Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 1 of 22 PageID #: 11314
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`
`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
`
`COMCAST’S OPPOSITION TO TOUCHSTREAM’S MOTIONS IN LIMINE
`
`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 2 of 22 PageID #: 11315
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`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
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`
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`
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`PAGE
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`MIL NO. 1: Opposition to Motion to Exclude Evidence Regarding Touchstream’s
`Marketing Materials ............................................................................................................ 1
`
`MIL NO. 2: Opposition to Motion to Exclude Evidence that Touchstream Was
`Ineffective at Business ........................................................................................................ 4
`
`III. MIL NO. 3: Opposition to Motion Regarding Personal Knowledge ................................. 6
`
`IV. MIL NO. 4: Opposition to Motion Regarding Comparisons Between the Accused
`System and the Prior Art ................................................................................................... 10
`
`V.
`
`MIL NO. 5: Opposition to Motion Regarding Confidentiality Practices ........................ 11
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`i
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 3 of 22 PageID #: 11316
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`TABLE OF AUTHORITIES
`
`
`
`
`
`PAGE
`
`Cases
`
`01 Communique Lab'y, Inc. v. Citrix Sys., Inc.,
`889 F.3d 735 (Fed. Cir. 2018) .................................................................................................. 11
`
`ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
`732 F.2d 1572 (Fed. Cir. 1984) .................................................................................................. 4
`
`Agfa-Gevaert, A.G. v. A.B. Dick Co.,
`879 F.2d 1518 (7th Cir. 1989) .................................................................................................... 7
`
`Antero Res. Corp. v. C & R Downhole Drilling, Inc.,
`2019 WL 13193894 (N.D. Tex. June 20, 2019) ......................................................................... 7
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`2016 WL 7049397 (E.D. Tex. Dec. 5, 2016) .............................................................................. 4
`
`B.E. Wallace Prod. Corp. v. United States,
`26 Cl. Ct. 490 (1992) .................................................................................................................. 4
`
`Black v. CE Soir Lingerie Co.,
`2008 WL 3852722 (E.D. Tex. Aug. 15, 2008) ........................................................................... 5
`
`Boston Sci. Corp. v. Cook Med. LLC,
`No. 1:17-cv-03448-JRS-MJD (S.D. Ind. Feb. 1, 2023) .............................................................. 3
`
`Branch Banking & Trust Co. v. Gedalia,
`2012 WL 170945 (E.D. Tex. Jan. 20, 2012) ............................................................................... 7
`
`Brazos River Auth. v. GE Ionics, Inc.,
`469 F.3d 416 (5th Cir. 2006) ...................................................................................................... 9
`
`City of Huntington v. AmerisourceBergen Drug Corporation,
`2022 WL 468183 (S.D.W.V. Feb. 15, 2022) .............................................................................. 9
`
`Dalton v. FDIC,
`987 F.2d 1216 (5th Cir.1993) ..................................................................................................... 8
`
`DataTreasury Corp. v. Wells Fargo & Co.,
`2010 WL 11538713 (E.D. Tex. Feb. 26, 2010) .......................................................................... 4
`
`Diamond Offshore Co. v. A&B Builders, Inc.,
`302 F.3d 531 (5th Cir. 2002) ...................................................................................................... 8
`
`DIRECTV, Inc. v. Budden,
`420 F.3d 521 (5th Cir. 2005) ...................................................................................................... 9
`
`ii
`
`

`

`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 4 of 22 PageID #: 11317
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`
`
`G+ Commc’ns, LLC v. Samsung Elecs. Co. Ltd.,
`2024 WL 83505 (E.D. Tex. Jan. 8, 2024) ................................................................................... 1
`
`Georgia-Pac. Corp. v. U.S. Plywood Corp.,
`318 F. Supp. 1116 (S.D.N.Y. 1970) ....................................................................................... 3, 4
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`579 U.S. 93 (2016) ...................................................................................................................... 1
`
`In re Texas E. Transmission Corp. PCB Contamination Ins. Coverage Litig.,
`870 F. Supp. 1293 (E.D. Pa. 1992) ............................................................................................. 8
`
`Koss Corp. v. Apple Inc.,
`No. 20-cv-665-ADA (W.D. Tex. July 18, 2022) ........................................................................ 5
`
`Markman v. Westview Instruments, Inc.,
`571 U.S. 370 (1996) .................................................................................................................... 4
`
`Ormco Corp. v. Align Tech., Inc.,
`2009 WL 10668458 (C.D. Cal. May 12, 2009) .......................................................................... 5
`
`Qwest Corp. v. City of Santa Fe,
`2013 WL 12239494 (D.N.M. Apr. 15, 2013) ............................................................................. 8
`
`TXI Operations, LP v. City of Mckinney, Texas,
`2023 WL 161942 (E.D. Tex. Jan. 11, 2023) ............................................................................... 7
`
`U.S. Info. Systems, Inc. v. IBEW Local No. 3,
`2006 WL 2136249 (S.D.N.Y. 2006) ........................................................................................... 7
`
`Union Pump Co. v. Centrifugal Tech. Inc.,
`404 F. App'x 899 (5th Cir. 2010) ............................................................................................ 7, 9
`
`United States for use & benefit of Netplanner Sys., Inc. v. GSC Constr., Inc.,
`2017 WL 3594261 (E.D.N.C. Aug. 21, 2017) ............................................................................ 8
`
`United States v. Jahanrakhshan,
`2018 WL 3455509 (N.D. Tex. July 18, 2018) ............................................................................ 7
`
`Villarreal v. St. Luke’s Episcopal Hosp.,
`751 F. Supp. 2d 902 (S.D. Tex. 2010) ........................................................................................ 9
`
`WhereverTV, Inc. v. Comcast Cable Commc’ns, LLC,
`2023 WL 2664200 (M.D. Fla. Mar. 28, 2023) ........................................................................... 5
`
`
`
`
`
`
`
`iii
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 5 of 22 PageID #: 11318
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`
`
`TABLE OF EXHIBITS
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`
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`Exhibit Description
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`Ex. 1
`
`Ex. 2
`
`Ex. 3
`
`Ex. 4
`
`Ex. 5
`
`Ex. 6
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`Ex. 7
`
`Ex. 8
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`Ex. 9
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`TS_COMCAST_00013929 through TS_COMCAST_00013931
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`TS_COMCAST_00014059 through TS_COMCAST_00014062
`
`TS_COMCAST_00065876 through TS_COMCAST_00065877
`
`COM_00095829 through COM_00095851
`
`Deposition transcript of Anthony “Tony” Werner, taken in this case on
`May 17, 2024
`
`TS_COMCAST_00014056 through TS_COMCAST_00014058
`
`Expert Report of Dr. Kevin Jeffay Regarding Invalidity of U.S. Patent Nos.
`8,356,251, 11,048,751, and 11,086,934, served in this case and dated June 24, 2024
`
`TS_COM_00101606
`
`TS_COM_00091288 through COM_00091290
`
`Ex. 10 COM_00091331 through COM_00091332
`
`Ex. 11 Deposition transcript of Ramon Villaceran, taken in this case on May 15, 2024
`
`Ex. 12 Rebuttal Expert Report of Dr. Kevin Jeffay Regarding Non-Infringement of U.S.
`Patent Nos. 8,356,251, 11,048,751, and 11,086,934, served in this case and dated
`July 15, 2024
`
`Ex. 13 Deposition transcript of Gil Beyda, taken in this case on June 4, 2024
`
`Ex. 14
`
`Ex. 15
`
`Transcript of Jury Trial Proceedings, taken in Touchstream Techs., Inc. v. Google
`LLC, Case No. W-21-CV-569 (W.D. Tex.), dated July 17, 2023
`
`Transcript of Jury Trial Proceedings, taken in Touchstream Techs., Inc. v. Google
`LLC, Case No. W-21-CV-569 (W.D. Tex.), dated July 18, 2023
`
`Ex. 16 Deposition transcript of Herb Mitschele, taken in this case on May 30, 2024
`
`Ex. 17 Deposition transcript of David Strober, taken in this case on June 6, 2024
`
`Ex. 18 Deposition transcript of Michael Rinzler, taken in this case on June 5, 2024
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`
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`
`
`iv
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 6 of 22 PageID #: 11319
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`I.
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`For the reasons discussed below, Touchstream’s motions should be denied.1
`
`MIL NO. 1: Opposition to Motion to Exclude Evidence Regarding Touchstream’s
`Marketing Materials
`
`Comcast does not intend to use Touchstream’s marketing materials to define claim scope.
`
`However, the manner in which Touchstream described its technology to Comcast and others is
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`highly relevant to Touchstream’s claim of willful infringement as well as damages and
`
`secondary considerations of nonobviousness. Because Touchstream’s motion seeks to exclude
`
`such evidence entirely, it should be denied.
`
`The manner in which Touchstream described its technology to Comcast is relevant to
`
`assessing Touchstream’s claims of willful infringement because it is probative of whether
`
`Comcast knew or should have known it infringed Touchstream’s patents. See Halo Elecs., Inc.
`
`v. Pulse Elecs., Inc., 579 U.S. 93, 105 (2016) (“culpability is generally measured against the
`
`knowledge of the actor at the time of the challenged conduct”); G+ Commc’ns, LLC v. Samsung
`
`Elecs. Co. Ltd., 2024 WL 83505, at *4 (E.D. Tex. Jan. 8, 2024) (Gilstrap, C.J.) (noting that
`
`“willful infringement is an inquiry that considers the totality of the circumstances”).
`
`Touchstream alleges that Comcast willfully infringed its patents based on pre-suit meetings with
`
`Comcast and materials presented at those meetings. Thus, what Touchstream told Comcast
`
`about its technology is highly probative of what Comcast would have reasonably understood
`
`Touchstream’s technology to be and what Comcast reasonably would have believed
`
`
`1 This Opposition uses the following defined terms: Plaintiff Touchstream Technologies,
`Inc. (“Touchstream”); Defendants Comcast Cable Communications, LLC, Comcast Corporation,
`Comcast Cable Communications Management, LLC, and Comcast of Houston, LLC
`(collectively, “Comcast”); Touchstream Techs., Inc. v. Google LLC, No. 6:21-cv-569-ADA
`(W.D. Tex. 2021) (“Google”); and exhibits to the Declaration of Alena Farber (“Ex.”).
`
`1
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 7 of 22 PageID #: 11320
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`Touchstream’s patents covered.2 Whether the individuals that made these statements were
`
`persons of skill in the art, see Mot. at 4, is irrelevant because what matters is what was conveyed
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`to Comcast.
`
`As one example, Touchstream
`
`
`
`
`
` Ex. 4
`
`(COM_00095829) at -5848. In deposition, Touchstream asked a recipient of such messaging,
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`Tony Werner, whether he would have
`
`(Werner Dep. Tr.) at 114:18-115:2. Upon being asked why this was the case, Mr. Werner
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`explained,
`
`Touchstream’s CEO stated to a Comcast employee that
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` Id. at 115:3-8. Similarly,
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`
`
` Ex. 5
`
`
`
`
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`Mr. Werner testified to his belief that such a statement
`
` Ex. 6 (TS_COMCAST_00014056) at -4056.
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`
`
`
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`Touchstream is allowed to attempt to establish willfulness based on pre-suit communications
`
` Ex. 5 (Werner Dep. Tr.) at 155:3-15.3 If
`
`
`2 Three of the documents cited by Touchstream do not contain any marketing language or
`descriptions of Touchstream’s technology. See Mot. at 2. Instead, they contain statements by
`Touchstream personnel
`
` See Ex. 1 (TS_COMCAST_00013929); Ex. 2 (TS_COMCAST_00014059); Ex. 3
`(TS_COMCAST_00065876). Touchstream’s motion provides no basis to exclude these
`documents, which are highly probative of willfulness. See infra Opp. to MIL No. 2.
`3 Touchstream’s motion cites several other deposition excerpts containing
`
`, which are relevant for the same
`reasons. See Mot. at 2 (citing Mot. Ex. A (Lulla Dep. Tr.) at 21:15-19, 23:6-24).
`
`2
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 8 of 22 PageID #: 11321
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`
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`about its technology and patents, then Comcast must be able to respond by pointing to
`
`
`
`
`
`
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`
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`In addition, evidence of how Touchstream described its technology to others is relevant
`
`to assessing damages and secondary considerations of nonobviousness. See Boston Sci. Corp. v.
`
`Cook Med. LLC, No. 1:17-cv-03448-JRS-MJD, Dkt. 972 at 10-11 (S.D. Ind. Feb. 1, 2023)
`
`(finding marketed benefits of the patentee’s device “relevant and probative as to the benefit of
`
`the asserted claims, the commercial success of [the patentee’s] product, and its alleged
`
`damages”).4 Here, Touchstream’s statements about its products go directly to whether there is a
`
`nexus between the asserted patents and any commercial success or long-felt but unsolved need.
`
`See Ex. 7 (Jeffay Invalidity Rpt.) at ¶¶ 803-04. They are also relevant to Georgia-Pacific factors
`
`9 and 10 (the nature and benefits of the patents-in-suit). See Georgia-Pac. Corp. v. U.S.
`
`Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970). Indeed, one of the documents cited
`
`in Touchstream’s motion is a summary of the technology that Touchstream developed for
`
`Quadriga, which is highly relevant to an analysis of the software license on which Touchstream’s
`
`damages expert relies for his royalty rate. See Mot. at 2 (citing TS_COMCAST_00022796).5
`
`The Court’s Standing MIL No. 18 does not preclude use of Touchstream’s statements for
`
`the above purposes. See Mot. at 3. Rather, the Court’s MIL precludes a party from comparing
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`the accused method to a non-accused method for the purposes of infringement or non-
`
`
`4 A redacted version of Boston Scientific is available at Dkt. 150-5.
`5 Touchstream’s motion cites several other marketing materials and deposition excerpts
`describing Touchstream’s technology, which are similarly relevant to damages and secondary
`considerations. See Mot. at 2, 4 (citing Mot. Ex. B (Rinzler Dep. Tr.) at 41:23-42:4; Mot. Ex. G
`(Strober Dep. Tr.) at 24:19-25:7, 70:1-72:11, 74:13-75:20; COM_00105419;
`TS_CHARTER_00065855; TS_COMCAST_00092857).
`
`3
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 9 of 22 PageID #: 11322
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`
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`infringement.6 Comcast will not do so. However, since the evidence Touchstream seeks to
`
`exclude is highly probative of other issues, it must be admitted.
`
`II. MIL NO. 2: Opposition to Motion to Exclude Evidence that Touchstream Was
`Ineffective at Business
`
`Touchstream seeks to exclude evidence regarding its lack of business success that is
`
`highly relevant to damages, obviousness, and willful infringement and that does not disparage
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`Touchstream in the manner addressed by the Court’s Standing MIL No. 11 or in any other
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`unfairly prejudicial way. Its motion should therefore be denied.
`
`The Court’s Standing MIL No. 11 is not directed to evidence of a patentee’s lack of
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`business success. Rather, it is directed to disparaging characterizations of a company’s litigation
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`activities: “‘patent troll,’ ‘pirate,’ ‘bounty hunter,’ ‘bandit,’ ‘playing the lawsuit lottery,’ ‘shell
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`company,’ ‘shakedown artist,’ [or] ‘patent assertion entity.’” Standing Order on MILs at 2
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`(Aug. 11, 2023). Touchstream’s one cited decision similarly fails to support its requested relief
`
`because it concerned the success or failure of “prior businesses” of the inventor. DataTreasury
`
`Corp. v. Wells Fargo & Co., 2010 WL 11538713, at *5 (E.D. Tex. Feb. 26, 2010) (emphasis
`
`added). Unlike prior, unrelated businesses, the inability of Touchstream to successfully
`
`commercialize the technology at issue in this case is directly relevant to numerous issues.
`
`First, evidence that the patentee’s business was unsuccessful is relevant to Georgia-
`
`Pacific factor 8: “[t]he established profitability of the product made under the patent; its
`
`commercial success; and its current popularity.” Georgia-Pac. Corp. v. U.S. Plywood Corp.,
`
`
`6 Touchstream’s cited cases are similarly inapposite because they only address using a
`patentee’s product to define the scope of a patent’s claims for the purpose of assessing
`infringement. See Markman v. Westview Instruments, Inc., 571 U.S. 370, 373 (1996); B.E.
`Wallace Prod. Corp. v. United States, 26 Cl. Ct. 490, 495 (1992); ACS Hosp. Sys., Inc. v.
`Montefiore Hosp., 732 F.2d 1572, 1578 (Fed. Cir. 1984); Arthrex, Inc. v. Smith & Nephew, Inc.,
`2016 WL 7049397, at *4 (E.D. Tex. Dec. 5, 2016).
`
`4
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 10 of 22 PageID #: 11323
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`
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`318 F. Supp. 1116, 1120 (S.D.N.Y. 1970) (emphasis added).7 Courts thus allow defendants to
`
`introduce such evidence for purposes of a reasonable-royalty analysis. WhereverTV, Inc. v.
`
`Comcast Cable Commc’ns, LLC, 2023 WL 2664200, at *6 (M.D. Fla. Mar. 28, 2023) (denying
`
`motion to exclude because “[plaintiff]’s unsuccessful attempts to commercialize its technology
`
`may be relevant to the calculation of the reasonable royalty”); Koss Corp. v. Apple Inc., No. 20-
`
`cv-665-ADA, Dkt. 293 at 1 (W.D. Tex. July 18, 2022) (denying motion seeking to exclude
`
`evidence of plaintiff’s lack of commercial success and revenue).
`
`Second, evidence of Touchstream’s inability to commercialize its patents is relevant to
`
`secondary considerations of nonobviousness and is admissible on that basis as well. Ormco
`
`Corp. v. Align Tech., Inc., 2009 WL 10668458, at *12 (C.D. Cal. May 12, 2009) (denying
`
`motion to exclude plaintiff’s “failed efforts to commercialize its product” where defendant
`
`argued evidence was relevant to secondary considerations); see also Black v. CE Soir Lingerie
`
`Co., 2008 WL 3852722, at *12 (E.D. Tex. Aug. 15, 2008), aff’d, 319 F. App’x 901 (Fed. Cir.
`
`2009) (finding plaintiff’s “unsuccessful attempt to commercialize the embodiment of the
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`[asserted] patent . . . undercuts [plaintiff]’s commercial success conclusions”).8 Indeed, it is to
`
`establish lack of secondary considerations this reason that Comcast’s technical expert notes that
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`“Touchstream’s attempts to license its technology were otherwise universally unsuccessful.” Ex.
`
`7 (Jeffay Invalidity Rpt.) ¶¶ 798-800.
`
`
`7 Evidence that Touchstream was commercially unsuccessful also supports a lack of
`competition with Comcast, which is relevant to Georgia-Pacific factor 5: “[t]he commercial
`relationship between the licensor and licensee, such as, whether they are competitors in the same
`territory in the same line of business . . . .” Georgia-Pac., 318 F. Supp. at 1120.
`8 The court in Black found it relevant to commercial success that “potential buyers
`‘laughed,’ saying the [patentee’s] product ‘was like a clown’s nose,’ and ‘didn’t work,’” which is
`far more prejudicial than any evidence that Touchstream seeks to exclude here. Black, 2008 WL
`3852722, at *12.
`
`5
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`

`

`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 11 of 22 PageID #: 11324
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`
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`Third, Touchstream’s lack of commercial success is relevant to Touchstream’s
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`willfulness allegations and trial narrative. Many of the documents Touchstream seeks to exclude
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`reflect
`
`See, e.g., Ex. 8 (COM_00101606) at -1606
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`; Ex. 9 (COM_00091288) at -1288
`
`; Ex. 10
`
`(COM_00091331) at -1331
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`
`
`
`
`
`
`. Such evidence is highly probative of Comcast’s lack of willful infringement
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`because it makes no sense to suggest that Comcast intentionally infringed a patent directed to
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`technology
`
`. Further, Touchstream’s Complaint
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`alleges that “[its] efforts . . . to appropriately monetize [the patented] inventions were
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`significantly hindered by infringement . . . , including by Comcast.” Dkt. 30 ¶ 25. Comcast
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`must therefore be allowed to present rebuttal evidence that it was Touchstream’s own
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`ineffectiveness that caused its business failure, not infringement by Comcast or others.
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`Because Touchstream’s inability to commercialize the technology at issue in this case is
`
`relevant to multiple issues and raises none of the concerns addressed by the Court’s Standing
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`MIL No. 11, this evidence should be admitted.
`
`III. MIL NO. 3: Opposition to Motion Regarding Personal Knowledge
`
`Touchstream’s motion seeks to exclude a broad, amorphous category of testimony from
`
`Comcast witnesses, but does not identify what specific testimony that Comcast actually intends
`
`to offer Touchstream believes is improper. Notably, Touchstream does not identify any specific
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`witness on Comcast’s trial witness list whose testimony should be limited or any particular
`
`subject that should be excluded. Instead, it seeks to establish a non-existent requirement that “a
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`witness must have perceived a fact themselves to testify to it.” Mot. at 7. That is not the law,
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`and the motion should be denied.
`
`6
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 12 of 22 PageID #: 11325
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`
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`“Although first-hand observation is obviously the most common form of personal
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`knowledge, that is not the only basis for it.” United States v. Jahanrakhshan, 2018 WL
`
`3455509, at *2 (N.D. Tex. July 18, 2018) (quoting U.S. Info. Systems, Inc. v. IBEW Local No. 3,
`
`2006 WL 2136249 (S.D.N.Y. 2006)). This is especially so in a case like this one involving
`
`technical facts (e.g., how a telecommunication system functions) that can only be learned from
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`documents or discussions with a collection of individuals as opposed to eyewitness observation
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`(e.g., seeing that the traffic light was red).9 As Judge Posner recognized decades ago:
`
`All perception is inferential, and most knowledge social; since
`Kant we have known that there is no unmediated contact between
`nature and thought. Knowledge acquired through others may still
`be personal knowledge within the meaning of Fed. R. Evid. 602,
`rather than hearsay, which is the repetition of a statement made by
`someone else—a statement offered on the authority of the out-of-
`court declarant and not vouched for as to truth by the actual
`witness. Such a statement is different from a statement of personal
`knowledge merely based, as most knowledge is based, on
`information obtained from other people.
`
`Agfa-Gevaert, A.G. v. A.B. Dick Co., 879 F.2d 1518, 1523 (7th Cir. 1989). Thus, although a
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`witness may not merely parrot hearsay, courts regularly allow witnesses to gain personal
`
`knowledge via means other than first-hand observation.
`
`First, as Touchstream’s cited cases confirm, “[i]t is common in civil litigation to permit
`
`corporate representatives to testify based on their review of business records.” TXI Operations,
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`LP v. City of Mckinny, Texas, 2023 WL 161942, at *7 (E.D. Tex. Jan. 11, 2023); see also Branch
`
`
`9 All of Touchstream’s cases fall into the latter category. In two of its cases, the
`challenged testimony related to actions taken by other employees. Union Pump Co. v.
`Centrifugal Tech. Inc., 404 F. App'x 899, 907-08 (5th Cir. 2010) (testimony regarding process
`and findings of internal investigation conducted by other employees); TXI Operations, LP v. City
`of Mckinney, Texas, 2023 WL 161942, at *8 (E.D. Tex. Jan. 11, 2023) (declaration regarding
`other employees’ business practices and handling of documents). Touchstream’s third case is
`inapposite, as the witnesses disavowed any personal knowledge during deposition. Antero Res.
`Corp. v. C & R Downhole Drilling, Inc., 2019 WL 13193894, at *1 (N.D. Tex. June 20, 2019).
`
`7
`
`

`

`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 13 of 22 PageID #: 11326
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`
`
`Banking & Trust Co. v. Gedalia, 2012 WL 170945, at *3 (E.D. Tex. Jan. 20, 2012) (citing
`
`Dalton v. FDIC, 987 F.2d 1216, 1223 (5th Cir.1993)). Even if a witness did not prepare the
`
`underlying documents, he or she can testify to knowledge obtained by investigating and
`
`reviewing company records. Qwest Corp. v. City of Santa Fe, 2013 WL 12239494, at *1
`
`(D.N.M. Apr. 15, 2013); see also Diamond Offshore Co. v. A&B Builders, Inc., 302 F.3d 531,
`
`545 n.13 (5th Cir. 2002) (affiant’s position as Director, review of relevant records, and statement
`
`that he had personal knowledge were sufficient), overruled on other grounds by Grand Isle
`
`Shipyard, Inc. v. Seacor Marine, LLC, 589 F.3d 778 (5th Cir. 2009); United States for use &
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`benefit of Netplanner Sys., Inc. v. GSC Constr., Inc., 2017 WL 3594261, at *3 (E.D.N.C.
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`Aug. 21, 2017) (collecting cases).
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`Second, a witness may learn information from conversations with others so long as the
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`witness synthesizes it. For example, a witness who reviewed relevant documents and discussed
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`the relevant events with other employees was allowed to testify because he did not “offer his
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`statement solely on the authority of those statements, but rather vouches for the statements’ truth
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`himself.” In re Texas E. Transmission Corp. PCB Contamination Ins. Coverage Litig., 870 F.
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`Supp. 1293, 1304 (E.D. Pa. 1992), aff’d, 995 F.2d 219 (3d Cir. 1993), vacated (Jan. 6, 1994), on
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`reh’g, 15 F.3d 1230 (3d Cir. 1994), and opinion reinstated in part, 15 F.3d 1249 (3d Cir. 1994),
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`and aff’d in part, 15 F.3d 1230 (3d Cir. 1994), and aff’d, 15 F.3d 1249 (3d Cir. 1994). So long
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`as the witness is not “merely repeating (without attribution) a statement made wholesale to him
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`by another,” but actually “compil[ed] and assimilate[ed] information he gleaned from many
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`8
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 14 of 22 PageID #: 11327
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`
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`sources,” the witness may testify to what they learned. City of Huntington v. AmerisourceBergen
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`Drug Corporation, 2022 WL 468183 at *5 (S.D.W.V. Feb. 15, 2022).10
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`Third, personal knowledge may be inferred from a witness’s position within the
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`company. For example, a company executive is presumed to have personal knowledge of
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`matters within his “sphere of responsibility.” DIRECTV, Inc. v. Budden, 420 F.3d 521, 530 (5th
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`Cir. 2005). Similarly, “[b]y virtue of his position,” a witness was found to have personal
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`knowledge of the organization in which he worked. Villarreal v. St. Luke’s Episcopal Hosp.,
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`751 F. Supp. 2d 902, 912 (S.D. Tex. 2010).
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`Finally, any prohibition on witnesses testifying to matters outside their personal
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`knowledge applies only “to the extent that information [is] hearsay not falling within one of the
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`authorized exceptions.” Union Pump Co. v. Centrifugal Tech. Inc., 404 F. App’x 899, 907-08
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`(5th Cir. 2010) (alteration in original) (quoting Brazos River Auth. v. GE Ionics, Inc., 469 F.3d
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`416, 435 (5th Cir. 2006)). Thus, a witness may testify to information they read or were told if it
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`falls within a hearsay exception.
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`The parameters of allowable trial testimony are certainly different than those governing a
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`Rule 30(b)(6) deposition, see Mot. at 7, but they are not as stringent as Touchstream suggests.
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`And while Comcast disagrees with Touchstream’s characterizations of Comcast’s witness’
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`10 Touchstream appears to take issue with the fact that Comcast prepared one of its
`corporate designees, Evan Cohen, to provide accurate testimony in his deposition, including
`through
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`
`
`. Mot. at 8. Mr. Cohen will not simply repeat the
` at trial. However, since no one
`conversations he had with others
`individual can personally observe all aspects of Comcast’s system, Mr. Cohen—and Comcast’s
`other witnesses—must be allowed to synthesize information from various sources to provide
`testimony on that system.
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`9
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 15 of 22 PageID #: 11328
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`
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`designations, deposition testimony,11 and planned trial testimony, Touchstream remains free to
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`cross-examine those witnesses about the source and nature of their knowledge and impeach them
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`in the event of any inconsistencies with their depositions. It may also object to testimony should
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`it believe the appropriate foundation has not been laid. But Touchstream cannot prevent
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`Comcast’s witnesses from testifying as to unidentified matters within their personal knowledge
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`based on a rule that does not exist.
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`IV. MIL NO. 4: Opposition to Motion Regarding Comparisons Between the Accused
`System and the Prior Art
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`Contrary to Touchstream’s speculation, Comcast has no intention of comparing its
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`accused system with the prior art to avoid infringement. But Touchstream may not use the
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`specter of such an argument as a pretext to exclude relevant evidence of Comcast’s prior-art
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`system, both of which are highly probative for invalidity, willfulness, and damages.
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`Touchstream’s MIL No. 4 should therefore be denied.
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`Touchstream’s MIL provides only one purported example that misunderstands how and
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`why Comcast’s technical expert Dr. Kevin Jeffay references an aspect of Comcast’s system.
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`Dr. Jeffay’s opinion is that the
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` referenced in Touchstream’s motion do not meet
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`the limitations of the asserted claims. See, e.g., Ex. 12 (Jeffay Rebut. Rpt.) at ¶ 116. It is that
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`opinion on which he relies to establish that Comcast’s X1 system does not infringe. He
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`separately notes that these
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` were also in the 2010 Xfinity TV App System and thus states
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`that if, contrary to his previous opinion, the
`
` do satisfy the limitation then it does so
`
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`11 Touchstream wrongly suggests that
`
`
`
` Mot. at 8. Comcast’s witness showed that it
`is not uncommon to have knowledge and be able to provide testimony on components of
`Comcast’s system beyond those on which a person works most directly. For example, Ramon
`Villaceran, who works on
`, nonetheless testified to
`. Ex. 11
`
`(Villaceran Dep. Tr.) at 21:12-29:4.
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`10
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 16 of 22 PageID #: 11329
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`
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`for the purposes of invalidity as well. Id. at ¶ 117. It is common and appropriate for an expert to
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`note that something does not satisfy an element but also explain that, if the jury disagrees, then it
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`must also satisfy that element for the purposes of invalidity. 01 Communique Lab'y, Inc. v.
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`Citrix Sys., Inc., 889 F.3d 735, 742 (Fed. Cir. 2018) (no prohibition on “arguing that if a claim
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`term must be broadly interpreted to read on an accused device, then this same broad construction
`
`will read on the prior art”).
`
`Moreover, whether a functionality was present in Comcast’s prior-art system is relevant
`
`to both damages because such preexisting technology cannot be part of any royalty.12 As
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`discussed in Comcast’s opposition to Touchstream’s motion to strike opinions of Comcast’s
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`damages expert, Dr. Stephen Becker, it is necessary to consider the functionality of the prior art
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`in analyzing Georgia-Pacific Factor 13. Dkt. 135 at 3, 6. Moreover, that a technology predates
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`Touchstream’s patents is relevant to willfulness because it could not have been misappropriated
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`from Touchstream. Thus, while Comcast will not argue it does not infringe because it is
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`practicing the prior art, it is proper to offer evidence showing which aspects of its system predate
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`Touchstream’s patents.
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`V. MIL NO. 5: Opposition to Motion Regarding Confidentiality Practices
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`Touchstream’s MIL No. 5 seeks to exclude evidence concerning topics that it has put at
`
`issue in this case.
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`First, Touchstream seeks to exclude evidence of the steps, if any, Touchstream took to
`
`protect the security of other parties’ information. However, Touchstream has itself put at issue
`
`
`12 Contrary to Touchstream’s suggestion, referencing the prior art system does not make
`Dr. Jeffay’s statements untimely. Ex. 12 (Jeffay Rebut. Rpt.) at ¶¶ 44, 114, 124, 140, 143. His
`invalidity opinions are stated in full in his invalidity report. Any relevance of the 2010 Xfinity
`TV App System to other issues are properly disclosed in his rebuttal report and, if Touchstream
`truly took issue with their timeliness, it would have moved to strike them.
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`11
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`

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`Case 2:23-cv-00059-JRG Document 213 Filed 09/26/24 Page 17 of 22 PageID #: 11330
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`
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`the steps a reasonable company would take by questioning
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`
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` As just one example, Touchstream has
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`designated seven separate questions to Tony Werner (Comcast’s corporate representative on its
`
`meetings with Touchstream) about whether
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`
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`.13 Ex. 5 (Werner Dep. Tr.) at 101:2-9, 161:24-162:22, 186:16-22, 187:9-
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`188