Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 1 of 13 PageID #: 998
`
`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.
`
`§
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`Lead Case No. 2:23-cv-00059-JRG
`Member Case No. 2:23-cv-00062-JRG
`
`COMCAST’S MOTION TO DISMISS PLAINTIFF’S CLAIMS OF
`PRE-SUIT WILLFUL INFRINGEMENT OF THE ’751 AND ’934 PATENTS
`
`

`

`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 2 of 13 PageID #: 999
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`TABLE OF CONTENTS
`
`
`PAGE
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`I.
`
`II.
`
`INTRODUCTION .............................................................................................................. 1
`
`FACTUAL BACKGROUND ............................................................................................. 1
`
`III.
`
`LEGAL STANDARD ......................................................................................................... 2
`
`IV. ARGUMENT ...................................................................................................................... 3
`
`A.
`
`B.
`
`The SAC Fails to Plausibly Allege Knowledge of the 2021 Patents ...................... 3
`
`The SAC Fails to Allege That Comcast Knew of Its Infringement of the
`2021 Patents ............................................................................................................ 7
`
`V.
`
`CONCLUSION ................................................................................................................... 8
`
`
`
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`i
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 3 of 13 PageID #: 1000
`
`TABLE OF AUTHORITIES
`
`
`PAGE
`
`Cases
`
`Ashcroft v. Iqbal,
`556 U.S. 662 (2009) .................................................................................................................... 3
`
`Bell Atl. Corp. v. Twombly,
`550 U.S. 544 (2007) .................................................................................................................... 3
`
`Dali Wireless, Inc. v. Corning Optical Commc’ns LLC,
`638 F. Supp. 3d 1088 (N.D. Cal. 2022) ...................................................................................... 6
`
`Diamond Grading Techs. Inc. v. Am. Gem Soc’y,
`2016 WL 3902482 (E.D. Tex. Mar. 30, 2016) ....................................................................... 3, 4
`
`EMA Electromechanics, Inc. v. Siemens Corp.,
`2022 WL 1241967 (W.D. Tex. Apr. 26, 2022) ...................................................................... 3, 7
`
`Fleet Engineers, Inc. v. Mudguard Techs., LLC,
`2023 WL 5219773 (Fed. Cir. Aug. 15, 2023) ............................................................................. 3
`
`Fortinet, Inc. v. Forescout Techs., Inc.,
`543 F. Supp. 3d 814 (N.D. Cal. 2021) .................................................................................... 6, 7
`
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`579 U.S. 93 (2016) .............................................................................................................. 3, 4, 7
`
`Intell. Pixels Ltd. v. Sony Interactive Ent. LLC,
`2020 WL 7872961 (C.D. Cal. Nov. 20, 2020) ............................................................................ 6
`
`M & C Innovations, LLC v. Igloo Prod. Corp.,
`2018 WL 4620713 (S.D. Tex. July 31, 2018)......................................................................... 4, 7
`
`MONEC Holding AG v. Motorola Mobility, Inc.,
`897 F. Supp. 2d 225 (D. Del. 2012) ............................................................................................ 3
`
`State Indus., Inc. v. A.O. Smith Corp.,
`751 F.2d 1226 (Fed. Cir. 1985) .................................................................................................. 4
`
`Touchstream Techs., Inc. v. Vizbee, Inc.,
`No. 17-cv-6247-PGG-KNF (S.D.N.Y.) ...................................................................................... 2
`
`USC IP P’ship, L.P. v. Facebook, Inc.,
`2021 WL 3134260 (W.D. Tex. July 23, 2021) ........................................................................... 6
`
`ii
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 4 of 13 PageID #: 1001
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`Vasudevan Software, Inc. v. TIBCO Software Inc.,
`2012 WL 1831543 (N.D. Cal. May 18, 2012) ............................................................................ 4
`
`Windy City Innovations, LLC v. Microsoft Corp.,
`193 F. Supp. 3d 1109 (N.D. Cal. 2016) ...................................................................................... 4
`
`Rules
`
`Fed. R. Civ. P. 8(a)(2) ..................................................................................................................... 2
`
`
`
`iii
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 5 of 13 PageID #: 1002
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`I.
`
`INTRODUCTION
`
`Touchstream’s SAC repleads pre-suit willful infringement of the ’751 and ’934 Patents
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`(the “2021 Patents”) but fails to allege that Comcast had pre-suit knowledge of them.1 It also
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`fails to provide any plausible basis to infer that Comcast had such knowledge, pointing instead to
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`meetings and events regarding other patents, which this Court already rejected as insufficient to
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`support pre-suit willfulness. Accordingly, the Court should again dismiss Touchstream’s claims
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`of pre-suit willful infringement of the ’751 and ’934 Patents, this time with prejudice.
`
`II.
`
`FACTUAL BACKGROUND
`
`This case involves three related patents. The ’251 Patent was filed in 2011 and issued in
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`2013. Dkt. No. 30 (“SAC”) Ex. 1 at 2. The 2021 Patents are continuations-in-part of the ’251
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`Patent’s parent application and issued in 2021. SAC Ex. 1 at 3, Ex. 2 at 3, Ex. 3 at 3.
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`Touchstream asserted willful infringement of all three patents in its FAC but asserted no pre-suit
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`notice of any of them. See Dkt. No. 55 (“FAC”) ¶¶ 26–32. Accordingly, on March 14, 2024,
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`this Court dismissed the FAC’s claims of pre-suit willfulness. See Dkt. No. 156 (the “Order”)
`
`at 5–6, 8.
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`Touchstream reasserts pre-suit willfulness in its SAC but again fails to allege pre-suit
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`knowledge of the 2021 Patents. See SAC ¶¶ 26–51, 85, 90. To the contrary, the SAC makes no
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`reference to those patents in the allegations purportedly supporting its willfulness claims. See id.
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`Instead, the SAC offers various allegations unconnected to those patents, such as: (1) the alleged
`
`
`1 This Motion refers to Plaintiff Touchstream Technologies, Inc. as “Touchstream”;
`Defendants Comcast Cable Communications, LLC, Comcast Cable Communications
`Management, LLC, Comcast of Houston, LLC, and Comcast Corporation as “Comcast”; the
`First Amended Complaint as the “FAC”; the Second Amended Complaint as the “SAC”; U.S.
`Patent No. 8,356,251 as the “’251 Patent”; U.S. Patent No. 11,048,751 as the “’751 Patent”; U.S.
`Patent No. 11,086,934 as the “’934 Patent”; and all three of the asserted patents collectively as
`the “Asserted Patents.”
`
`1
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 6 of 13 PageID #: 1003
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`disclosure of a 2011 provisional application (the “2011 Provisional”) and the ’251 Patent 2 to
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`nonparties affiliated with Comcast, id. ¶¶ 30, 38; (2) various meetings with Comcast years before
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`the 2021 Patents issued, id. ¶¶ 28, 31–32, 34, 37; and (3) that, because Comcast monitored an
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`unrelated patent litigation between Sprint and Vonage about Voice over IP (“VoIP”) technology
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`in 2007, “[u]pon information and belief,” Comcast monitored Touchstream’s patent portfolio
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`and 2017 patent litigation against Vizbee,3 id. ¶¶ 46–51 (emphasis added). None of these
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`allegations contain facts concerning Comcast’s (or Touchstream’s) activities after the filing of
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`the 2021 Patents, let alone their issuance. See id.
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`Finally, the SAC hints that Comcast was willfully blind to the 2021 Patents because its
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`employee, Tony Werner, allegedly played a role in preparing for potential patent accusations by
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`Verizon, Sprint, and AT&T, attended meetings with Touchstream, and then oversaw “Comcast’s
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`decision to not partner with Touchstream but instead to develop a similar, infringing solution.”
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`Id. ¶¶ 48–50. Again, however, the SAC does not allege that Mr. Werner was aware of any
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`Touchstream patents—let alone the 2021 Patents—or made a decision to purposefully remain
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`ignorant of such patents. See id. ¶¶ 46–51.
`
`III. LEGAL STANDARD
`
`A complaint must contain a “short and plain statement of the claim showing that the
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`pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). Under Federal Rule of Civil Procedure
`
`
`2 The SAC asserts pre-suit knowledge of the ’251 Patent based on an alleged “slide deck”
`expressly disclosing the ’251 Patent that was sent to an employee of nonparty NBCUniversal
`Media in 2016. SAC ¶ 38. Comcast vigorously disputes this allegation, but because the SAC’s
`allegations must be taken as true for purposes of this Motion, Comcast does not move to dismiss
`the SAC’s claim of pre-suit willful infringement of the ’251 Patent.
`
`3 The Vizbee litigation did not involve the 2021 Patents, which issued more than a year
`after Touchstream voluntarily dismissed its complaint in January 2020. Touchstream Techs.,
`Inc. v. Vizbee, Inc., No. 17-cv-6247-PGG-KNF (S.D.N.Y. Jan. 24, 2020), Dkt. Nos. 20, 159.
`
`2
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 7 of 13 PageID #: 1004
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`12(b)(6), a complaint will be dismissed if it does not contain “sufficient factual matter, accepted
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`as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662,
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`678 (2009) (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
`
`IV. ARGUMENT
`
`A plaintiff asserting willfulness must allege that the defendant (1) had knowledge of the
`
`asserted patents and (2) deliberately infringed them. Fleet Engineers, Inc. v. Mudguard Techs.,
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`LLC, 2023 WL 5219773, at *8 (Fed. Cir. Aug. 15, 2023). The second prong means that the
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`defendant “knew, or should have known, that its conduct amounted to infringement of the
`
`patent.” See EMA Electromechanics, Inc. v. Siemens Corp., 2022 WL 1241967, at *3 (W.D.
`
`Tex. Apr. 26, 2022). The SAC’s claims of willful infringement of the 2021 Patents do not meet
`
`either prong.
`
`A.
`
`The SAC Fails to Plausibly Allege Knowledge of the 2021 Patents
`
`Touchstream does not allege the basic predicate to willful infringement of the 2021
`
`Patents: that Comcast had pre-suit knowledge of those patents.
`
`To sustain pre-suit willfulness, “the complaint must adequately allege factual
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`circumstances in which the patents-in-suit are called to the attention of the defendants.”
`
`Diamond Grading Techs. Inc. v. Am. Gem Soc’y, 2016 WL 3902482, at *1 (E.D. Tex. Mar. 30,
`
`2016) (quoting MONEC Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225, 236 (D.
`
`Del. 2012)) (emphasis added) (cleaned up), abrogated on other grounds by Halo Elecs., Inc. v.
`
`Pulse Elecs., Inc., 579 U.S. 93, 105 (2016). At a minimum, this requires “a plausible allegation
`
`of subjective knowledge—that Defendants were on notice of the [asserted] Patent”—or “facts
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`sufficient to permit that inference.” Id. at *2.
`
`Here, the SAC fails to provide any willfulness-related allegations directed to the 2021
`
`Patents, let alone allegations of knowledge of those patents. See SAC ¶¶ 26–51. For example,
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`3
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 8 of 13 PageID #: 1005
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`the SAC does not allege that Touchstream disclosed the 2021 Patents. See id. Instead, the
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`SAC’s allegations regarding communications with Comcast end in 2016—before Touchstream
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`even applied for the 2021 Patents. See id. Such communications cannot provide the basis of
`
`claims of willful infringement of patents that did not yet exist. See Diamond Grading, 2016 WL
`
`3902482, at *2 (“‘To willfully infringe a patent, the patent must exist and one must have
`
`knowledge of it.’”) (quoting State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed.
`
`Cir. 1985)); M & C Innovations, LLC v. Igloo Prod. Corp., 2018 WL 4620713, at *3 (S.D. Tex.
`
`July 31, 2018) (finding no pre-suit knowledge where asserted patent “did not even come into
`
`existence until three years after the last alleged communication between the parties”). Similarly,
`
`the SAC does not allege any monitoring of, public statements about, or failure to investigate the
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`2021 Patents. See SAC ¶¶ 26–51.
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`Instead of allegations concerning the 2021 Patents themselves, the SAC asserts facts
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`concerning other patents, meetings that occurred years before the patents issued, and unrelated
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`patent disputes. None suffice to plausibly support pre-suit knowledge of the 2021 Patents.
`
`First, this Court has already found that the alleged disclosure of the 2011 Provisional
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`“cannot support knowledge of the Asserted Patents” and that this “connection” is even “more
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`tenuous” with respect to the 2021 Patents. Order at 5 & n.3. That is because “it is the allowed
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`claims, not the specification, that put potential infringers on notice of the scope of protection.”
`
`Vasudevan Software, Inc. v. TIBCO Software Inc., 2012 WL 1831543, at *3 n.3 (N.D. Cal. May
`
`18, 2012) (“The requisite knowledge of the patent allegedly infringed simply cannot be inferred
`
`from mere knowledge of other patents, even if somewhat similar.”), abrogated on other grounds
`
`by Halo, 579 U.S. at 105; see also Windy City Innovations, LLC v. Microsoft Corp., 193 F. Supp.
`
`3d 1109, 1117 (N.D. Cal. 2016) (“[P]laintiff failed to allege the existence of pre-suit
`
`4
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 9 of 13 PageID #: 1006
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`knowledge . . . because [it] based this knowledge solely on communications it had with
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`defendant regarding [a related patent and patent application], on which plaintiff is not suing.”).
`
`The same logic applies to the SAC’s allegation that Touchstream provided notice of the ’251
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`Patent, which issued eight years before the 2021 Patents and has different claims. Compare
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`SAC Ex. 1 at 19–21 with Ex. 2 at 19–20 and Ex. 3 at 20–21. Such alleged disclosure—even if
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`accepted as true for purposes of this Motion—provides no basis to infer knowledge of patents
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`that had not even been applied for yet.
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`Second, the Court similarly rejected Touchstream’s allegations concerning its alleged
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`“pattern and practice” of informing its business partners of its patents because the FAC failed to
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`identify any applications mentioned during Touchstream’s meetings with Comcast that resulted
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`in the grant of the Asserted Patents. Order at 6. Here again, the SAC does not (and cannot)
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`allege that Touchstream provided notice of the 2021 Patents or the applications from which they
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`issued in those meetings, not least because all of Touchstream’s communications with Comcast
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`occurred before Touchstream even applied for those patents. See SAC ¶¶ 26–51.
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`Third, the SAC’s allegations concerning monitoring of unrelated litigation provide no
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`basis to infer that Comcast monitored Touchstream or its patents. The only facts alleged to
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`purportedly support Touchstream’s “information and belief” that Comcast monitored
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`Touchstream’s patent portfolio is that Comcast purportedly monitored a 2007 patent
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`infringement case between Sprint and Vonage related to VoIP technology. Id. ¶ 47. But that
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`case concerns different parties and events that occurred a decade before the filing of the 2021
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`Patents, and the SAC does not allege that VoIP technology is somehow related to any technology
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`that practices the 2021 Patents. Such attenuated allegations are insufficient to plead pre-suit
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`knowledge. See Intell. Pixels Ltd. v. Sony Interactive Ent. LLC, 2020 WL 7872961, at *2–3
`
`5
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 10 of 13 PageID #: 1007
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`(C.D. Cal. Nov. 20, 2020) (rejecting monitoring allegation as “conclusory” even where plaintiff
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`alleged defendant’s receipt of patent application during prior litigation); Dali Wireless, Inc. v.
`
`Corning Optical Commc’ns LLC, 638 F. Supp. 3d 1088, 1098 (N.D. Cal. 2022) (finding
`
`statements such as “[o]n information and belief, [defendant] discovered the [asserted] Patent
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`through its practice of monitoring [plaintiff]’s patent portfolio” to be “conclusory” and
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`“unsupported by specific allegations”) (emphasis added).
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`Finally, the SAC’s allegations regarding Tony Werner do not permit the inference that
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`Comcast knew of the 2021 Patents or took any deliberate actions to avoid learning that fact.
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`Again, the SAC nowhere alleges that Mr. Werner (or anyone else at Comcast) learned of the
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`2021 Patents or the applications from which they issued, whether through meetings with
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`Touchstream or any other disclosure. Thus, the SAC’s allegation that Mr. Werner oversaw the
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`development of a “similar, infringing solution,” SAC ¶ 50, provides no basis to infer that he did
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`so with the belief that Comcast was highly likely to infringe Touchstream’s patents. See USC IP
`
`P’ship, L.P. v. Facebook, Inc., 2021 WL 3134260, at *2 (W.D. Tex. July 23, 2021) (granting
`
`motion to dismiss pre-suit willful infringement claim where plaintiff alleged willful blindness but
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`failed to “plead sufficient facts that would support an allegation of pre-suit knowledge”). Nor
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`does the SAC allege that Mr. Werner or anyone at Comcast took any actions to avoid learning of
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`Comcast’s purported infringement, such as by following a policy of not reviewing other
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`companies’ patents. Fortinet, Inc. v. Forescout Techs., Inc., 543 F. Supp. 3d 814, 842 (N.D. Cal.
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`2021) (finding no willful blindness because plaintiff failed to allege facts such as a “‘policy of
`
`not reviewing patent sale offerings’”) (citation omitted).4 Instead, the SAC alleges that Mr.
`
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`4 This Court should also reject Touchstream’s recycled allegations regarding its purported
`public disclosures, which continue to be unrelated to the 2021 Patents. Compare FAC ¶¶ 26–27
`with SAC ¶¶ 26–27.
`
`6
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 11 of 13 PageID #: 1008
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`Werner was involved in the preparation for potential patent accusations by other companies,
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`SAC ¶ 49, which is no basis to suggest that Mr. Werner put any conscious thought towards any
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`Touchstream patents.
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`Because the SAC provides no plausible factual support for pre-suit knowledge of the
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`2021 Patents, its claims of pre-suit willful infringement of those patents must be dismissed.
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`B.
`
`The SAC Fails to Allege That Comcast Knew of Its Infringement of the 2021
`Patents
`
`The SAC’s willfulness claims for the 2021 Patents should also be dismissed for the
`
`independent reason that it does not allege that Comcast acted with subjective culpability. EMA,
`
`2022 WL 1241967, at *3 (plaintiff must plead that defendant “‘knew, or should have known, that
`
`its conduct amounted to infringement of the patent’”) (citation omitted). Again, the SAC does
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`not allege that Comcast received—much less ignored—an explanation as to how it purportedly
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`infringed the 2021 Patents. Nor does the SAC allege that Comcast had any reason to believe it
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`infringed the 2021 Patents at any time before the filing of the FAC in this case. While the SAC
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`alleges that Comcast copied Touchstream’s product—which Comcast strenuously denies—the
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`2021 Patents did not issue until years after the events in question, and the SAC nowhere alleges
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`that Comcast copied technology covered by those patents. See M & C Innovations, 2018 WL
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`4620713, at *3 (rejecting copying allegations due to “lack of factual basis supporting pre-suit
`
`knowledge of any existing patent”). Thus, these allegations do not support an inference that
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`Comcast deliberately infringed the 2021 Patents “with no doubts about [their] validity or any
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`notion of a defense.” Halo, 579 U.S. at 104; see also Fortinet, 543 F. Supp. 3d at 842 (finding
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`allegations of culpable conduct insufficient where defendant “declined to engage in serious
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`licensing negotiations” for the asserted patents).
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`7
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 12 of 13 PageID #: 1009
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`V.
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`CONCLUSION
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`For the foregoing reasons, Comcast respectfully requests that the Court dismiss
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`Touchstream’s claims of pre-suit willful infringement of the ’751 and ’934 Patents with
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`prejudice.
`
`Date: April 11, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ David J. Lisson
`Deron Dacus (State Bar No. 00790553)
`THE DACUS FIRM, P.C.
`821 ESE Loop 323, Suite 430
`Tyler, TX 75701
`Tel: (903) 705-1117
`Fax: (903) 581-2543
`ddacus@dacusfirm.com
`
`Ashok Ramani (CA Bar No. 200020)
`David J. Lisson (CA Bar No. 250994)
`James Y. Park (CA Bar No. 343659)
`Micayla Hardisty (CA Bar No. 333246)
`DAVIS POLK & WARDWELL LLP
`1600 El Camino Real
`Menlo Park, CA 94025
`ashok.ramani@davispolk.com
`david.lisson@davispolk.com
`james.park@davispolk.com
`micayla.hardisty@davispolk.com
`
`Alena Farber (NY Bar No. 5896170)
`DAVIS POLK & WARDWELL LLP
`450 Lexington Avenue
`New York, NY 10017
`alena.farber@davispolk.com
`
`Counsel for Comcast Defendants
`
`
`
`
`
`8
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`

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`Case 2:23-cv-00059-JRG Document 38 Filed 04/11/24 Page 13 of 13 PageID #: 1010
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on April 11, 2024, all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document through the
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`Court’s CM/ECF system under Local Rule CV-5(a)(3).
`
`
`
`
`
`
`/s/ David J. Lisson
`David J. Lisson
`
`9
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`