2:23-cv-00352
E.D. Tex.Jun 5, 2025Background
- Headwater Research LLC sued Verizon (and entities) in July 2023 in the Eastern District of Texas for alleged infringement of four patents; one patent later dismissed by stipulation.
- The case concerns whether Headwater complied with 35 U.S.C. § 287—the patent marking statute—impacting the scope of recoverable damages.
- Verizon moved for partial summary judgment, arguing that Headwater's damages should be limited to post-filing due to alleged failure to mark products or provide pre-suit notice.
- The Arctic Cat framework governs the marking and notice requirements; Verizon sent an Arctic Cat letter to Headwater identifying alleged unmarked products.
- Headwater argues it provided constructive notice via virtual marking and that any marking deficiencies were resolved before the relevant damages period started.
- The court issued a report recommending granting summary judgment only as to lack of actual pre-suit notice, denying the remainder for fact disputes and inadequate defense showing regarding marking.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Actual Pre-suit Notice | Verizon had knowledge of patents; thus, notice is sufficient | Only affirmative, specific notice of infringement counts, not mere patent knowledge | No actual notice given; summary judgment for Verizon on pre-suit damages |
| Constructive Notice - '613 Patent | ItsOn products did not practice the '613 Patent; expert support provided | Plaintiff failed to show marking or that products didn’t practice the patent | Fact dispute remains; summary judgment denied |
| Constructive Notice - '541 and '042 Patents | Virtual marking was adequate and any issues were corrected before damages period | Virtual marking insufficient (non-specific); some products unmarked, details lacking | Genuine factual disputes; summary judgment denied |
| Reasonable Efforts Under Maxwell | Took reasonable steps/signed agreements for marking by third parties | Plaintiff didn’t ensure full compliance/physical marking possible | Fact dispute on reasonable efforts exists; summary judgment denied |
Key Cases Cited
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (summary judgment standard on genuine issue of material fact)
- Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (actual notice requires affirmative act, not just awareness)
- Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350 (constructive notice under § 287 and defendant’s burden to identify unmarked products)
- Maxwell v. J. Baker, Inc., 86 F.3d 1098 (reasonable efforts standard when marking by third parties is at issue)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden-shifting)