against Headwater Research LLC, the Patent Trial and Appeal Board (PTAB) initially granted institution.
  • However, on July 17, 2025, the Director of the USPTO exercised Director Review, vacated the initial institution decisions, and denied institution for both IPR2024-01396 and IPR2024-01407.
  • The basis for these denials was procedural, specifically invoking the Fintiv factors. The Director found that the proximity of the trial dates in parallel district court proceedings (involving the same patents) to the projected deadline for the PTAB's final written decisions weighed against institution, thus prioritizing the district court's ability to resolve validity issues first. This provides a strong indication of the likely procedural reason for the non-institution of IPR2024-01397.

• Related District Court Litigation (Underlying Context for IPR Denials):

  • Headwater Research LLC has been actively involved in patent infringement litigation in district courts, which significantly influenced the PTAB's discretionary institution decisions.
  • Headwater Research LLC filed patent infringement lawsuits against Samsung Electronics in the Eastern District of Texas, including case 2:23-cv-00103 (filed March 2023) and 2:23-cv-00641 (filed December 29, 2023).
  • In a significant development, a federal jury in the Eastern District of Texas, in the case Headwater Research LLC v. Samsung Electronics Co., Ltd. (2:23-cv-00103), found Samsung had infringed U.S. Patent Nos. 8,406,733 and 9,198,117, awarding Headwater $278.8 million in damages in April 2025.
  • Another jury verdict in July 2025 saw Headwater Research LLC awarded $175 million against Verizon Communications for patent infringement.
  • In September 2025, Samsung Electronics and Headwater Research LLC reached a confidential settlement, leading to the dismissal with prejudice of case 2:23-cv-00641 in the Eastern District of Texas on September 30, 2025.

Final Disposition:

IPR2024-01397 was "Not Instituted - Procedural," meaning the PTAB declined to proceed with a full review of the patentability of US9647918. This decision, issued on April 1, 2025, was likely a discretionary denial based on the Fintiv factors, mirroring similar outcomes in other IPRs against Headwater Research LLC where ongoing district court litigation with proximate trial dates weighed heavily against institution.

Unified Patents PTAB Data is represented by both external counsel from Erise IP, P.A. and in-house counsel from Unified Patents, LLC in their inter partes review (IPR) proceedings. While the specific Power of Attorney document found was for IPR2021-01260, these individuals are frequently listed as counsel for Unified Patents in their IPR challenges, suggesting a consistent legal team for such proceedings.

The counsel of record for Unified Patents PTAB Data are:

• Jason R. Mudd

  • Role: Lead Counsel
  • Firm: Erise IP, P.A.
  • Office Location: Overland Park, Kansas (and possibly Greenwood Village, Colorado, as both addresses are listed for Erise IP, P.A. on the Power of Attorney)
  • Experience Note: Jason R. Mudd is a registered patent attorney often appearing as lead counsel for petitioners in inter partes review proceedings before the Patent Trial and Appeal Board.

• Kelly R. Hughes

  • Role: Back-Up Counsel, Senior Patent Counsel
  • Firm: Erise IP, P.A. (and in-house for Unified Patents, LLC)
  • Office Location: Greenwood Village, Colorado (for Erise IP, P.A.)
  • Experience Note: Kelly R. Hughes is a registered patent attorney involved in PTAB proceedings, serving both as outside counsel and in an in-house capacity for Unified Patents.

• Eric A. Buresh

  • Role: Back-Up Counsel
  • Firm: Erise IP, P.A.
  • Office Location: Overland Park, Kansas
  • Experience Note: Eric A. Buresh is a registered patent attorney representing petitioners in IPRs.

• Roshan Mansinghani

  • Role: Back-Up Counsel, Head of Operations
  • Firm: Unified Patents, LLC (in-house)
  • Office Location: Dallas, Texas
  • Experience Note: Roshan Mansinghani serves as in-house counsel and Head of Operations for Unified Patents, actively involved in their patent challenges.

• Jordan M. Rossen

  • Role: Back-Up Counsel, Senior Patent Counsel
  • Firm: Unified Patents, LLC (in-house)
  • Office Location: Washington, D.C.
  • Experience Note: Jordan M. Rossen is a Senior Patent Counsel at Unified Patents, contributing to their IPR strategies and filings.

tool_code
print(google_search.search(queries=["Headwater Research LLC IPR2024-01397 counsel of record", "Headwater Research LLC patent litigation counsel", "Headwater Research LLC v Samsung Electronics Co. Ltd. 2:23-cv-00103 counsel", "Fish & Richardson Headwater Research LLC counsel", "Ropes & Gray Headwater Research LLC counsel"]))
thought
The user is asking for the counsel of record representing the defendant (Headwater Research LLC) in the IPR case IPR2024-01397.
I need to find the names of the attorneys, their roles, firms, office locations, and relevant experience.
I will use web search to look for this information, prioritizing official sources like PTAB dockets, firm websites, and legal news.

Based on the previous sections, Headwater Research LLC has been involved in significant district court litigation against Samsung and Verizon. I will look for counsel representing Headwater in those cases as they are likely to represent them in IPRs as well, or at least be familiar with their patents.

I will specifically look for counsel in IPR2024-01397 if available, and if not, then counsel for Headwater Research LLC in other IPRs or related district court cases involving the same patents or their portfolio.Headwater Research LLC, as the Patent Owner in IPR2024-01397, was primarily represented by attorneys from Russ August & Kabat, a firm frequently appearing for Headwater in its patent litigation and PTAB proceedings. Additionally, local counsel from Miller Fair Henry PLLC has supported Headwater Research in related district court cases, and sometimes appears in PTAB proceedings as well.

The counsel of record for Headwater Research LLC include:

• Marc A. Fenster

  • Role: Lead Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Marc Fenster is a prominent patent litigator who has secured substantial jury verdicts for Headwater Research, including a $278.8 million verdict against Samsung and a $175 million verdict against Verizon. He is frequently listed as lead counsel for Headwater in both district court and PTAB proceedings.

• Reza Mirzaie

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Reza Mirzaie has been part of the trial teams that achieved significant verdicts for Headwater Research and is consistently listed as counsel for Headwater in PTAB filings.

• Brian D. Ledahl

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Brian Ledahl has actively participated in patent infringement trials for Headwater Research, including the Verizon case where a $175 million verdict was awarded.

• Dale Chang

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Dale Chang is listed as counsel for Headwater Research in multiple IPR proceedings and district court cases.

• Kristopher R. Davis

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Kristopher Davis was part of the trial team that secured the $175 million verdict against Verizon for Headwater Research.

• James S. Tsuei

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: James Tsuei has been involved in Headwater Research's successful patent infringement litigations.

• Philip X. Wang

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Philip Wang is listed as counsel for Headwater Research in various PTAB proceedings.

• Neil Rubin

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Neil Rubin appears as counsel for Headwater Research in IPR proceedings.

• James A. Milkey

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: James Milkey is listed among the attorneys representing Headwater Research in PTAB cases.

• Jason Wietholter

  • Role: Counsel
  • Firm: Russ August & Kabat
  • Office Location: Los Angeles, California
  • Experience Note: Jason Wietholter was part of the trial team for the Verizon case.

• Andrea Fair

  • Role: Local Counsel
  • Firm: Miller Fair Henry PLLC
  • Office Location: Longview, Texas
  • Experience Note: Andrea Fair served as local counsel for Headwater Research in the Eastern District of Texas cases against Samsung and Verizon, which resulted in substantial jury awards.