Case 2:23-cv-00059-JRG Document 113 Filed 08/16/24 Page 1 of 20 PageID #: 6229
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`CHARTER COMMUNICATIONS, INC. et
`al.,
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`Defendants.
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`TOUCHSTREAM TECHNOLOGIES, INC.,
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`Plaintiff,
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`v.
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`COMCAST CABLE COMMUNICATIONS,
`LLC, D/B/A XFINITY, et al.,
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`Defendants.
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`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
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`MOTION TO STRIKE THE OPINIONS OF
`MICHAEL I. SHAMOS, PH.D.
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`Case 2:23-cv-00059-JRG Document 113 Filed 08/16/24 Page 2 of 20 PageID #: 6230
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`I.
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`INTRODUCTION
`Plaintiff Touchstream commenced this Action on February 16, 2023 against Defendant
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`Charter, alleging infringement of three patents: U.S. Patent Nos. 8,356,251, 11,048,751, and
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`11,086,934 (“the Asserted Patents). (See Dkts. 1, 50). Touchstream accuses Charter of infringing
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`certain claims of each of these Asserted Patents (“the Asserted Claims”).
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`Charter’s technical expert, Dr. Michael Shamos, served two expert reports in this case.
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`First, he served an expert report opining on invalidity on June 24, 2024 (“Shamos Invalidity
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`Report”). Second, he served a report rebutting the infringement opinions of Touchstream’s expert,
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`Dr. Wicker, on July 15, 2024. (“Shamos Non-Infringement Report”).
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`Certain opinions in each report should be excluded. First, the Court should exclude Dr.
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`Shamos’s “Three Anys” opinions, which draw legally insufficient technical conclusions about the
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`scope of Touchstream’s patents from cherry-picked Touchstream marketing statements that its
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`commercial product enables any mobile device to direct content from any source to any display
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`device. Second, the Court should exclude Charter’s and Dr. Shamos’s “independent development”
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`opinions as seeking to inject an undisclosed counter-invention invalidity theory into trial under the
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`guise of damages and willfulness. Third, the Court should exclude Dr. Shamos’s invalidity
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`opinions involving a Comcast Xfinity TV Remote app “system” as improperly cobbling together
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`dozens of references on disparate products, developed over many months by different teams, each
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`possessing distinct features and functionalities, and calling them a single “system” reference.
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`Because each of these opinions suffers from fundamental deficiencies, including under
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`FRE 702, 402, 403, FRCP 37(c), and/or certain of the Court’s standing MILs, Touchstream
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`respectfully requests the Court to exclude them from the jury trial.
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`1
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`II.
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`LEGAL STANDARDS
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`A. Motion to Strike Standard
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`“If a party fails to provide information or identify a witness as required by Rule 26(a) or
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`(e), the party is not allowed to use that information or witness to supply evidence on a motion, at
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`a hearing, or at a trial, unless the failure was substantially justified or is harmless.” FED. R. CIV. P.
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`37(c). Where there has been abuse of the discovery process, the Federal Rules of Civil Procedure
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`authorize district courts to prohibit the admission of evidence proffered by the disobedient party.
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`Heidtman v. Cty. of El Paso, 171 F.3d 1038, 1040 (5th Cir. 1999).
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`B. Daubert Standard
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`An expert witness may provide opinion testimony if “(a) the expert’s scientific, technical,
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`or other specialized knowledge will help the trier of fact to understand the evidence or to determine
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`a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product
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`of reliable principles and methods; and (d) the expert has reliably applied the principles and
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`methods to the facts of the case.” FED. R. EVID. 702.
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`Federal Rule of Evidence 702 requires a district court to make a preliminary determination,
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`when requested, as to whether the requirements are satisfied with an expert’s proposed testimony.
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`See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 149 (1999); Daubert v. Merrell Dow Pharm.,
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`Inc., 509 U.S. 579, 592–93 (1993). District courts are given broad discretion in making Rule 702
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`determinations of admissibility. Kumho Tire, 526 U.S. at 152.
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`III. ARGUMENT
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`A. The Court Should Strike Dr. Shamos’s “Three Anys” Opinions as a Legally
`Erroneous Attempt to Argue Claim Construction to the Jury.
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`The Court should strike Dr. Shamos’s opinions directed to the Touchstream “Three Anys.”
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`These legally erroneous opinions seek to argue claim construction to the jury and to confuse the
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`jury about the proper legal framework for deciding infringement. Neither Charter nor Dr. Shamos
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`offer these opinions for any legitimate purpose, and any marginal probative value of these opinions
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`is grossly outweighed by the potential for juror confusion and prejudice to Touchstream. These
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`opinions are improper for the jury and should be excluded.
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`It is well settled that claim construction is a legal issue decided by the Court. Markman v.
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`Westview Instruments, Inc., 517 U.S. 370, 387 (1996). It is improper for experts to argue claim
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`construction to the jury because the “risk of confusing the jury is high when experts opine on claim
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`construction.” Cordis Corp. v. Boston Sci. Corp., 561 F.3d 1319, 1337 (Fed. Cir. 2009) (quoting
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`CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172-73 (Fed. Cir. 2005)).
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`Furthermore, “[n]o party may contradict the [C]ourt’s [claim] construction to a jury.” Exergen
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`Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009). “Incorrect claim construction
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`statements go to the relevance of the expert’s opinion, and thus form a basis to exclude an expert’s
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`opinion.” Ultravision Techs., LLC v. GoVision LLC, No. 2:18-cv-00100- JRG-RSP, 2021 WL
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`2144788 (E.D. Tex. May 26, 2021).
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`Relying on statements from undated Touchstream investor presentations and other
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`marketing materials describing Touchstream’s “patent-pending” commercial product offerings,
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`Charter’s technical expert, Dr. Shamos, opines that “[a] POSITA would recognize that the Asserted
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`Claims attempt to claim methods that must permit use of any personal computing device to control
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`the delivery and playback of content from any source to any display device.” (Ex. 1, Shamos
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`Invalidity Report ¶¶ 230-231, Ex. 2, Shamos Non-Infringement Report ¶¶ 134-135, Ex. 3,
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`TS_COMCAST-0092857, Ex. 4, TS_COMCAST-00085928). Dr. Shamos coins this concept the
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`Touchstream “Three Anys.” (See id.). He then compares various terms from the Asserted Claims
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`to these marketing statements, concluding that “a POSITA would understand that these limitations
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`are directly related to enabling the Three Anys.” (Ex. 1, Shamos Invalidity Report ¶¶ 232-234;
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`Ex. 2, Shamos Non-Infringement Report ¶¶ 136-138). Next, Dr. Shamos cites language from
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`internal company correspondence authored by the named inventor of the Asserted Patents, David
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`Strober, to other Touchstream employees discussing whether an unrelated product from an
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`unrelated third party is “using our patent.” In citing this correspondence—which predates issuance
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`of the earliest Asserted Patent in this case by fifteen months—Dr. Shamos opines that it “is
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`unsurprising” that “Charter does not infringe any Asserted Claim” since the Asserted Claims “are
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`all set up to enable a system built around Touchstream’s ‘Three Anys.’” (Ex. 2, Shamos Non-
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`Infringement Report ¶¶ 139-140).
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`Dr. Shamos’s “Three Anys” opinions improperly invade claim construction issues reserved
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`exclusively for the Court. As Dr. Shamos admits, none of the “Three Anys” language appears in
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`any of the Asserted Claims. (Ex. 5, Shamos Dep. Tr. at 214:12-215:6). Insofar as Charter sought
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`to import these requirements into the Asserted Claims—such as through a lexicography or
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`disclaimer argument—it should have done so during claim construction. But claim construction is
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`now complete and this case is set for trial in less than three months. Charter provides no legitimate
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`basis to offer the jury expert opinions about requirements of the Asserted Claims derived from
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`statements in Touchstream marketing materials without the Court having construed the claims in
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`the manner Charter proposes. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1359 (Fed. Cir.
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`2017) (quoting Omega Eng’g, Inc. v. Raytek Corp., 1323-24 (Fed. Cir. 2003)) (Prosecution
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`disclaimer is “a fundamental precept in [the Federal Circuit’s] claim construction jurisprudence.”).
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`Even if Charter were permitted to reargue claim construction at this late stage, the “Three
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`Anys” are irrelevant to the scope of the Asserted Claims for several reasons. First, this language
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`does not appear in the Asserted Claims or the intrinsic record, and “expert testimony may not be
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`used to diverge significantly from the intrinsic record.” Genuine Enabling Technology LLC v.
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`Nintendo Co., Ltd., 29 F.4th 1365, 1373 (Fed. Cir. 2022). Second, as Dr. Shamos observes, the
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`representations underlying the “Three Anys” were provided in marketing materials intended for
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`“potential investors or potential customers”—not POSITAs. (Ex. 5, Shamos Dep. Tr. at 215:14-
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`21; see also Ex. 6, Strober Dep. Tr. at 113:12-116:8 (the inventor of the Asserted Patents describing
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`the document from which Dr. Shamos pulls the “Three Anys” language as “marketing” language
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`directed to a “nontechnical audience”)). See Immunex Corporation v. Sanofi-Aventis U.S. LLC, 977
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`F.3d 1212, 1221 (Fed. Cir. 2020) (“[W]e seek the meaning of claim terms from the perspective of
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`the person of ordinary skill in the art.”). Third, as claim construction is an objective inquiry, “[t]he
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`subjective intent of the inventor when he used a particular term is of little or no probative weight
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`in determining the scope of a claim.” Markman, 52 F.3d at 985. Fourth, it is legal error to construe
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`patent claims based on the patentee’s commercial embodiments, which is precisely the subject
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`matter to which the “Three Anys” statements were directed. See International Visual Corp. v.
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`Crown Metal Mfg. Co., Inc., 991 F.2d 768, 772, (Fed. Cir. 1993) (reversing summary judgment of
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`no literal infringement where the district court erroneously relied on a patentee’s commercial
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`embodiment to construe patent claims). Finally, as the representations identified by Dr. Shamos—
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`which were not part of the intrinsic record—predate the issuance of the earliest Asserted Patent by
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`fifteen months, those statements have no bearing on claim scope, as that scope may change
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`significantly during prosecution. See Howmedica Osteonics Corp. v. Wright Med. Tech., Inc., 540
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`F.3d 1337, 1347 (Fed. Cir. 2008) (“As we have explained, it is not unusual for there to be a
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`significant difference between what an inventor thinks his patented invention is and what the
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`ultimate scope of the claims is after allowance by the PTO.”) (citations omitted).
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`There is no other legitimate purpose for Dr. Shamos to offer the “Three Anys” opinions.
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`While Dr. Shamos testified that he is not offering his “Three Anys” opinions to limit the asserted
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`claims for infringement purposes, as discussed above, his expert report repeatedly contradicts this
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`assertion. His deposition testimony fares no better in legitimizing a purpose for Charter offering
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`these opinions: “The purpose of this section is to assist a POSITA in understanding the disclosure
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`in the patents,” which “should support the Three Anys.” (Shamos Dep. Tr. at 213:8-20). Stated
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`differently, Dr. Shamos wants to use the “Three Anys” to tell the jury what a POSITA would
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`understand the Asserted Patents to teach so that the jury may use these opinions to evaluate
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`infringement. This is legally erroneous. Mobile Equity Corp. v. Walmart Inc., Case No. 2:21-cv-
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`00126-JRG-RSP, Dkt. 370 at 2-5 (E.D. Tex. Sept. 23, 2022) (excluding expert from offering non-
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`infringement opinions based on statements from the specification that do not appear in the claims
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`and were not construed as requirements). Nor are his “Three Anys” opinions probative of damages,
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`as neither Dr. Shamos nor Charter’s damages expert, Dr. Bakewell, even offer them in support of
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`any damages-related issues.
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`Finally, any marginal (yet unknown) probative value of these opinions is vastly outweighed
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`by potential juror confusion and prejudice to Touchstream. Indeed, a juror may mistakenly
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`believe—as Dr. Shamos implies throughout the “Three Anys” section of his reports—that the
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`Accused Products must satisfy the “Three Anys” of Touchstream’s commercial embodiments for
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`Charter to be found to infringe. But as the Federal Circuit has “repeatedly said, it is error for a
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`court to compare in its infringement analysis the accused product or process with the patentee’s
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`commercial embodiment or other version of the product or process.” Zenith Laboratories, Inc. v.
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`Bristol-Myers Squibb Co., 19 F.3d 1418, 1423, (Fed. Cir. 1994). The potential harm to Touchstream
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`of the jury using these opinions to conduct an improper infringement analysis is high, and the
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`potential for prejudice and juror confusion far outweighs any negligible probative value of these
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`opinions.
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`As such, the Court should exclude Dr. Shamos’s “Three Anys” opinions under FRE 702,
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`402, 403, and the Court’s Standing MIL No. 18. (See Ex. 1, Shamos Invalidity Report ¶¶ 230-234;
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`Ex. 2, Shamos Non-Infringement Report ¶¶ 134-140).
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`B. The Court Should Strike Dr. Shamos’s “Independent Development”
`Opinions as an Untimely and Unfairly Prejudicial Invalidity Theory.
`The Court should also strike Dr. Shamos’s eleventh-hour opinions on Charter’s alleged
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`“independent development” of the accused technology before Touchstream in 2010. Charter
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`clearly wishes it had timely disclosed this as an invalidity theory, but having failed to do so it now
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`seeks to bootstrap this theory into the case under the guise of evidence on damages or willful
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`infringement. This approach would be hopelessly confusing to the jury and would unfairly
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`prejudice Touchstream. Charter’s alleged prior art “independent development” theory was never
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`disclosed by Charter through four iterations of its Invalidity Contentions. And despite providing
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`this theory for the first time by supplementing its response to Touchstream’s invalidity contention
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`interrogatory at the tail end of discovery, Charter and Dr. Shamos claim that they do not intend to
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`offer this theory for the purposes of invalidity, but rather as supporting Georgia-Pacific factor 5—
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`the commercial relationship between the parties. But there is plenty of less prejudicial evidence on
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`the relationship of the parties in this case, and neither Charter nor Dr. Shamos explain why
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`Charter’s purported independent development of a prior art app is relevant to the parties’
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`commercial relationship for the hypothetical negotiation. In reality, Charter wants to use damages
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`as a trojan horse to inject an undisclosed counter-invention invalidity theory into trial. The Court
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`should exclude this theory and Dr. Shamos’s opinions supporting it.
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`Case 2:23-cv-00059-JRG Document 113 Filed 08/16/24 Page 9 of 20 PageID #: 6237
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`One year ago, Defendants served their Joint Disclosures Pursuant to P.R. 3-3 and 3-4
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`(“Invalidity Contentions”) (Ex. 7, 08-04-2023 Defendants’ Joint Disclosures Pursuant to P.R. 3-3
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`and 3-4). Defendants’ Invalidity Contentions included 27 patents and printed publications, 16
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`system “references,” and 84 invalidity charts. (See id.). Over the ensuing seven months of
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`discovery, Defendants supplemented their Invalidity Contentions three different times. (See Ex. 8,
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`03-27-2024 Defendants’ Third Supplemental Disclosures Pursuant to P.R. 3-3 and 3-4). While their
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`Invalidity Contentions did include an invalidity theory based on a 2010 mobile app developed by
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`Comcast, they did not mention a mobile app developed by Charter. (See id.).
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`Without seeking leave under the local patent rules to amend its Invalidity Contentions, on
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`May 10, 2024—the deadline for the parties to serve written discovery in this case—Charter instead
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`supplemented its response to Touchstream’s invalidity contention interrogatory to disclose for the
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`first time a theory purporting to show that it independently developed its own mobile app for
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`controlling playback of content on a Charter set-top box before the priority date of the Asserted
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`Patents. (Ex. 9, 05-31-2024 Charter’s 2nd Suppl. Objs. and Resp. to Touchstream’s First Set of
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`Individual Interrogatories, at 7-11). This disclosure identified dozens of documents allegedly
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`showing Charter’s development efforts on this mobile app over two years. (Id.). Charter also
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`disclosed new witnesses with purported knowledge of these new invalidity theories and designated
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`them as 30(b)(6) witnesses. (Id.; see also Ex. 10, 04-29-2024 Charter’s Third Amended Initial and
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`Additional Disclosures, at 3 (disclosing James Stark and Todd Dolan).
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`Days later, Touchstream served on Charter a letter explaining that Charter’s belated
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`disclosure of a new independent development invalidity theory was improper. (Ex. 11, 05-21-2024
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`R. Reckers Ltr. to D. Hayes). Charter, however, supplemented its invalidity interrogatory response
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`again to add even more documents and details about this new invalidity theory. (Ex. 9, 05-31-2024
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`Charter 2nd Suppl. Objs. & Resps. To Touchstream’s First Set of Individual Interrogatories, at 11-
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`13). Shortly following this additional supplementation, Touchstream sent Charter another
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`correspondence further detailing the impropriety of these delinquent theories, informing Charter
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`that it refused to solicit testimony on them unless Charter sought leave to amend its Invalidity
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`Contentions as required. (Ex. 12, 06-04-2024 R. Reckers Ltr. to D. Hayes). But despite disclosing
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`these theories in response to Touchstream’s invalidity contention interrogatory, Charter responded
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`that its “independent development of [its own app] in 2010 will not be used by Charter as a basis
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`to invalidate the Asserted Patents, but will be relied on for Charter’s defenses including rebutting
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`willfulness claims and damages.” (Ex. 13, 06-04-2024 D. Hayes Email to Touchstream Counsel).
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`Touchstream replied that it would not agree to Charter bootstrapping undisclosed invalidity
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`theories through the guise of willfulness and damages issues, and rather than pursuing discovery
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`on them, Touchstream would instead seek to exclude this improper theory and related evidence
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`from trial. (Ex. 14 at 2 (06-11-2024 J. Bergsten Email to Charter Counsel)). Charter has never
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`provided any explanation for why this narrative, which is based exclusively on facts long within
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`Charter’s control, was first disclosed en masse on the afternoon of the last day for Touchstream to
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`serve written discovery in this case.
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`On June 24, 2024, Charter’s technical expert, Dr. Michael Shamos, served an Invalidity
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`Report. Dr. Shamos’s Invalidity Report included a section entitled “Independent Development,”
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`identifying dozens of documents and events purportedly detailing Charter’s independent
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`development of a software application “to launch Charter content to be played on a television
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`connected to a Charter set top box” over a two-year period beginning in May 2010. (Ex. 1, Shamos
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`Invalidity Report ¶¶ 763-777). Dr. Shamos then served a rebuttal Infringement Report, adding even
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`more detail to this “independent development” theory, while purporting to tie this theory to
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`Touchstream’s damages opinions on Georgia-Pacific factor 5—the commercial relationship
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`between the parties. (Ex. 2, Shamos Non-Infringement Report ¶¶ 308-324). Notably, in this
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`additional “independent development” section, Dr. Shamos also identified a Charter patent and
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`provided a chart mapping a claim of this patent against Charter’s alleged prior art mobile app. (Ex.
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`2, Shamos Non-Infringement Report ¶ 324).
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` As a threshold matter, the Court should exclude Charter’s “independent development”
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`theory at least under FRCP 37(c) for failing to comply with the Court’s local patent rules requiring
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`parties to disclose invalidity theories early in the case. “The purpose of the Local Rules is to further
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`the goal of full, timely, discovery and provide all parties with adequate notice and information with
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`which to litigate their cases, not to create supposed loopholes through which parties may practice
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`litigation by ambush.” Cummins-Allison Corp. v. SBM Co., Case No. 9:07-CV-196, 2009 WL
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`763926, at *1 (E.D. Tex. Mar. 19, 2009) (citations omitted). Charter seeks to create just such a
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`loophole by withholding this counter-invention invalidity theory until the deadline for serving
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`written discovery, and attempting to sneak it into a contention interrogatory rather than seeking
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`leave from the Court to amend its Invalidity Contentions where no good cause existed for such an
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`amendment. Internal documents supporting Charter’s counter-invention invalidity theory were
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`indisputably in Charter’s possession from the outset of this case. Moreover, as neither Charter nor
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`Dr. Shamos disclosed this alleged prior art system in a specific combination set forth in Charter’s
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`expert report or invalidity contentions, introducing it at trial runs afoul of the Court’s MIL No. 4.
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`Setting aside Charter’s gamesmanship and disregard for the local patent rules, Charter’s
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`alleged independent development of its own mobile app has nominal, if any, relevance on the
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`commercial relationship between the parties. Indeed, Charter’s damages expert, Mr. Bakewell,
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`opines that Touchstream and Charter have no relevant commercial relationship with respect to the
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`hypothetical negotiation because, according to him, they were not competitors at the date of
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`hypothetical negotiation. (Ex. 15, Bakewell Report ¶¶ 255-257). And while he mentions in a
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`footnote to this section Dr. Shamos’s discussion of Charter’s independent development efforts, he
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`does not explain why they are relevant to Georgia-Pacific factor 5 or any other issue on damages.
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`(Ex. 15, Bakewell Report ¶ 257 n.479). Mr. Bakewell provides no explanation on relevance to
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`damages because none exists. It is easy to see why Charter wants Mr. Bakewell to discuss this
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`alleged evidence—it no doubt prejudices Touchstream to allow Charter to claim it came up with
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`the accused technology without having to meet the rigors of timely disclosing an invalidity theory
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`and proving it by clear and convincing evidence. But the damages framework leaves no room for
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`such an argument. It is black-letter law that a damages analysis assumes the patents are valid and
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`infringed. If Charter is claiming it developed this technology first and it is the same, then Charter
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`is violating that fundamental principle by arguing an invalidity theory for damages purposes. If
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`Charter is claiming it developed this technology first and it is different, then Charter should have
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`timely disclosed this technology as an available, acceptable non-infringing alternative. It did not
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`do so. There is no proper damages avenue for this evidence to travel.1
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`Allowing Charter to present this “independent development” theory to the jury also risks
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`significant juror confusion in deciding the validity of the Asserted Claims. The jury might be under
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`the impression that this theory is legitimate prior art, but Dr. Shamos has not opined that the system
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`is a prior art reference, much less performed any kind of analysis that the mobile application
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`discloses all elements of the Asserted Claims, or that the alleged invention is entitled to an earlier
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`1 Charter faces a similar problem to the extent it seeks to argue this “independent development”
`evidence for willfulness. If Charter is saying this technology is the same as Touchstream’s then it
`is improperly arguing an untimely disclosed invalidity theory. If Charter is saying this technology
`is different than Touchstream’s, then it is wasting the jury’s time by arguing non-infringement
`outside of the damages period in this case.
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`invention date. Also, as discussed in Touchstream’s Motion to Strike certain opinions of Mr.
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`Bakewell, allowing Charter and Dr. Shamos to discuss a Charter patent covering its purported
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`independent invention further risks confusing the jury on both validity and infringement issues.
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`See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1001 (Fed. Cir. 2015), rev’d and remanded
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`on other grounds, 580 U.S. 53 (2016) (affirming district court’s exclusion of defendant’s evidence
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`of independent development under Rule 37(c) and FRE 403); Xodus Med., Inc. v. Prime Med.,
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`LLC., Case No. 3:18-CV-413-JPM, 2022 WL 407090, at *3 (E.D. Tenn. Feb. 9, 2022) (“While the
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`independent development may have some relevance to Defendant’s damages testimony, it does not
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`appear necessary for that analysis” and “is substantially more likely to mislead the jury that it is a
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`defense to liability and should be excluded under [Rule] 403.”).
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`In short, Charter should be precluded from using an irrelevant Georgia-Pacific Factor to
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`inject an undisclosed and improper independent development theory into trial. The Court should
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`thus strike Charter’s “independent development” theory, including through the opinions of Dr.
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`Shamos, under FRE 702, 402, 403, FRCP 37(c), and the Court’s Standing MIL No. 4.
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`C. The Court Should Strike Dr. Shamos’s Xfinity TV Remote App “System”
`Theories for Relying on References and Testimony that Fail to Describe a
`Single Prior Art System.
`Dr. Shamos’s invalidity opinions regarding Comcast’s alleged prior art Xfinity TV Remote
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`App system (“Xfinity System”) are also unreliable for treating distinct and tenuously related
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`instrumentalities as a single prior art system. “[I]n order to anticipate a claim [under § 102], ‘a
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`single prior art reference must expressly or inherently disclose each claim limitation.’” See
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`Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008) (emphasis added).
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`Also, while multiple prior art references may be used as part of a § 103 obviousness analysis, Dr.
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`Shamos has not set forth any such § 103 combination where he treats references within the Xfinity
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`System as multiple instrumentalities, such as by separately mapping them against the limitations
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`of the Asserted Claims with separate discussions of why a POSITA would be motivated to combine
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`these different systems. Rather, Dr. Shamos mixes various documents created over many months
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`that describe different prototypes and commercial products with distinct features and
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`functionalities, incorrectly claiming that they represent a single “system” reference. They do not,
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`and as such, Dr. Shamos’s invalidity opinions involving the Xfinity System should be excluded.
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`(See Shamos Invalidity Report ¶¶ 576-593, 646-650, 662-663, 677-678, Exs. A-6, B-6, C-6).
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`For multiple references to qualify as a single prior art reference, they must all describe the
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`exact same thing, i.e., be embodied in a “coherent whole document [or product] that can be
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`assigned a single prior art date of creation.” Kyocera Wireless Corp. v. Int'l Trade Comm’n, 545
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`F.3d 1340, 1350 (Fed. Cir. 2008). For example, one master’s thesis project embodying all claim
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`elements is a single reference, even if the description is split between the student’s thesis paper
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`and his supervisor’s paper. IP Innovation L.L.C. v. Red Hat, Inc., 2:07–cv–447, 2010 WL 9501469,
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`at *4 (E.D. Tex. Oct. 13, 2010). Likewise, software sold and shipped with an accompanying user
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`guide describing that software may qualify as a single system reference. See Kove IO, Inc. v.
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`Amazon Web Servs., Inc., 18-c-8175, 2024 WL 450028, at *22 (N.D. Ill. Feb. 6, 2024) (analyzing
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`Stamps.com Inc. v. Endicia, Inc., 437 F. App’x 897 (Fed. Cir. 2011)). The additional references
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`“confirm the contents of the allegedly anticipating reference.” Kove, 2024 WL 450028, at *22.
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`In contrast, references describing distinct prototypes and distinct versions of products do
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`not qualify as a single system reference, even if they are tied together in pursuit of the same goal.
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`For example, in Kyocera, the defendant argued “a comprehensive set of specifications for a second
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`generation (‘2G’) mobile network” were a single prior art system reference because the
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`specifications were “released as consistent sets” and part of a single standard, the “GSM standard.”
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`Kyocera, 545 F.3d at 1350. But the Federal Circuit disagreed, finding that the GSM standard did
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`not qualify as a single prior art system reference because its components “were authored by
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`different subsets of authors at different times,” “[e]ach specification . . . stands as a separate
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`document in its own right,” internal references to the “greater GSM standard” and the other
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`specifications were insufficiently specific for incorporation by reference, and defendants’ own
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`witness “testified that she had not read the entire standard and did not know of any person who
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`had read the entire standard.” Id. at 1351–52; see also Kove, 2024 WL 450028, at *22 (relying on
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`Kyocera to find references describing different versions of Domain Name System and published
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`at different times by different authors could not be a single prior art “system”).
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`Like in Kyocera, the Xfinity System set forth in various invalidity combinations in Dr.
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`Shamos’s Invalidity Report cannot be considered a single prior art system reference.
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`Because Dr. Shamos’s analysis necessarily depends on the false premise that the Xfinity
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`System is a single prior art system “reference,” it is not “based on sufficient facts or data” nor does
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`it “reflect[] a reliable application of the principles and methods to the facts of the case.” FED. R.
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`EVID. 702(b), (d). These factors do not merely go toward the weight of evidence, but are a
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`condition of admissibility. See FED. R. EVID. 702 advisory committee’s note to 2023 amendments
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`(explaining that rule was revised specifically to abrogate contrary interpretation by some courts).
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`The court should therefore exclude Dr. Shamos’s invalidity opinions involving the Xfinity System
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`as not properly directed to a single system reference. See Kove, 2024 WL 450028, at *21–24
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`(excluding expert opinion because it improperly analyzed multiple references as a single prior art
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`system reference); 3G Licensing, S.A., v. Blackberry Ltd., 17-82-LPS, 2020 WL 14008195, at *2
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`(D. Del. Oct. 2, 2020) (granting summary judgment on invalidity because of same).
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`IV. CONCLUSION
`For the foregoing reasons, the Court should strike Dr. Shamos’s opinions relating to the
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`“Three Anys,” Charter’s independent development, and the Xfinity System.
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`Case 2:23-cv-00059-JRG Document 113 Filed 08/16/24 Page 17 of 20 PageID #: 6245
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`FILED UNDER SEAL PURSUANT TO PROTECTIVE ORDER
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`Date: August 5, 2024
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`Respectfully submitted,
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`/s/ Ryan D. Dykal
`Lead Counsel
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`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 Yo