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`EXHIBIT 1
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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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`Case No. 2:23-cv-00059-JRG
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`PRELIMINARY JURY INSTRUCTIONS1
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`1 Submissions that are agreed to by both Touchstream and Charter are not highlighted.
`Submissions proposed by Touchstream that are not agreed to by Charter are bracketed and
`highlighted in green. Submissions proposed by Charter that are not agreed to by Touchstream are
`bracketed and highlighted in blue. The parties have entered their objections, explanations,
`citations, and commentary in footnotes only.
`The parties reserve their respective rights to further object or propose new instructions based on
`their pending motions or further development at trial.
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`PRELIMINARY INSTRUCTIONS
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`Ladies and Gentlemen of the Jury: Before you hear the evidence in this case, I have some
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`preliminary instructions that I need to give you on the record before we start with opening
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`statements from the attorneys and then go on to the evidence.
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`You’ve now been sworn as the jurors in this case. And as the jury, you are the sole judges
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`of the facts. As such, you will determine and decide all the facts in this case.
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`As the Judge, I’ll give you instructions on the law, decide questions of law that might
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`arise during the trial, handle matters related to evidence and procedure, as well as being responsible
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`for the efficient flow of the evidence and maintaining the decorum of the courtroom.
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`At the end of the evidence, I’ll give you detailed instructions about the law to apply in
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`deciding this case, and I’ll give you a list of questions that you are then to answer. This list of
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`questions is called the verdict form. Your answers to those questions will need to be unanimous,
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`and those unanimous answers will constitute the jury’s verdict in this case.
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`Now, let me briefly talk with you about what this case concerns. This case involves a
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`dispute regarding three United States patents. Now, I know that each one of you saw the patent
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`video this morning prepared by the Federal Judicial Center, but I need to give you some
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`instructions now and on the record about how one is obtained.
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`Patents are either granted or denied by the United States Patent and Trademark Office,
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`which you will hear referred to in shortened form simply as the PTO, or as the Patent Office. A
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`valid United States patent gives the patentholder the right for up to 20 years from the date the
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`patent application is filed to prevent others from making, using, offering to sell, or selling the
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`patented invention within the United States or importing it into the United States without the
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`patentholder’s permission.
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`A patent is a form of property called intellectual property and, like with other forms of
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`property, a patent can be bought or sold.
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`A violation of the patentholder’s rights is called infringement. The patentholder may try
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`to enforce a patent against persons it believes to be infringers by filing a lawsuit in federal court,
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`and that’s what we have in this case.
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`Now, the process of obtaining a patent is called patent prosecution. To obtain a patent,
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`one must first file an application with the PTO, the United States Patent and Trademark Office.
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`The PTO, ladies and gentlemen, is an agency of the United States government that employs trained
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`examiners who review patent applications.
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`The application filed with the PTO includes within it something called a specification.
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`The specification contains a written description of the claimed invention telling what the invention
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`is, how it works, how to make it, and how to use it. The specification concludes or ends with one
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`or more numbered sentences. These numbered sentences at the end of the patent are called the
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`patent claims.
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`When a patent is granted by the Patent Office, the claims define the boundaries of its
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`protection and it is the claims that give notice to the public of those boundaries.
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`Now, patent claims may exist in two forms referred to as independent claims and
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`dependent claims. An independent claim does not refer to any other claim in the patent. It is
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`independent. It’s not necessary, ladies and gentlemen, to look to any other claim within the patent
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`to determine what an independent patent claim means.
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`However, a dependent claim refers to at least one other claim in the patent. A dependent
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`claim includes all of the elements or limitations of that other claim or claims to which it refers or,
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`as is sometimes said, from which it depends, as well as the additional elements or limitations
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`recited within the dependent claim itself. Accordingly, to determine what a dependent patent claim
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`covers, it’s necessary to look at both the dependent claim itself and the independent claim or claims
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`from which it refers or, as we sometimes say, from which it depends.
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`Now, the claims of the patents-in-suit use the word ‘comprising.’ Comprising means
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`including or containing. A claim that includes the word ‘comprising’ is not limited to the methods
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`or devices having only the elements that are recited in the claim, but also covers other methods or
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`devices that include or add additional elements.
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`Let me give you an example. Take, if you will, the example of a table. If a claim recites
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`a table comprising a tabletop, legs, and glue, the claim will cover any table that contains those
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`structures, even if the table also contains other or additional structures such as leaves to expand
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`the size of the tabletop or wheels to go on the ends of the legs. Now, that’s a very simple example
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`using the word ‘comprising’ and what it means. In other words, it can have other features in
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`addition to those that are covered by the patent.
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`After the applicant files his or her application with the Patent Office, an examiner is
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`assigned and the examiner reviews the application to determine whether or not the claims are
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`patentable—that is to say, appropriate for patent protection, and whether or not the specification
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`adequately describes the invention that’s claimed.
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`In examining the patent application, the examiner reviews certain information about the
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`state of the technology at the time the application was filed. The PTO searches for and reviews
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`this type of information that’s publicly available or that might have been submitted by the
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`applicant. And this type of information is called prior art. The examiner reviews this prior art to
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`determine whether or not the invention is truly an advance over the state of the art at the time.
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`Now, prior art is defined by law, and I’ll give you specific instructions at a later time as
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`to what it constitutes. However, ladies and gentlemen, in general, prior art includes information
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`that demonstrates the state of the technology that existed before the claimed invention was made
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`or before the application for a patent was filed with the Patent Office.
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`A patent contains a list of certain prior art that the examiner has reviewed and
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`considered. The items on this list as reflected in the patent, are called the cited references.
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`Now, after the prior art search and an examination of the application, the examiner
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`informs the applicant in writing of what the examiner has found and whether the examiner
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`considers any claim to be patentable in which case it would be allowed. And this writing from the
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`examiner to the applicant is called an office action.
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`Now, if the examiner rejects the claims, the applicant has an opportunity to respond to
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`the examiner to try to persuade the examiner to allow the claims. The applicant also has a chance
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`to change or amend the claims, or to submit new claims. And the papers generated in this back and
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`forth between the examiner and the applicant are called the prosecution history.
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`And this process between the examiner and the applicant may go back and forth for some
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`time until the examiner is satisfied that the application meets the requirements for a patent and, in
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`that case, the application issues as a United States patent; or, in the alternative, if the examiner
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`ultimately concludes that the application should be rejected, then no patent is issued.
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`Sometimes patents are issued after appeals from within the PTO or to a court.
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`Now, to help you follow the evidence, I’m going to give you a brief summary of the
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`positions of the parties in this case.
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`As you know, the party that brings a lawsuit is called the plaintiff. And the Plaintiff in
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`this case in this case is Touchstream Technologies, Inc., which you will hear referred to throughout
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`the trial simply as the “Plaintiff” or you may hear it referred to simply as “Touchstream” or
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`“Shodogg,” which is another name the company used for a “doing business as” name. And as you
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`know, the party or parties against whom a lawsuit is brought are called the defendants, and in this
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`case the Defendants are Charter Communications, Inc., Charter Communications Operating, LLC,
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`Spectrum Management Holding Company, LLC, Time Warner Cable Enterprises, LLC, Spectrum
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`Gulf Coast, LLC, and Charter Communications LLC, which you will hear referred to throughout
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`the trial collectively together either as just the “Defendants” or as “Charter.”
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`Now, as I told you during jury selection, this is a case of alleged patent infringement.
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`And as I’ve mentioned, there are three United States patents that have been asserted in this case.
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`Those are United States Patent No. 8,356,251, United States Patent No. 11,048,751, and United
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`States Patent No. 11,086,934. As you may have heard, patents are often referred to by the last
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`three digits of their patent number. So in this case, Patent No. 8,356,251, you’ll hear referred to
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`simply as the “’251 Patent”; you’ll hear Patent No. 11,048,751 referred to as the “’751 Patent”;
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`and you’ll hear Patent No. 11,086,934 referred to as the “’934 Patent.”
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`Now, these patents may be referred to and will be referred to throughout the trial at
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`various times as the patents-in-suit. You may also hear them referred to collectively as the Asserted
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`Patents. Those terms mean the same thing. The Asserted Patents in this case generally relate to
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`technology controlling how to stream or cast content (like videos) from a mobile device (like a
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`cellular phone) to a display device (like a television).
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`Now, the Plaintiff Touchstream contends that the Defendants Charter are infringing
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`certain claims of the patents-in-suit by using Touchstream’s patented technology in connection
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`with Charter’s products and services to its customers. Touchstream further contends that the
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`Defendants’ infringement is willful. And, additionally, Touchstream contends that it is entitled to
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`money damages as a result of the infringement. Now, the Defendants in this case, Charter, deny
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`that they are infringing any of the claims asserted by the Plaintiff in the patents-in-suit, and they
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`contend that the asserted claims of the patents-in-suit are invalid as being anticipated or obvious
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`in light of the prior art, invalid based on a lack of sufficient written description, and invalid based
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`on ineligible patent subject matter. Charter denies that it has willfully infringed any of the patents-
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`in-suit, and Charter denies that Touchstream is entitled to any money damages.
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`Now, I know that there are many new words and new concepts that have been thrown at
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`you, ladies and gentlemen, since you arrived for jury duty this morning. I’m going to define a lot
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`of these words and a lot of these concepts for you as we go through these instructions. The
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`attorneys on both sides of the case are going to discuss them in their opening statements which
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`you’ll hear in a few minutes. The witnesses over the course of the trial are going to help you as
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`they go through their testimony to understand these words and these concepts.
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`So please, ladies and gentlemen, do not feel overwhelmed at this stage. I promise you it
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`will all come together as we go through the trial.
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`Now, one of your jobs in this case is to decide whether or not the asserted claims of the
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`patents-in-suit have been infringed [and whether or not such infringement was willful].2 You will
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`2 Touchstream: Consistent with this Court’s practice in other cases, Touchstream proposes
`instructing the jury on willfulness after infringement (as opposed to providing willfulness
`instructions after damages as Charter proposes). See, e.g., Constellation Designs, LLC v. LG
`Electronics Inc., No. 2:21-cv-00448-JRG (E.D. Tex.) and Netlist, Inc. v. Samsung Electronics Co.,
`No. 2:21-cv-00463-JRG (E.D. Tex.). This is also consistent with the Federal Circuit Bar
`Association Model Jury Instructions, which instruct on willfulness as part of its infringement
`instructions. See Fed. Cir. Model Jury Instrs. at Instr. B.3. Moreover, Charter’s request to
`condition a finding of willfulness on the jury’s determination of invalidity is not tenable because
`(1) if issues relating to ineligibility are submitted to the jury, then it will not be possible for the
`jury to determine what patents, if any, it found invalid because the Court will ultimately determine
`ineligibility, and (2) having the jury determine willfulness in conjunction with infringement will
`avoid the possibility of a retrial on willfulness if the Court rejects a jury’s finding of invalidity
`post-trial. Finally, Charter’s concern that the jury will take willfulness into account when
`calculating damages is both speculative and can be mitigated through jury instructions telling the
`jury not to consider willfulness in calculating damages.
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`also be asked to decide whether or not certain of the Asserted Claims are invalid. Then if at least
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`one claim is infringed and not invalid, you will also need to decide at that point in time what
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`amount of money damages[, if any,]3 should be awarded to the Plaintiff to compensate it for
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`Charter: Charter objects to including the willfulness instruction prior to the instructions on
`invalidity and damages. Although Charter acknowledges the Federal Circuit’s holding that “the
`factual components of the willfulness question should be resolved by the jury,” WBIP, LLC v.
`Kohler Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016), it preserves the right to argue at an appropriate
`time that willfulness should be decided by the Court and not the jury. See Halo Elecs., Inc. v. Pulse
`Elecs., Inc., 579 U.S. 93, 107 (2016) (“[Section 284] ‘commits the determination’ whether
`enhanced damages are appropriate 'to the discretion of the district court’ and ‘that decision is to be
`reviewed on appeal for abuse of discretion.’”) (quoting Highmark Inc. v. Allcare Health Mgmt.
`Sys., Inc., 572 U.S. 559, 563 (2014)); Eko Brands, LLC v. Adrian Rivera Maynez Enters., Inc., 946
`F.3d 1367, 1378 (Fed. Cir. 2020) (“As the plain language of 35 U.S.C. § 284 makes clear, the issue
`of punishment by enhancement is for the court and not the jury. . . . The question of enhanced
`damages is addressed by the court once an affirmative finding of willfulness has been made.”).
`Charter proposes that should any willfulness instruction be given to the jury, it should be provided
`after instruction on invalidity. There cannot be willful infringement of any invalid claim and
`willfulness should not be discussed prior to the threshold issue of validity. See Eko Brands, LLC
`v. Adrian Rivera Maynez Enterprises, Inc., 946 F.3d 1367, 1379 (Fed. Cir. 2020) (recognizing
`belief of invalidity as a factor in the willfulness analysis). Further, the Court should resolve the
`issue of whether the claims recite an abstract idea prior to trial, such that the jury’s finding that the
`claims recite well-known and conventional technology will be sufficient for a final finding of
`invalidity. The possibility of a possible retrial on willfulness should invalidity be overturned is not
`a reason to ask the jury to answer the legally incorrect question of whether Charter willfully
`infringed an invalid patent claim.
`Further, Charter proposes that the jury hears the Court’s instructions on willful infringement after
`it hears the instructions on damages because the jury “may not allow that [willfulness] decision to
`affect the amount of any damages award you give for infringement.” See 2024 AIPLA Model
`Patent Jury Instructions at 57. While the jury may consider any “deliberate or intentional
`infringement,” it may not apply that finding to any damages award—those damages related to
`willfulness are determined by the court. See Eko Brands, 946 F.3d at 1378 (“the concept of
`‘willfulness” requires a jury to find no more than deliberate or intentional infringement, . . . [t]he
`question of enhanced damages is addressed by the court once an affirmative finding of willfulness
`has been made”).
`3 Touchstream: Throughout these instructions, Touchstream proposes not including an “if any”
`qualifier in the damages instructions because if the jury finds infringement and does not find
`invalidity, then Touchstream is entitled to damages for that infringement and a zero verdict would
`be inconsistent with the jury’s finding of infringement. See Finjan, Inc. v. Blue Coat Sys., Inc., 879
`F.3d 1299, 1312 (Fed. Cir. 2018) (citations omitted) (“While it is clear that Finjan failed to present
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`a damages case that can support the jury's verdict, reversal of JMOL could result in a situation in
`which Finjan receives no compensation for Blue Coat's infringement of the ’844 patent. Ordinarily,
`‘the district court must award damages in an amount no less than a reasonable royalty’ when
`infringement is found, unless the patent holder has waived the right to damages based on alternate
`theories. We therefore remand to the district court to determine whether Finjan has waived the
`right to establish reasonable royalty damages under a new theory and whether to order a new trial
`on damages.”).
`Indeed, Charter’s own damages expert, W. Christopher Bakewell, nowhere opines that the record
`would support an award of zero dollars if Charter is found to infringe a valid patent, and instead
`calculates his own competing multi-million dollar royalty awards. As such, any damages award of
`zero would be reversed under clear Federal Circuit precedent, and the instructions should not
`present that erroneous option to the jury as Charter suggests. See, e.g., Report of W. Christopher
`Bakewell at ¶ 14 (“A reasonable royalty appropriate to compensate Touchstream for Charter’s
`alleged infringement of the patents-in-suit is less than $4.5 million. This is an aggregate amount
`for all three of the patents-in-suit, and it is a lump-sum royalty that relates to the statutory lives of
`the patents-in-suit.”).
`Charter: Charter objects to Touchstream’s proposal to delete “if any” from damages instructions.
`Such “if any” language has been included in the damages instructions in other cases in this District.
`See, e.g., TQ Delta, LLC v. CommScope Holding Co., No. 2:21-CV-00310-JRG, Dkt. 534 at 35,
`58-59, 64-65 (E.D. Tex. May 30, 2023); Finesse Wireless LLC v. AT&T Mobility LLC, No. 2:21-
`cv-316, Dkt. No. 286 at 14, 33-34, 36 (E.D. Tex. Feb. 27, 2023); Seagen, Inc. vs. Daiichi Sankyo
`Co., No. 2:20-cv-337-JRG, Dkt. 378 at 66, 88 (E.D. Tex. April 13, 2022); Salazar v. AT&T Mobility
`LLC, No. 2:20-cv-00004-JRG, Dkt. 257 at 31 (E.D. Tex. Sept. 20, 2021). For good reason: this
`language avoids giving the jury an impression that it must award damages. Contrary, to
`Touchstream’s argument, even if a jury finds infringement, the jury can still award zero damages,
`including a zero reasonable royalty. See 35 U.S.C. § 284; TecSec, Inc. v. Adobe Inc., 978 F.3d
`1278, 1291 (Fed. Cir. 2020) (affirming district court’s reduction of the jury’s damages award to
`zero, rejecting the argument that “because the jury found direct infringement of each asserted
`claim, 35 U.S.C. § 284 entitles TecSec to a non-zero reasonable royalty,” and explaining that “[t]he
`statute does not require an award of damages if none are proven that adequately tie a dollar amount
`to the infringing acts”); see also Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1328 (“[A] record
`could demonstrate that, at the time of infringement, the defendant considered the patent valueless
`and the patentee would have accepted no payment for the defendant’s infringement.”), overruled
`in part on other grounds, Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed Cir. 2015);
`Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 895 F.2d 1403, 1407 (Fed.
`Cir. 1990) (“The statute [35 U.S.C. § 284] requires the award of a reasonable royalty, but to argue
`that this requirement exists even in the absence of any evidence from which a court may derive a
`reasonable royalty goes beyond the possible meaning of the statute.”) (quoting Devex Corp. v. Gen.
`Motors Corp., 667 F.2d 347, 363 (3d Cir. 1981)). While Touchstream argues that an award of zero
`damages is appropriate only when the patentee has waived its right to seek damages under any
`remaining theories, the Federal Circuit has noted that narrow proposition before stating that,
`“[m]ore generally, we have observed that there can be an award of no damages where ‘none were
`proven.’” TecSec, 978 F.3d at 1291. Furthermore, it is Touchstream’s burden to prove damages by
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`alleged infringement [and whether or not that infringement that you have found was willful.]4 If
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`you decide that any infringement has been willful, that should not affect any monetary damages
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`that you might award, and I will take willfulness into account later.
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`Now, my job in this case is to tell you what the law is, to handle rulings on evidence and
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`procedure that arise during the trial, and to oversee the conduct of the trial efficiently and to
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`maintain the proper decorum of the courtroom.
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`In determining the law, it is specifically my job to determine the meaning of any of the
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`claim language from within the asserted patent that needs interpretation. I’ve already determined
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`the meanings of the claims of the patents-in-suit, and you must accept the meanings that I give you
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`and use those meanings when you decide whether any particular claim has or has not been
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`infringed and when you decide whether or not any particular claim is invalid.
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`Now, you’ll be given a document in a few moments that reflects these meanings that the
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`Court has already arrived at. For any claim term for which the Court has not provided you with an
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`interpretation or a definition, you’ll sometimes hear that referred to as a construction, you should
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`apply the plain and ordinary meaning. But if I have provided you with a definition or construction,
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`you are to apply my definition to those terms throughout the case.
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`a preponderance of the evidence. The opinion of Charter’s damages expert is of no moment.
`Touchstream is incorrect, however, that Mr. Bakewell “nowhere opines that the record would
`support an award of zero dollars if Charter is found to infringe a valid patent.” Mr. Bakewell opines
`that a reasonable royalty would be “less than” certain damages figures or “no more than” certain
`damages figures. Expert Rpt. of W. Christopher Bakewell, ¶¶ 14, 16, 143, 148, 174, 303, 304. This
`opinion includes a damages award of $0.
`4 Charter objects to instructing the jury on willfulness directly after infringement for the reasons
`stated in n.2, supra.
`Touchstream proposes instructing the jury on willfulness in conjunction with its infringement
`instructions, see n.2, supra, and objects to Charter’s proposal to instruct on willfulness after
`damages.
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`However, ladies and gentlemen, my interpretation as required by the law of the language
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`within the claims should not be taken by you as any indication that the Court has any personal
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`opinion or opinion at all regarding the issues of infringement, invalidity, or any other issue in this
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`case. Those issues are yours alone to decide. And I’ll provide you with more detailed instructions
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`on the meaning of the claim terms before you retire to the jury room to deliberate upon and reach
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`your verdict.
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`Now, in deciding the issues that are before you, you’ll be asked to consider specific legal
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`rules, and I’ll give you an overview of those rules now, and then at the conclusion of the case I’ll
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`give you more detailed instructions.
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`The first issue that you’re asked to decide is whether or not the Defendants, Charter,
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`have infringed any of the asserted claims of the patents-in-suit as brought by Touchstream.
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`Infringement, ladies and gentlemen, is assessed and determined on a claim-by-claim
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`basis. And Touchstream, the Plaintiff, must show by a preponderance of the evidence that a claim
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`has been infringed. Accordingly, there may be infringement as to one claim but no infringement
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`as to another claim.
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`And there are also a few different ways that a patent can be infringed, and I’ll explain
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`the requirements for each of these types of infringement to you in detail at the conclusion of the
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`case. But, in general, a defendant may infringe a method claim by preforming in the United States
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`each and every requirement or limitation of the claim.
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`And I’ll provide you with more detailed instructions on the requirements for
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`infringement at the conclusion of the case.
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`[Now, if you decide that any claim of the patents-in-suit has been infringed, then you’ll
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`be asked to decide whether or not that infringement that you have found was willful. The Plaintiff
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`has the burden to prove willful infringement by a preponderance of the evidence. If you decide
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`that any infringement has been willful, that should not affect any monetary damages that you might
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`award, and I will take willfulness into account later.]5
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`The next issue that you are asked to decide as the jury is whether the asserted patents are
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`invalid. Infringement and invalidity are separate and distinct issues. Invalidity is a defense to
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`infringement. Charter has the burden to prove invalidity by clear and convincing evidence.
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`Therefore, even though the United States Patent and Trademark Office has allowed the asserted
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`claims and even though an issued United States patent is presumed to be valid, you, the jury, must
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`decide whether those claims are invalid after hearing the evidence presented during the trial of this
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`case.
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`You may find that a patent claim is invalid for a number of reasons, including because
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`it claims subject matter that is anticipated or obvious in light of the prior art, invalid based on a
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`lack of sufficient written description, or ineligible for patent protection.
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`For a patent claim to be invalid because it is anticipated or obvious, the Defendants must
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`prove that the claim would have been anticipated or obvious to a person of ordinary skill in the
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`field of the technology of the patent at the relevant time. Now, you’ll need to consider a number
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`of questions in deciding whether the invention claimed in the asserted patent is anticipated or
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`obvious, and I’ll provide you with more detailed instructions on these questions at the conclusion
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`of the trial.
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`Now, another way that a patent claim can be found to be invalid is if Defendants prove
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`5 Touchstream proposes instructing the jury on willfulness in conjunction with its infringement
`instructions for the reasons set forth in n.2, supra.
`Charter opposes an instruction on willfulness prior to an instruction on damages for the reasons
`stated in n.2, supra.
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`#: 12379
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`that there is a lack of an adequate written description. A patent may be invalid if its specification
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`does not describe the claimed invention in sufficient detail so that one skilled in the art can
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`reasonably conclude that the inventor actually had possession of the invention that they’re
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`claiming. You’ll need to consider a number of questions in deciding whether a patent-in-suit
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`contains a sufficient written description, and I’ll provide you with those more detailed instructions
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`at the conclusion of the trial.
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`Charter also contends that the Asserted Claims of the Asserted Patents claim subject
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`matter that is ineligible for patent protection. Patent eligibility and infringement are separate and
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`distinct issues. While it is my job to decide whether the Asserted Claims are eligible for patent
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`protection, you must decide whether the Defendants have proven that each claim element of the
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`Asserted Patents, both individually and by ordered combination of those elements, involve
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`activities that were only well-understood, routine, and conventional at the time of the alleged
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`invention.
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`If you decide that any claim of the patents-in-suit has been infringed and is not invalid,
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`you will also need to decide what amount of money damages [, if any,] should be awarded to the
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`Plaintiff Touchstream to compensate it for the infringement of the Defendants Charter.
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`A damages award, ladies and gentlemen, must be adequate to compensate the
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`patentholder for the infringement. And in no event may a damages award be less than what the
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`patentholder would have received if it had been paid a reasonable royalty for the use of its patent.
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`However, the damages that you award, if any, are meant to compensate the patentholder, and they
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`are not meant to punish the Defendants. You may not include in any damages award an additional
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`amount as a fine or a penalty above what is necessary to fully compensate the patentholder for the
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`infringement.
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`Case 2:23-cv-00059-JRG-RSP Document 224-1 Filed 12/18/24 Page 15 of 29 PageID
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`Additionally, damages cannot be speculative, and the Plaintiff Touchstream must prove
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`the amount of its damages for the alleged infringement by a preponderance of the evidence.
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`[Further, every Asserted Claim in this case is a method claim. Method claims are not
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`infringed by the mere sale or distribution of a product capable of performing the claimed process.
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`Therefore, Touchstream cannot recover damages based on sales or distribution of products with
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`the mere capability to perform the claimed method. Because mere capability of performing the
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`claimed process is not enough, Touchstream cannot simply count the number of set-top boxes
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`capable of using the Accused Functionalities as the basis for calculating damages. Damages should
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`be limited to products that were actually used to perform the claimed method, or an estimate of the
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`amount or percentage of sold or distributed products that were actually used to perform the claimed
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`method.]6
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`6 Charter proposes this instruction for the reasons stated in its Motion for Summary Judgement
`(Dkt. 87), its Reply in support thereof (Dkt. 153), its Motion to Exclude and Strike Dr. Russell W.
`Mangum III’s Improper Opinions (Dkt. 95), and its Reply in support thereof (Dkt. 154), and based
`on the authorities cited therein. In particular, Charter’s proposed instruction reflects the law’s
`requirement that, where the patentee has