Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 1 of 27
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Case No. 6:21-cv-569-ADA
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§§
`
`
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`v.
`
`GOOGLE LLC,
`
`Plaintiff,
`
`Defendant.
`
`GOOGLE LLC’S RULE 50(b) RENEWED MOTION FOR
`JUDGMENT AS A MATTER OF LAW
`
`Page 1 of 47
`
`Comcast, Ex. 1184
`Comcast v. Touchstream
`IPR2024-00322
`
`

`

`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 2 of 27
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES ......................................................................................................... ii
`
`I.
`II.
`III.
`
`A.
`
`Touchstream Failed To Prove The Accused Products Have The Claimed
`
`TABLE OF ABBREVIATIONS .................................................................................................. iv
`TABLE OF EXHIBITS ................................................................................................................. v
`INTRODUCTION ............................................................................................................. 1
`LEGAL STANDARD ........................................................................................................ 1
`NO REASONABLE JURY COULD FIND INFRINGEMENT ....................................... 1
`“Server System” ..................................................................................................... 2
`Claimed “Server System” .......................................................................... 2
`Even Under Its Construction ...................................................................... 7
`Touchstream Failed To Prove Divided Infringement ............................................ 8
`The Accused “Media Player” Is Provided By Third Parties ...................... 9
`Parties ....................................................................................................... 11
`Certain Chromecast-Enabled Devices Are Made By Third Parties ......... 13
`For Additional Reasons, No Reasonable Jury Could Find Infringement ............ 13
`Construction ............................................................................................. 13
`“Messages” That “Identify A Location” (’289 And ’528 Patents) .......... 14
`Limitation (’251 Patent) ........................................................................... 16
`NO REASONABLE JURY COULD FIND THE CLAIMS NOT INVALID ................ 17
`Google Is Entitled To JMOL On The Priority Dispute........................................ 18
`Google Is Entitled To JMOL That The Asserted Claims Are Obvious ............... 19
`CONCLUSION ................................................................................................................ 20
`
`Properly Construed, The Accused Products Do Not Have The
`
`Touchstream Failed To Show Infringement Of “Server System”
`
`The Accused “Messages” And “Signals” Are Provided By Third
`
`Touchstream Failed To Establish That The Accused Products
`Perform The Functionality Of The “Server System” Under Its
`
`Touchstream Failed To Show Infringement Of “Receiving”
`
`Touchstream Failed To Show Infringement Of The “Storing”
`
`B.
`
`C.
`
`1.
`
`2.
`
`1.
`2.
`
`3.
`
`1.
`
`2.
`
`3.
`
`IV.
`
`V.
`
`A.
`B.
`
`-i-
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`Page 2 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 3 of 27
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page
`
`Akamai Techs., Inc. v. LimeLight Networks, Inc.,
`797 F.3d 1020 (Fed. Cir. 2015) (en banc)..................................................................................8
`
`Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP,
`616 F.3d 1249 (Fed. Cir. 2010)..............................................................................................3, 5
`
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002)................................................................................................18
`
`Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223 (Fed. Cir. 1994)..................................................................................................18
`
`CommScope Techs. LLC v. Dali Wireless Inc.,
`10 F.4th 1289 (Fed. Cir. 2021) ............................................................................................7, 16
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015)................................................................................................17
`
`EMC Corp. v. Pure Storage, Inc.,
`204 F. Supp. 3d 749 (D. Del. 2016) .........................................................................................18
`
`ESW Holdings, Inc. v. Roku, Inc.,
`No. 6-19-cv-00044-ADA, 2021 WL 1069047 (W.D. Tex. Mar. 18, 2021) ..............................9
`
`Francis v. Turrack,
`2014 WL 3687311 (W.D. Tex. June 17, 2014) .........................................................................1
`
`Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co.,
`757 F. App’x 974 (Fed. Cir. 2019) ..........................................................................................17
`
`Kridl v. McCormick,
`105 F.3d 1446 (Fed. Cir. 1997)................................................................................................19
`
`Kyocera Senco Indus. Tools Inc. v. ITC,
`22 F.4th 1369 (Fed. Cir. 2022) ..............................................................................................3, 5
`
`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015)................................................................................................12
`
`-ii-
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`Page 3 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 4 of 27
`
`TABLE OF AUTHORITIES
`(continued)
`
`
`
`Page
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................3
`
`Olaf Sööt Design, LLC v. Daktronics, Inc.,
`839 F. App’x 505 (Fed. Cir. 2021) ............................................................................................3
`
`Perfect Web Techs., Inc. v. InfoUSA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009)................................................................................................20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc)..................................................................................6
`
`Slip Track Sys., Inc. v. Metal-Lite, Inc.,
`304 F.3d 1256 (Fed. Cir. 2002)................................................................................................19
`
`Thomas v. Hughes,
`27 F.4th 995 (5th Cir. 2022) ......................................................................................................1
`
`Transocean Offshore Deepwater Drilling, Inc. v. GlobalSantaFe Corp.,
`443 F. Supp. 2d 836 (S.D. Tex. 2006) .....................................................................................18
`
`Yoon Ja Kim v. ConAgra Foods, Inc.,
`465 F.3d 1312 (Fed. Cir. 2006)..........................................................................................12, 14
`
`OTHER AUTHORITIES
`
`Fed. R. Civ. P. 50 .............................................................................................................................1
`
`
`
`-iii-
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`Page 4 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 5 of 27
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`TABLE OF ABBREVIATIONS
`
`Definition
`Touchstream Technologies, Inc.
`
`Google LLC
`U.S. Patent No. 8,356,251 (PTX-865)
`
`U.S. Patent No. 8,782,528 (PTX-885)
`U.S. Patent No. 8,904,289 (PTX-883)
`
`application programming interface
`the ʼ251 patent, the ʼ528 patent, and the ʼ289 patent
`
`claims 1 and 8 of the ʼ251 patent, claims 1 and 14 of the ʼ528
`patent, and claims 1 and 2 of the ʼ289 patent
`device configuration server
`
`YouTube Remote and Leanback with Google TV System (JTX-1;
`JTX-3; JTX-21; JTX-51; JTX-63; DTX-118A; DTX-120; DTX-
`632; Tr. 892:19-904:3 (Levai))
`U.S. Patent Application Publication No. 2010/0241699 (JTX-22)
`
`person of ordinary skill in the art
`software development kit
`
`Trial Transcript, located at:
`Dkt. 259 (Day 1, pp. 1-244);
`Dkt. 260 (Day 2, pp. 245-647);
`Dkt. 262 (Day 3, pp. 648-1028);
`Dkt. 264 (Day 4, pp. 1029-1310); and
`Dkt. 266 (Day 5, pp. 1311-1376).
`Certain portions of the Trial Transcript are and remain under seal.
`
`Abbreviation
`Touchstream
`
`Google
`ʼ251 patent
`
`ʼ528 patent
`ʼ289 patent
`
`API
`asserted patents
`
`asserted claims
`
`DCS
`
`GTS
`
`Muthukumarasamy
`
`POSA
`SDK
`
`Tr.
`
`
`
`*All emphasis added unless otherwise noted.
`
`
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`-iv-
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`Page 5 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 6 of 27
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`
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`Trial Exhibit
`
`JTX-1
`
`JTX-3
`
`JTX-21
`JTX-22
`JTX-51
`JTX-63
`JTX-218
`JTX-226
`JTX-228
`JTX-254
`JTX-255
`PTX-863
`PTX-865
`PTX-885
`
`DTX-118A
`
`DTX-120
`DTX-632
`
`DTX-637
`
`
`
`
`
`Motion Exhibit
`Exhibit A
`Exhibit B
`Exhibit C
`
`TABLE OF EXHIBITS
`
`Description
`Control YouTube on the Desktop, or the TV … with the YouTube
`Remote App for Your Phone, YouTube Official Blog (Nov. 9,
`2010)
`How to Control Google TV or YouTube Leanback with YouTube
`Remote, YouTube (Nov. 14, 2010)
`U.S. Patent No. 9,490,998
`Muthukumarasamy prior-art reference
`Features, Google TV (Oct. 5, 2010)
`YouTube Remote API Server Documentation
`Purported source code for Mr. Strober’s prototype
`Purported source code for Mr. Strober’s prototype
`Purported source code for Mr. Strober’s prototype
`Purported source code for Mr. Strober’s prototype
`Purported source code for Mr. Strober’s prototype
`’289 patent
`’251 patent
`’528 patent
`How to Control Google TV or YouTube Leanback with YouTube
`Remote, YouTube (Nov. 14, 2010) (video file)
`Declaration of Janos Levai
`GTS Source Code Printouts
`Mr. Strober’s purported draft summary of the claimed invention for
`the asserted patents
`
`Description
`The asserted claims of the asserted patents
`Excerpt of the prosecution history of the ’251 patent
`Excerpt of Dr. Almeroth’s infringement demonstratives
`
`-v-
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`Page 6 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 7 of 27
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`INTRODUCTION
`
`I.
`
`Google renews its motion for judgment as a matter of law (“JMOL”) under Federal Rule
`
`of Civil Procedure 50(b) on all liability issues. As shown in Google’s Rule 59 motion for a new
`
`trial, instead of proving infringement, Touchstream biased the jury in its favor by focusing on its
`
`unmeritorious willfulness case, without carrying its burden on alleged infringement. Indeed,
`
`Touchstream’s infringement case suffered from a fundamental flaw: Touchstream pursued a
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`theory that requires multiple distinct components to constitute the “server system,” and similarly
`
`required actions and components of third parties to meet the claims. Yet the claims do not
`
`contemplate Touchstream’s mishmash “server system” theory, and Touchstream did not even
`
`attempt to show Google directed or controlled the third parties. No reasonable jury could find
`
`infringement. Nor could a reasonable jury reject Google’s obviousness defenses. Touchstream’s
`
`attempt to predate Google’s primary art, GTS, lacked evidentiary support. And on the merits, a
`
`(moving) picture is worth a thousand words: Google clearly and convincingly showed
`
`obviousness—including via video evidence of GTS in use years ago.
`
`Judgment of non-infringement and invalidity should be granted.
`
`II.
`
`LEGAL STANDARD
`
`Courts grant JMOL where “a reasonable jury would not have a legally sufficient
`
`evidentiary basis to find” for the non-movant, Francis v. Turrack, 2014 WL 3687311, at *3 (W.D.
`
`Tex. June 17, 2014), i.e., the record “point[s] so strongly in favor of the movant that a rational jury
`
`could not reach a contrary verdict,” Thomas v. Hughes, 27 F.4th 995, 1008 (5th Cir. 2022).
`
`III. NO REASONABLE JURY COULD FIND INFRINGEMENT
`
`Touchstream’s infringement case rested on a fundamental error that applies to all asserted
`
`claims: Touchstream conflated the distinct components and actors set forth in the claims. Notably,
`
`Touchstream narrowed its case to literal infringement; it dropped its doctrine-of-equivalents theory
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`
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`Page 7 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 8 of 27
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`at trial. Tr. 701:21-24. But for at least two independent though related reasons, Touchstream, as
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`a matter of law, failed to show infringement.
`
`First, Touchstream attempted to show infringement of the claimed “server system”
`
`limitation by pointing to functionality on the same accused device that, Touchstream argued, also
`
`constituted the claimed “content presentation device.”1 Touchstream pursued this theory with
`
`abandon because it was freed from the guardrails of an express construction of “server system.”
`
`Under a proper construction, the “server system” cannot be the same as or overlap with the
`
`“content presentation device.” And, under that construction, there can be no dispute that the
`
`accused products do not infringe because the accused “server system” overlaps with the accused
`
`“content presentation device.”
`
`Second, Touchstream failed to show that Google is responsible for the components and
`
`actions of third parties, including components that Touchstream included as part of the accused
`
`“server system.” Touchstream had to show that Google directed or controlled those third parties.
`
`But Touchstream failed to present any evidence on this issue.
`
`Finally, even setting aside both of those fatal flaws, Touchstream failed to carry its burden
`
`for a third reason: it failed to show infringement of other specific limitations.
`
`A.
`
`Touchstream Failed To Prove The Accused Products Have The Claimed
`“Server System”
`Properly Construed, The Accused Products Do Not Have The Claimed
`1.
`“Server System”
`
`All the asserted claims require a “server system.” The Court declined to construe that term,
`
`instead determining “to go with plain and ordinary meaning.” Dkt. 225 at 50:17-19. But as the
`
`
`1 The ’251 patent claims a “display device,” and the ’528 and ’289 patents claim an analogous
`“content presentation device.” This brief uses the terms synonymously, and primarily uses
`“content presentation device.” For completeness, Exhibit A sets forth each asserted claim in full.
`
`-2-
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`Page 8 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 9 of 27
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`trial record shows, without a construed limit on the meaning of “server system,” Touchstream
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`engaged in an untenable trial presentation, pursuing its theory that the plain meaning permits the
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`“server system” to overlap with the “content presentation device”—even though those are
`
`separately claimed components. Accordingly, this is a case in which post-trial claim construction
`
`is required. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed.
`
`Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and
`
`ordinary meaning’ may be inadequate … when reliance on a term’s ‘ordinary’ meaning does not
`
`resolve the parties’ dispute.”); Olaf Sööt Design, LLC v. Daktronics, Inc., 839 F. App’x 505, 509
`
`(Fed. Cir. 2021) (granting JMOL of non-infringement based on a new claim construction because
`
`the lack of a claim construction at trial “resulted in a claim construction dispute being ‘improperly
`
`submitted to the jury’”). When properly construed in the context of the asserted patents, the
`
`claimed “server system” must be “distinct from and does not include the ‘display device’ or
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`‘content presentation device.’” Dkt. 130 at 16.
`
`As Google explained in its summary judgment papers, all of the intrinsic evidence compels
`
`this construction. Dkt. 130 at 12-20; Dkt. 184 at 1-10. For instance, the claims themselves recite
`
`that the server system “identif[ies]” programming code that “is for controlling presentation of the
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`content by the content presentation device[.]” ’289 Patent, claim 1. This plain reference to the
`
`content presentation device in relation to, and separate from, the server system makes clear the
`
`server system and content presentation device are distinct. Where, as here, a claim lists
`
`components separately, “[t]here is, therefore, a presumption that those components are distinct.”
`
`Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369, 1382 (Fed. Cir. 2022); accord Becton,
`
`Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254-55 (Fed. Cir. 2010) (citing
`
`additional authorities).
`
`-3-
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 10 of 27
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`The specification, which is shared by all three asserted patents, not only fails to overcome
`
`the presumption, but instead reinforces that these components are separate. As the “Summary”
`
`states, the patents are directed to “a server system…, a display device…, and a personal computing
`
`device…”—components that are separately listed. E.g., ’289 Patent, 1:45-48. Likewise, “[t]he
`
`server system stores an association between the personal computing device and the display device”
`
`and, “in response to receiving the first message from the personal computing device,” “provide[s]”
`
`a second message “to the display device”—again reinforcing that these components are distinct.
`
`E.g., ’289 Patent, 1:49-60; id. at 2:6-8 (“The server system is operable to provide to the display
`
`device….”); see also Dkt. 130 at 9-11, 17-20. Consistent with these disclosures, Figure 1 depicts
`
`the server system as distinct from the “television set 22” and describes that display device as
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`“operable to link back to a server system 24,” and Figure 2 depicts the functionality performed by
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`the three separately claimed components—the “Smart Phone,” “Display Device,” and “Back-end
`
`Servers” (i.e., “server system 24”). E.g., ’289 Patent, Figs. 1 & 2, 2:66-4:37 (describing Figures
`
`1 and 2). The specification nowhere contemplates that the “server system” and “display device”
`
`can be the same component or overlap in any way. Dkt. 130 at 17-20; Dkt. 184 at 5-7.
`
`Further, permitting these components to overlap would divorce the claims from their
`
`disclosed purpose. As Google’s expert Dr. Ketan Mayer-Patel explained, the written description
`
`identifies “two primary roles” for the “server system.” Tr. 930:24-931:1. The first “is to act as …
`
`an agent to connect between the phone and the content display device via a synchronization code.”
`
`Tr. 931:2-4. This is because “the patent is addressing” the scenario in which “the phone and the
`
`content presentation device either can’t talk directly to each other or don’t want to talk directly to
`
`each other,” so the server system is “the thing that is managing that connection and making that
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`connection possible.” Tr. 931:10-18. The second role “is to step into th[e] communication gap
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`-4-
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`Page 10 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 11 of 27
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`where the phone does not know how to issue commands that the media player on the content
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`presentation device understands.” Tr. 932:11-933:11. If the “server system” could overlap with
`
`the “content presentation device,” the “server system” would not need to perform these roles.
`
`The prosecution history confirms the server system’s separateness. In responding to an
`
`office action, Touchstream made clear that, as used in the claims, “the server system acts [as] an
`
`interface for facilitating the transfer of information contained in the one or more signals (received
`
`from the personal computing device) to the display device.” Ex. B at TS-00003404; see also Dkt.
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`130-3 at 62-63. If the “server system” could overlap with the “display device,” there would be no
`
`need for the “server system” to act as an “interface.”
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`In opposing Google’s construction, Touchstream leaned on the claims’ recitation that the
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`“personal computing device” is “separate from” both the “server system” and the “content
`
`presentation device,” without reciting the relationship between the “server system” and “content
`
`presentation device” in the same way. Dkt. 158 at 7-9. But “separate from” is not the only way
`
`to claim distinct components, as Kyocera and abundant other precedent make clear. See Kyocera,
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`22 F.4th at 1382 (construing elements as separate even though the claims and specification did not
`
`expressly describe them as separate); Becton Dickinson, 616 F.3d at 1254-55. And Touchstream
`
`ignores the claims’ syntax, which, in first introducing the “server system,” recites the “server
`
`system” as a distinct and separate component—separate from both the “personal computing
`
`device” and the “content presentation device.”2
`
`The trial record reinforces that Touchstream’s proffered meaning of “server system” does
`
`not comport with the intrinsic evidence of the asserted patents. For his view of how an ordinary
`
`
`2 Touchstream’s understanding of “server system” also renders the claims indefinite—an
`additional issue that Google preserves for appeal, if needed. See Dkt. 130 at 20-23.
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`-5-
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 12 of 27
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`artisan would understand “server system,” Touchstream’s expert Dr. Kevin Almeroth pointed to
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`extrinsic evidence: “a technical dictionary from the Microsoft Press” and its “two different similar
`
`definitions” of “server,” with one defining “server” as a computer “[o]n the Internet or other
`
`network” “that responds to commands from a client,” and the other defining “server” as “a
`
`computer running administrative software that controls access to the network and its resources …
`
`and provides resources to computers functioning as workstations on the network.” Tr.
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`431:16-432:13; Ex. C at 55 (Almeroth demonstratives). By citing only extrinsic evidence—and
`
`only for the naked word “server” taken out of context from the claims and other intrinsic
`
`evidence—Dr. Almeroth’s view violates basic tenets of claim construction: “[W]hile extrinsic
`
`evidence can shed useful light on the relevant art, [the Federal Circuit has] explained that it is less
`
`significant than the intrinsic record in determining the legally operative meaning of claim
`
`language.” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (internal
`
`quotation marks omitted). Moreover, Dr. Almeroth’s testimony “suffer[s] from bias that is not
`
`present in intrinsic evidence” because it was “generated at the time of and for the purpose of
`
`litigation.” Id. at 1318.
`
`Furthermore, under the proper construction, Touchstream cannot prove infringement. In
`
`the accused products, it is undisputed that the accused “media player” is a software application
`
`that runs on the accused “content presentation device.” Tr. 425:9-426:1, 476:6-478:6 (Almeroth);
`
`Tr. 955:7-956:20 (Mayer-Patel). Yet, for its alleged infringement read, Touchstream cobbled
`
`together the accused “server system” from parts of the accused “media player”—such as the
`
`“receiver SDK”—and parts of the accused “content presentation device.” E.g., Tr. 430:5-433:4,
`
`439:4-440:7, 464:1-5. This theory is nonsensical under a proper construction of “server system”
`
`because the functionality of the accused “server system” cannot come from the accused “content
`
`-6-
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`Page 12 of 47
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 13 of 27
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`presentation device” if the two are distinct. No reasonable jury could accept that the accused
`
`products have the “server system” as claimed. The Court should grant JMOL of non-infringement.
`
`2.
`
`Touchstream Failed To Show Infringement Of “Server System” Even
`Under Its Construction
`
`Even applying its flawed view that the claimed “server system” “responds to commands
`
`from a client” or “run[s] administrative software that controls access to the network and its
`
`resources,” Touchstream failed to prove the accused products infringe. There was no evidence
`
`that the accused “server system” interacts with “a client” or runs software “that controls access to”
`
`a network. In fact, although Dr. Almeroth invoked those definitions, he never explained how the
`
`numerous components he alleged made up the accused “server system” meet them. Instead,
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`unrebutted evidence showed that the accused products utilize a peer-to-peer approach, which
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`definitionally is the opposite of Touchstream’s construction because there is no “server-client
`
`relationship” and no software “control[ling] access”; rather, “the different component[s] on the
`
`network are equal and they are talking to each other directly.” Tr. 725:2-7 (Bakar). Indeed, the
`
`evidence established that Google “deliberately design[ed]” Chromecast for the second screen,
`
`typically a phone, “to talk directly to the display device over the local network” via “peer-to-peer
`
`communication.” Tr. 723:15-726:7 (Bakar); see also Tr. 842:1-847:8 (Van Der Staay) (the peer-
`
`to-peer approach was intentionally selected); 928:18-930:2 (Mayer-Patel) (Google’s products use
`
`a peer-to-peer relationship because “communication happens directly with no intermediary service
`
`system … performing the steps as claimed in the patents”); 940:5-942:18 (Mayer-Patel) (there is
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`no external server between the cast device and phone because of Google’s peer-to-peer
`
`architecture). JMOL is appropriate when there is a lack of evidence showing infringement and
`
`“unrebutted evidence showing the opposite.” CommScope Techs. LLC v. Dali Wireless Inc.,
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`10 F.4th 1289, 1297-98 (Fed. Cir. 2021).
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`-7-
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`Case 6:21-cv-00569-ADA Document 275 Filed 09/20/23 Page 14 of 27
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`Touchstream instead engaged in handwaving, pointing to components that are labeled
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`“server” and interact with the casting device in some respect—e.g., the “mDNS server,” “MDx
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`server,” “Orbit server,” or “DIAL server”—in an attempt to overcome the accused devices’ non-
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`infringing peer-to-peer architecture. Tr. 430:5-24 (Almeroth) (referencing the accused products’
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`servers, some of which are “on Google servers in the cloud” and others which are “on the device”);
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`432:14-20 (Almeroth) (same). The unrebutted evidence established that these “servers” were red
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`herrings and did not have anything to do with the functionality of the claimed “server system.” Tr.
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`866:1-18 (Van Der Staay) (mDNS server is “used by tons of different companies,” performs the
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`“prerequisite step” of “find[ing] a cast device,” and has no “role in the communications between
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`the phone and the Chromecast during the casting process”); Tr. 870:12-23 (Van Der Staay)
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`(DIAL/MDx relates to “second screen experiences on noncast-enabled devices” for YouTube and
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`“is actually not related to Google Cast at all”); JTX-116 (“MDx” now called “Orbit”).
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`Touchstream’s efforts to obfuscate cannot sustain the verdict.
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`B.
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`Touchstream Failed To Prove Divided Infringement
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`Touchstream also relied on a mash-up of distinct components to sidestep its burden on
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`divided infringement—an independent failure of its infringement case. “Where more than one
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`actor is involved in practicing” a claimed method, the patent owner must prove that “the acts of
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`one are attributable to the other such that a single entity is responsible for the infringement.”
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`Akamai Techs., Inc. v. LimeLight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc).
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`As relevant here, an entity can be held responsible for others’ performance of method steps where
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`“that entity directs or controls others’ performance.”3 Id. No reasonable jury could have found
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`3 Only a direction or control theory, and not Akamai’s alternate divided-infringement theory of a
`“joint enterprise,” is at issue in this case; the jury was instructed only on direction or control (Tr.
`1286:1-1287:7), and Touchstream did not object to that instruction or its scope.
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`-8-
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`that Touchstream made this showing. In fact, the only mention of “direct” or “control” in the
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`relevant context was when the Court instructed the jury on divided infringement. Tr. 1286:1-
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`1287:7. Touchstream never argued or even referred to these concepts. Where the patentee fails
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`to even present evidence of direction or control, there can be no infringement. See ESW Holdings,
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`Inc. v. Roku, Inc., No. 6-19-cv-00044-ADA, 2021 WL 1069047, at *2-5 (W.D. Tex. Mar. 18, 2021)
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`(granting summary judgment of non-infringement given lack of showing of direction and control).
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`Touchstream cannot dispute its lack of proof of divided infringement. Nor can it claim that
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`its infringement theory did not invoke the law on divided infringement. As the claims and
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`specification make clear, and as Touchstream itself pursued at trial, the alleged infringement
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`requires actions and components provided by third parties. Because Touchstream failed to present
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`any evidence that Google directed or controlled those parties, JMOL of non-infringement is
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`warranted for this additional, independent reason.
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`The Accused “Media Player” Is Provided By Third Parties
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`1.
`Each of the claimed methods requires a “media player.” For example, the claimed “server
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`system” must “identify[]” “programming code … for controlling presentation of the content by the
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`content presentation device,” and “the content presentation device” must “use[] [a] particular
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`media player to execute the programming code.” ’289 Patent, claim 1; ’528 Patent (same); ’251
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`Patent (same but requiring “converting” rather than “identifying”). The specification expressly
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`contemplates that parties other than those providing the “server system” will provide the “media
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`player,” e.g., media players from “YouTube,” “Ted.com,” and “Vimeo.” ’289 Patent, 6:7-18, Fig.
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`5. The specification also explains that “companies that provide on-line video platforms that host
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`videos for other individuals or companies can obtain useful advantages by integrating the platforms
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`with the server system,” and that “[p]rogramming hooks can be created in the API so that the on-
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`line video platform’s media player can communicate with the server system.” Id. at 9:11-33.
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`-9-
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`The only record evidence regarding the accused “media players” was that they are provided
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`by third parties. This is true even under Touchstream’s theory that the claimed “server system”
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`included Google’s “receiver SDK,” which is a “software development kit” that third parties can
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`customize for their media players. Dr. Almeroth highlighted the receiver SDK as a key to his
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`infringement opinion, explaining that it “acts as the bridge or the glue to the cast browser,” Tr.
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`430:15-18, “enables the communication between the cast service and the phone,” Tr. 454:2-10,
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`and performs the ’289 and ’589 patents’ “identifying” step concerning the “action control
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`command” and the ’251 patent’s equivalent “converting” step for the “universal playback control
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`command,” Tr. 453:6-23, 455:15-456:20. But Dr. Almeroth ignored the undisputed evidence that
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`this “glue” is customized by third parties in creating their media players.
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`Although Google hosts the receiver SDK on its website for downloading, it is undisputed
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`that third-party content providers building their apps and media players to interface with
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`Chromecast-enabled devices “could use all of [the receiver SDK], they could use some of it, [or]
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`they could use none of it if they wanted to.” Tr. 849:23-25, 848:20-850:20 (Van Der Staay); Tr.
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`955:7-956:20 (Mayer-Patel). Third parties “can do whatever they want,” “they [can] decide to do
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`all their own experience, build their own things,” and “[i]f they want to go down to the low level
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`and handle everything themselves, they can.” Tr. 850:11-20 (Van Der Staay). Google engineer
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`Mr. Van Der Staay further emphasized that “some of [Chromecast’s] biggest apps,” such as
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`“Netflix” “don’t use all of the receiver SDK”; “Facebook” may use “a tiny bit” or not “any of the
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`receiver SDK” at all. Tr. 850:1-10. Even when Touchstream pressed Mr. Van Der Stay regarding
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`the receiver SDK, he reiterated that “how much is used or if it’s used is optional.” Tr. 887:13-17.
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`In fact, Touchstream’s expert Dr. Almeroth confirmed this. He agreed there are “third
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`parties involved in this cast ecosystem,” such as “Netflix and Spotify,” and that those parties
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`-10-
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`“provide … the media player.” Tr. 501:22-502:8. He also agreed that when a