Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 1 of 7 PageID
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`EXHIBIT 1
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`EXHIBIT 1
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 2 of 7 PageID
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`1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`TOUCHSTREAM TECHNOLOGIES, INC., )(
`PLAINTIFF,
` )( CIVIL ACTION NO.
` )( 2:23-CV-59-JRG-RSP
` )( MARSHALL, TEXAS
`VS.
` )(
`CHARTER COMMUNICATIONS, INC., )(
` )( DECEMBER 19, 2024
`ET AL.,
` )( 9:01 A.M.
`DEFENDANTS.
`
`PRETRIAL HEARING
`BEFORE THE HONORABLE ROY S. PAYNE
`UNITED STATES MAGISTRATE JUDGE
`
`FOR THE PLAINTIFF:
`
`Mr. Mark D. Schafer
`Mr. Ryan D. Dykal
`Mr. Jordan T. Bergsten
`Ms. Anita Liu
`Boies Schiller Flexner LLP
`1401 New York Avenue, N.W.
`Washington, DC 20005
`Mr. Philip Eckert
`Shook, Hardy & Bacon LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`Mr. John Michael Lyons
`Boies Schiller Flexner LLP
`55 Hudson Yards
`New York, NY 10001
`Mr. Tom Gorham
`Gillam & Smith LLP
`102 N. College
`Suite 800
`Tyler, TX 75702
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 3 of 7 PageID
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`135
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`significant differences between the applications, and the
`fact witnesses confirmed as much.
`So there's nothing in the record to suggest that
`the X1 Remote app is relevant.
`THE COURT: All right. Thank you, Ms. Farber.
`I'll deny Motion in Limine No. 2.
`That takes us to No. 3.
`MR. SAUNDERS: Good afternoon, Your Honor. Tom
`Saunders for Comcast.
`So Motion in Limine No. 3 goes to the issue of
`testimony, evidence, and argument regarding alleged
`willfulness before the damages period. And willfulness can
`only be relevant to the issue of enhanced damages under
`Section 284. And enhancement of damages is only relevant
`during the damages period when there would be damages to
`enhance.
`THE COURT: What I see as the central issue on
`this motion is that I don't think the law is that evidence
`from before the period in suit can't be considered in
`determining whether the infringement during the relevant
`period was willful.
`MR. SAUNDERS: So, Your Honor, it's -- we're not
`arguing for a per se rule here. We're arguing under Rule
`403 and that when you have a much later damages period --
`you know, they want to reach back at least to 2011, six
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 4 of 7 PageID
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`136
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`years before the earliest damages period, two years before
`the issuance of the earliest patent in this suit, and when
`you have to be measuring culpability as of the relevant
`period, which for here is going to be the damages period,
`means the concern is that the jury's attention is going to
`be focused on the wrong period of time. It's not the
`operative period it needs to be determining.
`And we submit, Your Honor, that the prejudice
`really sort of steps up the further back you go in time and
`the more attenuated this gets.
`And so, you know, there's no allegation in that
`part that there's an accusation of infringement even before
`this suit is filed. But as we understand their evidence,
`their communication of the patent number that allegedly
`occurred here was in 2016.
`But they also want to bring in a lot of more
`evidence before that in which no patent number is
`communicated. They would have very little, if any,
`probative value in light of that. But it's prejudicial
`because it's focusing the jury on the wrong time period.
`And so this problem gets worse the further back
`you go, the further back you go. And then we have, you
`know, the period where you have communications with Comcast
`that are six years before the damages period even began and
`before there is even a patent. And under those
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 5 of 7 PageID
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`137
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`circumstances, it's getting so attenuated. The fact that
`there may be a pending patent doesn't tell you if one's
`going to issue. It doesn't tell you what the claims are
`going to be. And so in those circumstances, the balance
`should be struck in favor of excluding that evidence.
`And the final thing I'll say is this does also --
`part of our concern here ties in with an instructional
`issue which is that Touchstream is resisting any
`instructions that would give the jury the relevant time
`period for willfulness. They just want to say we're
`presenting a pre-suit willfulness argument with no starting
`time period.
`So part of the concern about the evidentiary mixes
`in front of the jury also goes to their position on that
`and whether they're going to essentially be arguing
`willfulness in 2013 when at most they could be arguing
`earlier evidence with respect to willfulness in a later
`time period, because only that later willfulness would be
`relevant.
`THE COURT: All right. Thank you, Mr. Saunders.
`MR. SCHAFER: Mark Schafer for Touchstream.
`So as a threshold issue, Comcast did not move for
`summary judgment of no willfulness. So that is -- that is
`an issue that's in the case.
`Touchstream is prepared to offer evidence that
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 6 of 7 PageID
`#: 12997
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`138
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`Comcast, before the lawsuit was filed, knew of the patent
`number as the threshold issue to establish willfulness, and
`then you look at all of the evidence that surrounds that,
`which is what the Halo decision says.
`You look at the totality of the circumstances, as
`well as the knowledge of the culpable actor at the time of
`the challenged conduct.
`Notably, Comcast does not cite a single case for
`the proposition that evidence of willfulness before the
`damages period should be excluded. For the cases that it
`cites about interactions that happened between the parties
`predating the patents, those cases only talk about whether
`the knowledge prong is satisfied.
`What Comcast would like to do is create a false
`picture of the -- of years of communications, meetings,
`demonstrations between the parties, including witnesses
`that will say and have said in deposition that during every
`one of these demonstrations and communications, they
`conveyed to Comcast that they had patents on the
`technology.
`THE COURT: All right. I don't think that the law
`supports the concept that there cannot be evidence that
`precedes the relevant damages period and supports
`willfulness during that period, and so I'm not going to
`draw a line as requested by this MIL to that effect.
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`Case 2:23-cv-00059-JRG-RSP Document 243-1 Filed 01/02/25 Page 7 of 7 PageID
`#: 12998
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`139
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`And the individual evidence will just have to be
`judged based on whether it is relevant to willful
`infringement. And if the Defendant contends it's not, then
`a relevance objection should be asserted. But the Motion
`in Limine No. 3 is denied.
`Is Motion in Limine No. 4 broader than what we
`discussed with respect to Charter?
`MR. DACUS: It is not, Your Honor. It's the
`mirror -- it's the mirror image.
`THE COURT: Is there anything else that would need
`to be clarified other than to say that the same ruling will
`be made as was made with respect to Charter? Does the
`Plaintiff need any further definition of that?
`MR. SCHAFER: No, Your Honor.
`THE COURT: All right. Then Motion in Limine
`No. 4 will be granted as to total revenues, et cetera.
`Yes, ma'am?
`MS. HARDISTY: Good afternoon, Your Honor.
`Micayla Hardisty on behalf of Comcast.
`Comcast's Motion in Limine 5 moves to preclude
`argument or testimony from Touchstream regarding the
`confidentiality of documents.
`There are two categories of argument that Comcast
`seeks to exclude.
`First, Comcast seeks to exclude reference to the
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