IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`TOUCHSTREAM TECHNOLOGIES,
`INC.
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC
`
`Defendant.
`
`Civil Action No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`TOUCHSTREAM’S PRELIMINARY DISCLOSURE OF
`ASSERTED CLAIMS, INFRINGEMENT CONTENTIONS, AND PRIORITY DATES
`
`Pursuant to this Court’s June 24, 2021 Order Governing Proceedings in Patent Cases,
`
`Plaintiff Touchstream Technologies, Inc. (“Touchstream”) hereby submits its Disclosure of
`
`Asserted Claims, Infringement Contentions, and Priority Dates relating to U.S. Patent Nos.
`
`8,356,251 (the “’251 patent”), 8,782,528 (the “’528 patent”), and 8,904,289 (the “’289 patent”).
`
`Touchstream alleges infringement of these patents by Defendant Google LLC (“Google”).
`
`I.
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`PRELIMINARY STATEMENT
`
`This Preliminary Disclosure of Asserted Claims, Infringement Contentions, and Priority
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`Dates is based on publicly available information, as Google has yet to provide any discovery
`
`relating to the accused instrumentalities. These contentions are further made without knowledge
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`of, or with limited knowledge of, Google’s confidential internal processes, designs, and operation
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`(including systems, hardware, and/or software). As such, the disclosures provided herein are based
`
`on information reasonably available to Touchstream at the present time. Touchstream’s
`
`investigations of its claims are ongoing, and fact discovery has not yet begun. Touchstream
`
`reserves the right to amend and/or supplement these disclosures periodically as additional
`
`Touchstream Tech., Inc. | Ex. 2005
`Google LLC v. Touchstream Tech., Inc., IPR2022-00795
`
`

`

`information becomes available, including additional information relating to the accused
`
`functionalities and the Court’s claim construction.
`
`II.
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`DISCLOSURE OF ASSERTED CLAIMS
`
`Based on information presently available, Touchstream asserts that Google infringes the
`
`following claims (collectively, “the Asserted Claims”):
`
`
`
`
`
`
`
`’251 Patent: Claims 1, 2, 5, 6, 7, 8, and 9.
`
`’528 Patent: Claims 1, 2, 3, 4, 5, 8, 11, 12, 14, 15, 27, and 28.
`
`’289 Patent: Claims 1, 2, 6, 7, and 8.
`
`Based on information reasonably available to Touchstream, Google infringes each of the
`
`Asserted Claims at least under 35 U.S.C. § 271(a) by practicing, or by directing and controlling
`
`others’ practice of, the accused Chromecast functionalities identified below, in Section III, without
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`authority.
`
`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.
`
`III.
`
`THE ACCUSED CHROMECAST FUNCTIONALITIES
`
`Touchstream accuses Google of infringement through its practice of the accused
`
`Chromecast functionalities. The accused Chromecast functionalities comprise methods performed
`
`through operation of at least the standalone Chromecast devices (e.g., the Chromecast 1st
`
`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,
`
`“Chromecast” or “the Chromecast products”). Claim charts for the ’251 Patent, ’528 Patent, and
`
`’289 Patent accompany this Disclosure as Exhibits A, B, and C, respectively, identifying where
`2
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`

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`each limitation of each of the Asserted Claims is found within the accused Chromecast
`
`functionalities, based on the information presently available to Touchstream and following its
`
`diligent search efforts.
`
`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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`Chromecast functionalities, including in advertisements. Further, Google advertises and
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`demonstrates to customers that the infringing method steps will be performed, and further directs
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`Chromecast developers to perform the infringing method steps. Further, Google causes automatic
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`updates to its Chromecast products.
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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,
`
`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.
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`NATURE OF INFRINGEMENT
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`Based on the information presently available, Touchstream believes that Google infringes
`
`each element of each Asserted Claim literally through its practice of the accused Chromecast
`3
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`

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`functionalities. Touchstream further asserts that, for any claim limitation that Google argues is not
`
`literally met, that claim limitation is at least met under the doctrine of equivalents (DOE) because
`
`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.
`
`V.
`
`PRIORITY DATES
`
`The claims of all three of the Asserted Patents have a priority date at least as early as, and
`
`no later than, April 21, 2011, as all three of the Asserted Patents claim priority to Provisional U.S.
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`Patent Application No. 61/477,998, whose disclosure fully supports the Asserted Claims.
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`Touchstream reserves the right to revisit priority as discovery progresses, including in view of
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`Google’s burden of production to come forward with allegedly invalidating prior art.
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`In accordance with this Court’s Order Governing Proceedings in Patent Cases,
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`Touchstream’s production of (1) all documents evidencing conception and reduction to practice
`
`for each claimed invention,1 and (2) a copy of the file history for each patent in suit, accompanies
`
`these disclosures.
`
`1 Although Touchstream is producing all documents evidencing conception and reduction to
`practice of which it is aware along with its Preliminary Infringement Contentions, Touchstream
`has encountered unexpected technical difficulties in loading and reviewing one set of documents
`due to encryption issues. Touchstream is working diligently to resolve this issue and will produce
`any additional responsive documents from this set as soon as reasonably practicable.
`4
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`

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`Date: August 27, 2021
`
`Respectfully submitted,
`
`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
`
`Jordan T. Bergsten, pro hac vice
`Samuel J. LaRoque, pro hac vice
`Ryan D. Dykal, 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.
`
`5
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`CERTIFICATE OF SERVICE
`
`Pursuant to the Federal Rules of Civil Procedure and Local Rules, I hereby certify that on
`
`the 27th day of August, 2021, I served the foregoing to the following counsel of record via the e-
`
`mail addresses shown below:
`
`Michael E. Jones
`mikejones@potterminton.com
`
`Evan M. McLean
`emclean@jonesday.com
`
`Michael C. Hendershot
`mhendershot@jonesday.com
`
`Tharan Gregory Lanier
`tglanier@jonesday.com
`
`By: /s/ Fiona A. Bell
`
` Fiona A. Bell
`
`6
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`