Headwater Research LLC v. Verizon Communications Inc.
2:23-cv-00352
| E.D. Tex. | Jun 20, 2025Background
- Headwater Research LLC sued Verizon Communications Inc. and related entities for infringing four patents; one patent was subsequently dismissed.
- Plaintiff filed for summary judgment seeking to dispose of several of Verizon's affirmative defenses: failure to state a claim, license, exhaustion, waiver, estoppel, laches, and acquiescence.
- Defendants pleaded failure to state a claim, acquiescence, equitable estoppel, license, exhaustion, laches, waiver, and prosecution history estoppel; some defenses were later dropped.
- The motion for summary judgment was evaluated under the standard that no genuine dispute of material fact exists and that the movant is entitled to judgment as a matter of law.
- At issue were whether certain defenses remained viable post-litigation developments and U.S. Supreme Court precedent, along with whether sufficient evidence existed such that some defenses required a jury's consideration.
- The court recommended granting summary judgment only as to laches, denying it as to the other affirmative defenses, and found some defenses withdrawn or moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Failure to State a Claim | Not a true affirmative defense; moot after previous rulings | Common to plead; not pursuing further; already ruled upon | Denied as moot |
| Acquiescence/Estoppel/License | No evidence supports defense; relied on CEO's later knowledge | Equitable estoppel applies per conduct and statements; relied on representations | Denied (jury question) |
| Exhaustion | No argument (defense abandoned) | Not pursuing the defense | Denied as moot |
| Laches | Not a valid defense post-SCA Hygiene | Still valid for equitable relief claims | Granted (defense barred) |
| Waiver | No evidence Plaintiff relinquished rights | Conduct/inaction shows relinquishment | Denied (jury question) |
| Prosecution History Estoppel | Not addressed (defense abandoned) | Not pursuing the defense | Denied as moot |
Key Cases Cited
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (standard for summary judgment)
- Celotex Corp. v. Catrett, 477 U.S. 317 (burden of proof for summary judgment)
- SCA Hygiene Products v. First Quality Baby Products, 137 S. Ct. 954 (laches not a defense in patent infringement cases)
- High Point SARL v. Sprint Nextel Corp., 817 F.3d 1325 (elements of equitable estoppel in patent cases)
- Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (economic prejudice for estoppel)