Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 1 of 10 PageID #: 6214
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`CHARTER COMMUNICATIONS, INC. et
`al.,
`
`Defendants.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`
`Plaintiff,
`
`v.
`
`COMCAST CABLE COMMUNICATIONS,
`LLC, D/B/A XFINITY, et al.,
`
`Defendants.
`
`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
`
`MOTION TO STRIKE THE OPINIONS OF
`KEVIN JEFFAY, PH.D.
`
`1
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 2 of 10 PageID #: 6215
`
`
`
`
`
`I.
`
`INTRODUCTION
`Plaintiff Touchstream commenced this Action on February 16, 2023 against Defendant
`
`Comcast, alleging infringement of three patents: U.S. Patent Nos. 8,356,251, 11,048,751, and
`
`11,086,934 (“the Asserted Patents). (See Dkts. 1, 30). Touchstream accuses Comcast of infringing
`
`certain claims of each of these Asserted Patents (“the Asserted Claims”).
`
`On June 24, 2024, Comcast’s technical expert, Dr. Kevin Jeffay, served an expert report in
`
`this case opining on the alleged invalidity of the Asserted Claims of the Asserted Patents. (“Jeffay
`
`Invalidity Report”). In his Invalidity Report, Dr. Jeffay opines that the Asserted Claims are either
`
`anticipated or rendered obvious by numerous prior art references and combinations, including an
`
`alleged prior art Comcast Xfinity TV Remote app “system” (“Xfinity System”).
`
`The Court should exclude Dr. Jeffay’s invalidity opinions involving the Xfinity System for
`
`improperly cobbling together dozens of references on disparate products, developed over many
`
`months by different teams, each possessing distinct features and functionalities, and calling them
`
`a single “system” reference. Dr. Jeffay’s opinions improperly treat these distinct projects as a single
`
`prior art “system” reference for purposes of invalidity. But these projects are separate and discrete;
`
`treating them as anything but fails as a matter of law and demonstrates the unreliability of Dr.
`
`Jeffay’s opinions.
`
`Because Dr. Jeffay’s opinions suffer from fundamental deficiencies under FRE 702 and
`
`403, Touchstream respectfully requests the Court to exclude them from the jury trial.
`
`II.
`
`LEGAL STANDARD
`An expert witness may provide opinion testimony if “(a) the expert’s scientific, technical,
`
`or other specialized knowledge will help the trier of fact to understand the evidence or to determine
`
`a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product
`
`2
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 3 of 10 PageID #: 6216
`
`
`of reliable principles and methods; and (d) the expert has reliably applied the principles and
`
`
`
`methods to the facts of the case.” Fed. R. Evid. 702.
`
`Federal Rule of Evidence 702 requires a district court to make a preliminary determination,
`
`when requested, as to whether the rule requirements are satisfied with a particular expert’s
`
`proposed testimony. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v.
`
`Merrell Dow Pharm., Inc., 509 U.S. 579, 592–93 (1993). District courts are given broad discretion
`
`in making Rule 702 determinations of admissibility. Kumho Tire, 526 U.S. at 152. Although there
`
`are various factors that the district court may consider in determining admissibility, the ultimate
`
`inquiry is whether the expert’s testimony is sufficiently reliable and relevant to be helpful to the
`
`finder of fact and thus to warrant admission at trial. United States v. Valencia, 600 F.3d 389, 424
`
`(5th Cir. 2010).
`
`III. ARGUMENT
`Dr. Jeffay’s invalidity opinions regarding Xfinity System are unreliable for treating distinct
`
`projects as a single prior art system. “[I]n order to anticipate a claim [under § 102], ‘a single prior
`
`art reference must expressly or inherently disclose each claim limitation.’” See Kyocera Wireless
`
`Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008) (emphasis added). Also, while
`
`multiple prior art references may be used as part of a § 103 obviousness analysis, Dr. Jeffay has
`
`not set forth any such § 103 combination where he treats references within the Xfinity System as
`
`multiple instrumentalities, such as by separately mapping them against the limitations of the
`
`Asserted Claims with separate discussions of why a POSITA would be motivated to combine these
`
`different systems. Rather, Dr. Jeffay mixes and matches various documents created over many
`
`months that describe different prototypes and different versions of commercial products (including
`
`some that are obviously irrelevant as post-dating the critical date) with distinct features and
`
`3
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 4 of 10 PageID #: 6217
`
`
`functionalities, claiming without support that they represent a single “system” reference. They do
`
`
`
`not, and as such, Dr. Jeffay’s invalidity opinions involving the Xfinity System should be excluded.
`
`For multiple references to qualify as a single prior art reference, they must all describe the
`
`exact same thing, i.e., be embodied in a “coherent whole document [or product] that can be
`
`assigned a single prior art date of creation.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545
`
`F.3d 1340, 1350 (Fed. Cir. 2008). For example, one master’s thesis project embodying all claim
`
`elements is a single prior art reference, even if the description is split between the student’s thesis
`
`paper and his supervisor’s paper. IP Innovation L.L.C. v. Red Hat, Inc., 2:07–cv–447, 2010 WL
`
`9501469, at *4 (E.D. Tex. Oct. 13, 2010). Likewise, software sold and shipped with an
`
`accompanying user guide describing that software may qualify as a single system reference. See
`
`Kove IO, Inc. v. Amazon Web Servs., Inc., 18-c-8175, 2024 WL 450028, at *22 (N.D. Ill. Feb. 6,
`
`2024) (analyzing Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897 (Fed. Cir. 2011)). In these
`
`cases, the additional references “confirm the contents of the allegedly anticipating reference.”
`
`Kove, 2024 WL 450028, at *22.
`
`In contrast, references describing distinct prototypes and distinct versions of products do
`
`not qualify as a single system reference, even if they are tied together in pursuit of the same goal.
`
`For example, in Kyocera, the defendant argued “a comprehensive set of specifications for a second
`
`generation (‘2G’) mobile network” were a single prior art system reference because the
`
`specifications were “released as consistent sets” and part of a single standard, the “GSM standard.”
`
`Kyocera, 545 F.3d at 1350. But the Federal Circuit disagreed, finding that the GSM standard did
`
`not qualify as a single prior art system reference because its components “were authored by
`
`different subsets of authors at different times,” “[e]ach specification . . . stands as a separate
`
`document in its own right,” internal references to the “greater GSM standard” and the other
`
`4
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 5 of 10 PageID #: 6218
`
`
`specifications were insufficiently specific for incorporation by reference, and defendants’ own
`
`
`
`witness “testified that she had not read the entire standard and did not know of any person who
`
`had read the entire standard.” Id. at 1351–52; see also Kove, 2024 WL 450028, at *22 (relying on
`
`Kyocera to find references describing different versions of Domain Name System and published
`
`at different times by different authors could not be combined as a single prior art “system”).
`
`Like in Kyocera, the Xfinity System set forth in various invalidity combinations in Dr.
`
`Jeffay’s Invalidity Report cannot be considered a single prior art system reference. The alleged
`
`single system includes a May 2010 prototype developed by a Comcast Innovations Lab team in
`
`Denver and a November 2010 commercial app developed by an entirely different product team in
`
`Philadelphia. Comcast’s prior art witness, Anadhan Subbiah, who worked on the Philadelphia
`
`team, testified that his team had very few, if any, discussions with the May 2010 prototype team
`
`in Denver, and further stated, “I do not recall using the source code or anything from the [May
`
`2010] prototype to build the [November 2010] app that we built.” (Ex. 2, Subbiah Dep. Tr. at
`
`19:20-20:12, 21:11-17). Likewise, Comcast’s prior art witness, Joshua Seiden, who worked in
`
`Denver on the May 2010 prototype, had never heard of the “Hoss” database that features
`
`prominently in the documents identified by Dr. Jeffay purportedly describing the November 2010
`
`commercial release. (Ex. 3, Seiden Dep. Tr. at 61:20-62:3; Ex. 4, Jeffay Invalidity Report pp. 202,
`
`212-213, 230-233, 235, 256, 260, Ex. 9 pp. 26, 27, 45, 46, 61, 62, 106, 109, 115, 128, 160, 161).
`
`Mr. Subbiah further testified that he had never even heard of Mr. Seiden or several of the other
`
`Colorado team members. (Ex. 2, Subbiah Dep. Tr. at 143:17-144:12).
`
`Moreover, the single “system” that Dr. Jeffay points to is described in forty-five unique
`
`documents, many of which are undated and others that were created over the course of many
`
`months, without explanation as to why this patchwork of many disparate documents counts as a
`
`5
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 6 of 10 PageID #: 6219
`
`
`single “system” reference. (See Almeroth Rebuttal Validity Report ¶¶ 180–201). Rather, all
`
`
`
`evidence points to the releases being developed independently with the teams having very little, if
`
`any, contact with each other. Dr. Jeffay even admits he simply assumed the two versions were
`
`related based on the superficial similarities between the prototype and the commercial release. (See
`
`August 2, 2024 Jeffay Dep. Tr. at 216:10-217:22). Most egregiously, Dr. Jeffay does not even limit
`
`the documents he relies on to documents from the time of the May 2010 prototype and November
`
`2010 commercial release, but also mixes in documents describing later commercial releases that
`
`indisputably post-date the critical date and are therefore irrelevant for any invalidity analysis. (See
`
`Almeroth Rebuttal Validity Report ¶¶ 195–97; see also Jeffay Rebuttal Report ¶¶ 187–90
`
`(continuing to cite documents post-dating Touchstream’s provisional patent application and failing
`
`to explain how those references can corroborate the prior art “system” as it stood before the critical
`
`date)).
`
`Because Dr. Jeffay’s analysis necessarily depends on the false premise that the Xfinity
`
`System is a single prior art system “reference,” it is not “based on sufficient facts or data,” nor
`
`does it “reflect[] a reliable application of the principles and methods to the facts of the case.” Fed.
`
`R. Evid. 702(b), (d). These factors do not merely go toward the weight of evidence, but are a
`
`condition of admissibility. See Fed. R. Evid. 702 advisory committee’s note to 2023 amendments
`
`(explaining that rule was revised specifically to abrogate contrary interpretation by some courts).
`
`The court should therefore exclude Dr. Jeffay’s invalidity opinions involving the Xfinity System
`
`as not properly directed to a single system reference. See Kove, 2024 WL 450028, at *21–24
`
`(excluding expert opinion because it improperly analyzed multiple references as a single prior art
`
`system reference); 3G Licensing, S.A., v. Blackberry Ltd., 17-82-LPS, 2020 WL 14008195, at *2
`
`(D. Del. Oct. 2, 2020) (granting summary judgment on invalidity because of same); MeadWestvaco
`
`6
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 7 of 10 PageID #: 6220
`
`
`Corp. v. Rexam PLC, 809 F. Supp. 2d 463, 473 (E.D. Va. 2011), aff’d in part, vacated in part on
`
`
`
`other grounds sub nom. MeadWestVaco Corp. v. Rexam Beauty & Closures, Inc., 731 F.3d 1258
`
`(Fed. Cir. 2013) (same).
`
`IV. CONCLUSION
`For at least the above reasons, the Court should strike Dr. Jeffay’s opinions relating to the
`
`Xfinity System.
`
`
`
`Date: August 5, 2024
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Ryan D. Dykal
`Lead Counsel
`
`
`Ryan D. Dykal (pro hac vice)
`Jordan T. Bergsten (pro hac vice)
`Mark Schafer (pro hac vice)
`Philip A. Eckert (pro hac vice)
`Anita Liu (TX State Bar No. 24134054)
`BOIES SCHILLER FLEXNER LLP
`1401 New York Ave, NW
`Washington, Dc, DC 20005
`(t) 202-274-1109
`rdykal@bsfllp.com
`jbergsten@bsfllp.com
`mschafer@bsfllp.com
`peckert@bsfllp.com
`aliu@bsfllp.com
`
`
`John Michael Lyons (pro hac vice)
`Sabina Mariella (pro hac vice)
`Sophie Roytblat (pro hac vice)
`BOIES SCHILLER FLEXNER LLP
`55 Hudson Yards, 20th Floor
`New York, NY 10001
`jlyons@bsfllp.com
`smariella@bsfllp.com
`sroytblat@bsfllp.com
`
`7
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 8 of 10 PageID #: 6221
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`
`
`Melissa Smith (TX State Bar No. 24001351)
`GILLAM & SMITH LLP
`303 S. Washington Ave.
`Marshall, TX 75670
`(t) 903-934-8450
`melissa@gillamsmithlaw.com
`
`
`Counsel for Plaintiff Touchstream Technologies,
`Inc.
`
`
`
`
`
`CERTIFICATE OF CONFERENCE
`
`The undersigned hereby certifies that counsel has complied with the meet and confer
`
`requirement in Local Rule CV-7(h) on July 31, 2024 and that this is an opposed motion.
`
`Participants in the conference included at least Ryan Dykal, Jordan Bergsten, Mark Schafer, Philip
`
`Eckert, Anita Liu, Melissa Smith, Dina Hayes, Daniel Riesner, Deron Dacus, Micayla Hardisty,
`
`and James Park. Counsel for the parties discussed their positions at the meet and confer regarding
`
`the proposed motions but reached an impasse, leaving an open issue for the Court to resolve.
`
`/s/ Ryan D. Dykal                                                 
`Ryan D. Dykal
`
`
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`
`
` I
`
` hereby certify that the foregoing document is authorized to be filed under seal pursuant
`
`to the Protective Order entered in this case.
`
`
`
`
`                                                                                                /s/ Ryan D. Dykal                                                 
` Ryan D. Dykal
`
`
`
`8
`
`
`

`

`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 9 of 10 PageID #: 6222
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`CERTIFICATE OF SERVICE
`
` hereby certify that, on August 5, 2024, the foregoing was filed under seal with the Clerk
`
` I
`
`
`
`of Court using the CM/ECF system, and all counsel of record who are deemed to have consented
`
`to electronic service are being served with a notice of this document via the Court’s CM/ECF
`
`system. Further, I hereby certify that a courtesy copy of the foregoing was emailed to counsel for
`
`Defendants on August 5, 2024.
`
`
`
`Counsel for Comcast:
`
`
`Deron R Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel: 903-705-1117
`Fax: 903-581-2543
`Email: ddacus@dacusfirm.com
`
`
`
`
`Counsel for Charter:
`
`
`Deron R Dacus
`THE DACUS FIRM, PC
`821 ESE Loop 323
`Suite 430
`Tyler, TX 75701
`Tel: 903-705-1117
`
`   /s/ Ryan D. Dykal                                                 
`Ryan D. Dykal
`
`
`
`
`David J. Lisson
`Ashok Ramani
`James Park
`DAVIS POLK & WARDWELL LLP
`1600 El Camino Real
`Menlo Park, CA 94025
`Email: david.lisson@davispolk.com
`Email: ashok.ramani@davispolk.com
`Email: james.park@davispolk.com
`Email: dpw.comcast.touchstream@davispolk.com
`
`
`Alena Farber
`DAVIS POLK & WARDWELL LLP
`450 Lexington Avenue
`New York, NY 10017
`Email: alena.farber@davispolk.com
`
`
`
`
`
`
`Daniel Reisner
`David Benyacar
`Elizabeth A. Long
`Melissa A. Brown
`Robert Stout
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 West 55th Street
`
`9
`
`
`

`

`
`Fax: 903-581-2543
`Email: ddacus@dacusfirm.com
`
`
`
`
`
`Case 2:23-cv-00059-JRG Document 112 Filed 08/16/24 Page 10 of 10 PageID #: 6223
`
`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
`
`New York, NY 10019
`Tel: 212-836-8000
`Fax: 212-836-8689
`Email: daniel.reisner@arnoldporter.com
`Email: david.benyacar@arnoldporter.com
`Email: elizabeth.long@arnoldporter.com
`Email: melissa.brown@arnoldporter.com
`Email: robert.stout@arnoldporter.com
`Email: A&P_EDTX60_Charter@arnoldporter.com
`
`
`Dina M. Hayes
`ARNOLD & PORTER KAYE SCHOLER LLP
`70 West Madison Street
`Suite 4200
`Chicago, IL 60602
`Email: dina.hayes@arnoldporter.com
`
`
`Carson Anderson
`ARNOLD & PORTER KAYE SCHOLER LLP
`3000 El Camino Real, Bldg 5, Suite 500
`Palo Alto, CA 94306
`Email: carson.anderson@arnoldporter.com
`
`
`Marc A. Cohn
`ARNOLD & PORTER KAYE SCHOLER LLP
`601 Massachusetts Ave, NW
`Washington, DC 20001
`Email: marc.cohn@arnoldporter.com
`
`
`10
`
`
`