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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`TOUCHSTREAM TECHNOLOGIES,
`INC.
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`Plaintiff,
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`v.
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`GOOGLE LLC
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`Defendant.
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`Civil Action No. 6:21-cv-569-ADA
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`JURY TRIAL DEMANDED
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`TOUCHSTREAM’S AMENDED PRELIMINARY DISCLOSURE OF
`ASSERTED CLAIMS, INFRINGEMENT CONTENTIONS, AND PRIORITY DATES
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`Pursuant to this Court’s Order Governing Proceedings in Patent Cases, Plaintiff
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`Touchstream Technologies, Inc. (“Touchstream) hereby submits its Amended Preliminary
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`Disclosure of Asserted Claims, Infringement Contentions, and Priority Dates relating to U.S.
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`Patent Nos. 8,356,251 (the “’251 patent”), 8,782,528 (the “’528 patent”), and 8,904,289 (the “’289
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`patent”). Touchstream alleges infringement of these patents by Defendant Google LLC
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`(“Google”).
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`I.
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`PRELIMINARY STATEMENT
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`Both the Scheduling Order in this case (Dkt. No. 21) and Version 3.5 of the Court’s
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`Standing Order Governing Proceedings in Patent Cases (“OGP”) state that a party may amend its
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`preliminary infringement contentions without leave of court “so long as counsel certifies that it
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`undertook reasonable efforts to prepare its preliminary contentions and the amendment is based
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`on material identified after those preliminary contentions were served.” See Dkt. No. 21, at 1, n.
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`1; OGP at 8, n. 7. Counsel for Touchstream hereby certifies that it undertook reasonable efforts
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`Touchstream Tech., Inc. | Ex. 2008
`Google LLC v. Touchstream Tech., Inc., IPR2022-00793
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`to prepare its original preliminary infringement contentions, and that this amendment is based on
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`documents showing evidence of conception and/or reduction to practice of the claimed inventions
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`that came to light after Touchstream served its original contentions on August 27, 2021. Further,
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`both the Scheduling Order and the OGP indicate that a party should amend its contentions
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`“seasonably upon identifying any such material.” Touchstream has amended these contentions
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`seasonably, as it notified Google of its intent to amend shortly after confirming the existence of
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`these additional documents, and served these amended contentions a few days later.
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`This Amended Preliminary Disclosure of Asserted Claims, Infringement Contentions, and
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`Priority Dates is based on publicly available information about the accused Chromecast
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`functionalities (defined further below), as Google first provided discovery relating to these
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`functionalities only two weeks ago, and Touchstream has not yet had time to adequately review
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`and analyze this information. These contentions are further made without knowledge of, or with
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`limited knowledge of, Google’s confidential internal processes, designs, and operation (including
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`systems, hardware, and/or software). As such, the disclosures provided herein are based on
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`information reasonably available to Touchstream at the present time. Touchstream’s investigations
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`of its claims are ongoing, and fact discovery has not yet begun. Touchstream reserves the right to
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`further amend and/or supplement these disclosures periodically as additional information becomes
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`available, including additional information relating to the accused functionalities and the Court’s
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`claim construction.
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`II.
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`DISCLOSURE OF ASSERTED CLAIMS
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`Based on information presently available, Touchstream asserts that Google infringes the
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`following claims (collectively, “the Asserted Claims”):
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`
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`’251 Patent: Claims 1, 2, 5, 6, 7, 8, and 9.
`2
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`
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`
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`’528 Patent: Claims 1, 2, 3, 4, 5, 8, 11, 12, 14, 15, 27, and 28.
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`’289 Patent: Claims 1, 2, 6, 7, and 8.
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`Based on information reasonably available to Touchstream, Google infringes each of the
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`Asserted Claims at least under 35 U.S.C. § 271(a) by practicing, or by directing and controlling
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`others to practice, the accused Chromecast functionalities identified in § III below without
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`authority.
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`Because fact discovery has not yet begun, and because invalidity and Markman contentions
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`have not yet been provided, Touchstream reserves the right to change or amend these claim
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`elections and applicable statutory subsections of 35 U.S.C. § 271 based on new information
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`provided during discovery as well as other contentions disclosed by Google.
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`III. THE ACCUSED FUNCTIONALITIES
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`Touchstream accuses Google of infringement through its practice of the accused
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`Chromecast functionalities. The accused Chromecast functionalities comprise methods performed
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`through operation of at least the standalone Chromecast devices (e.g., the Chromecast 1st
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`Generation, Chromecast 2nd Generation, Chromecast 3rd Generation, Chromecast Ultra, and
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`Chromecast with Google TV), as well as devices implementing Chromecast built-in (collectively,
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`“Chromecast” or “the Chromecast products”). Claim charts for the ’251 Patent, ’528 Patent, and
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`’289 Patent accompany this Disclosure as Exhibits A, B, and C, respectively, identifying where
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`each limitation of each of the Asserted Claims is found within the accused Chromecast
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`functionalities, based on the information presently available to Touchstream and following its
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`diligent search efforts.
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`Each of the steps identified and described in Exhibits A, B, and C is either performed by
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`or otherwise attributable to Google. To the extent another actor performs any of these steps, Google
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`directs or controls that performance, conditioning participation in the activity or the receipt of a
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`benefit upon performance of the patented method steps, and establishing the manner or timing of
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`that performance. Additionally, Google profits from its infringement and has the right and ability
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`to stop or limit the infringement. For instance, Google tests and demonstrates the accused
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`functionality, including in advertisements. Further, Google advertises and demonstrates to
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`customers, and directs to Chromecast developers, that the infringing method steps will be
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`performed. Further, Google causes automatic updates to the Chromecast.
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`The evidence cited in Exhibits A‒C is exemplary only and is not exhaustive. Google’s
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`infringement through its practice of the accused Chromecast functionalities is substantially the
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`same for all Chromecast products. Therefore the identification of one Chromecast product in the
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`accompanying claim charts should not be construed to exclude any other Chromecast product(s).
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`Touchstream’s contentions apply to the Chromecast products and any other similar past, present,
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`or future products, as well as systems incorporating the Chromecast products or other products
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`with the same or substantially similar features. Touchstream reserves all rights to rely on additional
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`evidence in its possession and evidence yet to be discovered.
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`IV. NATURE OF INFRINGEMENT
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`Based on the information presently available, Touchstream believes that Google infringes
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`each element of each Asserted Claim literally through its practice of the accused Chromecast
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`functionalities. Touchstream further asserts that, for any claim limitation that Google argues is not
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`literally met, that claim limitation is at least met under the doctrine of equivalents (DOE) because
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`a person of ordinary skill in the art would find the differences between that claim limitation and
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`Google’s performance to be insubstantial. Touchstream will supplement its contentions with
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`respect to any equivalents as discovery progresses, if information is disclosed that requires
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`supplementation.
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`V.
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`PRIORITY DATES
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`The claims of all three of the Asserted Patents have a priority date at least as early as
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`October 8, 2010. Touchstream reserves the right to revisit priority as discovery progresses,
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`including in view of Google’s burden of production to come forward with allegedly invalidating
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`prior art.
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`In accordance with this Court’s Order Governing Proceedings in Patent Cases,
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`Touchstream’s has produced (1) all currently-known documents evidencing conception and
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`reduction to practice for each claimed invention, and (2) a copy of the file history for each patent
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`in suit.
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`Date: November 8, 2021
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`Respectfully submitted,
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`SHOOK, HARDY & BACON L.L.P.
`
`/s/ Fiona A. Bell
`Fiona A. Bell (TX Bar No. 24052288)
`SHOOK, HARDY & BACON L.L.P.
`600 Travis Street, Suite 3400
`Houston, TX 77002
`(713) 227-2008
`Fax: 713-227-9508
`Email: fbell@shb.com
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`B. Trent Webb, pro hac vice
`Ryan D. Dykal, pro hac vice
`Jordan T. Bergsten, pro hac vice
`Samuel J. LaRoque, pro hac vice
`Shook, Hardy & Bacon, LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`(816) 474-6550
`Fax: (816) 421-5547
`Email: jbergsten@shb.com
`Email: slaroque@shb.com
`Email: rdykal@shb.com
`Counsel for Plaintiff
`Touchstream Technologies, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via electronic mail
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`on November 8, 2021.
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`By: /s/ Fiona A. Bell
` Fiona A. Bell
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`7
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