1 

IN THE UNITED STATES DISTRICT COURT 

FOR THE EASTERN DISTRICT OF TEXAS 

MARSHALL DIVISION

HEADWATER RESEARCH LLC, 

Plaintiff, 

v. 

T-MOBILE US, INC., T-MOBILE USA, INC., 

and SPRINT CORP., 

Defendants. 

Civil Action No. 2:23-CV-00377 

T-MOBILE’S ANSWER 

Defendants T-Mobile US, Inc.1, T-Mobile USA, Inc., and Sprint Corp.2 (collectively, 

“T-Mobile” or “Defendants”), by and through their attorneys, hereby submit this Answer to 

Plaintiff Headwater Research LLC’s (“Plaintiff”) complaint (Dkt. 1) (the “Complaint”) as follows: 

GENERAL DENIAL 

Unless specifically admitted below, T-Mobile denies each and every allegation in the 

Complaint. To the extent any factual allegation below is admitted, it is admitted only as to the 

specific admitted facts, not as to any purported conclusions, characterizations, implications, or 

speculations that arguably may follow from the admitted facts. No admission below should be 

construed as an admission or concession regarding the relevance of any allegation of the 

Complaint. Nor should any admission below be construed as an admission or concession regarding 

 

1

 T-Mobile US, Inc. is a holding company that does not provide any products, services, or 

networks. As such, Defendants deny that T-Mobile US, Inc. is properly named as a party to this 

lawsuit. 

2

 Sprint Corp. is now known as Sprint LLC. Sprint LLC is a wholly owned, direct subsidiary of 

T-Mobile USA, Inc. and is a holding company that does not provide any products, services, or 

networks. As such, Defendants deny that Sprint LLC is properly named as a party to this lawsuit. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 1 of 22 PageID #: 316
2 

the accuracy, authenticity, admissibility, or relevance of any documents cited or referenced in the 

Complaint. T-Mobile further denies that Plaintiff is entitled to the relief requested or to any other 

relief. The headings below track those used in the Complaint and are for convenience only. They 

do not constitute any part of T-Mobile’s Answer or any admission by T-Mobile as to the truth of 

the matters asserted. To the extent the headings of the Complaint are construed as allegations, 

they are each denied. 

RESPONSES TO NUMBERED PARAGRAPHS IN THE COMPLAINT 

BACKGROUND 

1. T-Mobile denies the allegations of Paragraph 1 of the Complaint. 

2. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 2 and on that basis denies each and every 

allegation. 

3. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 3 and on that basis denies each and every 

allegation. 

4. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 4 and on that basis denies each and every 

allegation. 

5. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 5 and on that basis denies each and every 

allegation. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 2 of 22 PageID #: 317
3 

6. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 6 and on that basis denies each and every 

allegation. 

7. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 7 and on that basis denies each and every 

allegation. 

8. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 8 and on that basis denies each and every 

allegation. 

9. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 9 and on that basis denies each and every 

allegation. 

10. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 10 and on that basis denies each and every 

allegation. 

11. T-Mobile admits that smartphones and other mobile devices have become widely 

used in the past few decades and that they may include features which allow subscribers to make 

and receive phone calls, get notifications, download music, upload photos, stream entertainment, 

transact business, exchange ideas, and connect to family and friends. T-Mobile also admits that it 

is possible to exchange large amounts of data over the internet using certain wireless and cellular 

networks. Except as expressly admitted, T-Mobile does not have knowledge or information 

sufficient to form a belief as to the truth of the remaining characterizations contained in Paragraph 

11 and on that basis denies them. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 3 of 22 PageID #: 318
4 

12. T-Mobile admits that Plaintiff purports to quote from multiple websites, which 

websites speak for themselves. To the extent that Plaintiff has mischaracterized such content, 

T-Mobile denies the allegations in Paragraph 12. Except as expressly admitted, T-Mobile does 

not have knowledge or information sufficient to form a belief as to the truth of the remaining 

allegations contained in Paragraph 12 and on that basis denies each and every allegation. 

13. T-Mobile admits that Plaintiff purports to quote from multiple websites, which 

websites speak for themselves. To the extent that Plaintiff has mischaracterized such content, 

T-Mobile denies the allegations in Paragraph 13. Except as expressly admitted, T-Mobile does 

not have knowledge or information sufficient to form a belief as to the truth of the allegations 

contained in Paragraph 13 and on that basis denies each and every allegation. 

14. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 14 and on that basis denies each and every 

allegation. 

15. T-Mobile admits that the Complaint purports to accuse mobile devices, cellular 

networks, servers, and services of patent infringement. Except as expressly admitted, T-Mobile 

denies the remaining allegations of Paragraph 15 of the Complaint. 

NOTICE OF THE ASSERTED PATENTS 

16. T-Mobile denies the allegations of Paragraph 16 of the Complaint. 

17. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 17 and on that basis denies each and every 

allegation. 

18. T-Mobile admits that ItsOn and Sprint had business-related discussions. Except as 

expressly admitted, T-Mobile denies the remaining allegations of Paragraph 18 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 4 of 22 PageID #: 319
5 

19. T-Mobile denies the allegations of Paragraph 19 of the Complaint. 

20. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 20 and on that basis denies each and every 

allegation. 

21. T-Mobile denies the allegations of Paragraph 21 of the Complaint 

22. T-Mobile denies the allegations of Paragraph 22 of the Complaint. 

23. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 23 and on that basis denies each and every 

allegation. 

24. T-Mobile denies the allegations of Paragraph 24 of the Complaint. 

25. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 25 and on that basis denies each and every 

allegation. 

26. T-Mobile admits that certain ItsOn software was installed on certain Android 

devices sold by Sprint. Except as expressly admitted, T-Mobile denies the remaining allegations 

of Paragraph 26 of the Complaint 

27. T-Mobile admits that, in 2015, certain Android devices sold by Sprint included 

certain ItsOn software. Except as expressly admitted, T-Mobile denies the remaining allegations 

of Paragraph 27 of the Complaint. 

28. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 28 and on that basis denies each and every 

allegation. 

29. T-Mobile denies the allegations of Paragraph 29 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 5 of 22 PageID #: 320
6 

30. T-Mobile denies the allegations of Paragraph 30 of the Complaint. 

31. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 31 and on that basis denies each and every 

allegation. 

32. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 32 and on that basis denies each and every 

allegation. 

33. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 33 and on that basis denies each and every 

allegation. 

34. T-Mobile denies the allegations of Paragraph 34 of the Complaint. 

35. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 35 and on that basis denies each and every 

allegation. 

36. T-Mobile admits that on October 27, 2015, Sprint notified ItsOn that, in accordance 

with Section 7.2 of the Master Service Agreement effective January 15, 2014, Sprint was providing 

its notice to terminate SOWs 2014FEB27ITS and 2014OCT22ITS for convenience, effective on 

January 27, 2016. Except as expressly admitted, T-Mobile denies the remaining allegations of 

Paragraph 36 of the Complaint. 

37. T-Mobile admits that, after October 27, 2015, Sprint employees met with ItsOn 

employees. Except as expressly admitted, T-Mobile denies the remaining allegations of Paragraph 

37 of the Complaint. 

38. T-Mobile denies the allegations of Paragraph 38 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 6 of 22 PageID #: 321
7 

39. T-Mobile admits that, subsequent to 2016, Sprint sold certain mobile devices with 

features and functionalities that may have allowed users to reduced data usage and/or power 

consumption.. Except as expressly admitted, T-Mobile denies the remaining allegations of 

Paragraph 39 of the Complaint. 

PLAINTIFF HEADWATER AND THE PATENTS-IN-SUIT 

40. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 40 and on that basis denies each and every 

allegation. 

41. T-Mobile admits that Exhibit 1 to the Complaint purports to be a copy of U.S. 

Patent No. 8,589,541. Except as expressly admitted, T-Mobile does not have knowledge or 

information sufficient to form a belief as to the truth of the remaining allegations contained in 

Paragraph 41 and on the basis denies each and every allegation. 

42. T-Mobile admits that Exhibit 2 to the Complaint purports to be a copy of U.S. 

Patent No. 9,215,613. Except as expressly admitted, T-Mobile does not have knowledge or 

information sufficient to form a belief as to the truth of the remaining allegations contained in 

Paragraph 42 and on the basis denies each and every allegation. 

DEFENDANTS AND THE ACCUSED INSTRUMENTALITIES 

43. T-Mobile admits that T-Mobile US, Inc. is a Delaware corporation with a principal 

place of business at 12920 S.E. 38th Street, Bellevue, Washington 98006. T-Mobile admits that 

T-Mobile US, Inc. may be served through its registered agent, Corporation Service Company. 

Except as expressly admitted, T-Mobile denies the remaining allegations of Paragraph 43 of the 

Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 7 of 22 PageID #: 322
8 

44. T-Mobile admits that T-Mobile USA, Inc. operates a wireless communications 

network and provides wireless telecommunications services under the “T-Mobile” brand. Except 

as expressly admitted, T-Mobile denies the remaining allegations of Paragraph 44 of the 

Complaint. 

45. T-Mobile admits that T-Mobile USA, Inc. is a Delaware corporation with its 

principal place of business at 12920 SE 38th Street, Bellevue, Washington 98006. T-Mobile admits 

T-Mobile USA, Inc. may be served through its registered agent, Corporation Service Company, 

located at 211 E. 7th Street, Suite 620, Austin, Texas 78701. Except as expressly admitted, TMobile denies the remaining allegations of Paragraph 45 of the Complaint. 

46. T-Mobile admits that since on or about November 22, 1999, T-Mobile USA, Inc. 

has been registered to do business in the state of Texas. T-Mobile admits that T-Mobile USA, Inc. 

operates a wireless communications network and offers for sale certain wireless products and 

services within the Eastern District of Texas. Except as expressly admitted, T-Mobile denies the 

remaining allegations of Paragraph 46 of the Complaint. 

47. T-Mobile admits that Sprint LLC is a Delaware limited liability corporation. Except 

as expressly admitted, T-Mobile denies the remaining allegations of Paragraph 47 of the 

Complaint. 

48. T-Mobile denies the allegations of Paragraph 48 of the Complaint. 

49. T-Mobile admits that the Complaint purports to accuse mobile devices, cellular 

networks, servers, and services of patent infringement. Except as expressly admitted, T-Mobile 

denies the remaining allegations of Paragraph 49 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 8 of 22 PageID #: 323
9 

JURISDICTION AND VENUE 

50. T-Mobile admits that the Complaint purports to allege patent infringement under 

Title 35 of the United States Code. T-Mobile denies that it infringes any asserted patent, and 

denies the remaining allegations in Paragraph 50 of the Complaint. 

51. T-Mobile admits that the Complaint purports to state claims over which the Court 

would have subject matter jurisdiction. 

52. T-Mobile specifically denies that it has committed any act of infringement. The 

remaining allegations of Paragraph 52 of the Complaint contain legal conclusions to which no 

response is required. To the extent a response is deemed required, T-Mobile admits that T-Mobile 

USA, Inc. has conducted business in this district. T-Mobile specifically denies that the Court has 

personal jurisdiction over T-Mobile US, Inc. or Sprint LLC. Except as expressly admitted, 

T-Mobile denies the remaining allegations of Paragraph 52 of the Complaint. 

53. T-Mobile denies the allegations of Paragraph 53 of the Complaint. 

54. T-Mobile specifically denies that it has committed any act of infringement. Solely 

with respect to T-Mobile USA, Inc., T-Mobile does not contest venue in this district for purposes 

of this litigation only but denies that this district is the most convenient venue for litigation of the 

claims in the Complaint and reserves the right to assert that a change of venue under 28 U.S.C. § 

1404 is appropriate. T-Mobile specifically denies that venue is proper in this district for T-Mobile 

US, Inc. or Sprint LLC. The remaining allegations of Paragraph 54 of the Complaint contain legal 

conclusions to which no response is required. To the extent as response is deemed required, 

T-Mobile denies the allegations of Paragraph 54 of the Complaint. 

55. T-Mobile admits that Plaintiff purports to quote from a website, which website 

speaks for itself. To the extent that Plaintiff has mischaracterized such content, T-Mobile denies 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 9 of 22 PageID #: 324
10 

the allegations in Paragraph 55. Except as expressly admitted, T-Mobile denies the remaining 

allegations of Paragraph 55 of the Complaint. 

56. T-Mobile admits that Plaintiff purports to quote from a website, which website 

speaks for itself. To the extent that Plaintiff has mischaracterized such content, T-Mobile denies 

the allegations in Paragraph 56. Except as expressly admitted, T-Mobile denies the remaining 

allegations of Paragraph 56 of the Complaint. 

57. T-Mobile admits that Plaintiff purports to quote from a website, which website 

speaks for itself. To the extent that Plaintiff has mischaracterized such content, T-Mobile denies 

the allegations in Paragraph 57. Except as expressly admitted, T-Mobile denies the remaining 

allegations of Paragraph 57 of the Complaint. 

58. T-Mobile admits that T-Mobile USA, Inc. maintains an office at 7668 Warren 

Pkwy., Frisco, TX 75034. Except as expressly admitted, T-Mobile denies the remaining 

allegations of Paragraph 58 of the Complaint. 

59. T-Mobile admits that Plaintiff purports to quote from a website, which website 

speaks for itself. To the extent that Plaintiff has mischaracterized such content, T-Mobile denies 

the allegations in Paragraph 59. Except as expressly admitted, T-Mobile denies the remaining 

allegations of Paragraph 59 of the Complaint. 

COUNT 1 – CLAIM FOR INFRINGEMENT OF THE ’541 PATENT 

60. T-Mobile repeats and re-alleges the responses set forth in the preceding paragraphs 

above as though set forth in full herein. 

61. T-Mobile admits that Exhibit 1 to the Complaint purports to be a copy of U.S. 

Patent No. 8,589,541 (the “’541 Patent”), which is titled “Device-assisted services for protecting 

network capacity” and which issued on November 19, 2013. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 10 of 22 PageID #: 325
11 

62. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 62 and on that basis denies each and every 

allegation. 

63. The allegations of Paragraph 63 of the Complaint contain legal conclusions to 

which no response is required. To the extent as response is deemed required, T-Mobile denies the 

allegations of Paragraph 63 of the Complaint. 

64. T-Mobile specifically denies that it has committed any act of infringement. The 

allegations of Paragraph 64 of the Complaint contain legal conclusions to which no response is 

required. To the extent as response is deemed required, T-Mobile denies the allegations of 

Paragraph 64 of the Complaint. 

65. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 65 of the Complaint. 

66. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 66 of the Complaint. 

67. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile admits that Exhibit 3 to the Complaint is a chart that purports to include Plaintiff’s 

allegations regarding infringement of claim 1 of the ’541 Patent. T-Mobile denies that it infringes 

the ’541 Patent and denies the remaining allegations in Paragraph 67 of the Complaint. 

68. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 68 of the Complaint. 

69. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 69 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 11 of 22 PageID #: 326
12 

70. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 70 of the Complaint. 

71. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 71 of the Complaint. 

72. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 72 of the Complaint. 

73. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 73 of the Complaint. 

COUNT 2 – CLAIM FOR INFRINGEMENT OF THE ’613 PATENT 

74. T-Mobile repeats and re-alleges the responses set forth in the preceding paragraphs 

above as though set forth in full herein. 

75. T-Mobile admits that Exhibit 2 to the Complaint purports to be a copy of U.S. 

Patent No. 9,215,613 (the “’613 Patent”), which is titled “Wireless end-user device with 

differential traffic control policy list having limited user control” and which issued on December 

15, 2015. 

76. T-Mobile does not have knowledge or information sufficient to form a belief as to 

the truth of the allegations contained in Paragraph 76 and on that basis denies each and every 

allegation. 

77. The allegations of Paragraph 77 of the Complaint contain legal conclusions to 

which no response is required. To the extent as response is deemed required, T-Mobile denies the 

allegations of Paragraph 77 of the Complaint. 

78. T-Mobile specifically denies that it has committed any act of infringement. The 

allegations of Paragraph 78 of the Complaint contain legal conclusions to which no response is 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 12 of 22 PageID #: 327
13 

required. To the extent as response is deemed required, T-Mobile denies the allegations of 

Paragraph 78 of the Complaint. 

79. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 79 of the Complaint. 

80. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 80 of the Complaint. 

81. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile admits that Exhibit 4 to the Complaint is a chart that purports to include Plaintiff’s 

allegations regarding infringement of claim 1 of the ’613 Patent. T-Mobile denies that it infringes 

the ’613 Patent and denies the remaining allegations in Paragraph 81 of the Complaint. 

82. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 82 of the Complaint. 

83. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 83 of the Complaint. 

84. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 84 of the Complaint. 

85. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 85 of the Complaint. 

86. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 86 of the Complaint. 

87. T-Mobile specifically denies that it has committed any act of infringement. 

T-Mobile denies the allegations of Paragraph 87 of the Complaint. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 13 of 22 PageID #: 328
14 

RESPONSE TO PLAINTIFF’S JURY DEMAND 

88. T-Mobile demands a jury trial pursuant to Fed. R. Civ. P. 38. 

RESPONSE TO PLAINTIFF’S RELIEF REQUESTED

 T-Mobile denies that Plaintiff is entitled to any relief, including but not limited to the 

relief sought by Plaintiff under Paragraphs A-G of the Complaint. 

T-MOBILE’S AFFIRMATIVE DEFENSES 

89. T-Mobile incorporates by reference the foregoing paragraphs in their entirety and 

asserts the following Affirmative Defenses. T-Mobile asserts the following defenses without 

assuming any burden that it would not otherwise have, including without admitting or 

acknowledging that it bears the burden of proof as to any of these defenses. T-Mobile reserves the 

right to amend this Answer with additional defenses as additional information becomes available. 

FIRST AFFIRMATIVE DEFENSE 

(Failure to State a Claim) 

90. Plaintiff’s Complaint fails to state a claim upon which relief can be granted. 

SECOND AFFIRMATIVE DEFENSE 

(Non-Infringement) 

91. T-Mobile has not directly infringed, contributorily infringed, or induced 

infringement of any valid and enforceable claim of the ’541 Patent or ’613 Patent, and do not 

indirectly infringe, contributorily infringe, or induce the infringement of any valid and enforceable 

claim of the ’541 Patent or ’613 Patent, either literally or under the doctrine of equivalents. 

THIRD AFFIRMATIVE DEFENSE 

(Invalidity) 

92. The claims of the ’541 Patent and ’613 Patent are invalid for failure to comply with 

the requirements of Title 35 of the United States Code, including but not limited to 35 U.S.C. 

§§ 101, 102, 103, and/or 112, and the rules, regulations, and laws pertaining thereto. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 14 of 22 PageID #: 329
15 

FOURTH AFFIRMATIVE DEFENSE 

(Failure to Mark) 

93. To the extent Plaintiff has failed to comply with the notice requirements of 35 

U.S.C. § 287, Plaintiff is barred from all monetary relief for acts that occurred prior to Plaintiff 

providing actual notice to T-Mobile. 

FIFTH AFFIRMATIVE DEFENSE 

(License, Exhaustion, Waiver, and Estoppel) 

94. Plaintiff’s claims are barred, in whole or in part, by license, exhaustion, and/or the 

doctrines of waiver and/or equitable estoppel. 

SIXTH AFFIRMATIVE DEFENSE 

(Waiver/Estoppel/Laches/Acquiescence) 

95. Plaintiff’s claims are barred, in whole or in part, under principles of equity, 

including waiver, estoppel, laches, and/or acquiescence, including but not limited to, prosecution 

history estoppel arising from the patentee’s actions, representations, or conduct before the United 

States Patent and Trademark Office during prosecution of the Patents-in-Suit. 

SEVENTH AFFIRMATIVE DEFENSE 

(Adequate Remedy at Law) 

96. Plaintiff has an adequate remedy at law and no basis exists for the grant of 

injunctive relief. 

EIGHTH AFFIRMATIVE DEFENSE 

(No Willfulness) 

97. On information and belief, T-Mobile has not knowingly or with reckless disregard 

willfully infringed valid and enforceable claims of the asserted patents and does not knowingly or 

with reckless disregard willfully infringe any valid and enforceable claims of the asserted patents. 

For at least these reasons, Plaintiff cannot maintain a claim of willfulness. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 15 of 22 PageID #: 330
16 

NINTH AFFIRMATIVE DEFENSE 

(No Attorneys’ Fees) 

98. Plaintiff is not entitled to attorneys’ fees under Section 38.001 of the Texas Civil 

Practice and Remedies Code, including because none of Plaintiff’s claims are valid. 

TENTH AFFIRMATIVE DEFENSE 

(Reservation of Defenses) 

99. T-Mobile reserves all affirmative defenses under Rule 8(c) of the Federal Rules of 

Civil Procedures, as well as any other defenses at law or in equity that may exist now or that may 

be available in the future. 

PRAYER FOR RELIEF

 WHEREFORE, T-Mobile asks this Court to enter judgment in favor of T-Mobile and 

against Plaintiff by granting the following relief: 

 A. A dismissal of all claims in Plaintiff’s Complaint with prejudice and a complete 

denial of Plaintiff’s request for damages, injunctive relief, interest, costs, expenses, accounting, 

attorneys’ fees, and any other form of relief, and 

 B. An award to T-Mobile of their reasonable attorneys’ fees, costs, and all interest 

(including without limitation any attorney fee awards based upon 35 U.S.C. § 285) and any such 

other and further relief as the Court finds just and proper. 

COUNTERCLAIMS 

 Defendant and Counterclaim-Plaintiff T-Mobile USA, Inc. (“T-Mobile Counterclaimant”) 

brings the following counterclaims against Plaintiff and Counterclaim-Defendant Headwater 

Research LLC (“Counterclaim-Defendant”): 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 16 of 22 PageID #: 331
17 

THE PARTIES 

1. Defendant and Counterclaim-Plaintiff T-Mobile USA, Inc. is Delaware corporation 

with a principal place of business in Bellevue, Washington. 

2. Upon information and belief, and based on Paragraph 40 of the Complaint as 

pleaded by Counterclaim-Defendant, Headwater Research LLC is a Texas limited liability 

company with its headquarters at 110 North College Avenue, Suite 1116, Tyler, Texas 75702. 

JURISDICTION AND VENUE 

3. This Court has jurisdiction over these counterclaims pursuant to the Federal Patent 

Act, 28 U.S.C. §§ 1331, 1338(a), and 2202. 

4. Counterclaim-Defendant has subjected itself to personal jurisdiction by 

maintaining its lawsuit against T-Mobile in this judicial district. 

5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391. 

6. Counterclaim-Defendant has sued T-Mobile Counterclaimant for infringement of 

the ’541 Patent or ’613 Patent. T-Mobile Counterclaimant denies infringement and denies that the 

claims of the asserted patents are valid. Therefore, there is a substantial, actual, and continuing 

controversy between Counterclaim-Defendant and T-Mobile Counterclaimant as to the validity 

and infringement of the asserted patents. 

COUNT 1

(Declaratory Judgment of Non-Infringement of the ’541 Patent)

7. T-Mobile Counterclaimant repeats and realleges the allegations in each of the 

foregoing Counterclaim paragraphs as if fully set forth herein. 

8. T-Mobile Counterclaimant has not infringed and does not infringe any valid and/or 

enforceable claim of the ’541 Patent, either directly or indirectly, literally, under the doctrine of 

equivalents, or otherwise. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 17 of 22 PageID #: 332
18 

9. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from the uncertainty and controversy that Counterclaim-Defendant’s allegations 

have created, T-Mobile Counterclaimant is entitled to a declaratory judgment that it does not 

infringe the ’541 Patent. 

COUNT 2

(Declaratory Judgment of Invalidity of the ’541 Patent)

10. T-Mobile Counterclaimant repeats and realleges the allegations in each of the 

foregoing Counterclaim paragraphs as if fully set forth herein. 

11. The ’541 Patent claims are invalid and/or patent ineligible for failing to meet one 

or more of the requisite statutory and decisional requirements and/or conditions for patentability 

and/or patent eligibility under Title 35 of the United States Code, including, without limitation, 

§§ 101, 102, 103, and/or 112. 

12. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from the uncertainty and controversy that Counterclaim-Defendant’s allegations 

have created, T-Mobile Counterclaimant is entitled to a declaratory judgment that the ’541 Patent 

is invalid and/or patent ineligible. 

COUNT 3

(Declaratory Judgment of Non-Infringement of the ’613 Patent)

13. T-Mobile Counterclaimant repeats and realleges the allegations in each of the 

foregoing Counterclaim paragraphs as if fully set forth herein. 

14. T-Mobile Counterclaimant has not infringed and does not infringe any valid and/or 

enforceable claim of the ’613 Patent, either directly or indirectly, literally, under the doctrine of 

equivalents, or otherwise. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 18 of 22 PageID #: 333
19 

15. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from the uncertainty and controversy that Counterclaim-Defendant’s allegations 

have created, T-Mobile Counterclaimant is entitled to a declaratory judgment that it does not 

infringe the ’613 Patent. 

COUNT 4

(Declaratory Judgment of Invalidity of the ’613 Patent)

16. T-Mobile Counterclaimant repeats and realleges the allegations in each of the 

foregoing Counterclaim paragraphs as if fully set forth herein. 

17. The ’613 Patent claims are invalid and/or patent ineligible for failing to meet one 

or more of the requisite statutory and decisional requirements and/or conditions for patentability 

and/or patent eligibility under Title 35 of the United States Code, including, without limitation, 

§§ 101, 102, 103, and/or 112. 

18. To resolve the legal and factual questions raised by Counterclaim-Defendant and 

to afford relief from the uncertainty and controversy that Counterclaim-Defendant’s allegations 

have created, T-Mobile Counterclaimant is entitled to a declaratory judgment that the ’613 Patent 

is invalid and/or patent ineligible. 

PRAYER FOR RELIEF

 WHEREFORE, T-Mobile Counterclaimant respectfully requests that this Court: 

 A. Enter judgment against Counterclaim-Defendant and dismiss the claims filed by 

Counterclaim-Defendant against T-Mobile Counterclaimant with prejudice; 

 B. Determine and declare that the claims of the asserted patents are not infringed by 

T-Mobile Counterclaimant; 

 C. Determine and declare that the claims of the asserted patents are invalid and/or 

patent ineligible; 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 19 of 22 PageID #: 334
20 

 D. Award T-Mobile Counterclaimant its costs, disbursements, and reasonable 

attorneys’ fees incurred in this action; and, 

 E. Grant such other and further relief as the Court may deem just and proper. 

JURY DEMAND 

 T-Mobile Counterclaimant hereby demands a trial by jury in this action on all issues so 

triable. 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 20 of 22 PageID #: 335
21 

Dated: November 2, 2023 

/s/ Katherine Q. Dominguez 

Katherine Q. Dominguez (Lead Attorney) 

kdominguez@gibsondunn.com 

Josh A. Krevitt 

jkrevitt@gibsondunn.com 

Brian Rosenthal 

brosenthal@gibsondunn.com 

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue 

New York, New York 10166-0193 

Telephone: (212) 351-4000 

Facsimile: (212) 351-4015 

Robert Vincent 

rvincent@gibsondunn.com 

GIBSON, DUNN & CRUTCHER LLP 

2001 Ross Avenue, Suite 2100 

Dallas, Texas 75201-2923 

Telephone: (214) 698-3100 

Facsimile: (214) 571-2900 

Andrew Robb 

arobb@gibsondunn.com 

GIBSON, DUNN & CRUTCHER LLP 

310 University Avenue 

Palo Alto, CA 94301 

Telephone: (650) 849-5300 

Melissa R. Smith 

melissa@gillamsmithlaw.com 

GILLIAM & SMITH, LLP 

303 South Washington Avenue 

Marshall, TX 75670 

Telephone: 903-934-8450 

Facsimile: 903-934-9257 

Attorneys for Defendants and T-Mobile 

Counterclaimant 

 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 21 of 22 PageID #: 336
22 

CERTIFICATE OF SERVICE 

 I hereby certify that on November 2, 2023, I caused the foregoing to be electronically 

filed with the Clerk of the Court using CM/ECF, which will send notification of such filing to all 

registered participants. 

 I further certify that I caused copies of the foregoing document to be served on November 

2, 2023 upon the following in the manner indicated: 

Marc Fenster VIA ELECTRONIC MAIL

Reza Mirzaie 

Brian Ledahl 

Ben Wang 

Dale Chang 

Paul Kroeger 

Neil A. Rubin 

Kristopher Davis 

James S. Tsuei 

Philip Wang 

Amy Hayden 

Jason M. Wietholter 

RUSS AUGUST & KABAT 

12424 Wilshire Blvd. 12th Floor 

Los Angeles, CA 90025 

Telephone: 310-826-7474 

Attorneys for Plaintiff and Counterclaim-Defendant

 /s/ Katherine Q. Dominguez

 Katherine Q. Dominguez 

Case 2:23-cv-00377-JRG-RSP Document 31 Filed 11/02/23 Page 22 of 22 PageID #: 337