US 8589541

I'll search for authoritative details on this patent, including any 2026 CAFC activity.

Let me check for any 2026 CAFC appellate activity and recent PTAB developments for this specific patent.

Let me verify the claim structure (which claims are independent) for the '541 patent.

US 8,589,541 B2 — Technical & Prosecution/Litigation Summary

Scope note: I queried public sources reachable by web search (Google Patents, the issued patent PDF, PTAB/PTAB-related filings, and district/Federal Circuit court filings). I did not have direct PatentCenter or a "CAFC 2026 docket database" session; where I rely on court filings rather than the PTAB record itself, I say so. Patent numbers are reproduced literally as they appear.

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1. Bibliographic data (as it appears in the record)

(Note: the Google Patents page identifies the "prior art date" as 2009-01-28 and shows a benefit claim from US 12/380,758 filed 2009-03-02. Headwater itself contended in litigation that the '541 patent is entitled to priority no later than May 25, 2010.)

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2. Abstract (verbatim, from the issued patent)

"Disclosed is a non-transitory computer-readable storage medium storing machine-executable instructions that, when executed by one or more processors of a wireless end-user device, cause the one or more processors to: identify a service usage activity of the wireless end-user device, the service usage activity being associated with a first software component of a plurality of software components on the wireless end-user device, the service usage activity comprising one or more prospective or successful communications over a wireless network; determine whether the service usage activity comprises a background activity; determine at least an aspect of a policy based on a user input or based on information from a network element, the policy to be applied if the service usage activity is the background activity, the policy at least for controlling the service usage activity; and if it is determined that the service usage activity is the background activity, apply the policy."

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3. Claim structure and independent claims

(a) Only one independent claim. The prosecution record (as summarized in the defendants' invalidity expert report, Ex. Kevin Jeffay report) states: "The applicant rewrote independent claim 1 and added 173 new dependent claims. With an Examiner's amendment, the Examiner allowed all 174 claims." Consistent with that, the claim listings produced in litigation show claims 2, 3, 4, 5, 6 … 91, 92, 93, etc. all reciting "The non-transitory computer-readable storage medium recited in claim 1…". Verizon's Dec. 22, 2025 notice to the district court likewise refers to "the sole independent claim 1, upon which the only asserted claim of the '541 Patent in this matter depends."

So, on the record I have, claim 1 is the only independent claim; the other 173 claims are dependent. If you need certainty, this should be confirmed against the printed claim set at columns 110–125 of the patent (the full text supplied to me was truncated before the claims).

(b) Plain-language overview of independent claim 1

Claim 1 is a non-transitory computer-readable storage medium (software claim) for a wireless end-user device (e.g., a smartphone). When executed, the software must:

1. Identify a service usage activity of the device, where that activity is associated with one of several software components on the device (e.g., an app or OS component);
2. The activity must involve one or more prospective or successful communications over a wireless network (i.e., an actual or attempted network access/transaction);
3. Determine whether the activity is a "background activity" (roughly: not the thing the user is actively interacting with / not user-facing);
4. Determine at least an aspect of a policy — and this aspect must be determined either from a user input obtained through the device's user interface or from information received from a network element (e.g., a network-side service controller); the policy is the one to be applied if the activity is a background activity, and it is at least a policy for controlling the activity; and
5. If the activity is a background activity, apply the policy.

In plain terms: a device-side software agent watches apps/OS components, decides whether a given network access is "background," gets a control policy from either the user or the carrier network, and then throttles/blocks/delays that background traffic — the patent's stated goal being to protect wireless network capacity from low-priority chatter (background sync, updates, feeds, etc.).

Representative dependent claims (illustrative, not exhaustive): claim 2 (software component is an application or OS component, and the communication is an update to it); claim 3 (enumerated activity types — network access, background signaling, cloud sync, feeds, downloads, email, chat, security updates, P2P updates, device behavior reports); claims 91–96 (applying the policy includes presenting a notification through the device UI, optionally with information about the policy, an option to set/override/modify it, a warning/alert, and/or a service-plan-limit notice); claims 79 and 83 were the claims actually asserted against Verizon (both depend from claim 1).

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4. USPTO / PTAB status (critical)

• IPR2024-00942 and IPR2024-00943 (filed June 2024; one third-party record shows June 7, 2024, the expert report shows June 17, 2024) — Petitioners: Google LLC, Cellco Partnership d/b/a Verizon Wireless, Verizon Corporate Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., and AT&T Services, Inc.
• Grounds relied principally on Rao (US 2006/0039354) alone and in combination with Fadell (US 2010/0017506) and Freund (US 5,987,611).
• Final Written Decision issued October 1, 2025 — the Board determined all challenged claims unpatentable: claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 (combined FWD in the two proceedings; 35 U.S.C. § 318(a)).
• Patent Owner statutory disclaimer: Headwater disclaimed numerous claims during the IPRs, including independent claim 1 (the expert report lists claims 1, 24–25, 27–40, 61–62, 65–78, 80–82, 84–90, 153–154, and/or 172–174).
• IPR2024-00944 was not instituted.
• Per Verizon's December 22, 2025 filing in the district court, Headwater did not file a notice of appeal of the October 1, 2025 Final Written Decision within the statutory deadline.

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5. 2026 CAFC dockets touching this patent

I located two Federal Circuit dockets arising from the E.D. Tex. litigation that involve the '541 patent (along with U.S. 9,215,613):

District-court backdrop for those appeals:

• July 23, 2025 jury verdict: willful infringement of claim 83 of the '541 patent and claim 1 of U.S. 9,215,613; $175,000,000 lump-sum award (Dkt. 420).
• Feb. 4, 2026 bench trial on equitable defenses; the court found Headwater could not enforce the asserted claims against Verizon under implied waiver (Dkt. 447), and entered Final Judgment (Dkt. 448, April 23, 2026).
• June 2–3, 2026: a Re-Stated Final Judgment and Order Nunc Pro Tunc was entered; post-trial Rule 50(b)/59(e) motions (Dkt. 453–454) remained pending, which is why both appeals are deactivated.
• Also on the '541 record: E.D. Tex. cases against AT&T (2:23-cv-00397 / -00398) and T-Mobile (2:23-cv-00377 / -00379), a claim-construction order construing '541 claim 1 (including "background activity," "user interface foreground," etc.), and later N.D. Cal. cases (e.g., 3:25-cv-09558, 4:25-cv-09558, 5:25-cv-09558).

I did not find a 2026 Federal Circuit appeal of the PTAB's October 1, 2025 Final Written Decision on the '541 patent; the district-court record affirmatively states no such appeal was taken. If an appeal was later filed, I do not have authoritative confirmation of it.

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6. Explicit uncertainties

1. Claim-set verification: My conclusion that claim 1 is the sole independent claim rests on the prosecution-history summary in the Jeffay expert report, on Verizon's notice language, and on claim listings, not on a direct read of columns 110–125 of the printed patent (the supplied full text cut off before the claims). Treat it as high-confidence but confirmable.
2. Filing-date discrepancy: one third-party aggregator shows a filing date of 2011-05-24; the patent and Google Patents show May 25, 2011. I used May 25, 2011.
3. Priority/expiration: the listing shows a 2009-01-28 prior-art/priority date and a 2029-03-02 anticipated expiration; Headwater advocated a May 25, 2010 priority date in litigation. The expiration is the office listing's estimate, not a legal conclusion.
4. IPR filing dates differ across sources (June 7 vs. June 17, 2024).
5. IPR2026-00138 (Google) appears in a Jan. 15, 2026 document set and references '541 prosecution history, but the patents challenged in that 2026 IPR are not clearly the '541 patent in what I retrieved — do not rely on that association without checking the petition caption.

Sources: https://patents.google.com/patent/US8589541/en ; https://patentimages.storage.googleapis.com/36/00/1d/848e1edde1869d/US8589541.pdf ; https://portal.unifiedpatents.com/patents/patent/[8589541](/patent/8589541) ; https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/10-01-2025-Board/Final_Written_Decision__original-20-Judgment_Final_Written_Decision_.pdf ; https://www.courtlistener.com/docket/67648165/440/headwater-research-llc-v-verizon-communications-inc/ ; https://archive.org/download/gov.uscourts.txed.[224022](/patent/224022)/gov.uscourts.txed.224022.459.0.pdf ; https://archive.org/download/gov.uscourts.txed.224022/gov.uscourts.txed.224022.473.0.pdf ; https://storage.courtlistener.com/recap/gov.uscourts.txed.224022/gov.uscourts.txed.224022.200.15.pdf

I'll research litigation involving US patent 8589541 using live sources.

Let me dig deeper into the specific cases and parties.

Let me verify the current status of the remaining district court cases.

Litigation Involving U.S. Patent No. 8,589,541 ("the '541 patent")

(Headwater Research LLC, "Device-assisted services for protecting network capacity"; application 13/134,028; priority 2009-01-28; granted 2013-11-19.)

Note on scope: I searched for the specific number 8,589,541 / 8589541 and excluded similarly numbered patents. The '541 patent is a well-known parent in the Headwater Research family, and it has been the subject of a substantial campaign of litigation and PTAB proceedings. Below are the matters in which the '541 patent itself was specifically asserted or challenged.

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A. District Court Litigation

All of the district court cases below were brought by Headwater Research LLC as plaintiff (patent owner) and were filed in the U.S. District Court for the Eastern District of Texas, Marshall Division, before Judge Rodney Gilstrap (referred to Magistrate Judge Roy S. Payne) — except the Google declaratory-judgment action, which is in N.D. Cal.

1. Headwater Research LLC v. [[Verizon Communications Inc.](/litigations/by-defendant/Verizon%20Communications%20Inc.), et al.](/litigations/by-defendant/Verizon%20Communications%20Inc.%2C%20et%20al.)

• Plaintiff: Headwater Research LLC
• Defendants: Cellco Partnership d/b/a Verizon Wireless; Verizon Corporate Services Group, Inc. (and Verizon Communications Inc. as caption party)
• Jurisdiction: E.D. Tex. (Marshall Division)
• Case No.: 2:23-cv-00352-JRG-RSP
• Filed: July 28, 2023
• Status/Outcome: Tried to a jury July 16–23, 2025. The jury returned a verdict on July 23, 2025, finding willful infringement of Claim 83 of the '541 patent (and Claim 1 of U.S. Patent No. 9,215,613), and awarded $175,000,000 lump-sum damages. A bench trial on Verizon's equitable defenses (estoppel/waiver) was held February 4, 2026. The court found Headwater could not enforce the asserted patents under the doctrine of implied waiver, and entered Final Judgment on April 23, 2026 (later re-stated nunc pro tunc June 2, 2026) in favor of Verizon as prevailing party. Cross-appeals have been taken to the U.S. Court of Appeals for the Federal Circuit (Headwater notice of appeal, USCA No. 26-1884; Verizon notice of cross-appeal).
  • Sources: Final Judgment, Headwater v. Verizon, No. 2:23-cv-00352 (E.D. Tex. Apr. 23, 2026), https://archive.org/download/gov.uscourts.txed.[224022](/patent/224022)/gov.uscourts.txed.224022.448.0.pdf; CourtListener docket, https://www.courtlistener.com/docket/67648165/headwater-research-llc-v-verizon-communications-inc/

2. Headwater Research LLC v. AT&T Inc., et al.

• Plaintiff: Headwater Research LLC
• Defendants: AT&T Inc.; AT&T Services, Inc.; AT&T Mobility, LLC; AT&T Corp. (now merged/converted into AT&T Enterprises, LLC)
• Jurisdiction: E.D. Tex. (Marshall Division)
• Case No.: 2:23-cv-00397-JRG-RSP
• Filed: September 1, 2023
• Status/Outcome: Asserted the '541 patent and U.S. Patent No. 9,215,613. Claim-construction orders issued January 19, 2025 and August 4, 2025 (construing terms in claims 79 and 83). A related case, 2:23-cv-00398, was consolidated into -00397 and dismissed January 31, 2025. The case was still pending in the records reviewed; I did not find a final judgment or trial outcome for the '541 patent in this action.
  • Source: Related-Matters Update, IPR2024-00942/-00943 (Sept. 26, 2025), https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/09-29-2025-Board/Exhibit-3002-Related_Matters_Update.pdf

3. Headwater Research LLC v. T-Mobile US, Inc., et al.

• Plaintiff: Headwater Research LLC
• Defendants: T-Mobile US, Inc.; T-Mobile USA, Inc.; Sprint Corp. (Sprint LLC)
• Jurisdiction: E.D. Tex. (Marshall Division)
• Case No.: 2:23-cv-00377-JRG-RSP (member), consolidated into lead case 2:23-cv-00379-JRG-RSP
• Filed: August 21/23, 2023
• Status/Outcome: Asserted the '541 patent and the '613 patent; T-Mobile counterclaimed for declaratory judgment of non-infringement and invalidity of both. Claim-construction order entered January 20, 2025. No trial outcome for the '541 patent was identified in the records reviewed.
  • Sources: Headwater's Answer to T-Mobile's Counterclaims (Nov. 22, 2023), https://storage.courtlistener.com/recap/gov.uscourts.txed.[224519](/patent/224519)/gov.uscourts.txed.224519.36.0.pdf; Related-Matters Update, supra.

4. Google LLC v. Headwater Research LLC (declaratory judgment)

• Plaintiff: Google LLC (DJ plaintiff)
• Defendant: Headwater Research LLC (patent owner)
• Jurisdiction: N.D. Cal. (San Francisco/Oakland Division)
• Case No.: 4:25-cv-09558
• Filed: November 5, 2025 (declaratory-judgment action — non-infringement and/or invalidity)
• Status/Outcome: Pending. Reassigned from Magistrate Judge Lisa J. Cisneros, then from Judge Haywood S. Gilliam, Jr. (recusal), to Judge Jon S. Tigar (Dec. 4, 2025). Waiver of service returned; extension to respond to January 26, 2026. I did not identify a final disposition.
  • Sources: https://dockets.justia.com/docket/california/candce/4:2025cv09558/[459270](/patent/459270); https://ai-lab.exparte.com/case/dct/cand/4:25-cv-09558/google-llc-v-headwater-research-llc

Flag on overlapping N.D. Cal. numbers: The Google Patents "family litigation" listing for US8589541 shows N.D. Cal. cases 4:25-cv-09558, 5:25-cv-09558, and 3:25-cv-09558. Based on the docket trail, these appear to be the same single action (-09558) as it was administratively renumbered/reassigned between judges/divisions — not three separate suits. I could not fully confirm this from the sources reviewed, so treat the "3:25" and "5:25" entries with caution.

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B. PTAB (Inter Partes Review) Proceedings

Three IPRs challenging the '541 patent were filed on June 7, 2024 by Google LLC (with Cellco Partnership d/b/a Verizon Wireless, Verizon Corporate Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., and AT&T Services, Inc. as petitioners/real parties-in-interest; AT&T Mobility LLC and AT&T Enterprises LLC also identified as RPIs):

In the combined Final Written Decision, the Board held claims 2–23, 26, 41–60, 63, 64, 91–152, and 155–171 of the '541 patent unpatentable, and found the elements of independent claim 1 (on which the sole asserted claim, claim 83, depends) anticipated by prior art. Headwater did not appeal the -00942/-00943 Final Written Decision.

• Sources: Final Written Decision, IPR2024-00942/-00943 (Oct. 1, 2025), https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/10-01-2025-Board/Final_Written_Decision__original-20-Judgment_Final_Written_Decision_.pdf; Verizon Notice of Final Written Decision, Headwater v. Verizon, No. 2:23-cv-00352, Dkt. 440 (Dec. 22, 2025), https://www.courtlistener.com/docket/67648165/440/headwater-research-llc-v-verizon-communications-inc/

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C. Related USPTO Proceeding

• Ex Parte Reexamination No. 90/019,892 — ordered (concerning claims 79 and 83 of the '541 patent, which were not subject to the IPRs). Source: Related-Matters Update, supra.

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D. Matters Commonly Confused / Not Involving the '541 Patent

To avoid mis-attribution, note that several closely related Headwater actions concern different patents and should not be listed under the '541 patent:

• Headwater Research LLC v. Samsung Electronics Co., Ltd., et al. (E.D. Tex.) — asserted the '733, '117, and '192 patents (not '541).
• Headwater Research LLC v. [[Amazon.com Services](/litigations/by-defendant/Amazon.com%20Services) LLC](/litigations/by-plaintiff/Amazon.com%20Services%20LLC), et al. (W.D. Tex., 7:25-cv-00286; and E.D. Tex. 2:26-cv-00304) — asserted patents such as 9,615,192 / 10,321,320 (not '541).
• Headwater Research LLC v. Tencent Holdings Ltd. (E.D. Tex., 2:25-cv-00965) — not identified as involving the '541 patent.
• Headwater Research LLC v. AT&T Services, Inc., et al. (E.D. Tex., 2:25-cv-00693) — a later-filed action; I did not confirm the '541 patent is asserted in it.

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Summary Table

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Caveats: (1) The docket evidence is strongest for the Verizon -00352 case and the IPR2024-00942/-00943 proceedings. For the AT&T (-00397) and T-Mobile (-00379) cases I could confirm filing, consolidation, asserted patents, and claim-construction activity, but not any present trial/judgment outcome for the '541 patent. (2) Some source documents reflect events dated after the stated current date (April 26, 2026), e.g., the Verizon cross-appeal and re-stated judgment in May/June 2026; I have reported them as the sources show them, but flagged the date tension. (3) I was unable to definitively resolve the relationship among the N.D. Cal. numbers 3:25-cv-09558, 4:25-cv-09558, and 5:25-cv-09558.

I'll research the PTAB proceedings on US 8589541, starting with the proceeding numbers already flagged in the patent's litigation data.

Good — I have the core outcome. Now let me pin down IPR2024-00944, the institution decisions, and the grounds/art.

Strong detail emerging. Let me nail down IPR2024-00944's petition/denial and confirm whether any FWD was appealed.

Sourcing note before the analysis

Your structured "PTAB proceedings on file" block says the USPTO ODP API returns no AIA trials for US 8,589,541. That is stale/incorrect. The patent's own Google Patents litigation metadata lists three PTAB cases (IPR2024-00942, -00943, -00944 — all attributed to the "Unified Patents PTAB Data" dataset, not to Unified Patents as a party), and web search independently confirms all three, including a combined Final Written Decision. I've treated the three proceedings as canonical and flagged everything I could not verify. Unified Patents is the data vendor here, not a petitioner — the real petitioners are a coordinated carrier/OEM group.

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Proceedings overview

Three AIA trials were filed against US 8,589,541 — all Inter Partes Reviews, all filed 2024-06-07 by the same six-petitioner group (Google LLC; [Cellco Partnership d/b/a Verizon Wireless](/litigations/by-plaintiff/Cellco%20Partnership%20d%2Fb%2Fa%20Verizon%20Wireless); Verizon Corporate Services Group Inc.; T-Mobile USA, Inc.; Sprint LLC f/k/a Sprint Corp.; AT&T Services, Inc.) — of which two were instituted and produced a combined Final Written Decision on 2025-10-01 holding every instituted claim unpatentable, and one was denied institution on 2024-12-04; there are no active proceedings, no settlements, and no appeals.

Breakdown: 0 active / 124 claims invalidated by FWD / 48 claims statutorily disclaimed by the patent owner / 2 claims never instituted on and never adjudicated / 1 petition denied institution / 0 settled.

Bottom line for a defendant: the defensive posture is close to maximal. Headwater Research LLC's own Final Written Decision killed 124 claims, it had already statutorily disclaimed 48 more (including the sole independent claim 1), and it did not appeal. Of 174 issued claims, only claims 79 and 83 remain uncancelled and unadjudicated — and even those were never tested on the merits because the Board denied institution in IPR2024-00944. If a demand letter cites anything other than claims 79 and 83, the asserted claim no longer exists.

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IPR2024-00942 — Google LLC, Cellco Partnership d/b/a Verizon Wireless, Verizon Corporate Services Group Inc., T-Mobile USA, Inc., Sprint LLC f/k/a Sprint Corp., and AT&T Services, Inc. v. Headwater Research LLC

• Type: Inter Partes Review
• Filed: 2024-06-07 (one secondary source — the Jeffay expert report table in the E.D. Tex. case — lists 2024-06-17; the DocketAlarm docket and the petitioners' own 2025-02-21 refund request both state 2024-06-07, which I credit)
• Status: Final Written Decision (per the structured litigation data), terminated 2025-10-01. Gloss: trial instituted, all instituted claims held unpatentable, decision now final and unappealed.
• Judge panel: Administrative Patent Judges Hyun J. Jung, Scott B. Howard (writing), and Stephen E. Belisle. (DocketAlarm's case page also lists Kalyan K. Deshpande, likely from an earlier panel/order.)
• Petition grounds: challenged claims 1–23, 26, 41–60, 63, 64, 155–157, and 160–171. Art: U.S. Pub. 2006/0039354 (Rao), U.S. Pub. 2010/0017506 (Fadell), and U.S. Patent 5,987,611 (Freund), with the declaration of Dr. Andrew Wolfe. Statutory bases were § 102 (Rao) and § 103(a) (Rao; Rao+Fadell; Rao+Freund; Rao+Fadell+Freund). The asserted ground table from the FWD:

• Institution decision: instituted on all grounds, on claims 2–23, 26, 41–60, 63, 64, 155–157, and 160–171 (Paper 10). Claim 1 was carved out before institution because Headwater filed a statutory disclaimer (Ex. 3001) disclaiming claim 1 and others. I could not confirm the precise institution date from the sources reviewed; it fell in the October–December 2024 window.
• Final Written Decision: issued 2025-10-01, issued jointly with IPR2024-00943 (the Board combined them because "[t]he references applied against the challenged claims are identical in each of the cases" and the same declarant submitted "an identical declaration in each proceeding" — 37 C.F.R. §§ 42.5(a), 42.122(a)). Disposition: "Determining All Challenged Claims Unpatentable — 35 U.S.C. § 318(a)." The Board held: "we determine that Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable." No claim was held patentable. Because claim 1 was statutorily disclaimed, the Board did not adjudicate it. Note a discrepancy worth flagging: Verizon's 2025-12-22 E.D. Tex. notice characterizes the decision as having "specifically found each element of the sole independent claim 1 … has been anticipated by prior art." Claim 1 appears in the FWD's grounds table but was disclaimed and excluded from institution, so I would not rely on that characterization without reading the FWD body; the Board does not ordinarily decide disclaimed claims.
• Settlement / termination: none. Full adverse merits judgment.
• Appeal: none taken by the patent owner. Verizon's 2025-12-22 district-court notice (Case 2:23-cv-00352, Dkt. 440) states "Plaintiff Headwater Research LLC … did not file a notice of appeal in response to the Decision within the statutory deadline." The 63-day deadline under 35 U.S.C. § 142 / Fed. R. App. P. 4(a)(1)(B) ran to roughly 2025-12-03. I did not independently confirm the Federal Circuit docket; treat "no appeal" as verified by the defendant's filed notice, not by a CAFC docket pull.
• Defensive value: Claims 41, 42, 45, 47, 55, 57, 120, and 170 — eight of the ten '541 claims Headwater actually elected to assert in the Texas campaign — are canceled. Any infringement theory built on them is dead on arrival, and citing them in a demand letter is a credibility problem. The FWD is final, unappealed, and § 315(e)(1)/(2) estoppel attaches to these petitioners and their privies.

IPR2024-00943 — same Petitioners v. Headwater Research LLC

• Type: Inter Partes Review
• Filed: 2024-06-07
• Status: Final Written Decision (per the structured litigation data), terminated 2025-10-01 — same combined judgment as IPR2024-00942.
• Judge panel: Hyun J. Jung, Scott B. Howard (writing), Stephen E. Belisle.
• Petition grounds: challenged claims 1, 91–152, 158, and 159. Same art and statutory bases as -00942 (Rao alone; Rao+Fadell; Rao+Freund; Rao+Fadell+Freund), same Wolfe declaration — the Board expressly found the references "identical in each of the cases."
• Institution decision: partially instituted — instituted on claims 91–152, 158, and 159 (Paper 6), on all grounds alleged. Claim 1 dropped out again via the same statutory disclaimer.
• Final Written Decision: 2025-10-01, combined with -00942. Claims 91–152, 158, and 159 held unpatentable. No claim survived. No claim was held patentable.
• Settlement / termination: none.
• Appeal: none by the patent owner (same basis as above).
• Defensive value: This case closed the entire 91–152 block — 62 claims, including claim 120 (one of Headwater's elected claims). Combined with -00942, 124 claims of the '541 patent are canceled by a final, unappealed judgment. There is no live attack surface left in this range.

IPR2024-00944 — same Petitioners v. Headwater Research LLC

• Type: Inter Partes Review
• Filed: 2024-06-07 (per DocketAlarm and the petitioners' 2025-02-21 refund request; the six-petitioner group, same as -00942/-00943)
• Status: Institution Denied — terminated 2024-12-04. The structured litigation data labels this "Not Instituted - Merits," i.e., the denial was on the merits rather than a discretionary/Fintiv denial.
• Judge panel: Hyun Jung, Scott Howard, Stephen Belisle (per DocketAlarm)
• Petition grounds: 50 claims — claim 1 plus the claim block not covered by -00942/-00943 (claims 24–25, 27–40, 61–62, 65–90, 153–154, 172–174). Same Rao-based art family. Caution: I confirmed "50 claims challenged" from T-Mobile's stay motion in E.D. Tex. Case 2:23-cv-00379 (Dkt. 93) and reconstructed the claim set from the arithmetic of the three petitions; I did not see Paper 1's challenged-claim list verbatim.
• Institution decision: denied 2024-12-04 (Paper 17). Headwater filed the only preliminary response among the three '541 petitions (Paper 10, 2024-09-17), in which it stated it would disclaim 48 claims (including sole independent claim 1) and argued substantively only as to the two remaining dependent claims — claims 79 and 83. Under 37 C.F.R. § 42.107(e), no IPR is instituted on disclaimed claims, and the Board declined institution on the two surviving dependent claims as well. The exact merits reasoning of Paper 17 is not in the sources I reviewed; petitioners requested a $45,000 post-institution fee refund on 2025-02-21 and the refund was approved 2025-03-12, confirming no trial occurred.
• Final Written Decision: none — no trial, no claim-level validity adjudication.
• Settlement / termination: no settlement; terminated by denial.
• Appeal: not appealable (denial of institution is non-appealable under 35 U.S.C. § 314(d)).
• Defensive value: This is the only proceeding that leaves anything on the table. Claims 79 and 83 are the last two uncancelled claims of the '541 patent, and they are the two claims that were asserted in Texas (Headwater's election was claims 41, 42, 45, 47, 55, 57, 79, 83, 120, 170 of the '541 patent). They were never tested on the merits — neither by IPR nor by a district-court validity judgment that I can confirm. Two important caveats: (i) claims 79 and 83 depend from claim 1 (the patent's sole independent claim), which Headwater statutorily disclaimed — a disclaimed claim is treated as though it never existed, so any assertion of 79/83 must reckon with the fact that their base claim is void; and (ii) no § 315(e) estoppel attaches to claims 79 and 83 at all, because trial was never instituted, so a fresh petitioner (not a privy of these petitioners) retains the full universe of prior art against them.

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Strategic summary

Claim status of US 8,589,541. The patent issued with 174 claims. CANCELED / unpatentable (final, unappealed): 124 claims — 2–23, 26, 41–60, 63, 64, 91–152, and 155–171. DISCLAIMED by the patent owner (statutory disclaimer, treated as never having existed): 48 claims — 1, 24–25, 27–40, 61–62, 65–78, 80–82, 84–90, 153–154, and 172–174. That leaves exactly two UNTESTED claims: 79 and 83. There are no "SUSTAINED" claims in the meaningful sense — no claim was ever held patentable in a Final Written Decision; the only surviving claims are survivors by virtue of never being tried. Two practical consequences: (a) Headwater elected ten '541 claims in its carrier litigation and eight of them no longer exist; and (b) because claims 79/83 depend from the disclaimed claim 1, a defendant should press the argument that the disclaimer wiped out the only independent claim and left 79/83 with no valid antecedent foundation — the Board in analogous disclaimer situations (e.g., the Daikin/Chemours line) has treated dependent claims of a disclaimed independent claim as still standing but incorporating the disclaimed limitations.

Estoppel landscape. All three petitions were filed by the same six real parties in interest (Google; Verizon Wireless/Verizon Corporate Services Group; T-Mobile; Sprint; AT&T Services, with AT&T Mobility LLC and AT&T Enterprises LLC also named as RPIs in the FWD). The Final Written Decision became final with no appeal, so 35 U.S.C. § 315(e)(2) estops those petitioners and their privies from asserting in the district court any ground they raised or reasonably could have raised on the instituted claims. Section 315(e)(1) likewise bars them from filing new PTAB petitions on those grounds. In practice this is largely academic — the claims are canceled, so nobody needs an invalidity defense for them. The real estoppel gap: no estoppel applies to claims 79 and 83, because estoppel attaches to claims for which trial was instituted. A defendant who is not a privy of the six petitioners can raise the full Rao/Fadell/Freund family — and the broader prior-art set charted in the Texas invalidity contentions (Abichandani, Araujo, Cai, Cole, Gandhi, Kelz, Montemurro, Nayak, Oestvall, Royer, Sharif-Ahmadi, Singh, Bosan, Fascenda, Lim, Markki, Menezes, Tovar, True, Vadde, Woundy, and Android-based system art) — against claims 79 and 83 free of estoppel. A defendant who is in privity with any petitioner (e.g., another carrier acting jointly with them) should assume estoppel bars re-running Rao-based grounds on the instituted claims, though not on 79/83.

Pattern signals. (1) This was a coordinated multi-defendant attack, not a lone-filer or defensive-aggregator action: one OEM plus four nationwide carriers jointly filed three parallel petitions on one day (2024-06-07) covering the entire 174-claim set — a textbook "divide the claims and blanket the patent" strategy. Unified Patents appears only in the metadata as the litigation-data source; it is not a named petitioner in any of the three proceedings. (2) Headwater's behavior was defensive-to-a-fault: it filed a POPR in only one of the three petitions, disclaimed 48 claims (including the sole independent claim) rather than defend them, and did not appeal the adverse FWD. That is the profile of a patent owner triaging a portfolio, not of one prepared to fight to the Federal Circuit. (3) Headwater has separately been pursuing conventional district-court appeals in the underlying E.D. Tex. cases (DocketAlarm-adjacent CourtListener entries show an E.D. Tex. final judgment dated 2026-04-23, a notice of appeal, a cross-appeal, and a re-stated final judgment 2026-06-02) — but those are appeals of the district-court judgment, not of the PTAB FWD, and I have not verified them beyond docket snippets. (4) Related-but-distinct PTAB activity exists on sibling patents in the same family (e.g., an instituted IPR on the '544 divisional, and Samsung petitions on other family members), so this family has a well-documented history of being invalidated claim-block by claim-block.

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Recommended next steps

• If Headwater (or a successor) asserts anything other than claims 79 and 83 of the '541 patent, treat the assertion as non-viable and say so in writing. Link the Final Written Decision and quote the disposition caption verbatim: "JUDGMENT / Final Written Decision / Determining All Challenged Claims Unpatentable / 35 U.S.C. § 318(a)" and the merits holding: "we determine that Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable." The combined FWD is available at the DocketAlarm mirror of the PTAB record (https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/10-01-2025-Board/Final_Written_Decision__original-20-Judgment_Final_Written_Decision_.pdf) and as Exhibit 1 to Dkt. 440 in E.D. Tex. 2:23-cv-00352 (https://www.courtlistener.com/docket/67648165/440/1/headwater-research-llc-v-verizon-communications-inc/). The official PTAB record is on USPTO PTAB E2E / PTACTS at https://ptacts.uspto.gov/ptacts/; the Unified Patents portal entries in your structured block (https://portal.unifiedpatents.com/ptab/case/IPR2024-00942, .../IPR2024-00943, .../IPR2024-00944) corroborate the case numbers and dispositions.
• Confirm the no-appeal fact yourself before relying on it. Pull the Federal Circuit docket under 35 U.S.C. § 142 naming Headwater Research LLC as appellant versus Google LLC et al., covering decisions dated 2025-10-01, and confirm no notice of appeal was docketed by the 63-day deadline (approximately 2025-12-03). I relied on Verizon's filed notice (E.D. Tex. Dkt. 440, dated 2025-12-22) rather than a CAFC docket check, and that is the one verification gap in this memo.
• If claims 79 and 83 are asserted, attack them fresh. No estoppel applies because IPR2024-00944 was never instituted. Grounds are wide open: (i) § 102/§ 103 on Rao, Fadell, Freund, Araujo, Montemurro, Singh, and the rest of the Texas contentions art; (ii) the disclaimer-based argument that claim 1 — the sole independent claim — no longer exists, so 79/83 lack a valid base; and (iii) the invalidity theories defendants were developing in the district court (§ 112 written description/enablement, § 112 ¶ 2 indefiniteness on terms like "prospective or successful communications," and obviousness-type double patenting over family members such as US 10,694,385). Note that a new IPR petition on 79/83 would face § 315(b) timing from any complaint served on you and the § 325(d)/Fintiv discretionary filters — but not estoppel.
• If you are a privy of Google, Verizon, T-Mobile, Sprint, or AT&T, assume § 315(e)(2) estoppel as to the instituted claims (2–23, 26, 41–60, 63, 64, 91–152, 155–157, 158, 159, 160–171), and route any invalidity theory through the district-court case rather than a new petition.
• There are no PTAB trial-stage milestones to track. All three proceedings are terminated; there is no institution-decision deadline, no oral hearing, and no § 316(a)(11) one-year FWD clock running. The absence of any new petition in the ~11 months since the FWD issued, combined with a final judgment of invalidity on 124 claims and a disclaimer of 48 more, is itself the signal: this patent is effectively spent except for two dependent claims whose only independent claim has been disclaimed.

I'll research this patent's assignment record and litigation history before drafting.

Sourcing note: no live query of assignmentcenter.uspto.gov was possible in this session. The reel/date data below is reconstructed from USPTO Abstracts of Title reproduced as exhibits in the E.D. Tex. litigation (which are printouts of the same assignment.uspto.gov records), cross-checked against Google Patents legal events and the Unified Patents patent page. Where a field was not legible in the retrievable copy I say so rather than guessing.

Inventors

Unusual patterns. There is no inventor-departure pattern — all three inventors signed the assignment to Headwater on the same day (2011-08-16) and Raleigh remained the principal of the assignee and of the affiliate ItsOn. The notable anomaly is upstream, at Raleigh's prior employer: he left Qualcomm on 2008-09-19 and the priority provisional (61/206,354) was filed 2009-01-28 — inside the one-year post-employment presumption in his Qualcomm invention-assignment agreement. That triggered a multi-year ownership/standing defense (Samsung, then Verizon), with Qualcomm-subpoena evidence, competing inventor testimony from Lavine, and a reported ~$9M Qualcomm offer to buy the Headwater patents in 2017. The second anomaly is evidentiary, not ownership: co-inventor Lavine's later deposition was used by defendants to attack Raleigh's conception date — inventors ended up adverse to the assertion campaign built on their patents.

Original assignee

Headwater Partners I, LLC — a Delaware limited liability company, recorded address 350 Marine Parkway, Suite 300, Redwood City, CA 94065 (later 555 Twin Dolphin Drive, Suite 310, Redwood Shores, CA 94065; by 2016, 1011 Pruitt Place, Tyler, Texas 75703).

• Business: R&D and IP holding/licensing. Headwater is not a product company. Its stated model was to develop the technology and license it to its affiliate ItsOn, Inc. (spun out late 2009 with Charles Giancarlo; Raleigh as first CEO), which commercialized it — ItsOn's "Zact" service launched May 2013, and ItsOn software was deployed on Sprint/Virgin devices (Headwater alleged "millions of Sprint devices" running the ItsOn application by end-2015, with millions of Sprint devices including Samsung handsets).
• Did the assignee ship a product embodying the claims? Not directly. Commercialization ran through licensee ItsOn; Headwater's own monetization has been patent assertion. Notably, no license to ItsOn appears in the Assignment Center record for this patent — any license was unrecorded.
• Current status: Headwater Partners I LLC ceased to exist as a separate entity on 2016-12-29, when it merged with and into Headwater Management LLC, which was simultaneously renamed Headwater Research LLC (Delaware file no. 4966025, SR 20167326785; signed by Greg Raleigh). Headwater Research LLC is active, operating as the plaintiff in a multi-front campaign and headquartered in Tyler, Texas — i.e., inside the Eastern District of Texas, Marshall Division. ItsOn, the operating affiliate, dissolved at the end of 2017 and its assets were liquidated in 2018 through a general assignment for the benefit of creditors (ItsOn ABC LLC, administered by Sherwood Partners) — a liquidation that later cost Headwater its copying case and drew discovery sanctions.

Assignment timeline

Record entries for Application 13/134,028 (US 8,589,541 B2). Two post-filing conveyances are recorded; there is no security agreement, license, release, or correction on the record.

• 2011-08-16 (executed) / recorded 2011-08-18 — Reel 026771 / frame not legible in the retrievable copy (the abstract shows "REEL: 026771 FRAME:" with the frame digits cut off; a nearby number, 501630582, appears in the same abstract but its meaning is not confirmed)

  • Conveyance: Assignment (new assignment)
  • Assignor: Gregory G. Raleigh; Alireza Raissinia; James Lavine (all executed 2011-08-16)
  • Assignee: Headwater Partners I, LLC (Delaware), 350 Marine Parkway, Suite 300, Redwood City, CA 94065
  • Correspondent: Sheppard, Mullin, Richter & Hampton LLP, 390 Lytton Avenue, Palo Alto, CA 94301-1432 (svpatents@sheppardmullin.com; phone 650-815-2600); submitter Marc A. Sockol; attorney docket 26WV-160509 [RALEP032]. Flag: Sheppard Mullin is a large general-practice IP firm filing a routine employment/inventor assignment — a single appearance, not a recurring NPE-recording correspondent in this chain.
  • Context: Founding-company acquisition — inventors assigned to their own startup/holding entity at, or just before, issue-track prosecution; not a fire-sale or third-party acquisition.

• 2016-12-29 (effective / executed) / recorded 2017-01-04 — Reel 041248 (frame 0777 is documented on the sibling family application 14/667,516 abstract; the '541 abstract shows the same recording date and reel with the frame cut off)

  • Conveyance: Merger and Change of Name
  • Assignor / conveying party: Headwater Partners I LLC (merged with and into the surviving entity)
  • Assignee / receiving party: Headwater Research LLC (formerly Headwater Management LLC), 1011 Pruitt Place, Tyler, Texas 75703
  • Correspondent: ANN TAYLOR, 1011 Pruitt Place, Tyler, TX 75703; patent@headwaterllc.com; 903-201-6211; signed /Ann Taylor/ 01/04/2017. Flag: the correspondent address is identical to the surviving entity's principal place of business — an in-house filing, no outside counsel of record. Not a repeat NPE-recording attorney; notable instead as the moment the ownership address moved into E.D. Tex.
  • Context: Internal reorganization / change of name only — no consideration, no new owner; the patent passed by operation of Delaware law (§18-209 certificate of merger).

Family-level caveat. A separate assignment executed by Gregory G. Raleigh on 2013-01-11 appears in the abstract of title for a continuation in this family (14/667,516). I could not confirm whether that confirmatory assignment also lists application 13/134,028, so I do not count it as a third link on this patent.

Where to verify: https://assignment.uspto.gov/patent/index.html#/patent/search/resultAbstract?id=[8589541](/patent/8589541)&type=patNum (and the newer front end at https://assignmentcenter.uspto.gov/). The abstracts themselves are attached as Plaintiff's exhibits in Headwater Research LLC v. T-Mobile US, Inc., E.D. Tex. 2:23-cv-00379, Dkt. 195-5 (https://www.courtlistener.com/docket/67722063/195/5/headwater-research-llc-v-t-mobile-us-inc/) and in Headwater Research LLC v. Verizon, E.D. Tex. 2:23-cv-00352, Dkt. 200-17 (https://www.courtlistener.com/docket/67648165/200/17/headwater-research-llc-v-verizon-communications-inc/).

Timeline diagram

timeline
    title Ownership of US 8589541
    2008 : Headwater founded by Raleigh
    2009 : Provisional 61 206 354 filed
         : Raleigh left Qualcomm
    2011 : Application 13 134 028 filed
         : Inventors assign to Headwater Partners I LLC
    2013 : Patent 8589541 issues
         : ItsOn Zact service launches
    2016 : Merger approved 29 December
    2017 : Headwater Research LLC recorded
         : ItsOn dissolves
    2018 : ItsOn assets liquidated via ABC
    2022 : Headwater sues Samsung
    2023 : Headwater sues Verizon ATT T-Mobile
    2024 : Unified Patents files three IPRs
    2025 : Verizon verdict 175M
         : Headwater sues Apple

NPE / troll-pattern signals

1. Shell-entity transfer — present, but it is a born-as-holder fact rather than a transfer. There is no operating-company-to-shell dumping here: the inventors assigned straight into Headwater Partners I LLC in 2011 (Reel 026771, 2011-08-16/18), and the only later conveyance is the 2016-12-29 merger/change of name to Headwater Research LLC (Reel 041248, recorded 2017-01-04). Both entities are Delaware single-purpose LLCs that sell no product embodying the claims, and the surviving entity's principal place of business is a residential-scale street address (1011 Pruitt Place, Tyler, TX) relaying to the same address as its in-house assignment correspondent. No registered-agent service address is of record. So: licensing-only LLCs, yes; evidence of a registered-agent mailbox or a purchased shelf LLC, no.

2. Known asserter in the chain — present. Headwater Research LLC is the current assignee per the 2017 Reel 041248 record and appears on asserter directories: Unified Patents lists the patent owner of the related '055 patent as "NPE (Individual)" at https://portal.unifiedpatents.com/[ptab](/ptab)/case/IPR2025-00481, with Headwater's patent page at https://portal.unifiedpatents.com/patents/patent/8589541. Unified Patents (a defensive aggregator) has filed IPR2024-00942, IPR2024-00943 (Final Written Decision) and IPR2024-00944 (Not Instituted — merits) against this patent, and Darts-ip records the family as having worldwide litigation. The named NPE-list comparables (Acacia, Marathon, IV, Wi-LAN/Conversant, Pendrell, Round Rock, etc.) do not appear anywhere in the chain — Headwater is an inventor-founded, single-family asserter, not a portfolio aggregator.

3. Repeat correspondent across the chain — not present. The two recordings have different correspondents: Sheppard Mullin (Marc A. Sockol) in 2011 and in-house Ann Taylor in 2017. Neither recurs across the chain. (Distinct from the assignment record: Russ August & Kabat — Marc Fenster, Reza Mirzaie, Kris Davis, Adam Hoffman — is the recurring litigation firm across Headwater's 2022–2025 suits, alongside Miller Fair Henry and Parker Blunt in E.D. Tex. That is assertion counsel, not a recording correspondent, and does not satisfy this signal.)

4. Cascading transfers — not present. Two recordings over five years, one of which is a statutory merger/name change of the same owner group, with no chained third-party LLCs and no common correspondent address between links.

5. Pre-litigation transfer — not present for this patent. The last ownership change is dated 2016-12-29 / recorded 2017-01-04; the first Headwater suits in the record that name the '541 are the 2023 E.D. Tex. filings (Verizon 2:23-cv-00352, filed 2023-07-28; AT&T 2:23-cv-00397; plus the 2022 Samsung campaign 2:22-cv-00422). That is ~5–6 years, far outside a 6-month pre-litigation window. The Tyler, Texas address change does, however, line up with the eventual Marshall Division venue.

6. Bankruptcy fire-sale — not present as to this patent. The bankruptcy in this story is the licensee's: ItsOn, Inc. dissolved at the end of 2017 and its assets (including the source code) were assigned to ItsOn ABC LLC in 2018 for the benefit of creditors via Sherwood Partners. Headwater's own filings state Headwater and ItsOn were separate entities with different shareholders, boards and CEOs, and adverse interests because ItsOn owed Headwater royalties — so ItsOn's estate never held this patent. (ItsOn's dissolution is nonetheless the fact that destroyed Headwater's copying evidence and drew a discovery sanction striking its copying allegations.)

7. Privateering — unclear. The classic pattern (operating company hands patents to an NPE that asserts against its competitors) does not fit: Headwater was the IP holder from day one and licensed to the operating company, and then asserted against that former licensee's would-be partners after the licensee died. Headwater's own complaints allege AT&T took ItsOn's NDA disclosures and built an in-house agent "as a replacement"; the accused parties are carriers/OEMs, not Headwater's rivals in a product market. The closest supportable characterization is post-licensee-failure direct assertion against the licensee's customer pipeline, which I flag as factually documented but not as classic privateering.

8. Defensive aggregator — not present. The chain terminates at a plaintiff (Headwater Research LLC), and Unified Patents is adverse to it via three IPRs. No RPX / AST / LOT / OIN ownership is of record.

Verdict

NPE — high confidence.

Justification: the chain consists of exactly two recordings — the 2011 inventor assignment to Headwater Partners I LLC (Reel 026771, executed 2011-08-16) and the 2016-12-29/2017-01-04 merger and change of name to Headwater Research LLC (Reel 041248) — and both assignees are non-practicing Delaware LLCs that sold no product embodying the claims (commercialization ran through the now-liquidated licensee ItsOn). The current owner is independently classified "NPE (Individual)" by Unified Patents and has asserted this patent in parallel E.D. Tex. campaigns against Verizon, AT&T, T-Mobile, Samsung and Apple (including a $175M Verizon verdict and IPRs IPR2024-00942/-00943), which supplies the second strong signal. The counter-evidence — an inventor-founded portfolio, genuine licensee commercialization, a real Qualcomm conception dispute, and no shell-acquisition, fire-sale, or pre-suit transfer — supports calling this a single-family, inventor-led NPE rather than a classic portfolio-troll chain.

Verify at: https://assignmentcenter.uspto.gov/ (or https://assignment.uspto.gov/patent/index.html#/patent/search/resultAbstract?id=8589541&type=patNum)

I'll research the prior-art citations for US 8,589,541 specifically, using the patent's own front-page references as the anchor.

Let me pull the patent's own cited-references list and the family records from authoritative sources.

Let me locate the patent's front-page reference list directly.

Prior art for US 8,589,541 — search results and § 102 analysis

Two process notes before the substance.

1. I could not retrieve the patent's own printed front-page "References Cited" list. The Google Patents page for US 8,589,541 returns the classification, definitions, abstract and description, but the "References Cited / Cited By" tables did not render in the search snippets I obtained, and the full text supplied for this analysis is truncated before the claims and the front-page reference list. I am therefore not going to enumerate a 40-to-80-entry citation list, because I cannot ground most of it. Below I give (a) the references I can ground to the '541 record with cited sources, and (b) an explicit statement of what remains unverified.

2. Beware the "similar documents" trap on this patent. Third-party aggregators (e.g., Unified Patents' "Patent Art (707)" panel for US-8589541, and Google Patents' "Similar Documents") present lists such as US 8,194,553, US 7,878,344, US 7,778,176, US 8,484,568, US 2010/0167696, US 2010/0198431, etc. Those are algorithmically similar art generated by the aggregator, not the examiner's citations. Do not treat them as the '541 citation list. I have kept them out of the § 102 mapping below.

3. Date tension (flagged, per prior sections). The task header states April 26, 2026; the environment date is September 30, 2026; and earlier sections flagged events dated into mid-2026. I have used no date-sensitive assumption that turns on which is correct.

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A. The references that actually matter for § 102 — the IPR record

The most probative prior art against the '541 patent is not the cumulative examiner citation list; it is the art the PTAB actually ran with, which resulted in a Final Written Decision of October 1, 2025 holding all challenged claims unpatentable. Grounds relied principally on three references:

Source for items 1–3: the IPR2024-00942 / -00943 record and the combined Final Written Decision of Oct. 1, 2025, as reported in the earlier sections of this analysis — https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/10-01-2025-Board/Final_Written_Decision__original-20-Judgment_Final_Written_Decision_.pdf . Freund US 5,987,611 independently appears in a reference list I retrieved (EP 1 597 860 B1, "REFERENCES CITED IN THE DESCRIPTION," listing "US 5987611 A, Freund"), confirming it is a real, pre-2009 reference of the filtering/service-control type — https://patentimages.storage.googleapis.com/71/f6/12/8ec66d58d1ddea/EP1597860B1.pdf .

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B. Claim-by-claim § 102 mapping (as the record stands after Oct. 1, 2025)

This is where the analysis has to be candid about what is still a live question.

(i) Which claims are still capable of a § 102 analysis at all. Combining the two earlier sections:

• Disclaimed by the patent owner (per the Jeffay expert report summary): 1, 24–25, 27–40, 61–62, 65–78, 80–82, 84–90, 153–154, 172–174 ("and/or" — the list itself is not clean).
• Held unpatentable by the Board (Oct. 1, 2025 FWD): 2–23, 26, 41–60, 63, 64, 91–152, 155–171.
• Not in either bucket, and the two asserted claims: 79 and 83 — which are also the claims covered by Ex parte Reexamination No. 90/019,892.

So the only claims for which a fresh § 102 anticipation question is genuinely open are claims 79 and 83 (and whatever narrow residue the "and/or" disclaimer list leaves). Everything else is already disclaimed or already cancelled by the Board.

(ii) The structural problem for claims 79 and 83. Both depend from disclaimed claim 1. A dependent claim does not vanish merely because its parent is disclaimed, but it incorporates every limitation of claim 1, and the Board has held those limitations anticipated by Rao. That means:

• Any § 102 attack on claim 83 (asserted against Verizon) reduces to (Rao teaches all of claim 1) + (the claim 83 add-on). If the claim 83 add-on is a conventional application of the claim 1 teaching, the natural ground is § 103 over Rao (alone or with Fadell/Freund) rather than pure § 102; if a single reference teaches the add-on too, it is § 102.
• The same is true of claim 79.
• The fact that the Office ordered reexamination 90/019,892 on claims 79 and 83 establishes only that a substantial new question of patentability was raised as to those claims — it is not a finding of anticipation, and I have not retrieved the reexam determination on the merits.

I do not have a reliable, element-by-element § 102 chart for claims 79 and 83 against any single reference, and I am not going to manufacture one. Producing that chart requires (a) the printed text of claims 79 and 83 at cols. 110–125, and (b) the full text of Rao. I have neither in hand.

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C. What I could not verify, and what to pull next

To answer your question the way it was posed — "look at each patent citation for 8589541" — the following documents are the ones that must be pulled; I was unable to render their contents:

1. The printed front-page "References Cited" list of US 8,589,541 at the top of the patent (and the corresponding "Cited By" table on Google Patents). Until that is read directly, no complete citation-by-citation § 102 list can be responsibly given.
2. The Notice of Allowance / Examiner's amendment in application 13/134,028, which is the only authoritative statement of which cited references the examiner actually relied on to allow the claims. (The earlier section notes the claims were allowed after applicant rewrote claim 1 and added 173 dependent claims, with an Examiner's amendment.)
3. The petition and FWD in IPR2024-00942/-00943, which give the exact pin cites for Rao, Fadell and Freund and the claim-by-claim ground (102 vs. 103). The FWD link is in Section A above.
4. Ex parte Reexamination 90/019,892 file history — the only current merits proceeding that touches the two claims (79, 83) not already cancelled or disclaimed.

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D. Bottom line

• Most relevant prior art for US 8,589,541: US 2006/0039354 A1 (Rao) as the primary reference (the Board's § 102 basis for independent claim 1), with US 2010/0017506 A1 (Fadell) and US 5,987,611 (Freund) as the § 103 combination references.
• § 102 reach: Rao alone reaches claim 1 and (per the FWD) the claims depending from it that the Board addressed. For the only claims not already disclaimed or cancelled — 79 and 83 — the § 102 question is effectively subsumed into the claim 1 limitation set and is currently pending in reexam 90/019,892.
• Unverified: the patent's full printed front-page citation list; the examiner's actual relied-upon references; and any element-by-element § 102 chart for claims 79 and 83. Treat any list of dozens of "citations" for this patent produced by an aggregator's similarity engine as not the citation record.

Sources: https://patents.google.com/patent/US8589541/en ; https://portal.unifiedpatents.com/patents/patent/8589541 ; https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/10-01-2025-Board/Final_Written_Decision__original-20-Judgment_Final_Written_Decision_.pdf ; https://patentimages.storage.googleapis.com/71/f6/12/8ec66d58d1ddea/EP1597860B1.pdf ; https://www.docketalarm.com/cases/PTAB/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/09-29-2025-Board/Exhibit-3002-Related_Matters_Update.pdf

I'll ground the §103 analysis in the actual prior-art references of record from the IPR proceedings, then map them to the claim elements.

Obviousness Analysis — U.S. Patent No. 8,589,541 under 35 U.S.C. § 103

Scope note. This section builds on the two prior sections (bibliographic/technical summary; litigation summary) and does not repeat them. I treat the "Prior Art section of this page" as the prior-art of record actually applied to the '541 patent: the grounds table and reference analysis in the combined Final Written Decision of October 1, 2025 in IPR2024‑00942/‑00943, namely Rao, Fadell, and Freund. Where I invoke references used only against sibling Headwater patents, I say so explicitly and label them as my own extension, not an established holding.

One item from the prior section is now resolved by the record. The earlier summary flagged uncertainty whether claim 1 is the sole independent claim and whether the claims text was available. The FWD states verbatim: "Claim 1 was the only independent claim. Claim 3 depends from independent claim 1 and is illustrative of the claimed invention." That confirms the earlier high-confidence conclusion and supplies the verbatim text of claims 1 and 3 (reproduced below in the chart), so the "columns 110–125" verification gap is now closed by an authoritative source.

Date/version caveat (flagged contradiction). The task header states the current date as April 26, 2026; the system date is September 30, 2026; and sources in the record show events dated as late as June 2026 (the re-stated judgment nunc pro tunc, and the deactivated Federal Circuit cross-appeal). I report post-April-2026 events as the sources show them, per the instruction to prefer live results, and flag that they post-date the stated analysis date.

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1. Governing legal standard

The '541 patent issued from Application 13/134,028, filed May 25, 2011, with a priority claim extending to 2009. Because the effective filing date predates March 16, 2013, pre-AIA 35 U.S.C. § 103(a) governs. The Board's own grounds table is captioned "103(a)," confirming the pre-AIA framework. Two consequences matter here:

1. Pre-AIA § 102(e) makes a published U.S. application prior art as of its U.S. filing date. This is how Fadell (published Jan. 21, 2010 — after the '541 priority date) still qualifies: Fadell is App. No. 12/241,007, filed September 29, 2008, which precedes even the earliest listed '541 date of January 28, 2009.
2. The Graham v. John Deere factors control: scope/content of the prior art; differences between the prior art and the claims; level of ordinary skill; and secondary considerations. Under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), a claim is obvious where the combination is "of familiar elements according to known methods" yielding predictable results, where a known technique is applied to improve a similar device in the same way, or where a known technique is applied to a device "ready for improvement." An express teaching, suggestion, or motivation is not required.

A useful threshold point that the Board itself invoked: "a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for 'anticipation is the epitome of obviousness.'" (FWD quoting Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019), and Connell, 722 F.2d 1542, 1548.) Consequently, because much of the '541 claim set was held anticipated by Rao, the §103 case for those claims is analytically subsumed and stronger.

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2. Level of ordinary skill in the art (POSITA)

The record's POSITA is a person with a bachelor's degree in electrical engineering, computer engineering, or computer science (or equivalent), plus roughly two to three years of experience in wireless data networking, device-side network stack/application programming, or network policy management. (I did not retrieve the verbatim adopted definition from the Wolfe Declaration [Ex. 1015]; treat the specific degree/years figures as my characterization of a typical definition, not a quotation. The Board accepted Petitioner's POSITA framing, since it resolved every ground on the merits.) The practical significance is that the POSITA, at the 2009 priority date, knew how to intercept socket/API traffic, classify applications as foreground/background, write device-side policy agents, and deliver policy from a network element.

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3. The prior art of record

Prosecution context bearing on §103. Per the Petition's §325(d) argument, "Rao and Freund were not before the Examiner, and he did not discuss Fadell, which was submitted with over 700 references. After just one rejection, the independent claim was rewritten, all 173 dependent claims were added, and the claims were allowed after a minor amendment with only a conclusory supporting rationale." That is a material observation: the claim set was allowed without the Office ever applying the closest art, which weakens any argument that the allowance reflects a considered merits determination.

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4. Claim 1, limitation by limitation

Verbatim claim 1 (as reproduced in the FWD), mapped to the primary reference:

Conclusion on claim 1: the element-by-element correspondence is complete, which is why the Board found the mirrored limitations in claims 3–6, 8–19, 21–23, 45, 49, 50, 59, 60, 157, and 171 anticipated by Rao alone — and, "because anticipation is the epitome of obviousness," also obvious over Rao. As an alternative §103 ground, Rao alone renders claim 1 obvious: a POSITA seeking Rao's own stated goals ("intelligent and client centric prioritization," reduced congestion, ¶0179) would have had every reason to implement conditional, foreground/background-dependent policy application, and Rao expressly invites it.

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5. The combinations and the motivations to combine

Ground 1 — Rao alone (§102 → §103)

Rao renders claim 1, and claims 3–6, 8–23, 26, 45, 49, 50, 58–60, 64, 157, 165, 169, 171 obvious. Motivation: Rao's own express invitation to combine its "embodiments," plus its stated benefits of prioritizing application traffic. Expectation of success: high — the modification is the application of a technique Rao already discloses to the purpose Rao already names.

Ground 2 — Rao + Fadell (the principal §103 combination)

This is the combination that carries claim 1 and the largest dependent-claim set: claims 1, 2, 7, 41–43, 46, 63, 91–96, 99, 102–138, 140–152, 155, 156, 158–164, 166–168, 170.

Techniques supplied by Fadell that Rao lacks: threshold-based usage monitoring with user notification; user-presented options (restrict, purchase, switch networks); network-type differentiation (cellular vs. Wi‑Fi) mapping to claim 41's "first wireless network / second wireless network" refraining limitation; treatment of auto-updates and media downloads as low-priority/background.

Motivation (KSR rationales (A), (C), (E)):

• Same problem, same field, complementary solutions. Both address monitoring and controlling network traffic on handheld/mobile devices; Rao addresses congestion at the device by prioritization, Fadell addresses data overage cost at the device by monitoring, notification, and shifting. Combining them is "the simple combination of known elements to obtain predictable results."
• Market forces / design incentive. Both expressly contemplate "pay to use" cellular networks. A POSITA facing a metered data plan has a direct incentive to deprioritize background traffic precisely when a usage threshold is approached — i.e., to use Rao's prioritization as the enforcement mechanism for Fadell's threshold.
• Predictable result. The combination yields exactly the sum of the parts: packets from background activities are queued/deprioritized (Rao) and the user is notified with options when a limit approaches or is reached (Fadell).
• Expectation of success: both references monitor network activity from handheld devices and mobile telephones and apply policies to associated traffic; integration is straightforward engineering.

Ground 3 — Rao + Freund

Covers claims 44, 47, 48, 51–57. Gap filled: Rao discloses foreground/background prioritization but does not spell out the detection mechanism for background status. Freund does — via focus/user-input detection, a maintained list of currently-active processes, and per-application access rules delivered from a centralized enforcement supervisor (which independently satisfies the "information from a network element" prong of claim 1[e]).

Motivation: Freund supplies a more accurate active/background discriminator, which directly improves Rao's stated goal of client-side, application-aware prioritization; the two operate at the same interception layer (Rao's hooking API; Freund's WinSock hook), so the integration is a substitution of one known classification technique for another known need. Expectation of success: high and non-conflicting — both classify applications for network-control purposes.

Ground 4 — Rao + Fadell + Freund

Covers claims 97, 98, 100, 101, 139 (notification/attempted-launch/cloud-service/per-application-usage limitations). Here Freund's per-application monitoring and Fig. 7G "warn user with dialog" teaching supplies application-specific notification content, while Fadell supplies the thresholds and user options.

Summary of the primary chart

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6. Additional combinations available on this record (extension — not Board holdings on the '541)

The same reference families were applied to Headwater sibling patents, and a POSITA would equally have consulted them here. I label these as my own extensions, not holdings on the '541:

• Rao + Araujo (power management/power states) — advanced by Petitioner in IPR2026-00138 against the '544 patent, and relevant to any '541 claim tying policy application to device state.
• Rao + Oestvall (background applications denied network resources; foreground allowed; permission-based API regulation, incorporating Dive‑Reclus) — used by Samsung in the sibling IPRs, and directly relevant to claims directed to denying/restricting background network access while permitting foreground use.
• Rao + Montemurro (policy-based routing across WWAN/WLAN with a rules engine and routing table) — relevant to the claim-41 network-differentiation family.
• Rao + Aleksic (critical/non-critical application prioritization under resource constraints) — relevant to policy/priority classes.

These reinforce rather than displace the primary three-reference case: they show the prior-art landscape was dense with device-side, application-aware, policy-driven network control at the critical date.

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7. Secondary considerations / rebuttal (Graham factor 4)

• No nexus demonstrated. The dependent claims are broadly functional. Any commercial success of smartphones or of carrier data-plan management tools is not attributable to the claimed device-side policy agent, so no nexus is shown. The record affirmatively reflects that Patent Owner "does not substantively address" claims 2, 7, 41–44, 46–48, 51–57, 63, 91–96, 99–152, 155, 156, 158–164, 166–168, 170 — i.e., no rebuttal evidence of unexpected results was presented for the great majority of the claim set.
• The specification itself supplies the motivation. The '541 background recites the industry problem in the applicant's own words — e.g., that "about 3 percent of its smart phone device users…are generating approximately 40 percent of the operator's data traffic," and that "signaling traffic is outpacing actual mobile data traffic by 30 percent to 50 percent by some estimates." Under KSR, that is an acknowledgment that the problem was known and that the field was looking for device-assisted solutions — which strongly undercuts long-felt-need arguments and confirms that the claimed solution was a predictable application of known techniques.
• The willfulness verdict and $175M award are not §103 evidence. A jury finding of infringement (claim 83, July 23, 2025) says nothing about validity under §103, and the April 23, 2026 judgment of unenforceability by implied waiver means Headwater cannot enforce the asserted claims in any event.
• What would be the strongest (and largely forfeited) rebuttal is evidence that the specific claim-1 combination — a device-side agent that classifies a single activity of a specific software component as background and obtains a policy aspect from user input or a network element — produced an unexpected technical result. No such evidence appears in the record I reviewed.

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8. Disposition table and what remains of the patent

Operational bottom line. The §103 case against the bulk of the '541 claim set is not merely strong — it is adjudicated and final. The only live §103 exposure is for claims 79 and 83, the family that was carved out of the IPRs and placed into reexamination. Because both depend from claim 1, and because the Board analyzed and credited each element of claim 1 (in the act of holding dependent claims 3–6, 8–19, etc. anticipated), the same Rao/Fadell/Freund combination should apply gainfully in the reexamination to whatever additional limitations claims 79–90 contain — especially if those limitations are notification/override/usage-reporting features, for which Fadell (thresholds, notices, user options, "switch networks") and Freund (per-application information and Fig. 7G "warn user with dialog") map directly.

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9. Caveats and flagged items

1. Non-contradiction, but a nuance worth flagging: Verizon's notice to the district court states that the Board "specifically found each element of the sole independent claim 1…has been anticipated by prior art." The FWD's own conclusion does not list claim 1, and instead attributes Rao anticipation to claims 3–6, 8–19, 21–23, 45, 49, 50, 59, 60, 157, 171, while stating that Petitioner "has not shown by a preponderance of the evidence that claims 20, 26, 58, 64, 165, and 169 were anticipated by Rao." The correct reading is that claim 1 was not in the case (disclaimed) and its elements were adjudicated only derivatively, through its dependents. Verizon's characterization is a fair summary of the effect, not a verbatim finding on claim 1. This does not weaken the §103 conclusion, but it should not be quoted as a direct claim-1 holding.
2. Claim 83 text not verified. I do not have the verbatim text of claims 79–90 in the retrieved materials. The record shows the court construed terms in claims 79/83 including "background activity" and "user interface foreground," and that claim 83 depends from claim 1. I therefore declined to chart claims 79–90 element-by-element; that chart should be built from the printed claims at columns 110–125 before any opinion is finalized on those claims.
3. Claim 20/26/58/64/165/169 posture. These were held unpatentable as obvious, not anticipated — the Petition argued only an obviousness theory for the added limitation and "never state[d] that the additional limitation is disclosed by Rao." Any §103 opinion should track that distinction.
4. POSITA definition is my characterization; the verbatim definition in the Wolfe Declaration (Ex. 1015) was not retrieved.
5. Date tension as noted in §Preamble: records dated after the stated analysis date of April 26, 2026 (notably the June 2–3, 2026 re-stated judgment) are reported as the sources show them.
6. Do not carry over the '042 ODP theory. The obviousness-type double patenting assertion over U.S. 10,694,385 in the record I retrieved pertains to a different asserted Headwater patent (the "'042 Patent"), not the '541. It should not be attributed to the '541 without verification.

Sources: https://storage.courtlistener.com/recap/gov.uscourts.txed.[224022](/patent/224022)/gov.uscourts.txed.224022.440.1.pdf (combined FWD, IPR2024‑00942/‑00943, Oct. 1, 2025) · https://www.courtlistener.com/docket/67648165/440/headwater-research-llc-v-verizon-communications-inc/ (Verizon notice of FWD, Dec. 22, 2025) · https://storage.courtlistener.com/recap/gov.uscourts.txed.224022/gov.uscourts.txed.224022.99.5.pdf (Petition, '541) · https://storage.courtlistener.com/recap/gov.uscourts.txed.224022/gov.uscourts.txed.224022.101.6.pdf (claim charts, Rao‑Fadell / Rao‑Freund) · https://www.docketalarm.com/cases/[PTAB](/ptab)/IPR2024-00942/Google_LLC_v._Headwater_Research_LLC/docs/06-07-2024-Petitioner/Exhibit-1015-Wolfe_Declaration.pdf · https://www.docketalarm.com/cases/PTAB/IPR2023-01337/Samsung_Electronics_Co._Ltd/docs/08-25-2023-Petitioner/Exhibit-1005-US_Pat_App_Pub_No_20060039354_Rao.pdf (Rao) · https://www.patents-review.com/a/20100017506-systems-methods-monitoring-data-bandwidth-usage.html (Fadell, App. 12/241,007, filed Sep. 29, 2008) · https://patentimages.storage.googleapis.com/d8/17/b5/9b0c82458893a6/US5987611.pdf (Freund) · https://www.docketalarm.com/cases/PTAB/IPR2026-00138/Google_LLC/docs/01-15-2026-Petitioner/Exhibit-1002-...pdf (Rao/Araujo, '544 patent) · https://patents.google.com/patent/[US8589541](/patent/US8589541)/en