Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 1 of 10 PageID #: 9314
`
`
`
`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
`
`REPLY IN SUPPORT OF COMCAST’S
`MOTION FOR PARTIAL SUMMARY JUDGMENT
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 2 of 10 PageID #: 9315
`
`TABLE OF CONTENTS
`
`
`
`
`
`PAGE
`
`
`
`INTRODUCTION .............................................................................................................. 1
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS ................................................. 1
`
`ARGUMENT ...................................................................................................................... 2
`
`CONCLUSION ................................................................................................................... 5
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`
`
`
`
`i
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 3 of 10 PageID #: 9316
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`PAGE
`
`Hanson v. Alpine Valley Ski Area, Inc.,
`718 F.2d 1075 (Fed. Cir. 1983) .................................................................................................. 4
`
`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) .................................................................................................. 4
`
`Niazi Licensing Corp. v. St. Jude Med. S.C., Inc.,
`30 F.4th 1339 (Fed. Cir. 2022) ................................................................................................... 3
`
`Packet Intelligence LLC v. NetScout Sys., Inc.,
`965 F.3d 1299 (Fed. Cir. 2020) .................................................................................................. 4
`
`
`
`
`
`ii
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 4 of 10 PageID #: 9317
`
`
`
`I.
`
`INTRODUCTION
`
`Touchstream’s technical expert could not be more clear that “[i]t is my opinion that any
`
`‘XFINITY X1 STB,’ that is, capable of receiving remote tune requests from another device,
`
`infringes the Asserted Claims of the Touchstream Patents.” Ex. 2 ¶ 59. Touchstream’s
`
`Opposition now disavows that opinion and acknowledges that it is incorrect as a matter of law.
`
`However, Touchstream’s damages expert continues to rely on that now-disavowed opinion as the
`
`basis for his reasonable-royalty calculation. The Court should therefore grant partial summary
`
`judgment that any Comcast X1 STB that has not received an accused remote-tune request from
`
`another device does not infringe.1
`
`II.
`
`STATEMENT OF UNDISPUTED MATERIAL FACTS
`
`The controlling facts that warrant a grant of partial summary judgment are now
`
`undisputed. Touchstream’s Opposition does not dispute that each Asserted Claim is a method
`
`claim and requires receiving a message sent from a mobile phone or similar device. Opp. at 3;
`
`Mot. at 2. The Opposition also does not dispute that Touchstream’s technical expert, Dr. Kevin
`
`Almeroth, opines that “Comcast supports remote control sessions through the XFINITY TV
`
`Remote Application installed on a personal computing device . . . .” Ex. 2 (Almeroth
`
`Infringement Rpt.) ¶ 129 (emphasis added); see Opp. at 3; Mot. at 2. And it does not dispute that
`
`many Comcast X1 subscribers have not downloaded and used the accused Xfinity TV Remote
`
`Application. See Ex. 7 (Mangum Rpt.) ¶ 29; Ex. 6 (Almeroth Dep. Tr.) at 39:20-45:23; see Opp.
`
`at 3; Mot. at 3.
`
`
`1 Defined terms carry the same meaning as in Comcast’s Motion (Dkt. No. 85), and
`“Ex. __” refers to the exhibits attached to that Motion unless otherwise specified.
`
`1
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 5 of 10 PageID #: 9318
`
`
`
`
`
`Although Touchstream’s Opposition emphasizes that Dr. Almeroth provides more detail
`
`in the rest of his report, it does not (and cannot) dispute that Dr. Almeroth opines unambiguously
`
`that, “[i]t is my opinion that any ‘XFINITY X1 STB,’ that is, capable of receiving remote tune
`
`requests from another device, infringes the Asserted Claims of the Touchstream Patents.” Ex. 2
`
`¶ 59 (emphasis added); see Opp. at 3; Mot. at 3. Nor does the Opposition dispute Dr. Almeroth’s
`
`opinion that X1 STBs receive the remote-tune requests necessary for infringement from the
`
`Xfinity TV Remote Application. See Ex. 2 ¶ 167; see Opp. at 3; Mot. at 3. Finally, the
`
`Opposition does not dispute that Touchstream’s damages expert, Dr. Russell Mangum, relies on
`
`Dr. Almeroth to opine that “[t]he applicable set top boxes are those that are capable of
`
`performing the accused methods and that are in the households of subscribers with access to
`
`Defendant’s application accused of playing a role in those methods.” Ex. 7 ¶ 10 (emphasis
`
`added); see Opp. at 3-4; Mot. at 3. Dr. Mangum thus includes in his royalty base every single
`
`X1 STB deployed each month, irrespective of whether it actually received the remote-tune
`
`request needed to infringe. Ex. 2 ¶ 10.
`
`III. ARGUMENT
`
`Touchstream’s Opposition renounces Dr. Almeroth’s opinion that “any ‘XFINITY X1
`
`STB,’ that is capable of receiving remote tune requests from another device, infringes the
`
`Asserted Claims of the Touchstream Patents.” Opp. at 3. Instead, the Opposition now asserts
`
`that Comcast’s X1 STBs infringe the Asserted Claims only when they perform the claimed
`
`methods. See id. at 2-4. Thus, there is no longer a genuine dispute of material fact that any X1
`
`STB that has not received an accused remote-tune request from another device does not infringe.
`
`Although the Opposition claims that Comcast’s Motion is now moot, it ignores that
`
`Dr. Mangum continues to base his damages opinions on the infringement theory that
`
`2
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 6 of 10 PageID #: 9319
`
`
`
`
`
`Touchstream disavows. Indeed, Dr. Mangum’s core assumption (which Touchstream does not
`
`dispute) is that “[t]he applicable set top boxes are those that are capable of performing the
`
`accused methods and that are in the households of subscribers with access to Defendant’s
`
`application accused of playing a role in those methods.” Ex. 7 ¶ 10 (emphasis added). As a
`
`result, Dr. Mangum includes in his royalty base all X1 STBs allegedly “capable” of infringing
`
`the Asserted Claims—even though a Comcast subscriber must first download and install the
`
`accused Xfinity TV Remote Application on their mobile device before they can use the
`
`functionalities necessary for infringement. Ex. 7 ¶¶ 10, 29; Ex. 2 ¶ 129; Ex. 6 at 39:20-45:23.
`
`And there is still no alleged infringement unless the Xfinity TV Remote Application is used to
`
`send an accused remote-tune request to the X1 STB. See Ex. 2 ¶ 167.2 Dr. Mangum does not
`
`account for X1 STBs that cannot be used as part of infringement because the subscriber has not
`
`downloaded the Xfinity TV Remote Application, nor does he attempt to approximate the extent
`
`of use of the allegedly infringing methods.3 Dkt. No. 83 at 4-6, 9-13. Thus, summary judgement
`
`is necessary.
`
`Touchstream’s Opposition suggests that Comcast is improperly arguing that Dr. Mangum
`
`should have calculated allegedly infringing uses of the Xfinity TV Remote Application with
`
`mathematical precision. See Opp. at 8-9. But, as explained in Comcast’s motion to strike his
`
`opinions, Dr. Mangum was required at least to reasonably approximate the extent of use of the
`
`allegedly infringing methods in forming his damages opinions. Niazi Licensing Corp. v. St. Jude
`
`Med. S.C., Inc., 30 F.4th 1339, 1357 (Fed. Cir. 2022); see Dkt. No. 83 at 7-9. He does not do so,
`
`
`2 Moreover, the ’251 Patent’s asserted claims recite steps performed by a “server system”
`and so cannot be practiced by an X1 STB at all. Ex. 3 (’251 Patent) at Claim 1.
`
`3 The Opposition is therefore incorrect that Dr. Mangum calculates damages “based on
`the performance of [the claimed] methods.” Opp. at 8.
`
`3
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 7 of 10 PageID #: 9320
`
`
`
`
`
`and he instead refuses to consider any evidence of use at all—even though Comcast produced
`
`usage data for the accused mobile application. Dkt. No. 83 at 9-11. He was required to
`
`approximate and take into account usage rather than include in his base
`
` STB months
`
`where the STB was not and could not have been used as part of any infringement.4
`
`Finally, the Opposition’s attempts to distinguish Comcast’s cited authority fail for the
`
`same reasons discussed in Comcast’s reply in support of its motion to strike Dr. Mangum’s
`
`opinions. The Federal Circuit requires that method-claim damages “ought to be correlated, in
`
`some respect, to the extent the infringing method is used by customers.” Lucent Techs., Inc. v.
`
`Gateway, Inc., 580 F.3d 1301, 1334 (Fed. Cir. 2009); see also Niazi, 30 F.4th at 1357. The
`
`Hanson case on which Touchstream’s Opposition relies stands for the same principle. See
`
`Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075, 1080 (Fed. Cir. 1983) (permitting
`
`reasonable royalty based on “the estimated cost savings resulting from [defendant]’s use of the
`
`infringing [snowmaking] machines” (emphasis added)). And the Opposition does not even
`
`address the Federal Circuit’s decision in Packet Intelligence, which entered judgment as a matter
`
`of law that the plaintiff could not recover damages for devices where it had not demonstrated
`
`actual performance of the accused method claims. Packet Intelligence LLC v. NetScout Sys.,
`
`Inc., 965 F.3d 1299, 1315 (Fed. Cir. 2020) (vacating damages award because plaintiff’s base
`
`included sales of accused products instead of being tailored to alleged use of claimed methods).
`
`
`4 Touchstream’s assertion that Comcast’s usage data is unreliable is pure attorney
`argument without any support from Dr. Mangum. It is also misplaced because it is based on the
`assertion that Ernest Pighini was unfamiliar with the data, see Opp. at 6, even though Mr. Pighini
`was not one of the Comcast witnesses designated to testify on that data and has no reason to
`know about it as part of his job. In any event, the reliability of that data is irrelevant to this
`Motion seeking summary judgment of non-infringement, which the Court may resolve as a
`matter of law.
`
`4
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 8 of 10 PageID #: 9321
`
`
`
`Touchstream has similarly failed to make this demonstration for
`
` X1 STBs each
`
`month, and the Court should not permit it to recover damages for such devices here.
`
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, Comcast respectfully requests that the Court enter partial
`
`summary judgment that any X1 STB that has not received an accused remote-tune request from
`
`another device does not infringe.
`
`Dated: August 27, 2024
`
`
`
`Respectfully submitted,
`
`/s/ David J. Lisson
`Deron Dacus (State Bar No. 00790553)
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel:
`(903) 705-1117
`ddacus@dacusfirm.com
`
`DAVIS POLK & WARDWELL LLP
`Ashok Ramani (CA Bar No. 200020)
`David J. Lisson (CA Bar No. 250994)
`James Y. Park (CA Bar No. 343659)
`Micayla Hardisty (CA Bar No. 333246)
`1600 El Camino Real
`Menlo Park, CA 94025
`ashok.ramani@davispolk.com
`david.lisson@davispolk.com
`james.park@davispolk.com
`micayla.hardisty@davispolk.com
`
`Alena Farber (NY Bar No. 5896170)
`450 Lexington Avenue
`New York, NY 10017
`alena.farber@davispolk.com
`
`Counsel for Defendants Comcast
`Corporation, Comcast Cable
`Communications, LLC, Comcast Cable
`Communications Management, LLC, and
`Comcast of Houston, LLC
`
`
`
`
`
`5
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 9 of 10 PageID #: 9322
`
`
`
`
`
`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
`
`I hereby certify that this document is authorized to be filed under seal pursuant to the
`
`Protective Order entered in this case.
`
`
`
`
`/s/ David J. Lisson
`David J. Lisson
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 27, 2024 true and correct copies of the foregoing were
`
`served upon the following as indicated:
`
`SHOOK HARDY & BACON LLP
`Robert H. Reckers
`Andrew M. Long
`600 Travis Street, Ste. 3400
`Houston, TX 77002
`rreckers@shb.com
`amlong@shb.com
`
`SHOOK HARDY & BACON LLP
`Evan James Weidner
`2555 Grand Boulevard
`Kansas City, MO 64108
`eweidner@shb.com
`Samuel George Bernstein
`111 South Wacker Dr., Ste 4700
`Chicago, IL 60606
`sbernstein@shb.com
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`BOIES SCHILLER FLEXNER LLP
`John Michael Lyons
`Sabina Mariella
`Sophie Roytblat
`55 Hudson Yards
`New York, NY 10001
`jlyons@bsfllp.com
`smariella@bsfllp.com
`sroyblat@bsfllp.com
`
`BOIES SCHILLER FLEXNER LLP
`Ryan Dykal
`Philip A. Eckert
`Jordan Bergsten
`Mark Schafer
`Anita Liu
`1401 New York Avenue, NW
`Washington, DC 20005
`rdykal@bsfllp.com
`peckert@bsfllp.com
`jbergsten@bsfllp.com
`mschafer@bsfllp.com
`aliu@shb.com
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`6
`
`

`

`Case 2:23-cv-00059-JRG Document 159 Filed 08/29/24 Page 10 of 10 PageID #: 9323
`
`
`
`
`
`GILLIAM & SMITH LLP
`Melissa Richards Smith
`303 South Washington
`Avenue
`Marshall, TX 75670
`melissa@gillamsmithlaw.com
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`ARNOLD & PORTER KAYE SCHOLER LLP
`Dina M. Hayes
`70 West Madison Street, Ste. 4200
`Chicago, IL 60602
`dina.hayes@arnoldporter.com
`Daniel L. Reisner
`David Benyacar
`Elizabeth A. Long
`Melissa Brown
`Robert Stout
`250 West 55th Street
`New York, NY 10019
`daniel.reisner@arnoldporter.com
`david.benyacar@arnoldporter.com
`elizabeth.long@arnoldporter.com
`melissa.brown@arnoldporter.com
`robert.stout@arnoldporter.com
`Carson Anderson
`3000 El Camino Real, Suite 500
`Palo Alto, CA 94306
`carson.anderson@arnoldporter.com
`Marc A. Cohn
`601 Massachusetts Avenue, NW
`Washington, DC 20001
`marc.cohn@arnoldporter.com
`Counsel for Charter Defendants
`THE DACUS FIRM, PC
`Deron R. Dacus
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`ddacus@dacusfirm.com
`Counsel for Comcast and Charter Defendants
`
`
`
`
`
`
`
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
`
`/s/ Angela Quach
`Angela Quach
`Senior Litigation Paralegal
`
`7
`
`