Tyler, Texas — A pivotal ruling from the Eastern District of Texas has cleared the way for Headwater Research to pursue a patent infringement lawsuit against Samsung Electronics, allowing the company to claim $278.8 million in damages. The court found that although a post-employment assignment clause appeared to give Samsung claims to certain patents, Headwater had the legal standing to assert them because the inventor demonstrated that he conceived the inventions after terminating his employment with Qualcomm.
On April 20, 2025, Judge J. Rodney Gilstrap upheld a report indicating that Headwater Research possessed the necessary standing to bring its case against Samsung. This decision proved crucial, as the jury awarded Headwater nearly $280 million after a five-day trial.
The core of the legal dispute revolved around claims that the patents should belong to Qualcomm based on an assignment agreement made by Dr. Greg Raleigh, a founder of Headwater and inventor of the patents in question. This agreement, signed in 2006, stated that all inventions created during his time at Qualcomm would be owned by the company. The contract included a provision asserting that any inventions disclosed within a year following the end of his employment would be presumed to belong to Qualcomm unless the inventor could prove otherwise.
In a related case, Headwater had previously challenged the validity of this one-year provision, arguing that it violated California law, particularly California Labor Code §2870(a), which limits how much an employee can be bound to assign invention rights to an employer.
California law is particularly protective of workers’ rights regarding inventions developed independently of their employers. Specifically, if an employee develops an invention entirely on their own time and without using their employer’s resources, that invention does not have to be assigned to the employer unless it pertains closely to the company’s business or the employee’s work for the company.
Despite these legal protections, the Eastern District of Texas ruled that the assignment presumption was valid, provided it allowed for rebuttal by the employee. This ruling emphasized that the presumption didn’t impose an unreasonable burden on the employee’s rights, thus upholding the post-employment provision.
The court’s subsequent decision in this case focused on whether the inventor, Dr. Raleigh, could substantiate that his conception of the invention occurred after his departure from Qualcomm. Intriguingly, he claimed a conception date that was later than the patent’s priority date. Typically, patent claimants strive to establish earlier conception dates to reclaim rights over prior art; however, in this instance, the court reiterated that corroborating evidence is not necessary when trying to prove a later conception date.
Samsung argued that Headwater should provide supporting evidence for this later conception date, which the court rebuffed. The court underscored that there is no broad requirement for corroboration unless attempting to assert an earlier conception date contrary to the patent’s priority.
Ultimately, the court found Dr. Raleigh’s testimony credible. Thus, it ruled that Headwater had the legal standing necessary for its patent claims, leading to the substantial jury award.
Employers with research and development teams might want to review their post-employment invention assignment clauses carefully, especially in light of state laws that protect employee rights. Conversely, employees should fully understand the implications of these agreements regarding the timing of their inventions, as such details can be crucial in securing ownership of intellectual property.
This case serves as a pivotal reminder that corroboration requirements in patent law can vary based on the specifics of a claim, reinforcing the importance of legal clarity in intellectual property disputes.
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