UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

VERIZON COMMUNICATIONS INC. et al.,

Defendants.

Case No. 2:23-cv-00352-JRG-RSP

JURY TRIAL DEMANDED

PLAINTIFF HEADWATER RESEARCH LLC’S OPPOSITION TO 

DEFENDANTS’ MOTION FOR ENTRY OF AN ORDER FOCUSING

PATENT CLAIMS AND PRIOR ART

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 1 of 16 PageID #: 1318
i

TABLE OF CONTENTS

I. INTRODUCTION ................................................................................................................. 1

II. BACKGROUND ................................................................................................................... 1

III. ARGUMENT......................................................................................................................... 4

A. Verizon’s Proposal Is Unreasonable and Unwarranted by the Facts of the Case......... 4

B. Headwater’s Cases Against Samsung, Which Involve Different Patents and Different 

Accused Products, Do Not Support Verizon’s Proposal for Claim Reduction ............ 8

C. Verizon’s Proposal Is Contrary to This Court’s Model Order and Federal Circuit 

Precedent ...................................................................................................................... 9

IV. CONCLUSION.................................................................................................................... 11

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 2 of 16 PageID #: 1319
ii

TABLE OF AUTHORITIES 

Cases

Allergan, Inc. v. Teva Pharms. USA, 

No. 2:15-CV-1455-WCB, 2017 WL 373462 (E.D. Tex. Jan. 26, 2017).................................... 4

CogniPower LLC v. Samsung Electronics Co., Ltd., 

No. 2:23-CV-00160-JRG Dkt. 62 (E.D. Tex. Oct. 6, 2023)....................................................... 5

In re Katz, 

639 F.3d 1303 (Fed. Cir. 2011)......................................................................................... 1, 10, 5

Intellectual Ventures II LLC v. FedEx Corp.,

No. 2:16-CV-00980-JRG Dkt. 206 (E.D. Tex. Dec. 22, 2017) ............................................... 10

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 3 of 16 PageID #: 1320
1

I. INTRODUCTION

Verizon’s request for an order focusing patent claims is unreasonable and should be denied. 

Under Verizon’s proposal, “Headwater shall immediately narrow to no more than 10 claims from 

each patent and not more than a total of 32 claims.” Mot. at 2. According to Verizon, its proposal 

is merely a “modified version of the Court’s Model Order.” Id. at 7. But the Court’s Model Order 

does not require a reduction until “the date set for completion of claim construction discovery,” 

which in this case is more than four months away on September 24, 2024. The trial is a year away 

in May 2025. Forcing Headwater to drastically reduce the number of asserted claims so early in 

the case, where little discovery has occurred and where Headwater has not had sufficient 

opportunity to determine which of its asserted claims will be impacted by Verizon’s noninfringement and invalidity positions, is highly prejudicial to Headwater’s patent rights and 

contrary to Federal Circuit law, which provides that “claim reduction should not be ordered ‘too 

early in the discovery process.’” In re Katz, 639 F.3d 1303, 1309 (Fed. Cir. 2011).

While Headwater is certainly amenable to reducing the number of asserted claims and prior 

art in this case—and proposed such a mutual reduction to Verizon months ago—Verizon’s request 

is unreasonable given the stage of the case. The motion should be denied.

II. BACKGROUND

Headwater filed the complaint in this case in July 2023. There are four total asserted 

patents, each of which generally relate to wireless communications technology. The complaint 

identifies the accused products as mobile electronic devices, including mobile phones and tablets, 

as well as well as cellular networks, servers, and services. Dkt. 1.

On September 28, 2023, Headwater served its preliminary infringement contentions 

identifying the asserted claims and accused instrumentalities. Dkt. 63-1. Headwater identified 281 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 4 of 16 PageID #: 1321
2

claims across the four asserted patents (averaging approximately 70 claims per patent). Id. And 

while Headwater specifically identified several different models of accused instrumentalities, they 

all fall into the same general categories of mobile phones, tablets, laptops, wearables, and hotspot 

devices that utilize Apple or Android software implementing the patented wireless 

communications technology. See id. 

On January 12, 2024, Headwater served amended infringement contentions to address 

certain concerns raised by Verizon. Dkt. 64-1; Dkt. 61 (Unopposed Motion to Amend Infringement 

Contentions). At Verizon’s request, Headwater provided five different charts for the ’541 patent 

to separately address Apple, Samsung, Google, Motorola, and Kyocera products. Headwater did 

the same for the ’613 patent. In total, Headwater provided 12 detailed claim charts for the four 

asserted patents. 

Verizon served invalidity contentions on December 21, 2023, and corrected invalidity 

contentions on January 8, 2024. On February 5, 2024, Verizon met and conferred with Headwater 

regarding amending its invalidity contentions to add new prior art references. Verizon filed an 

unopposed motion to amend its contentions on March 4, 2024 (Dkt. 59), which the Court granted 

on March 5, 2024 (Dkt. 60).

On October 3, 2023, Verizon requested that in “mid-November” Headwater reduce the 

number of asserted claims for the ’541 and ’543 patents to “no more than 30” claims. Dkt. 63-2. 

The case had barely started at that point—the parties had not even exchanged initial disclosures, 

and the Court had not yet entered a Docket Control Order. Accordingly, Headwater rejected 

Verizon’s proposal as premature. Dkt. 63-3.

Verizon raised the issue of claim narrowing again in February 2024, and after meeting and 

conferring, Headwater sent a counterproposal offering a multi-stage mutual narrowing process 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 5 of 16 PageID #: 1322
3

with the first milestone being Headwater narrowing to no more than 128 total claims by 14 days 

after submission of the Joint Claim Construction Statement (i.e., by September 10, 2024). Dkt. 63-

5 at 8. In other words, Headwater’s proposed compromise offered a reduction in the number of 

asserted claims by over 50% (from 281 to 128, across all four asserted patents) to be made six 

weeks before the October 22, 2024 deadline for Verizon’s responsive claim construction brief. 

Headwater would then serve a Second Election of Asserted Claims identifying no more than 64 

total asserted claims across all patents no later than 28 days before the service of opening expert 

reports. Id.

The parties continued to meet and confer, and in an effort to further compromise, 

Headwater sent another proposal for claim narrowing on February 22, 2024. Dkt. 63-5 at 3. Under 

that proposal, Headwater would narrow to no more than 192 total claims across all patents no later 

than 21 days before the parties’ exchange of proposed terms for claim construction (i.e., by June 

25, 2024). Headwater would narrow to no more than 128 total claims no later than 14 days after 

submission of the parties’ Joint Claim Construction Statement (i.e., by September 10, 2024), and 

no more than 64 total claims no later than 28 days before the service of opening expert reports

(i.e., by November 21, 2024). Id.

On March 1, 2024, Verizon responded with a counterproposal under which Headwater 

would serve a First Election of Asserted Claims identifying no more than 24 asserted claims per 

patent and no more than 96 claims across all patents by March 15, 2024, and a Final Election of 

Asserted Claims identifying no more than five asserted claims per patent and no more than a total 

of 16 claims across all patents no later than 28 days before the service of opening expert reports. 

Id. at 2. Given the early stage of the case, Headwater declined Verizon’s proposal, but reiterated 

its “agree[ment] that the parties should work together throughout the case to narrow issues for 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 6 of 16 PageID #: 1323
4

trial.” Id. Verizon filed the instant motion requesting entry of an order focusing patent claims and 

prior art nearly two months later.

Headwater was and continues to be amenable to narrowing the asserted claims in this case 

before the DCO’s built-in deadline for plaintiff to disclose its final election of asserted claims (set 

for 10 days before jury selection) and as part of the natural narrowing of claims and defenses over 

time. But Verizon’s proposal was premature and unreasonable relative to the stage of the case. 

Neither party has taken any depositions. The deadline to complete claim construction discovery is 

September 24, 2024, and the Markman hearing is scheduled for November 19, 2024. Dkt. 40. 

There is still seven months of fact discovery left, with the fact discovery deadline on

December 13, 2024. Opening expert reports are due on December 19, 2024. Dispositive motions 

are due in February 2025. And the jury trial is a year out, currently set for May 19, 2025. Id. Again, 

Headwater remains amenable to significantly narrowing its case well before the DCO’s built-in 

deadline for claim narrowing (such as in accordance with its counterproposal provided on February

22 (Dkt. 63-5 at 3), but not under the extreme schedule proposed by Verizon. 

III. ARGUMENT

A. Verizon’s Proposal Is Unreasonable and Unwarranted by the Facts of 

the Case

Verizon’s proposal for the narrowing of asserted patent claims in this case is unreasonable 

and should be denied. While the Court is within its discretion to limit the number of claims to be 

tried in this case, the Federal Circuit has made clear that “claim reduction should not be ordered 

‘too early in the discovery process’ because doing so would deny the patentee ‘the opportunity to 

determine whether particular claims might raise separate issues of infringement or invalidity in 

light of the defendants’ accused products and proposed defenses.’” Allergan, Inc. v. Teva Pharms. 

USA, No. 2:15-CV-1455-WCB, 2017 WL 373462, at *2 (E.D. Tex. Jan. 26, 2017) (quoting In re 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 7 of 16 PageID #: 1324
5

Katz, 639 F.3d 1303, 1309 (Fed. Cir. 2011)) (emphasis added). “A court must exercise the 

authority to order a reduction in the number of asserted claims with care not to prejudice the 

patentee, particularly in light of the fact that each of the claims of a patent embodies a property 

right.” Id.

For example, in CogniPower LLC v. Samsung Electronics Co., Ltd., No. 2:23-CV-00160-

JRG, Samsung filed a Motion for Entry of a Claim Focusing Order requesting that the Court enter 

its Model Patent Order “due to the expansive nature of the case,” wherein plaintiff asserted 193 

claims across five patents. CogniPower, Dkt. 62 at 1 (E.D. Tex. Oct. 6, 2023). The Court denied 

the motion as “premature” because Samsung had “not yet produced adequate discovery” to allow 

plaintiff the “opportunity to determine which of its 193 asserted claims may raise separate issues 

of infringement and invalidity.” Id. at 1–2. Several months later, Samsung renewed its request, and 

this Court recently ordered mutual narrowing, which will begin with CogniPower narrowing its 

assertions to no more than ten claims per patent and no more than 32 total claims—at the time 

CogniPower files its opening claim construction brief. CogniPower, Dkt. 123 at 2 (E.D. Tex. May 

15, 20241). This narrowing ordered in CogniPower will occur much later in that case than what 

Verizon proposes here and will occur even later than what Headwater proposed to Verizon as a 

compromise months ago. And while the 32-claim limit ordered in CogniPower is lower than the 

128-claim limit that Headwater proposed as a compromise, the scope of accused products and 

features is far broader here than in that case. In CogniPower, all of the asserted patents are reissues 

of the same single patent, and the accused products are all power adapters/chargers made by 

1 Headwater has recently filed opposition briefs similar to this one in its cases against AT&T and 

T-Mobile, which involve the same asserted patents as here. See No. 2:23-cv-00352-JRG-RSP, Dkt. 

54 (Apr. 25, 2024); No. 2:23-cv-00379-JRG-RSP, Dkt. 61 (May 14, 2024). At the time of those 

briefs, the Court’s May 15, 2024 order in CogniPower had not issued, but the same discussions 

herein about the May 15 CogniPower order likewise apply to the AT&T and T-Mobile cases.

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 8 of 16 PageID #: 1325
6

Samsung. CogniPower, Dkt. 1 ¶¶ 25, 33. In the present case, there are four asserted patents, and 

only two (’541 and ’613) share the same specification. Moreover, there are far more accused 

products, product categories, and equipment manufacturers here than in CogniPower. This case 

involves not only accused server functionality provided by Verizon, but also hundreds of end-user 

products spanning numerous categories (e.g., phones, tablets, laptops, wearables, hotspot devices)

that originate from numerous equipment manufacturers (e.g., Apple, Samsung, Google, Motorola, 

Kyocera). The differing features, functionality, and source code associated with the accused

servers and end-user products makes the infringement case here more expansive than in 

CogniPower, which impacts Headwater’s ability to narrow claims. Thus, even if the timing of the 

initial claim narrowing ordered in CogniPower were applied here, Headwater submits that the 

degree of initial claim narrowing ordered there would be far too limiting for this case.

It is far too early in the case to require Headwater to narrow its claims as drastically as 

Verizon proposes. There is still seven months of fact discovery left. Claim construction discovery 

closes in September, and the Markman hearing is on November 19, 2024—six months away. While 

it is true that Verizon has served its invalidity contentions (which they amended in February to add 

additional prior art references), there still has not been sufficient discovery to allow Headwater to 

determine which of its asserted claims will be impacted by Verizon’s noninfringement and 

invalidity positions. Verizon’s demand that Headwater drop to 32 claims immediately (Mot. at 7) 

is unreasonable and would severely prejudice Headwater’s patent rights. The Court’s Model Order 

does not even contemplate such drastic narrowing so early in the case. Under the Model Order, the 

patentee is to narrow its case to no more than 32 claims “[b]y the date set for completion of claim 

construction discovery.” Model Order Focusing Patent Claims and Prior Art ¶ 2. The claim 

construction discovery deadline is not for another four months.

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 9 of 16 PageID #: 1326
7

Verizon’s assertion that it will be “severely prejudiced in its ability to conduct discovery 

and investigate its defenses” due to the number of asserted claims and accused products (Mot. at 

4) fails. Indeed, Verizon also contends that “for more than 200 of the Asserted Claims, 

Headwater’s Infringement Contentions contain no unique allegations of infringement.” Id. at 4–5. 

Thus, by Verizon’s own admission, discovery will overlap for more than 70% of the asserted 

claims. Verizon also fails to mention that the vast majority of accused products are variations of 

the same phones, tablets, laptops, wearables, and hotspot devices that utilize Apple or Android 

software implementing the patented wireless communications technology. For example, some of 

the accused products include the iPhone 5C, iPhone 5S, iPhone 6, iPhone 6 Plus, iPhone 6S, etc. 

The discovery for these lines of products will also overlap significantly. In fact, when Verizon

initially complained about Headwater’s first set of infringement contentions, Verizon requested 

that Headwater provide separate claim charts for each manufacturer (e.g., Apple, Samsung, 

Google, etc.)—not for each individual product model— showing that Verizon recognizes this 

overlap and further undermining Verizon’s complaints about its discovery burden. Regardless, 

dropping the number of asserted claims will have little if any impact on the number of accused 

products that the parties will have to investigate in discovery. 

But even the various devices and functionalities accused in this case do not support 

Verizon’s assertion that the patents in this case present “uncommon complexity,” simply because 

an asserted patent has a lengthy specification of “over 125 columns” and incorporates other patents 

(Mot. at 4). Verizon fails to explain how the number of columns in the specification bears any 

relation to the number of asserted claims—because it does not. 

Verizon also complains about purported deficiencies in Headwater’s discovery responses 

and infringement contentions, “leaving Verizon without guidance regarding Headwater’s 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 10 of 16 PageID #: 1327
8

infringement theories to direct discovery.” Mot. at 5. Headwater disagrees and believes that its 

responses and contentions comply with all applicable rules. But to the extent that Verizon truly 

believes that Headwater’s responses and contentions are deficient and believes it is unable to 

understand Headwater’s infringement theories, the proper course of action would be to meet and 

confer and then, if needed, file a motion to compel—not force Headwater to drop nearly 90% of 

asserted claims at the outset of discovery.

Finally, Verizon’s claim that it will have the “onerous task of briefing claim construction 

across over 200 claims across just 30 pages” (Mot. at 5) is simply not true. Under Headwater’s 

most recent proposal, Headwater would narrow to no more than 192 total claims across all patents 

no later than 21 days before the parties’ exchange of proposed terms for claim construction, and 

to no more than 128 total claims no later than 14 days after submission of the parties’ Joint Claim 

Construction Statement—a reduction of over 50% six weeks before the deadline for Verizon’s 

responsive claim construction brief. Verizon rejected this proposal. Further, Verizon has provided 

no indication that it actually intends to propose constructions for terms from every single asserted 

claim, which is highly unlikely. In the event that the number of proposed terms becomes too 

unwieldy for 30 pages of briefing, the parties can meet and confer to address those concerns. There 

is no legal basis for forcing Headwater to drop down to 32 claims before the parties even exchange 

proposed claim terms. The Model Order does not require such a reduction until after claim 

construction discovery is complete.

B. Headwater’s Cases Against Samsung, Which Involve Different Patents 

and Different Accused Products, Do Not Support Verizon’s Proposal 

for Claim Reduction

Verizon’s argument that Headwater is “better positioned than the typical plaintiff” to 

engage in claim narrowing now because it has been litigating related patents against Samsung 

since October 2022 (Mot. at 6) is without merit. The Samsung cases involve different patents and 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 11 of 16 PageID #: 1328
9

different products. For example, in Case No. 23-cv-103, Headwater accuses various Samsung 

Galaxy and television products which implement Samsung Knox, Tizen, and/or push messaging 

functionality not at issue here. And in Case No. 22-cv-422, Headwater accuses various Samsung 

Galaxy products of infringing patents not asserted here. No Apple, Motorola, Google, or Kyocera

products are accused in the Samsung cases. Nor are any of the Verizon server functionalities at 

issue here accused in the Samsung cases. While there may be some general overlap in certain 

subject matter and some common accused Samsung products, this minimal overlap does not 

somehow justify early claim reduction here. The Samsung cases do not provide any insight into 

Verizon’s noninfringement and invalidity positions for the asserted patents in this case.

C. Verizon’s Proposal Is Contrary to This Court’s Model Order and 

Federal Circuit Precedent

Verizon’s assertion that its proposal is simply a “modified version of the Court’s Model 

Order” (Mot. at 7) is a gross exaggeration. As discussed above, the Model Order provides for the 

first phase of claim reduction to occur after claim construction discovery. Verizon demanded the 

same reduction back in February—many months before the close of claim construction discovery, 

and before the parties even exchange proposed claim terms. Verizon provides no authority to 

support such drastic claim reduction at this stage of the case. In addition, the Model Order 

specifically mandates that any “proposed modifications” to its terms must be submitted “by the 

deadline for submission of proposed docket control or discovery orders, but in no event later than 

the deadline for service of initial disclosures.” Verizon’s request to modify the Model Order is 

therefore untimely.

Verizon’s suggestion that the Model Order provides for claim reduction too late into fact 

discovery makes no sense, as there is nothing unusual about the schedule in this case. The Court’s 

DCO adopts the schedule that was jointly proposed by both parties and is nearly identical to the 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 12 of 16 PageID #: 1329
10

Court’s Sample Docket Control Order for Patent Cases.2 Dkt. 37-1. Thus, the schedule in this case 

is consistent with the timing for claim reduction contemplated by the Court’s Model Order. 

Verizon’s assertion that it is entitled to claim reduction early in the fact discovery period is also 

contrary to law. See Katz, 639 F.3d at 1309 (“claim reduction should not be ordered too early in 

the discovery process”). Indeed, in Intellectual Ventures II LLC v. FedEx Corp., No. 2:16-CV00980-JRG, the Court denied the defendants’ Motion for Entry of a Model Order Focusing Patent 

Claims at an even later stage of the case, after claim construction was already complete and fact 

discovery was “essentially closed.” Intellectual Ventures, Dkt. 206 at 3 (E.D. Tex. Dec. 22, 2017). 

Though the case “span[ned] five patents, numerous claims, and at least two-dozen products,” the

Court explained that “[b]oth of these events will only accelerate the natural narrowing of claims 

that occurs at this stage of the trial process.” Id. Accordingly, Headwater should not be forced to 

drop its property rights in its patent claims before it has had an opportunity conduct a sufficient 

investigation into those claims. 

Headwater’s counterproposal for narrowing the asserted claims and prior art is more than 

reasonable and provides for more than 50% reduction in asserted claims well before Verizon’s 

responsive claim construction brief is due, and a further reduction before expert reports are due. 

The asserted claims will continue to narrow naturally as fact discovery and claim construction 

progresses. And while Headwater remains amenable to continuing its discussions with Verizon

regarding a meaningful reduction in asserted claims and prior art, Verizon’s current proposal is 

unreasonable and premature given the current stage of the case. 

2https://www.txed.uscourts.gov/sites/default/files/judgeFiles/Patent%20Model%20Docket%20C

ontrol%20Order_Updated.docx. 

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 13 of 16 PageID #: 1330
11

IV. CONCLUSION

For the foregoing reasons, Verizon’s motion should be denied. If the Court is inclined to 

order case narrowing at this time, Headwater respectfully requests that its counterproposal offered 

to Verizon on February 22, 2024 (see Dkt. 63-5 at 3) be ordered in place of Verizon’s proposal.

Dated: May 16, 2024 Respectfully submitted,

 /s/ Marc Fenster

Marc Fenster

CA State Bar No. 181067

Email: mfenster@raklaw.com

Reza Mirzaie

CA State Bar No. 246953

Email: rmirzaie@raklaw.com

Brian Ledahl

CA State Bar No. 186579

Email: bledahl@raklaw.com

Ben Wang

CA State Bar No. 228712

Email: bwang@raklaw.com

Dale Chang

CA State Bar No. 248657

Email: dchang@raklaw.com

Paul Kroeger

CA State Bar No. 229074

Email: pkroeger@raklaw.com

Neil A. Rubin

CA State Bar No. 250761

Email: nrubin@raklaw.com

Kristopher Davis

CA State Bar No. 329627

Email: kdavis@raklaw.com

James S. Tsuei

CA State Bar No. 285530

Email: jtsuei@raklaw.com

Philip Wang

CA State Bar No. 262239

Email: pwang@raklaw.com

Amy Hayden

CA State Bar No. 287026

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 14 of 16 PageID #: 1331
12

Email: ahayden@raklaw.com

Jason M. Wietholter

CA State Bar No. 337139

Email: jwietholter@raklaw.com

RUSS AUGUST & KABAT

12424 Wilshire Blvd. 12th Floor

Los Angeles, CA 90025

Telephone: 310-826-7474

Attorneys for Plaintiff Headwater 

Research LLC

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 15 of 16 PageID #: 1332
13

CERTIFICATE OF SERVICE

I hereby certify that on May 16, 2024, I electronically filed the foregoing document with 

the Clerk of the Court for the Eastern District of Texas using the ECF System which will send 

notification to the registered participants of the ECF System as listed on the Court’s Notice of 

Electronic Filing.

/s/ Marc Fenster

Marc Fenster

Case 2:23-cv-00352-JRG-RSP Document 66 Filed 05/16/24 Page 16 of 16 PageID #: 1333