UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HEADWATER RESEARCH LLC,

Plaintiff,

v.

VERIZON COMMUNICATIONS, INC.

ET AL.,

Defendants.

Civil Action No. 2:23-cv-00352-JRG-RSP

JURY DEMANDED

JOINT MOTION FOR ENTRY OF DISPUTED ORDER REGARDING E-DISCOVERY

Pursuant to the Discovery Order (D.I. 39) setting a deadline to file a proposed Order 

Regarding E-Discovery and the Court’s extension thereto (D.I. 47), Plaintiff Headwater Research, 

LLC (“Headwater”) and Defendants Cellco Partnership, d/b/a Verizon Wireless and Verizon 

Corporate Services Group Inc. (collectively, “Verizon” or “Defendants”),

1 (collectively, the 

“Parties”) hereby submit competing forms of the Proposed Order Regarding E-Discovery. The 

parties’ proposals are attached as Exhibit A (Headwater) and Exhibit B (Verizon).

The parties agree on almost all provisions of the Order Regarding E-Discovery, but 

disagree as to the number of custodians from whom e-mail production may be requested, as set 

forth in paragraph 8 of the parties’ competing proposed orders.

Plaintiff Headwater’s Position:

Given the particular facts of this case, a total of twelve e-mail custodians per producing 

party is appropriate. Headwater appreciates that the model e-discovery order calls for eight 

custodians, but this is not a typical case. In addition to the typical custodians relating to

1 The parties have stipulated to the dismissal of Verizon Communications, Inc. (“VCI”) (Dkt. No. 

38), and therefore VCI is not included as a moving party pending a resolution for dismissal of VCI.

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infringement and damages issues, numerous other relevant custodians are listed in a whistleblower 

complaint alleging Verizon acted unethically with respect to Headwater’s patented technologies. 

As described in the Complaint here, Headwater previously gave detailed presentations to 

Verizon about how Headwater’s patented technologies and the software offered by its licensee, 

ItsOn, would benefit Verizon and its customers—soon after the earliest claimed priority dates of 

the asserted patents. E.g., D.I. 1 ¶¶ 18-22. This took place over several months while Verizon 

contemplated working with Headwater/ItsOn. Id. In 2010, Verizon entered into a development 

agreement with ItsOn, and Headwater/ItsOn continued to provide detailed information to Verizon 

about the Headwater patents and technologies. Id. ¶¶ 23-30. Verizon also invested millions of 

dollars into the equity of Headwater and ItsOn. Id. ¶ 26. Verizon eventually walked away from the 

opportunity, and Headwater/ItsOn later learned why in 2013.

In October 2013, Thomas Russell, who was Verizon’s former Director of Marketing 

involved in the project with Headwater/ItsOn, filed a whistleblower complaint against Verizon 

alleging that Verizon had retaliated against him for reporting “illegal and unethical business 

practices” by Verizon, including “unethical behavior in dealing with [ItsOn]” and 

“misappropriation of intellectual property (shared by ItsOn under an NDA) in violation of New 

Jersey and federal law.” Id. ¶ 31 (quoting D.I. 1-1). Examples of Verizon’s unethical behavior are

further described in both the Complaint here and in the whistleblower complaint attached thereto, 

including attempts to reverse engineer Headwater’s patented technologies and pass off 

Headwater’s intellectual property as its own. E.g. id. ¶¶ 32-37; D.I. 1-1 ¶¶ 8-33.

Details of Verizon’s actions and the parties’ prior dealings are highly relevant to numerous 

issues in this action, including infringement, damages, and willfulness. Both Headwater’s 

Complaint and the whistleblower complaint identify more than a dozen Verizon employees who 

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are potentially relevant e-mail custodians, based on their involvement working directly with 

Headwater/ItsOn and/or exploiting Headwater’s intellectual property in unethical ways. This 

includes the whistleblower and former Verizon Director of Marketing (Thomas Russell), product 

and technical development team members (e.g., Kyle Malady, Edward Diaz, Louis Chan, Nern 

Kashanian, Venkat Gaddam, Mike Charvala, and Jonathan Hinz), management team members 

(e.g., John Mara, Jeff Dietel), and legal team members (e.g., Steve Tugentman, Alice Brennan, 

Gregg Spath, and Tony Curtis). See D.I. 1 ¶¶ 17-37; D.I. 1-1 ¶¶ 8-33. 

Given these highly unique facts, Headwater seeks a modest adjustment to the model order’s 

presumptive limit—from eight e-mail custodians to twelve. This is plainly justified based on the 

multitude of Verizon employees identified not just by Headwater but also by Verizon’s own former 

Director of Marketing as highly relevant to Verizon’s use of Headwater’s patented technologies. 

Even setting aside the parties’ prior dealings and the whistleblower facts, this is a highly complex 

case involving four asserted patents and a wide range of accused products, including phones, 

tablets, and wearables from numerous device manufacturers (e.g., Apple, Samsung, Google, 

Motorola) that must meet Verizon’s requirements to operate on its wireless network, as well as 

telecommunications service plans provided through network elements such as telecommunications 

base stations and cell sites, edge servers, and other hardware and software underlying Verizon’s 

wireless network. 

To the extent Verizon argues that the Court should simply adopt the model order’s limit 

now and allow Headwater to come back to the Court later if needed, this argument should be 

rejected. Headwater’s complaint (D.I. 1) and the whistleblower complaint (D.I. 1-1) detail the 

parties’ prior dealings and identify numerous Verizon employees likely to have relevant e-mail 

communications. There is no need to wait until later in discovery to identify relevant custodians. 

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Accordingly, Headwater respectfully requests that the Court enter Headwater’s proposal 

(Exhibit A), permitting e-mail discovery from up to twelve custodians.

Defendants’ Position:

The model ESI order calls for eight custodians. There is no reason to depart from that 

number in this case at this stage. Even accepting Headwater’s contention that it has identified 

more potential email custodians than the eight allowed under the model order, that fact does not 

distinguish this case from any of the other equally complicated patent cases to which the model is 

intended to apply. It is true in nearly every patent case, particularly those involving large corporate 

defendants, that the potential email custodians identified by the plaintiff well exceed the eight 

contemplated by the model order. The model order appropriately balances the burden and expense 

associated with additional email custodians against the diminishing returns in terms of discovering 

non-cumulative information. That is no less true in this case than in any other.

Headwater’s attempt to justify its request by pointing to allegations in its Complaint that 

Verizon and ItsOn engaged in business discussions nearly 15 years ago pertaining to ItsOn

technology predating the asserted patents only demonstrates why Headwater’s request to depart 

from the model is unjustified. Headwater has no claim for misappropriation in this case. 

Headwater’s claims are for alleged patent infringement, and specifically by mobile device software 

developed by third party device manufacturers—not Verizon. See, e.g., Ex. C. This is an ordinary 

patent case for which the model ESI order is more than adequate. At a minimum, it is premature 

for the Court to decide, at the outset of discovery and with limited briefing, that Headwater is 

entitled to 50% more custodians than is called for by the model ESI order. 

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Dated: December 5, 2023

 /s/ Katherine Q. Dominguez

Katherine Q. Dominguez 

(NY Bar No. 4741237)

kdominguez@gibsondunn.com

Brian Rosenthal

(NY Bar No. 3961380)

brosenthal@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

200 Park Avenue

New York, NY 10166-0193

Telephone: (212) 351-4000

Facsimile: (212) 351-4035

 Andrew W. Robb (CA Bar No. 291438)

 arobb@gibsondunn.com

GIBSON, DUNN & CRUTCHER LLP

1881 Page Mill Road

Palo Alto, CA 94034

Telephone: (650) 849-5334

Facsimile: (650) 849-5034

Deron R. Dacus (TX Bar No. 00790553)

THE DACUS FIRM, P.C.

821 ESE Loop 323, Suite 430 

Tyler, Texas 75701

Telephone: (903) 705-1117

Email: ddacus@dacusfirm.com

Attorneys for Defendants 

 /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

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 

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CERTIFICATE OF SERVICE

I hereby certify that all counsel of record who are deemed to have consented to electronic 

service are being served this 5th day of December 2023, with a copy of this document via the 

Court’s CM/ECF system per Local Rule CV-5(a)(3).

/s/ Marc Fenster

Marc Fenster

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CERTIFICATE OF CONFERENCE

The undersigned certifies that counsel complied with the requirements of Eastern District 

of Texas Local Rule CV-7(h). The parties are in agreement on filing this Joint Motion.

/s/ Marc Fenster 

Marc Fenster

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