Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 1 of 18
`
`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 REPLY IN SUPPORT OF ITS
`RULE 50(b) RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW
`
`Comcast, Ex. 1186
`Comcast v. Touchstream
`IPR2024-00322
`
`

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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 2 of 18
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`
`TABLE OF CONTENTS
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`Page
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`TABLE OF AUTHORITIES ......................................................................................................... ii
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`Touchstream Failed To Prove The Accused Devices Have The Claimed
`
`I.
`
`A.
`
`B.
`C.
`
`TABLE OF ABBREVIATIONS .................................................................................................. iv
`TABLE OF EXHIBITS ................................................................................................................. v
`NO REASONABLE JURY COULD HAVE FOUND INFRINGEMENT ....................... 1
`“Server System” As Properly Construed ............................................................... 1
`Touchstream Failed To Show Infringement Even Under Its Construction ........... 3
`Touchstream Failed To Prove Divided Infringement ............................................ 6
`Third Parties Provide The Accused “Media Player” ................................. 6
`Third Parties Provide The Accused “Messages” And “Signals” ............... 7
`Third Parties Make Certain Chromecast-Enabled Devices ....................... 7
`No Reasonable Jury Could Have Found Infringement For Other Reasons ........... 8
`INVALID ........................................................................................................................... 9
`Google Is Entitled To JMOL On The Priority Dispute.......................................... 9
`Google Is Entitled To JMOL That The Asserted Claims Are Obvious ............... 10
`CONCLUSION ................................................................................................................ 10
`
`1.
`2.
`3.
`
`D.
`NO REASONABLE JURY COULD HAVE FOUND THE CLAIMS NOT
`
`II.
`
`A.
`B.
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`III.
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`-i-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 3 of 18
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`Broadcom Corp. v. Qualcomm Inc.,
`543 F.3d 683 (Fed. Cir. 2008)....................................................................................................2
`
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002)................................................................................................10
`
`CytoLogix Corp. v. Ventana Med. Sys., Inc.,
`424 F.3d 1168 (Fed. Cir. 2005)..................................................................................................3
`
`Engel Indus., Inc. v. Lockformer Co.,
`96 F.3d 1398 (Fed. Cir. 1996)....................................................................................................3
`
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014)..................................................................................................7
`
`Grace Instrument Indus., LLC v. Chandler Instruments Co.,
`57 F.4th 1001 (Fed. Cir. 2023) ..................................................................................................3
`
`Huawei Techs. Co. v. Verizon Commc’ns, Inc.,
`2021 WL 150442 (E.D. Tex. Jan. 15, 2021) ..............................................................................2
`
`Intellectual Ventures I LLC v. Symantec Corp.,
`2016 WL 948879 (D. Del. Mar. 10, 2016) ................................................................................2
`
`Luminati Networks Ltd. v. Code200, UAB,
`2021 WL 425101 (E.D. Tex. Feb. 8, 2021) ...............................................................................2
`
`Medtronic, Inc. v. Teleflex Innovations S.A.R.L,
`68 F.4th 1298 (Fed. Cir. 2023) ................................................................................................10
`
`MiTile, Ltd. v. Hasbro, Inc.,
`2013 WL 5876979 (E.D. Va. Oct. 30, 2013) .............................................................................2
`
`O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
`521 F.3d 1351 (Fed. Cir. 2008)..................................................................................................1
`
`Stamps.com Inc. v. Endicia, Inc.,
`437 F. App’x 897 (Fed. Cir. 2011) ..........................................................................................10
`
`-ii-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 4 of 18
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`TABLE OF AUTHORITIES
`(continued)
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`Page
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`Sundance, Inc. v. DeMonte Fabricating Ltd.,
`550 F.3d 1356 (Fed. Cir. 2008)..................................................................................................3
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`-iii-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 5 of 18
`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 5 of 18
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`TABLE OF ABBREVIATIONS
`
`Abbreviation
`
`Definition
`
`Touchstream
`
`Touchstream Technologies, Inc.
`
`Google
`
`°251 patent
`
`Google LLC
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`U.S. Patent No. 8,356,251 (PTX-865)
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`U.S. Patent No. 8,782,528 (PTX-885)
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`°289 patent
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`U.S. Patent No. 8,904,289 (PTX-883)
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`API
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`application programminginterface
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`asserted patents
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`the ’251 patent, the °528 patent, and the ’289 patent
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`claims | and 8 of the ’251 patent, claims 1 and 14 of the ’528
`asserted claims
`patent, and claims 1 and 2 of the ’289 patent
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`
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` °528 patent
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`GTS
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`SDK
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`Te
`
`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))
`
`software developmentkit
`
`Trial Transcript, located at:
`Dkt. 259 (Day1, pp. 1-244):
`Dkt. 260 (Day 2, pp. 245-647);
`Dkt. 262 (Day 3, pp. 648-1028);
`Dkt. 264 (Day4, pp. 1029-1310); and
`Dkt. 266 (Day 5, pp. 1311-1376).
`Certain portions of the Trial Transcript are and remain underseal.
`
`*All emphasis added unless otherwise noted.
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`-iv-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 6 of 18
`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 6 of 18
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`
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`Trial Exhibit
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`JTX-1
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`JTX-3
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`JTX-21
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`JTX-51
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`JTX-63
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`PTX-863
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`PTX-865
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`PTX-885
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`DTX-118A
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`DTX-120
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`DTX-632
`
`TABLE OF EXHIBITS
`
`Description
`Control YouTube on the Desktop, or the TV ... with the YouTube
`Remote Appfor 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
`
`Features, Google TV (Oct. 5, 2010)
`
`YouTube Remote API Server Documentation
`
`°289 patent
`
`°251 patent
`
`°528 patent
`
`Howto Control Google TV or YouTube Leanback with YouTube
`Remote, YouTube
`(Nov. 14, 2010)
`(videofile
`
`Declaration of Janos Levai
`
`GTSSource Code Printouts
`
`
`
`-\V-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 7 of 18
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`During trial, Touchstream repeatedly sidestepped indisputable facts and rested on a
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`superficial and legally inadequate infringement theory. Touchstream does the same now. It
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`repeatedly misconstrues the testimony of Google witnesses, mischaracterizing their testimony or
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`falsely claiming they changed positions. The record is clear, and no reasonable jury could have
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`found infringement or no invalidity. Indeed, Touchstream now concedes that the “server system”
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`limitation must be at least digitally separate from the “content presentation device” / “display
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`device,” and that is reason alone to grant JMOL of noninfringement.
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`I.
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`NO REASONABLE JURY COULD HAVE FOUND INFRINGEMENT
`
`A.
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`Touchstream Failed To Prove The Accused Devices Have The Claimed
`“Server System” As Properly Construed
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`Touchstream’s infringement theory conflated the claimed “server system” with the claimed
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`“content presentation device,” contrary to the intrinsic record showing these components must be
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`separate. See Dkt. 275 (“Mot.”) at 2-7. The lack of a construction put no guardrails on
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`Touchstream’s case, allowing Touchstream to sidestep this issue at trial. In these circumstances,
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`an authoritative post-trial construction is necessary. See id. Contrary to Touchstream’s
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`characterization, the Court did not “reject[ ] Google’s proposed construction” or “determine[ ] that
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`physical separation was unnecessary.” See Dkt. 284 (“Opp.”) at 2, 5. The Court’s ruling was “to
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`go with plain and ordinary meaning on the claim term ‘server system and display device.’” Dkt.
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`225 at 50:17-19. That improperly left the parties’ claim-construction dispute for the jury, rather
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`than this Court, to resolve. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d
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`1351, 1362 (Fed. Cir. 2008) (“By failing to construe this term, the district court left the jury free
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`to consider these arguments,” which was legal error).
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`Google’s motion explained why the intrinsic record compels its construction. Mot. at 2-5.
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`The claims and specification both overwhelmingly show that the claimed “server system” and
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 8 of 18
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`“content presentation device” must be separate from each other. Touchstream contends the
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`
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`specification supports the server system “including different server components running on
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`different machines,” Opp. at 3-4, but those passages do not describe the relationship between the
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`server system and the content presentation device. The specification consistently reinforces that
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`these two components are distinct from each other: they are connected to each other and
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`communicate over a network. See Mot. at 4. Touchstream ignores the wealth of case law requiring
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`separation of components in both hardware and software claims. See, e.g., Luminati Networks Ltd.
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`v. Code200, UAB, 2021 WL 425101, at *7-8 (E.D. Tex. Feb. 8, 2021); Huawei Techs. Co. v.
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`Verizon Commc’ns, Inc., 2021 WL 150442, at *9 (E.D. Tex. Jan. 15, 2021); MiTile, Ltd. v. Hasbro,
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`Inc., 2013 WL 5876979, at *5-6 (E.D. Va. Oct. 30, 2013); Dkt. 184 at 8-10.
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`The prosecution history confirms that the server system must be separate from the content
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`presentation device. See Mot. at 5. Touchstream’s argument regarding the amendment made
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`during prosecution, Opp. at 4, misunderstands the examiner’s objection. The reason the examiner
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`did not have “issues with the ‘server system,’” id., is that the examiner was relying on prior art
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`where the server system and content presentation device were separate. See Dkt. 159-4 at 5.
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`Citing Intellectual Ventures I LLC v. Symantec Corp., 2016 WL 948879 (D. Del. Mar. 10,
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`2016) (“IV I”), Touchstream contends that, in hardware and software claims, only digital (logical)
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`separation is required. Opp. at 3. As an initial matter, Touchstream never presented to the jury a
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`purported plain-and-ordinary meaning requiring digital separation, so it cannot defend the verdict
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`on that basis. See Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed. Cir. 2008) (rejecting
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`proposed construction of claim term “raised for the first time after the jury verdict”). And in IV I,
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`the “claims involve[d] digital, rather than physical separation” because, unlike here, the claims
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`and the specification expressly recited the components as “digitally connected.” 2016 WL 948879,
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`-2-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 9 of 18
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`at *3. The Federal Circuit has also explained that the separate description of claimed components
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`means “they logically cannot be one and the same.” Engel Indus., Inc. v. Lockformer Co., 96 F.3d
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`1398, 1405 (Fed. Cir. 1996). Touchstream’s “digital” and “physical” distinction is manufactured
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`to support its flawed infringement theory. But even setting that aside, even a digital-separation
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`construction precludes infringement here, because the accused server system and content
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`presentation device are not digitally separate from each other. See infra Part I.B.
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`Finally, Touchstream’s assertion that Dr. Almeroth “was not engaged in claim construction
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`analysis” when he relied on a dictionary definition at trial (Opp. at 4) is no more tenable than
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`saying “up is down” or “right is left.” Dr. Almeroth undeniably used extrinsic evidence to construe
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`the claims. See id. at 4-5. “The risk of confusing the jury is high when experts opine on claim
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`construction before the jury even when, as here, the district court makes it clear to the jury that the
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`district court’s claim constructions control.” CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d
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`1168, 1172 (Fed. Cir. 2005). That is why the Federal Circuit “has held that allowing a witness to
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`testify before the jury on claim construction would be improper.” Sundance, Inc. v. DeMonte
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`Fabricating Ltd., 550 F.3d 1356, 1364 n.6 (Fed. Cir. 2008). To make matters worse, Dr.
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`Almeroth’s extrinsic evidence was off-point because it was untethered to the intrinsic record. See
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`Mot. at 5-6; Grace Instrument Indus., LLC v. Chandler Instruments Co., 57 F.4th 1001, 1010 (Fed.
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`Cir. 2023) (error to rely “on extrinsic evidence—i.e., dictionary definitions—that contradict the
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`scope and meaning of” term “that a skilled artisan would ascertain by reading the intrinsic record”).
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`B.
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`Touchstream Failed To Show Infringement Even Under Its Construction
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`It is undisputed that no reasonable jury could find infringement under Google’s
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`construction. But Touchstream also did not show infringement under (1) its current construction
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`requiring digital separation or (2) the dictionary definition of “server” it presented at trial.
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`Digital Separation. Touchstream repeatedly pointed to components of the accused server
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`-3-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 10 of 18
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`system and content presentation device that are not digitally separate. Touchstream accused the
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`“Cast Service” and “Receiver SDK” as the purported “server system” (Opp. at 5-6), and it accused
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`the entire cast-enabled device as the purported “content presentation device.” See Opp., Ex. A at
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`54. The accused “server system” components are thus located within the accused “content
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`presentation device” and share digital components. See id. Moreover, the receiver SDK is also
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`part of the accused media player (the receiver application), see Tr. 849:7-25; 955:4-956:20, and
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`the accused media player is loaded by and executed within the accused content presentation device.
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`See, e.g., ’528 patent, claim 1. There is no digital separation of the “server system” from the
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`content presentation device—or even any separation from the media player.
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`Dictionary Definition. Contrary to Touchstream’s dictionary definition of “server”—
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`“respond[ing] to commands from a client” or “run[ning] administrative software that controls
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`access to the network and its resources”—the accused products indisputably communicate via
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`peer-to-peer communication without a server. Mot. at 7. At trial, Dr. Almeroth did not explain
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`how either the Cast Service or the receiver SDK meets his definitions. See Tr. 550:2-23
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`(conclusory testimony that each drawn box is a “server”). In insisting that a peer-to-peer
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`architecture can satisfy its claims, Touchstream relies on labels and obfuscation of the record that
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`fail, as a matter of law, to show the accused products meet the claims. See Opp. at 6-7.
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`First, regarding the receiver SDK, Dr. Almeroth testified only “that it acts as glue between
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`the cast service and the cast browser.” See Tr. 537:6-15. He did not explain how acting as such
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`“glue” could satisfy Touchstream’s definition of “server.” There was no evidence the receiver
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`SDK itself satisfies either aspect of Dr. Almeroth’s dictionary definition. See Mot. at 7-8, 13-14.
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`Second, regarding the “Cast Service,” Touchstream conflates “service” with “server,”
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`broadening “server system” even further beyond its claim scope to include “services.” See Opp.
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`-4-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 11 of 18
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`at 6. Touchstream contends Mr. Van Der Staay testified that “Google’s ‘service’ modules
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`constitute ‘servers,’” id., but that was not his testimony. He explained the differences between
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`services and servers, Google internal documents’ use of the term “services,” and how cloud servers
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`can provide services such as the Cast Service in the cloud. Tr. 884:14-886:8. He did not testify
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`that Cast Service on the device is or uses a server. He described it as a “system service,” not a
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`server. Id. In closing, Touchstream nonetheless encouraged the jury to adopt its factually
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`unsupported redefinition of “servers” as “services.” Tr. 1325:13-1326:5.
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`Third, Mr. Van Der Staay’s general testimony about “servers creating a peer-to-peer
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`communication” between a personal computing device and Chromecast likewise cannot support
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`Touchstream’s verdict. See Opp. at 6-7. The claimed “server system” does not merely create a
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`connection between the phone and the content presentation device. Rather, the claimed “server
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`system” receives messages, identifies programming code based on information in the message,
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`and then transmits information to the content presentation device. The accused products work
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`differently: the messages are transmitted between and received by the two peer devices without an
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`intermediary server. Mr. Van Der Staay’s testimony was fully consistent with Google’s position
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`that the accused products communicate peer-to-peer.
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`Finally, Touchstream’s concession that it repeatedly mentioned irrelevant components
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`(e.g., mDNS, DIAL) underscores its obfuscation. See Opp. at 7. Touchstream continuously
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`focused on components it now admits did not perform any claim limitation. See Mot. at 8 (citing
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`testimony). Indeed, in closing, Touchstream took great pains to direct the jury to irrelevant
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`components to find infringement, emphasizing “there’s an mDNS server running on [the
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`Chromecast] dongle. This is a little computer. There’s a WebSocket server running on this dongle.
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`[Dr. Mayer-Patel] admitted it. There are servers on here. They receive messages.” Tr.
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`-5-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 12 of 18
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`1326:11:16; see also Tr. 1325:13-19 (suggesting infringement could be found because “there’s an
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`mDNS server and a WebSocket server”). But, as Touchstream now admits, these components are
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`irrelevant to infringement. The only relevant components are those accused of performing the
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`claimed functionality, and as a matter of law they are not a “server system.” See Mot. at 7-8.1
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`C.
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`Touchstream Failed To Prove Divided Infringement
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`Touchstream principally argues the asserted claims do not require proof of divided
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`infringement. Opp. at 7. That is wrong because its infringement theory requires performance by
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`third parties. And because Touchstream presented no evidence from which the jury could find
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`Google directed or controlled those third parties, Google is entitled to JMOL of noninfringement.
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`Third Parties Provide The Accused “Media Player”
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`1.
`Touchstream’s assertion that third parties provide no components is false. See Opp. at 8-
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`10. Touchstream emphasizes the “identify[]” and “execute” “programming code” steps, arguing
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`that they are performed by the receiver SDK. See Opp. at 8. But the receiver SDK is part of the
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`purported media player (the receiver applications), which third parties indisputably provide. See
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`Tr. 849:7-25; 955:4-956:20. Attempting to dodge its evidentiary failure, Touchstream again
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`misconstrues Mr. Van Der Staay’s testimony. See Opp. at 9. Mr. Van Der Staay consistently
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`testified that, while third parties must use the SDK to some extent, they have the option to pick
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`and choose what to use. See Mot. at 10 (citing testimony).
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`
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`1 Regarding MDX/Orbit, while it suggests otherwise (see Opp. at 7), Touchstream relied on
`components on the cast-enabled device for the relevant “server system” limitations. See, e.g., Tr.
`461:3-462:23, 464:10-18 (Dr. Almeroth referring back to the “device” for MDX).
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`-6-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 13 of 18
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` Given
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`Touchstream’s lack of any evidence for all necessary “programming code,” and its failure to show
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`Google controlled third parties’ code, no reasonable jury could find proof of divided infringement.
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`Third Parties Provide The Accused “Messages” And “Signals”
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`2.
`Touchstream does not contend that it presented evidence of Google direction or control
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`over users. Its sole response is that “[t]he claims do not contain any user-performed tasks” and
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`“only require that the messages are received in the server system.” Opp. at 11. But Touchstream
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`ignores that users control the accused products and the content of the messages sent to the accused
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`products that are necessary for practicing the claims. See Mot. 11-12. Because users control the
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`products and provide those messages, Touchstream’s failure to prove direction and control for
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`these claim limitations precludes infringement as a matter of law. See Ericsson, Inc. v. D-Link
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`Sys., Inc., 773 F.3d 1201, 1221-22 (Fed. Cir. 2014) (no direct infringement if steps are performed
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`by equipment controlled by the user and not automatically performed).
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`Third Parties Make Certain Chromecast-Enabled Devices
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`3.
`Touchstream concedes it presented no evidence of Google direction or control over third-
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`party manufacturers. Its sole response is to say the jury could rely on “how Google’s software,
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`acting on all accused hardware devices, controls casting.” Opp. at 12. But Touchstream ignores
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`that the claims expressly require a “content presentation device,” which third parties make and
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`-7-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 14 of 18
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`provide. Touchstream otherwise resigns itself to attacking Google’s argument as “devoid” of
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`citation. See id. That is the point: Touchstream bore the burden of proof and failed to put forward
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`any evidence to prove that Google directs or controls third-party manufacturers.
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`D.
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`No Reasonable Jury Could Have Found Infringement For Other Reasons
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`No proof of a “server system” under Touchstream’s construction for an additional
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`reason. The “server system” requires specific functionality. Mot. at 13-14.
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` See Tr. 455:9-457:17; supra I.C.1. Control of multiple media players was
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`critical to Touchstream’s validity case (Mot. at 20), yet it failed to provide evidence from these
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`media players. Touchstream’s lack of proof precludes infringement on this additional ground.
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`No proof of “receiving” “messages” that “identify a location” (’289 and ’528 patents).
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`The critical facts were undisputed. The phone sends a Cast App ID (a number) to the cast-enabled
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`device. Mot. at 15. The cast-enabled device then uses that ID, among other things, to identify the
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`receiver application and the URL that represents the location of the requested application in order
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`to locate and download the application. Id. Google’s witnesses were consistent in describing this
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`operation; Touchstream fabricates a credibility determination. See Opp. at 13. Touchstream itself
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`acknowledges Mr. Van Der Staay testified during deposition that the cast-enabled device is what
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`identifies the location of the application using the ID. See id. He was consistent at trial. See Mot.
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`at 14-15 & Opp. at 13 (citing testimony). A reasonable jury could only find that the mobile device
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`does not identify the location of the purported media player.
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`Dr. Mayer-Patel similarly was consistent and was not “impeached.” See Opp. at 13 (citing
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`Tr. 1041:1-1043:15). He testified that the Cast App ID can be used to look up the URL for the
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`-8-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 15 of 18
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`receiver application. But he did not testify, either at deposition or at trial, that the ID itself
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`identifies the location of the application. Dr. Almeroth agreed that even with the Cast App ID,
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`additional steps are required before the cast-enabled device can identify the URL for the requested
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`receiver application. See Tr. 527:2-528:5 (the Cast App ID “provides the location lookup”).
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`No proof of the “storing” limitation (’251 patent). Touchstream presented no evidence
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`that the claimed “programming code” is stored on the phone. Touchstream relies solely on
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`deposition testimony from Mr. Van Der Staay that the mobile device stores the “session” in
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`memory on the mobile device. Opp. at 15-16 (citing testimony). But Touchstream did not ask
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`Mr. Van Der Staay during deposition, and Dr. Almeroth did not explain, what this “session”
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`information included. Mr. Van Der Staay also did not testify that the information is sent to the
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`cast-enabled device, as required by the claims. He also did not testify that the “entire” session
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`(whatever that might include) is stored on the phone. See Opp. at 16.
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`At trial, Mr. Van Der Staay made clear what is stored on the phone: a session identifier that
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`can be used to resume the session with the cast device. Mot. at 16-17. No witness, including Dr.
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`Almeroth, testified that the claimed “programming code” was stored on the phone for sending to
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`the cast-enabled device. Indeed, in neither the patent nor the accused products’ operations does
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`the phone have knowledge of the programming code, let alone the capability to store it. The
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`claimed server system is what converts the universal command to the programming code. And the
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`accused programming code does not reside on the phone, which requires converting the universal
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`command to the purported programming code.
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`II.
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`NO REASONABLE JURY COULD HAVE FOUND THE CLAIMS NOT INVALID
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`A.
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`Google Is Entitled To JMOL On The Priority Dispute
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`As a matter of law, Touchstream cannot corroborate its claimed priority date with solely
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`Mr. Strober’s own testimony and documentation. See Mot. at 18. “[A]n inventor’s own
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`-9-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 16 of 18
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`unwitnessed documentation does not corroborate an inventor’s testimony about inventive facts.”
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`
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`Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). Touchstream’s own cases say this. See
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`Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897, 908 (Fed. Cir. 2011) (“an inventor … claiming
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`prior conception must proffer evidence corroborating his testimony”); Medtronic, Inc. v. Teleflex
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`Innovations S.A.R.L, 68 F.4th 1298, 1306 (Fed. Cir. 2023) (finding sufficient corroboration of
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`inventor testimony on the basis of non-inventor testimony and documentation). Yet Touchstream
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`offered no other evidence, including none from Dr. Almeroth, who promised a step-by-step
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`analysis of the documentation but failed to provide any analysis at all. See Mot. at 19; Opp. at 18.
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`B.
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`Google Is Entitled To JMOL That The Asserted Claims Are Obvious
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`Touchstream’s brief highlights the obviousness of the asserted claims. Dr. Almeroth
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`conceded the GTS system could control one media player; he opined only that it lacked the ability
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`to control multiple players. Mot. at 20. That is dispositive here—no reasonable jury could find it
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`non-obvious to control multiple players and, contrary to Touchstream’s claim, Dr. Almeroth did
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`not offer “numerous” other elements supposedly “missing.” Opp. at 17.
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`Touchstream’s remaining arguments are easily dispensed with. Regarding GTS’s status as
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`prior art, Mr. Levai’s 30(b)(6) testimony, contemporaneous web pages describing the launch, and
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`third-party YouTube videos made clear that GTS was prior art. See, e.g., Tr. 894, 970-974; see
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`also JTX-3; JTX-1; DTX-118A. The evidence also established GTS as a coherent system that
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`operated according to the asserted claims, not “cobbled together,” Opp. at 17. YouTube Remote
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`functioned in 2010 by communicating with YouTube Leanback, an app on Google TV. See, e.g.,
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`id. Finally, Touchstream’s argument regarding GTS “confidential operations” (Opp. at 16) also
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`fails. Google showed GTS’s public use and knowledge. Mot. at 19-20 & n.6.
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`III. CONCLUSION
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`The Court should grant JMOL of no infringement and invalidity.
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`-10-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 17 of 18
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`Dated: November 15, 2023
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`Respectfully submitted,
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`By:/s/ T. Greg Lanier, with permission by
`Michael E. Jones
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`
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`Michael C. Hendershot (admitted Pro Hac Vice)
`Tharan Gregory Lanier (admitted Pro Hac Vice)
`Evan M. McLean (admitted Pro Hac Vice)
`Gurneet Singh (admitted Pro Hac Vice)
`JONES DAY
`1755 Embarcadero Road
`Palo Alto, CA 94303
`(650) 739-3939
`Fax: (650) 739-3900
`mhendershot@jonesday.com
`tglanier@jonesday.com
`emclean@jonesday.com
`gsingh@jonesday.com
`
`Tracy Ann Stitt (admitted Pro Hac Vice)
`Jennifer L. Swize (admitted Pro Hac Vice)
`Edwin O. Garcia (admitted Pro Hac Vice)
`John R. Boulé III (admitted Pro Hac Vice)
`JONES DAY
`51 Louisiana NW
`Washington, DC 20001
`(202) 879-3939
`Fax: (202) 626-1700
`tastitt@jonesday.com
`jswize@jonesday.com
`edwingarcia@jonesday.com
`jboule@jonesday.com
`
`Michael E. Jones (SBN:10929400 )
`E-mail: mikejones@potterminton.com
`Shaun W. Hassett (SBN: 24074372)
`E-mail: shaunhassett@potterminton.com
`POTTER MINTON PC
`102 N. College Ave., Suite 900
`Tyler, TX 75702
`Telephone: (903) 597-8311
`Facsimile: (903) 593-0846
`
`Attorneys for Defendant Google LLC
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`-11-
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`Case 6:21-cv-00569-ADA Document 292 Filed 11/21/23 Page 18 of 18
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`CERTIFICATE OF SERVICE
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`I hereby certify that all counsel of record who have consented to electronic service are
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`being served with a copy of this document via electronic mail on November 15, 2023. I also
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`hereby certify that all counsel of record who have consented to electronic service are being served
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`with a notice of filing of this document, under seal, pursuant to L.R. CV-5.2(e).
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`
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`
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`/s/ Michael E. Jones
`Michael E. Jones
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`-12-
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`