Local Division Munich
UPC_CFI_54/2024
UPC_CFI_396/2024

Procedural Order
of the Court of First Instance of the Unified Patent Court
Local Division Munich
issued on 24 January 2025

CLAIMANT
Headwater Research LLC, 110 North College Ave., Suite 1116 - 75702 - Tyler, Texas - US
represented by: Representative Thomas Adam, 110 North College Ave., Suite 1116 -
75702 - Tyler, Texas - US

DEFENDANT
Samsung Electronics GmbH, Am Kronberger Hang 6 - 65824 - Schwalbach – DE
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE
Samsung Electronics France S.A.S, 6 Rue Fructidor - 93400 - Saint-Ouen-sur-Seine – FR
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE
Samsung Electronics Co. Ltd., 129, Samsung-ro - 16677 - Yeongtong-gu, Suwon-si,
Gyeonggi-do – KR
represented by: Representative Denise Benz, Maximilianstraße 35 - 80539 - Munich - DE

PATENT AT ISSUE
European patent n° EP 2 391 947

PANEL/DIVISION
Panel 1 of the Local Division Munich

DECIDING JUDGE/S
This order has been issued by the Presiding Judge Matthias Zigann acting as judge-
rapporteur.

LANGUAGE OF THE PROCEEDINGS
English

SUBJECT-MATTER OF THE PROCEEDINGS
Generic Application by Samsung – R 9 RoP (App_3398/2025 UPC_CFI_54/2024)
Application for confidentiality by Samsung – R 262 A RoP (App_3429/2025
UPC_CFI_54/2024)
Observations by Headwater – R 36 (App_1868/2025 UPC_CFI_54/2024; App_1866/2025
UPC_CFI_396/2024)
Application for leave to change claim or amend case/pleading by Headwater - R 263
(App_66588/2024 UPC_CFI_54/2024; App_66589/2024 UPC_CFI_396/2024)

SUMMARY OF FACTS AND REQUESTS
By order dated 13 January 2025, the Court granted Samsung leave to file comments on
Headwater`s standing and right and/or ownership of the patent to be filed by 21 January 2025.
On 21 January 2025, Samsung filed a brief accordingly in App_3398/2025 UPC_CFI_54/2024.
In App_3429/2025 UPC_CFI_54/2024, Samsung requested a confidentiality order in this
regard.
Headwater submitted observations in App_1868/2025 UPC_CFI_54/2024 and
App_1866/2025 UPC_CFI_396/2024.
Headwater requests
the Court to revoke its orders ORD_1989/2025 and ORD_1986/2025 of 13 January 2024 and,
given that Defendants will be filing their additional submissions pertaining to the above on the
same day the present observations are filed, declare that any of their additional submissions
on the topic are to be disregarded.
Auxiliary, in case the order stands, in full or in limited form, we request the Court to hold that
any new arguments or facts brought in the Defendants´ further written pleading that concern
or are based on clauses 1.1. and/or 1.4. of the patent transfer agreement are to be
disregarded,
and
to allow Claimant to file a further written pleading (R. 36 RoP) in response to the matters raised
in the additional pleading of the Defendants within two weeks of the respective order.
In the latter case, for case of precaution, we ask the Court for clarification that the written
proceedings are prolonged, accordingly.

On 16 December 2024 Headwater filed applications for leave to change claim or amend
case/pleading.
In App_66588/2024 UPC_CFI_54/2024 headwater requests:
Regarding the infringement action Headwater applies for leave to amend the requests/claims
as stated in the statement of claim and in the reply to the statement of defense in order
to take account of the auxiliary requests submitted in the defense to the counterclaim for
revocation/application to amend the patent and the rejoinder to the reply to the defence to the
counterclaim for revocation/application to amend the patent. Headwater submitted “in
particular” requests in the infringement prong based on those auxiliary requests as follows:
They concern merely the request to cease and desist (i.e., no. I. 1.), all other requests in the
infringement prong are maintained:
The requests are added as “in particular”-requests mirroring the auxiliary requests (“AR”) filed
in the rejoinder to the defence to the counterclaim. Changes vis-a-vis the requests as stated
in the reply to the statement of defense are highlighted.
The structure of the requests, as far as the subject-matter of injunctive relief is concerned, is
now
- claim 1 as granted
- claim 1 as per the ARs 1-3, 6-12 and 16-24
- “in particular” (“insbesondere”) requests as per the SoC (starting with in particular request t).
Requests based on AR 4, 5, 13, 14 and 15 were deleted. Requests based on AR 1 and AR
6 were maintained. The requests based on AR 2, 3, 7, 8, 9, 11 and 12 were adopted to
mirror the amendments made in the respective auxiliary requests. The additional requests
are based on AR 16-24, which in turn are straightforward combinations as listed below.
Auxiliary Request 18 = Auxiliary Requests 1 + 2 + 7 + 16
Auxiliary Request 19 = Auxiliary Requests 1 + 3 + 7 + 16
Auxiliary Request 20 = Auxiliary Requests 1 + 2 + 7 + 8 + 17
Auxiliary Request 21 = Auxiliary Requests 1 + 3 + 7 + 8 + 17
Auxiliary Request 22 = Auxiliary Requests 1 + 2 + 7 + 16 + 17
Auxiliary Request 23 = Auxiliary Requests 1 + 3 + 7 + 16 + 17
Auxiliary Request 24 = Auxiliary Requests 1 + 16 + 17
The amended and additional requests are necessary to adopt to the auxiliary requests,
which are in turn a reaction to newly submitted documents and arguments of the
defendants in the revocation counteraction, namely in the reply to the defense to the
counterclaim for revocation
For the reasons mentioned they are necessary for an effective defense against the
counterclaim for revocation, are caused by the reply to the defence to the counterclaim
for revocation and are therefore in good time. Since caused by counterclaimants attacks
in that reply, it is out of the question that the changes could unreasonably hinder them in
their conduct of their action.
For further details reference is made to the brief dated 16 December 2024 filed in
App_66588/2024 UPC_CFI_54/2024.

In App_66589/2024 UPC_CFI_396/2024 Headwater requests:
I. The Counterclaim for Revocation is rejected.
II. Alternatively, the claims of European Patent EP 2 391 947 B1 are upheld with effect for the
Federal Republic of Germany and the French Republic in form of the claims of one of Auxiliary
Requests 1-3, 6-12, 16-24 (in ascending order).
III. The Counterclaimants bear the costs of the proceedings.
GROUNDS FOR THE ORDER
Samsungs brief on the standing to sue
Reference is made to the grounds of the order dated 13 January 2025. Headwater has not
submitted any grounds for revocation of this order. The request for an opportunity to be heard
is granted. To date, no further submissions have been filed by Samsung. Therefore, no
assessment can be made as to whether they contain information that should be disregarded
due to late filing.
Samsungs confidentiality application is superfluous as a confidentiality order is already in
place. The application is therefore to be dismissed.
Headwaters allocation for leave to amend
These applications are granted pending a further review of the reasons for Samsung to late
file some invalidity arguments. If the late filed arguments are accepted Headwater has already
been given a chance to comment and to amend pleadings. If the late filed arguments are
rejected no harm as been caused by allowing the amendments. This issue will be further
discussed in the Interim Conference scheduled for 28 February 2025.
Closure of the written procedure
The written procedure will be closed on 6 February 2025.

ORDER
1. Headwaters is invited to comment on Samsungs submission of 21 January 2025 by 6
February 2025.
2. Headwaters requests for leave to amend are granted.
3. All other requests by Headwater are dismissed.
4. Samsungs 262A-application is dismissed.
5. The written procedure will be closed on 6 February 2025.
6. Parties are invited to submit by 21 February 2025 in ORD_3940/2025 suggestions for
topics to be addressed during the Interim Conference, an estimation of costs and a list of
participants.

INSTRUCTIONS TO THE PARTIES
One confidentiality order is sufficient. All subsequent pleadings require only that the
confidential information subject to a 262A order be greyed out in the unredacted version of the
pleading, that a redacted version be uploaded, and that the pleading be accompanied by a
Rule 262.2 application. The latter ensures that the CMS alerts CMS users to the confidential
nature of the information.
One application per proceeding is sufficient. There is no legal or CMS requirement outside a
confidentiality regime to make multiple applications, e.g. for extensions of time, R 36 or R.
263.

DETAILS OF THE ORDER
Order no. ORD_3940/2025 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_54/2024
Action type: Infringement Action

Order no. ORD_3943/2025 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_54/2024
Action type: Infringement Action
Related proceeding no. Application No.: 3398/2025
Application Type: Generic procedural Application

Order no. ORD_3941/2025 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_54/2024
Action type: Infringement Action
Related proceeding no. Application No.: 3429/2025
Application Type: APPLICATION_ROP262A

Order no. ORD_68686/2024 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_54/2024
Action type: Infringement Action
Related proceeding no. Application No.: 66588/2024
Application Type: Application for leave to change claim or amend case/pleading
(RoP263)

Order no. ORD_68687/2024 in ACTION NUMBER: ACT_7603/2024
UPC number: UPC_CFI_396/2024
Action type: Infringement Action
Related proceeding no. Application No.: 66589/2024
Application Type: Generic procedural Application