Case 2:23-cv-00059-JRG-RSP Document 244 Filed 01/02/25 Page 1 of 7 PageID #:
`12999
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CIVIL ACTION NO. 2:23-CV-00059-JRG-RSP
`(Lead Case)
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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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`REPORT & RECOMMENDATION
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`Before the Court is the Charter Defendants’ Motion for Summary Judgment of
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`Noninfringement. Dkt. No. 87. For the reasons discussed, the Motion should be DENIED, except
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`with respect to set-top boxes (STBs) with SARA or Passport guides.
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`I. LEGAL STANDARD
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`A. Summary Judgment
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`Summary judgment should be granted “if the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a). Any evidence must be viewed in the light most favorable to the nonmovant. See Anderson
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`v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144,
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`158–59 (1970)). Summary judgment is proper when there is no genuine dispute of material fact.
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`Celotex v. Catrett, 477 U.S. 317, 322 (1986). “By its very terms, this standard provides that the
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`mere existence of some alleged factual dispute between the parties will not defeat an otherwise
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`properly supported motion for summary judgment; the requirement is that there be no genuine
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`[dispute] of material fact.” Anderson, 477 U.S. at 247–48 (emphasis added). The substantive law
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`identifies the material facts, and disputes over facts that are irrelevant or unnecessary will not
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`defeat a motion for summary judgment. Id. at 248. A dispute about a material fact is “genuine”
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`when the evidence is “such that a reasonable jury could return a verdict for the nonmoving party.”
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`Id.
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`The moving party must identify the basis for granting summary judgment and evidence
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`demonstrating the absence of a genuine dispute of material fact. Celotex, 477 U.S. at 323.
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`“If the moving party does not have the ultimate burden of persuasion at trial, the party
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`‘must either produce evidence negating an essential element of the nonmoving party’s claim or
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`defense or show that the nonmoving party does not have enough evidence of an essential element
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`to carry its ultimate burden of persuasion at trial.’” Intellectual Ventures I LLC v. T Mobile USA,
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`Inc., No. 2:17-CV-00577-JRG, 2018 WL 5809267, at *1 (E.D. Tex. Nov. 6, 2018) (quoting Nissan
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`Fire & Marine Ins. Co., Ltd. v. Fritz Cos., Inc., 210 F.3d 1099, 1102 (9th Cir. 2000)).
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`II. ANALYSIS
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`A. STBs With Certain Guides
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`1. SARA and Passport Guides
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`Charter argues that SARA and Passport guides cannot infringe. Dkt. No. 87 at 8.
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`Touchstream does not oppose this. Dkt. No. 123 at 16. Accordingly, this portion of the Motion
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`should be GRANTED.
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`2. Spectrum Guide
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`Charter argues that each of the various modes of STBs with Spectrum Guide do not
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`infringe. Dkt. No. 87 at 9–10.
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`i.
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`Linear TV Mode
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`First, Charter asserts that “[w]hen a STB with Spectrum Guide is in Linear TV mode,
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`messages from the personal computing device (e.g., phone) as well as messages to the STB specify
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`only a channel, not any particular piece of content.” Id. at 9. Thus, they argue that the claim
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`limitations in ’251 claim 1, ’751 claim 12, and ’934 claim 17 cannot be met because they all require
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`the STB to receive pieces of content. Id. Touchstream responds that Charter’s assertion is belied
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`by evidence from Charter’s corporate witness and Touchstream’s expert. Dkt. No. 123 at 20–21.
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`For example, Touchstream cites Mr. Frusciano’s testimony that the STB receives certain
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`identifiers that include the channel number and call sign. Id. at 20; see also Dkt. No. 181 at 2. Dr.
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`Wicker, Plaintiff’s expert, also opines that the STB receives these identifiers. Id. at 21. The Court
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`finds that Plaintiff has adduced sufficient evidence of infringement to survive summary judgment
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`as to this mode.
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`ii. VOD Mode
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`Next, Charter argues that STBs with Spectrum Guide in VOD mode do not infringe. Dkt.
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`No. 87 at 9. Charter asserts that this is because a user cannot play VOD content on the STB directly
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`from their phone but must use the remote control to start playing the video. Id. at 9–10.
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`Touchstream disputes this assertion. Dkt. No. 123 at 19–20. Although Touchstream concedes that
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`Dr. Wicker did not test the Spectrum Guide variety, but instead tested a different variety based on
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`Charter’s representation that the guides work the same, Dr. Wicker nevertheless concluded that
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`the Spectrum TV app could control playback of VOD on Spectrum Guide STBs. Id. Charter now
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`disagrees that the different guides function in the same way for this mode and argues that
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`Touchstream cannot rely on Dr. Wicker’s tests because he did not directly test the Spectrum Guide
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`variant. Dkt. No. 153 at 2. There is no requirement that a party’s expert directly test all accused
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`products. The Court finds that Touchstream has provided sufficient evidence that the Spectrum
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`Guide STBs are capable of infringement in VOD mode. Any disputes here go to the weight of the
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`evidence and thus this portion of the Motion should be DENIED.
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`iii. DVR Mode
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`Next, Charter argues that the Spectrum Guide in DVR mode does not infringe. Dkt. No. 87
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`at 10. It asserts that the user cannot use the app to view DVR-recorded content. Id. Touchstream
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`responds that there is ample evidence that the app can control DVR playback. Dkt. No. 123 at 18.
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`It points to Charter corporate witness testimony, and Dr. Wicker’s report. Id. at 18–19 (citing Dkt.
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`No. 123-7, ¶ 145). The Court finds that a genuine dispute of fact exists here and thus precludes
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`summary judgment.
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`B. ’251 Patent
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`Next, Charter argues that it does not infringe the ’251 patent. Dkt. No. 87 at 10.
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`1. “Assigning, by a Server System”
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`It argues that the Charter server system does not assign the STB’s MAC address to the
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`STB, as required by the claim because the STB’s MAC address is hard-wired into the STB during
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`manufacture. Id. at 11. Touchstream responds that when an STB connects to Charter’s network,
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`Charter’s servers obtain the MAC address from the STB and assign it to the STB for use within
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`the network. Dkt. No. 123 at 22 (citing Dkt. No. 123-7, ¶ 125). The Court agrees with Plaintiff that
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`the hard-wiring of the MAC address into the STB during manufacture does not preclude
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`infringement of this claim.
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`2. “Record Establishing an Association”
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`The ’251 claim 1 requires a “record establishing an association between the personal
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`computing device and the display device based on the synchronization code.” Charter argues that
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`“[t]here is no record stored on Charter’s system of any association . . . between the accused display
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`device (STB) and the user’s personal computing device (e.g., phone),” as the claim requires,
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`instead Charter’s system creates an association between the STB and the user’s account. Dkt. No.
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`87 at 12 (emphasis removed). Touchstream responds that “Charter’s servers store records
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`associating a Charter’s customer’s mobile device with an STB through the user account system.”
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`Dkt. No. 123 at 24 (citing Dkt. No. 123-7, ¶¶ 127–28). Touchstream illustrates that this user
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`account information then points to the user’s personal computing device. Id. Thus, according to
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`Touchstream, Charter has stored a record establishing an association between a personal
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`computing device and the display device based on the synchronization code. Id. The Court finds
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`that Touchstream has adduced sufficient evidence that Charter infringes the asserted claim and
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`thus Charter is not entitled to summary judgment of non-infringement.
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`C. ’751 Patent
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`Next, Charter argues that it does not infringe the ’751 patent. Dkt. No. 87 at 13.
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`1. “Obtaining, by the Content Presentation Device”
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`Charter presents a similar argument to its argument for non-infringement of the ’251 patent,
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`above. Id. Namely, that because the STB’s MAC address is hard-wired into the STB during
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`manufacture it cannot obtain a MAC address as Dr. Wicker suggests. Id. Touchstream responds
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`like it did for the ’251 patent. Dkt. No. 123 at 26. For the same reasons as discussed above, the
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`Court finds that Charter’s argument is unavailing, and summary judgment is inappropriate.
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`D. ’934 Patent
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`For the last patent, Charter argues that it cannot infringe since the claim requires “providing
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`by a media receiver, a unique identifier of the media receiver to a computing device in
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`communication with a server system,” but “the STB does not provide its MAC address to the
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`subscriber’s device.” Dkt. No. 87 at 13–14. Touchstream counters that the asserted independent
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`claim only requires that the media receiver provide its “unique identifier to the computing device
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`in communication with a server system” and there is no requirement of it happening immediately
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`or within a single step. Dkt. No. 123 at 29. The Court finds that there are material factual disputes
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`here that preclude summary judgment.
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`E. Damages
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`Finally, Charter argues that Touchstream’s damages model is flawed as a matter of law and
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`thus Charter is entitled to summary judgment to limit damages. Dkt. No. 87 at 14. Charter
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`acknowledges that they contemporaneously filed a motion to strike Touchstream’s damages
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`expert’s report on this same theory. Id; see Dkt. No. 95. Accordingly, the Court will take up this
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`argument in connection with that motion.
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`III. CONCLUSION
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`For the above reasons, the Court recommends DENYING all parts of Charter’s motion,
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`to
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`the findings, conclusions, and
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`except as regards to the SARA and Passport Guides.
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` A
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` party’s failure to file written objections
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`recommendations contained in this report within 14 days bars that party from de novo review by
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`the District Judge of those findings, conclusions, and recommendations and, except on grounds of
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`plain error, from appellate review of unobjected-to factual findings and legal conclusions accepted
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`and adopted by the district court. Fed. R. Civ. P. 72(b)(2); see Douglass v. United Servs. Auto.
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`Ass’n, 79 F.3d 1415, 1430 (5th Cir. 1996) (en banc). Any objection to this Report and
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`Recommendation must be filed in ECF under the event “Objection to Report and
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`Recommendations [cv, respoth]” or it may not be considered by the District Judge.
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