Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 1 of 12 PageID #: 9324
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`THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
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`v.
`CHARTER COMMUNICATIONS, INC., et al.,
`Defendants.
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`TOUCHSTREAM TECHNOLOGIES, INC.,
`Plaintiff,
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`v.
`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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`REPLY IN SUPPORT OF COMCAST’S MOTION TO
`STRIKE CERTAIN OPINIONS OF DR. KEVIN ALMEROTH
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 2 of 12 PageID #: 9325
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`TABLE OF CONTENTS
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`PAGE
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`The Court Should Strike Dr. Almeroth’s Improper References to and
`Incorporation of Opinions Offered in the Google Litigation .............................................. 1
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`Comcast Will Not Open the Door to Reference to Dr. Wicker, And Any Such
`References Must Be Stricken .............................................................................................. 3
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`Dr. Almeroth’s Secondary Considerations Opinions Were Untimely and Should
`Be Excluded ........................................................................................................................ 3
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`Dr. Almeroth’s Statements Regarding Conception “At Least As Early As”
`October 2010 Should Be Stricken....................................................................................... 5
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`I.
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`II.
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`III.
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`IV.
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`i
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 3 of 12 PageID #: 9326
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`
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`Cases
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`TABLE OF AUTHORITIES
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`PAGE
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`ABB Air Preheater, Inc. v. Regenerative Env’t Equip. Co.,
`167 F.R.D. 668 (D.N.J. 1996) ..................................................................................................... 5
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`Applied Med. Res. Corp. v. U.S. Surgical Corp.,
`435 F.3d 1356 (Fed. Cir. 2006) .................................................................................................. 1
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`Maxell, Ltd. v. Apple Inc.,
`2021 WL 3021253 (E.D. Tex. Feb. 26, 2021) ............................................................................ 1
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`Smart Path Connections, LLC v. Nokia of Am. Corp.,
`2024 WL 1096138 (E.D. Tex. Mar. 13, 2024) ........................................................................... 5
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`Sprint Commc’ns Co., L.P. v. Time Warner Cable, Inc.,
`760 F. App’x 977 (Fed. Cir. 2019) ............................................................................................. 1
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`Touchstream Techs. Inc. v. Google LLC,
`No. 6:21-cv-0569-ADA, Dkt. 264 (Sept. 1, 2023) ..................................................................... 4
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`Zoch v. Daimler, A.G.,
`2018 WL 4599674 (E.D. Tex. Sept. 25, 2018) ........................................................................... 4
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`ZUP, LLC v. Nash Mfg., Inc.,
`896 F.3d 1365 (Fed. Cir. 2018) .................................................................................................. 3
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`Rules
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`Fed. R. Civ. P. 26 ............................................................................................................................ 3
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 4 of 12 PageID #: 9327
`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 4 of 12 PagelD #: 9327
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`TABLE OF EXHIBITS
`TABLE OF EXHIBITS
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`EXHIBIT DESCRIPTION
`EXHIBIT|DESCRIPTION
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`Ex. 8
`Ex. 8
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`January 8, 2024 Email thread between counsel of record
`January 8, 2024 Email thread between counsel of record
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 5 of 12 PageID #: 9328
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`Nothing in Touchstream’s Response excuses the undisclosed, untimely, and unfairly
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`prejudicial opinions referenced in Dr. Almeroth’s reports.1
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`I.
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`The Court Should Strike Dr. Almeroth’s Improper References to and Incorporation
`of Opinions Offered in the Google Litigation
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`Touchstream provides no justification for deviating from the Court’s Standing MIL
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`No. 13, which prohibits “evidence, testimony, or argument regarding either party’s other
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`litigations or arbitrations.” Standing Order on MILs at 3. Touchstream cites no case in which a
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`prior verdict was permitted to support secondary considerations,2 and Dr. Almeroth’s opinions
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`are nothing more than an “invit[ation to] the jury . . . to defer to the [prior] jury’s verdict,”
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`Maxell, Ltd. v. Apple Inc., 2021 WL 3021253, at *7 (E.D. Tex. Feb. 26, 2021).
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`The Google Litigation is irrelevant to the issues in this case because it involved “different
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`parties, accused products, witnesses, [] prior art,” two additional patents not asserted here, and
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`the judgment is not final. Id. Moreover, the Google verdict does not establish the requisite
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`nexus for secondary considerations—the jury returned only a general verdict of infringement, not
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`a specific finding that any commercial success, industry praise, or industry reception was due to
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`1 This brief refers to Comcast’s Motion to Strike Certain Opinions of Dr. Kevin Almeroth
`(Dkt. 84) as the “Motion” or “Mot.”; Touchstream’s Opposition to the Motion (Dkt. 117) as
`“Opp.”; exhibits to the Declaration of Ryan D. Dykal as “Opp. Ex.”; and exhibits to the Reply
`Declaration of Alena Farber as “Reply Ex.” All other terms carry the same meaning as in
`Comcast’s Motion.
`2 Sprint Commc’ns Co., L.P. v. Time Warner Cable, Inc., 760 F. App’x 977 (Fed. Cir.
`2019) and Applied Med. Res. Corp. v. U.S. Surgical Corp., 435 F.3d 1356 (Fed. Cir. 2006)
`concerned damages and willfulness. Sprint Commc’ns Co., L.P., 760 F. App’x at 980-81;
`Applied Med. Res. Corp., 435 F.3d at 1366. The courts in those cases found that the parties
`would have known about the prior litigation, which involved the same accused technology, at the
`time of the hypothetical negotiation. Sprint Commc’ns Co., L.P., 760 F. App’x at 980-81;
`Applied Med. Res. Corp., 435 F.3d at 1358 (prior litigation was between the same parties
`involving the same patent). Here, the Google verdict postdates the filing of this lawsuit, let
`alone the hypothetical negotiation, and concerned Google’s Chromecast devices, which are
`fundamentally differently than Comcast’s accused mobile application. The verdict thus has no
`relevance to damages or willfulness in this case and, contrary to Touchstream’s assertion, is not
`admissible for those purposes either. See Opp. at 5 n.2.
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`1
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 6 of 12 PageID #: 9329
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`infringement. To counter Dr. Almeroth’s opinions regarding Google would require a wasteful
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`and prejudicial detour into a Google product that is not at issue in this case.
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`Touchstream suggests that Dr. Almeroth needs to discuss the Google Litigation to rebut
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`Comcast’s evidence or argument at trial. But Comcast does not intend to violate the Court’s
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`Standing MIL by opening the door to the Google Litigation, and allowing a plaintiff to introduce
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`other litigation simply because obviousness may be at issue would make such litigation
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`admissible in almost every case. Such an exception would swallow the rule laid out in MIL
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`No. 13.
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`Finally, Dr. Almeroth’s incorporation by reference of his opinions in the Google
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`Litigation is broader than Touchstream suggests and should also be stricken. Comcast does not
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`move to strike the substance of any opinions that were quoted verbatim in Dr. Almeroth’s report.
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`Mot. at 2 n.2. But Dr. Almeroth also stated that he “opined on [secondary considerations] in the
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`Touchstream v. Google case, and incorporate[s] those opinions (both written in [his] reports and
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`also at trial) by reference here.” Ex. 1 (Almeroth Rebut. Rpt.) ¶ 385. His report in this case does
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`not cite to any trial testimony and Comcast cannot know which portions of Dr. Almeroth’s
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`Google report he incorporates into this case beyond those he quotes here. Moreover, Comcast
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`does not have access to the complete record of the Google litigation. When Defendants
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`requested that Touchstream reproduce the email production from the Google Litigation,
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`Touchstream refused, arguing that emails which “relate to Google and Google’s infringing
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`products . . . are not relevant to this case. Reply Ex. 8 (Jan. 8, 2024 Correspondence from M.
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`Gray to D. Hayes). Thus, Comcast cannot address the underlying evidence or understand
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`whether other information (including the information redacted from his previous reports)
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`undermines Dr. Almeroth’s still undisclosed opinions. Touchstream cannot introduce
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`2
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 7 of 12 PageID #: 9330
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`unidentified opinions from a partially redacted report that were based on evidence that was not
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`produced in this case.
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`II.
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`Comcast Will Not Open the Door to Reference to Dr. Wicker, And Any Such
`References Must Be Stricken
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`Even though Dr. Almeroth’s description of his methodology includes a discussion with
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`Dr. Wicker, Touchstream now represents that it does not intend to reference Dr. Wicker or his
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`opinions at trial. Opp. at 7. Such references should thus be stricken from Dr. Almeroth’s report,
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`and Dr. Almeroth should be precluded from referencing Dr. Wicker at all. Comcast does not
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`intend to discuss Dr. Wicker’s Charter opinions, so there is no justification for referencing those
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`opinions, which have not been disclosed and cannot be subject to cross-examination here.
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`III. Dr. Almeroth’s Secondary Considerations Opinions Were Untimely and Should Be
`Excluded
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`Touchstream bears the burden as to secondary considerations, so Dr. Almeroth was
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`therefore required to address them in his opening report. See ZUP, LLC v. Nash Mfg., Inc., 896
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`F.3d 1365, 1373 (Fed. Cir. 2018). Because he failed to do so, Comcast’s expert Dr. Jeffay had
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`no opportunity to respond to Dr. Almeroth’s opinions. Although Touchstream had provided an
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`interrogatory response on secondary considerations, disclosure in a discovery response does not
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`take the place of expert reports. Discovery responses are typically much less detailed than expert
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`reports, and an expert report is intended to allow an opposing party “to prepare for effective
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`cross examination and perhaps arrange for expert testimony from other witnesses.” Fed. R. Civ.
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`P. 26(a)(2)(B) advisory committee’s note to 1993 amendments.
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`In any event, Dr. Almeroth opined far beyond Touchstream’s interrogatory response. For
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`example, the discovery response briefly mentioned Google—but not Google’s accused product,
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`Chromecast—in one section, and that is what Comcast’s Dr. Jeffay addressed in his opening
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`3
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 8 of 12 PageID #: 9331
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`report.3 Opp. Ex. 1 ¶ 807. But Touchstream did not mention Google or Chromecast in the
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`portions of its interrogatory response addressing “Commercial Success/Acquiescence,” “Long-
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`felt Need/Solved Problems Industry Failed to Solve,” or “Industry Recognition.” It also did not
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`offer any analysis of Google’s Chromecast products in the section of the interrogatory response
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`regarding a nexus between the secondary considerations and the alleged invention of the
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`Asserted Patents. Ex. 4 at 18-22.4 Thus, Dr. Jeffay could not, and did not, respond to those
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`arguments in his opening report. See Opp. Ex. 1 ¶¶ 796-805, 808-811. The late disclosure of
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`these opinions unfairly prejudices Comcast.
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`Touchstream’s suggestion that Dr. Almeroth’s undisclosed opinions are proper “rebuttal
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`evidence” because they are “on the same subject matter” as Comcast’s disclosures misses the
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`mark. It relies on a non-patent case where, unlike here, the plaintiff had already served an
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`opening report that included opinions on issues for which it bore the burden, and later disclosed a
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`different expert to respond to defendant’s expert’s opinions. See Zoch v. Daimler, A.G., 2018
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`WL 4599674, at *1-3 (E.D. Tex. Sept. 25, 2018). Zoch did not deal with a situation like this one,
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`where the scheduling order set a date for reports on issues for which a party bears the burden but
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`the party with the burden on an issue failed to offer an opinion on that issue on the appointed
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`date. Separately, to suggest that opinions on secondary considerations specifically may be
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`3 The response referred to Google in a section entitled titled “Copying by Competitors.”
`Ex. 4 at 22. However, the court in Google granted judgment as a matter of law of no willful
`infringement, and thus there was no finding of copying. Touchstream Techs. Inc. v. Google
`LLC, No. 6:21-cv-0569-ADA, Dkt. 264 (Sept. 1, 2023) at 1194:25-1195:2. The discovery
`response illustrates the danger in allowing any reference to the Google Litigation at all—
`Comcast will be unfairly prejudiced by any unsubstantiated claims of copying and will have to
`spend time and resources relitigating a case in which it had no part to set the record straight.
`4 The vague reference to “a number of other prior defendants and adjudged infringers”
`does not disclose an argument related to Google specifically and the section of the response titled
`“Commercial Success/Acquiescence” makes no mention of Google. Ex. 4 at 18-19.
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`4
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 9 of 12 PageID #: 9332
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`disclosed in a rebuttal report, Touchstream relies on a decades-old non-binding case where the
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`court allowed the other party to supplement its expert disclosure to respond to late secondary
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`considerations opinions. ABB Air Preheater, Inc. v. Regenerative Env’t Equip. Co., 167 F.R.D.
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`668, 673 (D.N.J. 1996). There is no time for Comcast to do so here.
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`Finally, Touchstream’s attempts to distinguish Smart Path Connections, LLC v. Nokia of
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`Am. Corp. because it dealt with non-infringing alternatives fails. 2024 WL 1096138 (E.D. Tex.
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`Mar. 13, 2024). Both secondary considerations and non-infringing alternatives are responsive to
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`allegations made by the other party. Yet, just as a defendant bears the “burden to show that an
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`alternative is non-infringing” and thus under Smart Path must serve its opinions on that issue in
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`its opening report, so too does a plaintiff bear the burden on secondary considerations and thus
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`must serve opinions on that issue in an expert’s opening report. See id. at *4. It is irrelevant that
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`Smart Path elsewhere declined to strike opinions on motivations to combine because those
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`opinions were not challenged for being improperly disclosed in a rebuttal report. Id. at *3-4.
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`Here, Dr. Almeroth did not provide his opinions on secondary considerations in his opening
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`report, and thus Comcast’s expert had no opportunity to respond to them, and there is no
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`opportunity to cure that prejudice now. The Court should strike those opinions as untimely.
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`IV. Dr. Almeroth’s Statements Regarding Conception “At Least As Early As” October
`2010 Should Be Stricken
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`Touchstream states that Dr. Almeroth “does not intend to provide an opinion seeking to
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`establish a date of conception earlier than October 8, 2010.” Opp. at 11. Accordingly, there
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`appears to be no dispute that statements in his report that “Mr. Strober’s inventions were
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`conceived and invented at least as early as October 2010” should be stricken for the reasons
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`expressed in Comcast’s Motion. Ex. 1 (Almeroth Rebut. Rpt.) ¶ 79; see also id. ¶ 29.
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`5
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 10 of 12 PageID #: 9333
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`Dated: August 27, 2024
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`Respectfully submitted,
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`/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
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`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
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`CERTIFICATE OF AUTHORIZATION TO FILE UNDER SEAL
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`I hereby certify that this document is authorized to be filed under seal pursuant to the
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`Protective Order entered in this case.
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`/s/ David J. Lisson
`David J. Lisson
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 11 of 12 PageID #: 9334
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 27, 2024 true and correct copies of the foregoing were
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`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
`Mark Schafer
`Jordan Bergsten
`Anita Liu
`Philip A. Eckert
`1401 New York Avenue, NW
`Washington, DC 20005
`rdykal@bsfllp.com
`mschafer@bsfllp.com
`jbergsten@bsfllp.com
`aliu@bsfllp.com
`peckert@bsfllp.com
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`☒ Via Email
`☐ Via Overnight Courier
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`☐ Via First Class Mail
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`☒ Via Email
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`GILLIAM & SMITH LLP
`Melissa Richards Smith
`303 South Washington Ave.
`Marshall, TX 75670
`melissa@gillamsmithlaw.com
`
`Counsel for Plaintiff Touchstream Technologies, Inc.
`
`☒ Via Email
`☐ Via Overnight Courier
`☐ Via Hand Delivery
`☐ Via First Class Mail
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`7
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`Case 2:23-cv-00059-JRG Document 160 Filed 08/29/24 Page 12 of 12 PageID #: 9335
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`ARNOLD & PORTER KAYE SCHOLER LLP
`Dina M. Hayes
`70 West Madison Street, Suite 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
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`☒ 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
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`8
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